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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 5/14/2026 has been entered.
Response to Amendment
Applicant’s response filed 5/14/2026 amended claims 30, 50 and 53-54. Applicant’s amendments in light of their arguments do not overcome the 35 USC 103 rejection over Abraham in view of Ng from the office action mailed 1/15/2026; therefore, this rejection is maintained below.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55 in the filing on 4/1/2026.
Information Disclosure Statement
The information disclosure statement filed 5/14/2026 fails to comply with 37 CFR 1.98(a)(3) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each patent listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
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 30-60 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).
The combination of references do not disclose the thermal-conductivity limitation recited in claim 30.
It is the position of the examiner that this property would have been inherent in the modified composition of Abraham/Ng as the modified composition explicitly discloses the compound limitations of claim 30.
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claims 54-60, see discussion above.
Response to Arguments
Applicant’s arguments filed 5/14/2026 regarding claims 30-60 have been fully considered and are not persuasive.
Applicant argues that the combination of references do not recite the thermal-conductivity limitation recited in the instant claims. This argument is not persuasive for the reasons discussed above.
It is the position of the examiner that moving forward applicant should consider arguing unexpected results and amend the claims in a manner that is commensurate in scope with the data provided from the Tables of the instant specification.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 5712726381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771
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