DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 – 4, 6 – 8 are rejected under 35 U.S.C. 103 as being unpatentable over Kawahara et al. (WO2004/087847A1) in view of Chen et al. (CN 106118817A)
In regards to claim 1, Kawahara teaches lubricating oil composition comprising an ester base oil such as dioctyl sebacate (abstract, page 41). The composition comprises antiwear/extreme pressure (EP) agents such as sulfurized fatty acids, sulfurized olefins, dialkyl disulfide, amine phosphate salts etc., at from 0.01 to 10% (page 43, 44). The composition is useful as engine oil, gear oil, transmission oil etc. (specification). Kawahara does not particularly recite each of the specific ingredients at the claimed amounts.
Chen teaches additives which are useful in lubricating oils such as engine oils, gear oils etc., similar to Kawahara, and comprising hexadecyl calcium borate (T362) at from 0 to 0.96%, dialkyl pentasulfide (Rc2540) at from 0 to 0.48% (abstract). The composition can similarly comprise phosphorus extreme pressure agent such as amine phosphate (specification). Thus, it would have been obvious for persons of ordinary skill in the art at the time the claim was filed to have used the additives of Chen, and in the recited amounts, in the composition of Kawahara, as Chen recites useful antiwear and EP additives for similar oils.
Alternatively, in further view of Barton et al. (EP 3 487 965 B1) which similarly teaches engine oils which can comprise rust inhibitors comprising hydrocarbyl amine salts of alkylphosphoric acid, and which can be present in amounts of from 0.02 to 0.2%, the claim is obvious [Barton, 0191, 0197]. It would have been obvious for persons of ordinary skill in the art at the time the claims were filed to have used the amine phosphates of Barton in the composition of Kawahara, as Kawahara allows for the use of conventional additives such as rust inhibitors in the composition.
In regards to claim 2, Kawahara and Chen and/or Barton teach the composition wherein each of the antiwear/EP agents or their combinations are present at from 0.01 to 10% and thus provides the claimed limitations. Chen allows for the borate to be present at from 0 to 0.96%, the dialkyl pentasulfide to be present at from 0 to 0.48% which overlaps the claimed limitations.
In regards to claims 3, 4, Kawahara and Chen and/or Barton teach the composition having the sulfurized fatty acid which can be present at from 0.01 to 10% and the dialkyl pentasulfide which can be present at from 0 to 0.48%, and thus would be expected to provide ratios overlapping the claimed range. Similarly, the amine phosphate is independently present at from 0.02 to 0.2% and the borate is present at from 0 to 0.96% and thus provides ratios that overlaps the claimed range.
In regards to claim 6, Kawahara and Chen and/or Barton teach the composition having the claimed structure.
In regards to claims 7, 8, Kawahara and Chen teach the composition having the claimed ingredients in the claimed amounts and thus would be expected to provide similar properties as claimed. The product by process of preparing the oil is intrinsically provided by the oil itself.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art fails to particularly recite the octadecyloxy sulfonated nano calcium borate of the claim.
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771