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 .
DETAILED ACTION
This Office action is based on the 17/641372 application originally filed November 15, 2023.
Amended claims 1-12, filed March 08, 2022, are pending and have been fully considered.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1, 2 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu (CN 109913306 A) hereinafter cited under English Translation in view of Nakatani et al. (US 2004/0186025) hereinafter “Nakatani”.
Regarding Claims 1 and 2
Lu discloses on page 1, a sealing grease composition and a preparation method thereof, and the sealing grease composition has excellent high temperature performance, acid gas medium performance and sealing performance, and can meet oil and gas field pipelines. And the lubrication and sealing of the valve.
Lu further discloses on page 1, a seal grease composition prepared from a feedstock comprising the following components: base oil 10 parts by weight to 90 parts by weight; a thickening agent of 1 part by weight to 20 parts by weight; 10 parts by weight to 40 parts by weight of the filler, wherein the is sepiolite and the thickening agent is selected from the group consisting of bentonite and/or silica gel.
Lu discloses on page 1, the base oil is preferably selected from one of PAO, polyethers and polyol ester or a variety. Lu further discloses on page 3, the 100 ° C kinematic viscosity of the polyol ester is preferably from 4 mm 2 /s to 100 mm 2 /s. The polyol ester is preferably one or more selected from the group consisting of trimethylolpropane ester, pentaerythritol ester, dipentaerythritol ester and trimellitic acid ester, more preferably trimethylolpropane ester.
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. There-fore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) MPEP 2112.01
It is to be noted, Lu discloses a grease composition comprising a base oil comprising trimellitic acid ester, thickener and a conductive additive comprising sepiolite and bentonite in the claimed amount.
However, Lu fails to further disclose the sepiolite or bentonite is treated with a cationic surfactant.
However, it is known in the art to treat sepiolite or bentonite with a cationic surfactant, as taught by Nakatani.
Nakatani discloses in paragraph 0055, the grease composition is a grease composition in which two different types of thickeners are used in combination, and the grease composition has many excellent performances. A large number of combinations of two types of thickeners can be conceived, but, as a first thickener, a fluoro resin is used. That is to say, the grease composition is a grease composition comprising a base oil and a thickener, wherein the above thickener consists of a fluoro resin and a second thickener component. Nakatani discloses in paragraph 0056, as the second thickener component, a metallic soap, a complex metallic soap, an N-substituted terephthalamic acid metal salt, organic bentonite, a calcium sulfonate complex or carbon black is used. Nakatani discloses in paragraph 0161, organic bentonite used as a thickener (second thickener component) together with a fluoro resin is one type of colloidal clay which is naturally produced, and it is obtained by treating bentonite that is ferro silicate (laminar silicate) such as montmorillonite with a cationic surfactant. When bentonite is treated with a cationic surfactant, organic molecules are adsorbed between the crystalline layers of the bentonite so as to obtain lipophilic organic bentonite which swells well in an organic liquid in the presence of a polar dispersing agent. Nakatani discloses in paragraph 0165, organic bentonite may be synthesized separately and then dispersed in a base oil, or may be dispersed in the base oil by synthesis in the base oil. However, since the thickener is better dispersed in a base oil by the latter method, when the thickener is industrially produced, the latter method is advantageous.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to treat the bentonite of Lu with the cationic surfactant of Nakatani. The motivation to do so is to treat sepiolite or bentonite with a cationic surfactant to obtain lipophilic organic bentonite which swells well in an organic liquid in the presence of a polar dispersing agent.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding Claim 9
Regarding the composition claims, the phrase “a rolling bearing in which the grease composition is enclosed” is intended use and is not considered to be a claim limitation. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCPA 1963).
Claim(s) 3-8 and 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu (CN 109913306 A) hereinafter cited under English Translation in view of Nakatani et al. (US 2004/0186025) hereinafter “Nakatani” and further in view of Okamura et al. (US 2007/0072777) hereinafter “Okamura”.
