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 .
This Office action is in response to the amendment filed October 14, 2025 in which claim 1 was amended and claims 14-20 were added.
Applicant’s arguments, see remarks, filed October 14, 2025, with respect to the rejection(s) over Okaniwa and over Jisheng E under 35 USC 103 have been fully considered and are persuasive. Applicant has also amended the claims. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the references set below.
Applicant is advised that should claim 19 be found allowable, claim 20 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 102
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 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.
Claim 14 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 708172 (appears on current PTO-892).
EP ‘172 teaches a grease composition for constant velocity joints comprising (a) a base oil; (b) a lithium containing thickener (simple or complex); (c) an organic molybdenum dithiocarbamate (d) ZnDTP; (e) extreme pressure agents; and (f) calcium sulfonate (see page 2, paragraphs 0005 and 0008).
EP ‘172 teaches 60-96 wt % base oil; 0.5-10 % of the Mo compound; 0.1-5 % ZnDTP; 0.5-5 % Ca sulfonate (see page 4, paragraph 0022) and more than 2% but less than 15% of the thickener (see page 4, paragraph 0023). See also Example 1 and Table 1.
Accordingly, EP ‘172 meeting all the material limitations of the claim, anticipates the claim.
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.
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over EP708172.
EP has been discussed above. EP ‘172 does not specifically exemplify a grease composition wherein all of the components and proportions are present. However, it would have been obvious to one of ordinary sill in the art to prepare the grease composition as set forth in the claims because EP ‘172 teaches all of the claimed components and the overlapping proportions of these components. 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 1574, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 1, 8-10, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over EP 708172 in view of Jisheng E (US 2010043183) and JP 2010043183). (EP appears on present PTO-892 and Jisheng E and JP appear on previous PTO-1449 and PTO-892.)
EP ‘172 teaches a grease composition for constant velocity joints comprising (a) a base oil; (b) a lithium containing thickener (simple or complex); (c) an organic molybdenum dithiocarbamate (d) ZnDTP; (e) extreme pressure agents; and (f) calcium sulfonate (see page 2, paragraphs 0005 and 0008).
The base oil may be mineral oil or synthetic oils or mixtures thereof (see page 11, paragraph 3). The thickener may be lithium soaps such as lithium soaps of 12-hydroxystearic acid and lithium complex soaps, such as 12-hydroxystearic acid and azelaic acid ( page 3, paragraph 0012). The molybdenum compound is as discussed above. EP ‘172 teaches that ZnDTP is an extreme pressure agent (see page 3, paragraph 0014). The calcium sulfonate may be calcium salts of petroleum sulfonates or calcium salts of alkylaromatic sulfonates (see page 3, paragraph 0016). The grease may optionally comprise a corrosion inhibitor (see page 4, paragraph 0023).
EP teaches 60-96 wt % base oil; 0.5-10 % of the Mo compound; 0.1-5 % ZnDTP; 0.5-5 % Ca sulfonate (see page 4, paragraph 0022) and more than 2% but less than 15% of the thickener (see page 4, paragraph 0023). In paragraph 0029, EP ‘172 teaches a mineral oil as the base oil having a viscosity of 60.6 mm2/s (at 40 C). EP meets the limitations of the claims other than the differences that are set forth below.
EP ‘172 teaches using a synthetic oil but does not specifically teach that the oil is a polyalphaolefin. However, Jisheng E teaches this difference.
Jisheng E teaches a grease composition comprising a base oil, thickener and molybdenum dithiocarbamate (see abstract; para 0010-0014). The oil may be a mineral oil or a synthetic oil (polyalphaolefin) or a blend (see para 0025; 0026; 0035). The kinematic viscosity of the oils are between 32 and 250 mm2/s at 40 C (see para 0026-0027).
It would have been obvious to one of ordinary skill in the art to use polyalphaolefin oil or polyalphaolefin /mineral oil blend because EP ‘172 that the oil may be a mineral, synthetic or a blend and EP ‘172 uses a mineral oil which has a viscosity with the claimed range and within the range taught by Jisheng E. It should be noted that both EP ‘172 and Jisheng E are directed to greases for constant velocity joints.
EP ‘172 does not specifically teach the presence of a triazole based metal corrosion inhibitor. However, JP meets this limitation.
JP teaches a grease composition for constant velocity joints (see abstract; page 2, Tech Problem). The grease may contain conventional additives such as Ca sulfonate and thiadiazole rust inhibitors and triazole compounds such as benzotriazole as metal deactivators (see page 5, first, second and 5 paragraphs through lines 1-2 of page 6).
It would have been obvious to one of ordinary skill in the art to include the thiadiazole compounds or the benzotriazole in the grease composition because EP ‘172 desires these category of additives to further improve the grease composition.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over EP 708172 in view of Jisheng E (US 20180051227) and JP 2010043183 as applied to claims above, and further in view of EP 566326 (appears on present PTO-892).
EP ‘172, Jisheng E and JP ‘183 have been discussed above. The prior art does not teach a reducer filled with grease. However, EP ‘326 teaches that greases used in constant velocity joints may be used in automotive steering linkage, i.e., reducer (see abstract; page 4, last paragraph through page 5 lines 1-2).
It would have been obvious to one of ordinary skill in the art to fill a reducer for an electric power steering with the claimed grease because EP ‘326 teaches that these types of greases are used in constant velocity joints and may be used as well in automotive steering.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over EP 708172 as applied to claims above, and further in view of EP 566326.
EP ‘172 has been discussed above. The prior art does not teach a reducer filled with grease. However, EP ‘326 teaches that greases used in constant velocity joints may be used in automotive steering linkage, i.e., reducer (see abstract; page 4, last paragraph through page 5 lines 1-2).
It would have been obvious to one of ordinary skill in the art to fill a reducer for an electric power steering with the claimed grease because EP ‘326 teaches that these types of greases are used in constant velocity joints and may be used as well in automotive steering.
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.
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/CEPHIA D TOOMER/Primary Examiner, Art Unit 1771 17800614/20251211
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