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 .
In an interview discussion dated 02/19/2026, applicant’s representative noted that the final rejection recited amounts of 0.1 to 2% of the ZDDP rather than 1 to 2% as claimed, and that the claims are thus commensurate in scope. However, the argument has been considered but was not found to be persuasive and the previous rejections will be maintained, but not made final on the first office action to allow the applicant to respond.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/13/2026 has been entered.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 1, 4, 6 are rejected under 35 U.S.C. 103 as obvious over Mikuriya et al. (JP 2007-327638A) and alternatively further in view of Amari et al. (CN 107406793)
In regards to claim 1, Mikuriya teaches a clutch containing rolling bearing with inner and outer rings having a plurality of rolling elements (i.e., engagement elements that rotates) lubricated by a grease composition having poly-a-olefin and ether base oils, 1.5 to 3% of sodium molybdate, 0.5 to 1.5% of zinc dithiophosphate and 1 to 3% of sodium sebacate additives, and an aromatic diurea thickener [0014 – 0019, and 0027]. The diurea is a reaction product diisocyanate and monoamines such as alicyclic and aliphatic monoamines or aromatic monoamine [0040 – 0044]. While the specific zinc dithiophosphates are not recited, the use of primary dialkyl zinc dithiophosphates in oil are well known and would have been obvious. Alternatively, at least in view of Amari, the claim is taught.
Amari teaches similar rolling bearing greases comprising zinc dialkyl dithiophosphates which can comprise a primary or secondary alkyl group having from 1 to 24 carbon atoms, and thus allows for use of zinc primary alkyl dithiophosphates alone as claimed [0053]. Amari also suggests using thickening agents in amounts of from 5 to 25% in the grease [0045]. Persons of ordinary skill in the art at the time the claims were filed would have found it obvious to have used the zinc dithiophosphate compound of Amari in the composition of Mikuriya, as Amari teaches suitable zinc dithiophosphate compounds for the rolling bearing grease.
Also, it would have been obvious for persons of ordinary skill in the art at the time the claims were filed to have used thickeners in the amounts recited by Amari in the composition of Mikuriya, as Amari suggests suitable amounts of thickening agents in the grease for rolling bearings.
In regards to claims 4, 6, Mikuriya and alternatively further in view of Amari teach the composition and grease sealed bearing having the grease as claimed.
Response to Arguments
Applicant's previous arguments were been fully considered but they were not found to be persuasive.
Applicant previously argued that Mikuriya teaches zinc dithiophosphate which are different from zinc primary alkyl dithiophosphate, and examiner provides no motivation for using them to replace the zinc dithiophosphate of Mikuriya. The argument is erroneous.
Zinc primary alkyl dithiophosphate is a zinc dithiophosphate. Also, Amari was particularly added to zinc primary alkyl dithiophosphates of the claim. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant previously argued that Mikuriya is drawn to one-way clutch grease while Amari is drawn to a grease for rolling bearings, and thus are different applications. The argument is not persuasive.
Both references are drawn to greases for rolling bearings and both teach zinc dithiophosphate antiwear compounds. Amari was merely added to recite zddp useful in lubricants such as greases for rolling bearings. Zddps are conventional used in lubricants and greases for various applications as multifunctional antiwear, antioxidant additive and the use of the zddp of Amari in the grease of Mikuriya would be obvious.
Applicant previously argued Mikuriya does not teach the anti-premature separation performance of the claims. The argument is not persuasive.
The claims are drawn to compositions and Mikuriya in view of Amari teach the grease composition and the claimed ingredients and would be expected to have similar properties. Also, Mikuriya does not have to recite the same intended use as the claims. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., anti-premature separation) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). To the extent that applicant relies on a demonstration of unexpected results, as previously recited on the record, the argument is not persuasive.
The inventive examples are not commensurate in scope.
While the claims allow for each of the sodium molybdate and the zinc alkyldithiophosphates to be present at 1 to 2% respectively, the inventive examples require 1 to 2% of the dithiophosphate and 2% of the molybdate which does not support the breadth of the claims nor demonstrate criticality at the lower concentration of the claimed range, and which is one order of magnitude lower.
While the claims recite a C1 to C30 alkyl primary alkyl zinc dialkyl dithiophosphate, the inventive examples are drawn to a specific primary alkyl zinc dialkyl dithiophosphate which does not support the breadth of the claims.
Therefore, applicant has failed to provide inventive examples that are commensurate in scope with the claims and demonstrates unexpected results sufficient to rebut the case of obviousness.
The results are not persuasive.
The results appear to merely indicate intrinsic differences of the performance of primary alkyl versus secondary alkyl ZDDP. There is no demonstration of base formulations to show what would have been expected and why the superior performance of one type of ZDDP over another would be unexpected.
Thus, applicant fails to provide inventive examples that are commensurate in scope with the claims and that demonstrate results sufficient to rebut the case obviousness.
Previously applicant argued that Mikuriya and Amari are non-analogous and there would be no reason to combine them. The argument was not persuasive.
Both compositions are drawn to grease for rolling bearings and thus allows for using similar additives. Also, both Mikuriya and Amari teach zddp useful as antiwear compounds and thus the interchangeable use of antiwear known for grease makes the combination obvious.
Applicant previously argued that Mikuriya fails to teach the claimed zinc dithiophosphate and Amari fails to teach the claimed thickener. The argument was not persuasive.
While Mikuriya does not recited the specific zinc dithiophosphate of the claim, Amari teaches it. Similarly, Mikuriya teaches the claimed thickener. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues about other ingredients that Amari does not teach. The arguments are not persuasive.
The rejections were made over Mikuriya. Amari was merely added to teach suitable zddp antiwear for greases similar to the grease of Mikuriya. Therefore, the arguments are piecemeal analysis of the references and are moot as previously discussed on record.
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771