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 .
The amendment dated 03/13/2026 has been considered and entered. The response has been considered but was not found to be persuasive. Therefore, the previous rejections are maintained.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/13/2026 has been entered.
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.
The claims recite compositions comprising mixture of polyalphaolefin and white mineral oil and mixture of naphthenic mineral oil and paraffinic mineral oil which is indefinite
Claims 17 – 22, 25, 26, 28, 29, 31 – 33, 35 are rejected under 35 U.S.C. 103 as being unpatentable over Knapton (WO 2014/047017) in view of Hartley et al. (WO 02/088284)
In regards to claim 17, Knapton teaches lubricating compositions such as greases, gear oils, axle oils, 2-stroke and 4-stroke engine oils etc. for devices such as gears etc. [0006, 0109]. The composition has base lubricating oil with kinematic viscosity at 100℃ of 15 mm2/s (cSt) or less [0005]. The composition can comprise an a-olefin copolymer of dicarboxylic acid ester from compounds or anhydrides such as maleic, fumaric, itaconic acids or anhydrides which are a,b-dicarboxylic acids or derivatives, at amounts of from 1.5 to 54% with base oil at from 5 to 98.2% and other additives at from 0 to 20% [0017, 0114]. The esters are prepared using linear or branched alcohols which are non-ethoxylated C1 to C150 alcohols [0029]. The copolymer has a ratio of a-olefin to ester at from 1:3 to 3:1 [0005].
Knapton does not recite the Kinematic viscosity of the ester-olefin copolymer. However, Hartley teaches 2-stroke and 4-stroke engine oils similar to Knapton (abstract). The composition similarly comprises olefin/dicarboxylic acid ester copolymer having a ratio of the a-olefin to the dicarboxylic acid of 1:9 to 9:1, and also having a kinematic viscosity of from 20 to 50 mm2/s and which functions as a lubricity agent (page 14 lines 5 – page 15 line 17). Thus, persons of ordinary skill in the art at the time of the invention would have found it useful to have added the olefin-dicarboxylic acid copolymer of Hartley in the composition of Knapton, as Knapton allows for the use of the same polymers and since Hartley teaches that they are useful as lubricity agents.
Knapton teaches the base oil can be blends of mineral, i.e., paraffinic, naphthenic or mixed paraffinic and naphthenic oils with synthetic oils such as polyalphaolefins [0009]. Since the composition has a base oil with Kv100 of 15 cSt or less, and a copolymer having Kv100 of 35 to 8000 cSt at amounts of 5 to 98.2% and 1.5 to 54% respectively, the Kv40 of the copolymer would be expected to overlap the claimed range.
Nakatani et al. (US 2003/0176298) teaches greases useful for gears comprising thickeners at amounts of from 1 to 40% which comprises 5 to 95% of overbased calcium sulfonates [0015, 0053, 0055 and 0265]. Thus, alternatively, at least in view of Nakatani, it would have been obvious for persons of ordinary skill in the art at the time the claims were filed to have used calcium sulfonates and, in the amounts, recited by Nakatani for preparing the grease of Knapton, as Nakatani teaches suitable thickener and their amounts for preparing greases.
While Knapton does not particularly recite the grease consistency, the consistency of normal greases is about 265 to 295 and thus would be obvious.
In regards to claim 18, Knapton in view of Hartley and Nakatani teaches the composition. Knapton teaches the grease wherein the a-olefin of the copolymer have from 3 to 20 carbon atoms [0049].
In regards to claim 19, Knapton in view of Hartley and Nakatani teaches the composition. Knapton teach the grease having the claimed dicarboxylic acid as previously discussed.
In regards to claims 20, 21, Knapton in view of Hartley and Nakatani teaches the composition. Knapton teaches the grease having the claimed alcohol as previously stated. Butanol is a C4 linear alcohol.
In regards to claim 22, Knapton in view of Hartley and Nakatani teaches the composition. Knapton teaches the grease having the copolymer in amounts overlapping the claimed range.
In regards to claim 25, Knapton in view of Hartley and Nakatani teaches the composition. Knapton teaches the grease having base oil in amounts overlapping the claimed range as previously stated.
In regards to claim 26, Knapton in view of Hartley and Nakatani teaches the composition. Nakatani teaches the calcium sulfonate thickener is overbased.
In regards to claim 28, Knapton in view of Hartley and Nakatani teaches the composition. Knapton teaches the presence of conventional additives of the claims [0054].
In regards to claim 29, Knapton in view of Hartley and Nakatani teaches the composition. Knapton teaches the composition can comprise polymeric dispersants, i.e., having polyisobutylenes [0055, 0057].
In regards to claim 31, Knapton in view of Hartley and Nakatani teaches the grease composition having the claimed additives as previously stated. Thus, when the claimed ingredients are mixed to provide the grease, the method of improving the adhesivity of a grease is intrinsically performed.
In regards to claim 32, Knapton in view of Hartley and Nakatani teaches the composition and mechanical devices using the same such as gears etc., as previously stated.
In regards to claims 33, 35, Knapton in view of Hartley and Nakatani teaches the composition having the claimed limitations as previously stated.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues there is no reason to combine Knapton with Nakatani and/or Hartley because Knapton fails to teach a grease composition, fails to teach specific amounts of base oil that may be included in a grease composition, or particularly suggest the presence of calcium sulfonate soap, or the two thickeners of Nakatani. The argument is not persuasive.
While Knapton does not particularly recite thickeners, greases are conventionally prepared by mixing oils with thickeners and thus the presence of thickeners are implied or at least obvious in the grease of Knapton. As, Knapton does not limit the types of thickeners useful for preparing the grease, the combination of thickeners of Nakatani would be useful and at the suggested amounts.
Applicant argues that the claimed composition exhibits unexpectedly superior performance in adhesiveness and maintaining consistency in the presence of significant amounts of water. The argument is not persuasive.
The inventive examples are not commensurate in scope with the claims.
While the claims blends of polyalphaolefin (PAO) and white mineral oil or blends of naphthenic mineral oil and paraffinic mineral oil each at any suitable amount at up to about 60%, so long as the combined amounts of the oil pairs are from 40 to 60%, the inventive examples strictly require that the PAO is present at about 28 to about 30%, white oil at 14.5 to 15.5%, naphthenic oil at 27.8% and paraffinic oil at 27.1% which does not support the breadth of the claims.
While the claims recite dicarboxylic acid ester copolymer having olefin to ester ratios of from 0.5 to 4, the inventive examples require a compound having a specific olefin to ester ratio.
While the claims (except for claim 25) allows the dicarboxylic acid ester copolymer to be present at 8 to 10% in the composition, the inventive examples require their presence at 8.3 to 8.8%, which does not support the breadth of the claims nor demonstrate criticality of the claimed range.
The results are not persuasive.
Applicant compares the inventive composition having the dicarboxylic acid ester with comparative examples that do not contain the ester and allege that the improvement stemming from the sole presence of the dicarboxylic ester demonstrates unexpected results. The results appear to be additive and not unexpected.
Thus, applicant fails to provide inventive examples that are commensurate in scope with the claims for demonstrating unexpected results sufficient to rebut the case of obviousness.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAIWO OLADAPO whose telephone number is (571)270-3723. The examiner can normally be reached 8-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
Prosecution Insights