Regarding Claims 3-8 and 10-12
Lu discloses on page 1, a seal grease composition prepared from a feedstock comprising the following components: base oil 10 parts by weight to 90 parts by weight; a thickening agent of 1 part by weight to 20 parts by weight; 10 parts by weight to 40 parts by weight of the filler, wherein the is sepiolite and the thickening agent is selected from the group consisting of bentonite and/or silica gel.
Lu modified by Nakatani fails to further disclose the grease composition comprising a diurea thickener wherein the diurea is represented by the claimed structural formulas (1), (2) and (3).
However, it is known in the art to add the diurea represented by the structural formulas (1), (2) and (3) to a grease composition, as taught by Okamura.
Okamura discloses in paragraph 0010, a grease composition for a pivot assembly bearing, which comprises: a thickener of 5 to 25 % by mass and a base oil of 95 to 75 % by mass with respect to the total mass of the thickener and the base oil.
Okamura discloses in paragraph 0012, the urea A (comprising the diurea compounds having an aliphatic (ALA)/alicyclic (ACA) substituent) may comprise the diurea compounds represented by the formulae (1) to (3):
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391
598
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wherein R1 represents an aliphatic hydrocarbon group having 8 to 22 carbon atoms, and R2 represents an alicyclic hydrocarbon group having 6 to 12 carbon atoms.
Okamura further discloses in paragraph 0013, the urea B (comprising the diurea compounds having an alicyclic (ACA)/aromatic (ARA) substituent) may comprise the diurea compounds represented by the formulae (2), (4) and (5):
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431
644
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wherein R2 represents an alicyclic hydrocarbon group having 6 to 12 carbon atoms, and R3 represents an aromatic hydrocarbon group having 6 to 20 carbon atoms.
Okamura disclose in paragraph 0040, a pivot assembly bearing, a lead free additive may be used as an additive. Examples of such an additive include oxidation inhibitors not including a lead atom, and rust-preventive agents not including a lead atom.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to add the diurea represented by the structural formulas (1), (2) and (3) of Okamura to the grease composition of Lu. The motivation to do so is to add known thickeners to a grease composition in order to aid in favorable torque properties and flow properties in a low temperature range for a pivot assembly bearing.
Response to Arguments
Applicant’s arguments directed to the newly submitted claimed amendments, filed August 14, 2026, with respect to the rejection(s) of claim(s) 1-12 under Lu (CN 109913306 A) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Lu (CN 109913306 A) in view of Nakatani et al. (US 2004/0186025).
It is to be noted, Applicants stated in their remarks, filed August 14, 2026, “The Office Action cover page incorrectly indicates that the Application Filing Date is November 15, 2023. The correct Application Filing Date is March 8, 2022. Applicant respectfully requests this information be corrected in the USPTO system”.
To make correction of “filing date”, Applicants must call “USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hasegawa et al. (US 5,854,183) discloses in the abstract, a grease composition for constant-velocity joints which is prepared by blending a lube base oil with (A) a urea-urethane thickening agent comprising a mixture of (a) 20 to 95 mole % of a diurea compound of the formula (1) (b) 4 to 50 mole % of a urea-urethane compound of the formula (2) and (c) 1 to 50 mole % of a diurethane compound of the formula (3) with each mole percentage being based on the total amount of the components (a) to (c), wherein a ratio of the total number of R2-NH-, R3-NH- and R5-NH- groups contained in the mixture to the total number of R6-O-, R8-O- and R9-O- groups contained therein lies between 40:60 and 95:5, (B) at least one compound selected from oxidized paraffins, diphenyl hydrogenphosphite and hexamethylphosphoric triamide, and (C) at least one organomolybdenum compound selected from molybdenum dithiophosphate and molybdenum dithiocarbamate.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 LATOSHA D HINES whose telephone number is (571)270-5551. The examiner can normally be reached Monday thru Friday 9:00 AM - 6:00 PM.
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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.
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/Latosha Hines/Primary Examiner, Art Unit 1771
