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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 10, 2026 has been entered.
This Office action is in response to the amendment filed June 10, 2026 in which claims 1 and 14 were amended.
The rejections of the claims under 35 USC 102 and 35 USC 103 are withdrawn in view of the amendment to the claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 and its dependents are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
It is not clear if the rust inhibitor and the corrosion inhibitor are present in the grease. Applicant recites that the additives are optional and has not positively recited that the additives are present. The recitation of the specific compounds for these additives, in the absence of a positive statement, renders the claim confusing. Clarification is required.
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 1, 8-10 and 14-17are rejected under 35 U.S.C. 103 as being unpatentable over JP 4048758 (appears on the present PTO-892).
JP teaches a lubricating grease composition used in a range of high temperature conditions, high loads, and high speeds (see para 0001). The grease contains a base oil which may be a polyalphaolefin having a kinematic viscosity of 10-500 mm2/s, and a thickener (see para 0006 and 0010). The thickener may be a metal soap, preferably lithium soaps such as complex soaps or lithium 12-hydroxystearate or mixtures (see para 0012-0013). The thickener is present in the grease in an amount from 1 to 50 % by wt (see para 0020).
The grease may contain conventional additives such as antioxidants, rust inhibitors, corrosion inhibitors and extreme pressure agents. The corrosion inhibitor may be benzotriazole, benzimidazole, thiadiazole and the like. The extreme pressure agent may be Mo dialkyldithiocarbamate and the rust inhibitor may be sulfonates (see para 0022).
JP teaches that the grease can be effectively applied to sliding parts such as bearings, gears, valves, oil seals and electrical contacts (see para 0023). In the list of grease components, JP recites a polyalphaolefin having a kV of 30 mm2/s (component b-1), thickeners 12-hydroxylithium stearate and complex soap of lithium 12-hydroxystearate and lithium azelate (compounds c-3 and c-4).
JP does not exemplify a grease wherein all of the claimed components are present. However, no unobviousness is seen in this difference because JP teaches that all of the claimed components may be used in its grease. JP does not exemplify a grease containing zinc sulfonate or zinc dithiophosphate.
With respect to the amount of Mo dithiocarbamate, a prima facie case of obviousness exists because it would have been obvious to one of ordinary skill in the art to optimize the proportions of the Mo dithiocarbamate through routine experimentation for the best results. As to optimization of results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CEPHIA D TOOMER whose telephone number is (571)272-1126. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6368. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CEPHIA D TOOMER/Primary Examiner, Art Unit 1771 17800614/20260918
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