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 05/26/2026 has been considered and entered. The response has been considered but was not found to be persuasive. Therefore, the previous rejections are maintained.
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.
Claim 1 is 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. Since the claimed ingredients are taught, similar properties of the claimed grease would be expected.
Response to Arguments
Applicant's previous arguments have been fully considered but they were not found to be persuasive.
Applicant previously argued that Mikuriya does not teach the specific ZDDP having 8 to 16C nor recite the claimed flaking resistance. The argument is not persuasive.
Mikuriya in view of Amari combined teach primary alkyl ZDDP having carbon numbers overlapping the claimed range and thus would be expected to provide similar properties.
Applicant argues that Amari fails to exclude zinc dialkyldithiophosphate from the claimed grease while Mikuriya requires the inclusion of zinc dialkyldithiophosphate. The argument is not persuasive.
The claimed composition does not exclude ZDDP. It only excludes secondary alkyl ZDDP. Mikuriya and Amari teach the presence of ZDDP which can be primary or secondary alkyl as claimed. Since either primary or secondary is useful, it can be primary alkyl ZDDP alone which makes the claims obvious.
Applicant again argues 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 again argues that Mikuriya does not teach the anti-premature separation performance of the claims. The argument is not persuasive.
The claim is 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 claim allows 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 claim recites a C8 to C16 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 a single primary alkyl versus a single 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 previously argued about other ingredients that Amari does not teach. The arguments were 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
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 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