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 .
Response to Amendment
Applicant’s response filed 12/8/2025 amended claim 37. Applicant’s amendment overcomes the claim objection from the office action mailed 9/8/2025; therefore, this objection is withdrawn. Applicant’s arguments do not overcome the 35 USC 103 rejection over Abraham in view of Ng from the office action mailed 9/8/2025; therefore, this rejection is maintained below.
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.
Claims 30-54 are rejected under 35 U.S.C. 103 as being unpatentable over Abraham et al., International Publication No. WO2019/036285 (hereinafter referred to as Abraham – for citation purposes US Patent Application Publication No. 2020/0216774 is being used) in view of Ng et al., US Patent Application Publication No. 2017/0183595 (hereinafter referred to as Ng).
Regarding claims 30-53, Abraham discloses automatic transmission of a hybrid electric vehicle, providing gear wear reduction (as recited in claim 30) (see Title and Para. [0002]); comprising a base oil or mixture of Group II-IV base oils (as recited in claim 30 and reads on claim 31) (Para. [0019]) and esters formed from monohydric Guerbet alcohols and carboxylic acids (Para. [0068]-[0072]).
Abraham discloses all the limitations discussed above but does not explicitly disclose the ester reaction product recited in instant claim 30.
Ng discloses a lubricating oil composition for improving traction control in gears (see Abstract and Para. [0183]) comprising a base oil or mixture of base oils (Para. [0074]-[0090]) to which is added 5-50 wt% of esters as base stock or cobase stocks, including 2-butyloctylhexanoate, 2-butyloctyl dodecanoate, and 2-octyldodecyl heptanoate (as recited in claim 30 and reads on claims 32-37, 40 and 50-53) (see Example 7Figure 1 and Para. [0033]-[0038] and [0119]) which can be formed by acids including; such as, branched acids, stearic, isostearic and sebacic acids (as recited in claims 37-49) (Para. [0046], [0052] and [0079]). It would have been obvious to one of ordinary skill in the art at the time of the invention to use the ester compounds of Ng in the composition of Abraham in order to enhance the low viscosity low volatility properties, (2) good high-temperature thermal and oxidative stability, (3) good solvency for polar additives, (4) good deposit control, and (4) traction benefits (Para. [0031] of Ng).
Regarding claim 54, see discussion above.
Response to Arguments
Applicant’s arguments filed 12/8/2025 regarding claims 30-54 have been fully considered and are not persuasive.
Applicant argues that the esters of Abraham do not read on the instant claims and that the ester compounds of Abraham serve a particular function in the Abraham lubricant compositions and therefore cannot be substituted for the Ng ester compounds.
This argument is not persuasive in overcoming the obviousness rejection set forth above over Abraham in view of Ng. Ng is introduced for the disclosure of ester compounds which are not being substituted for the ester compounds of Abraham. The ester compounds which read on the instant claims is being added to the composition of Abraham as is discussed in the rejection above, because the ester compounds of Ng are known for providing benefits including the low viscosity low volatility properties, (2) good high-temperature thermal and oxidative stability, (3) good solvency for polar additives, (4) good deposit control, and (4) traction benefits.
The fact that Ng does not disclose these ester compounds for use in the gear box of an electric vehicle does not obviate the obviousness rejection as this limitation is disclosed in Abraham and the two references are in analogous arts wherein the motivation to combine the references comes from the Ng reference itself.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771
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