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 18/252723 application originally filed May 12, 2023.
Amended claims 1,9 and 14-17, filed May 14, 2026, are pending and have been fully considered. Claims 2-8 and 10-13 have been canceled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 14, 2026 has been entered.
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, 9, and 14-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imai et al. (US 2011/0183876) hereinafter “Imai” in view of Endo et al. (US 2009/0016652), Kakizaki et al. (US 2007/0099801) hereinafter “Kakizaki” and E. et al. (US 2018/0051227) hereinafter “E.”.
Regarding Claims 1, 9 and 14-17
Imai discloses in the abstract, a grease composition suitable for being packed in roll bearings to be lubricated at elevated temperatures and a bearing in which the above-mentioned grease composition is packed. In the grease composition containing a base oil, a urea-containing thickener and an additive, the additive includes an overbased metal sulfonate and the amount of the overbased metal sulfonate is 0.05 to 1.00 mass % with respect to the total amount of the grease composition. Imai further disclose in paragraph 0013, the overbased metal sulfonate has a total base number (TBN) of 50 to 500 mgKOH/g.
Imai discloses the grease composition comprises:
(a) a base oil including mineral and synthetic oils (see paragraph 0021);
(b) a diurea thickener (see paragraphs 0022, 0023 and 0048);
(c) molybdenum dithiocarbamate (see paragraph 0038);
(d) molybdenum dithiophosphate (see paragraph 0038);
(e) overbased calcium sulfonate (see paragraphs 0016-0018); and
(f) zinc sulfonate (see paragraph 0016).
It is to be noted, Imai discloses molybdenum dithiophosphate but fails to further disclose wherein the component (c) includes (c)-1 oil-soluble molybdenum dithiocarbamate being liquid at 25°C and (c)-2 oil-insoluble molybdenum dithiocarbamate being solid at 25°C.
It is known in the art to add molybdenum dithiocarbamate in solid and liquid to a grease oil composition comprising a base oil with a known kinematic viscosity, as taught by E.
It is known in the art to add molybdenum dithiocarbamate in oil-soluble and oil-insoluble form to a grease oil composition comprising a base oil, as taught by Kakizaki.
(I) E. discloses in the abstract, an improved grease composition for use in constant velocity joints, especially ball joints and/or tripod joints used in the drivelines of motor vehicles, with the grease composition comprising at least one base oil, at least one simple or complex soap thickener, at least one zinc sulphonate, at least one molybdenum dithiocarbamate in the solid state, and at least one molybdenum dithiophosphate.
E. discloses in paragraph 0033, further molybdenum containing compounds may be present in the grease composition according to the present disclosure of which molybdenum compounds comprising sulfur and/or phosphorous are preferred and organic molybdenum compounds comprising sulfur or/and phosphorous are further preferred. The grease composition according to the present disclosure preferably contains one or more of molybdenum dithiocarbamates (MoDTCs) in the solid state, but also may also contain at least one MoDTC in the solid state and at least one MoDTC in the liquid state.
E. discloses in paragraph 0015, wherein the ratio between the wt-% amount of the at least one zinc sulphonate and both the amount of the at least one molybdenum dithiocarbamate and the amount of the at least one molybdenum dithiophosphate is in a range between approximately 0.2:1 to approximately 2.5:1; wherein the total amount of the at least one zinc sulphonate, of the at least one molybdenum dithiocarbamate as well as of the at least one molybdenum dithiophosphate being 10 wt-% at the most, referring to the total amount of the grease composition; and wherein the at least one molybdenum dithiophosphate acts as a metal surface activator of at least the at least one zinc sulphonate.
E. discloses in paragraph 0069, the base oil composition as used for compositions, has a kinematic viscosity of about 165 mm2/s at 40° C. and about 16 mm2/s at 100° C.
(II) Kakizaki discloses in paragraph 0001, a grease composition for constant velocity joints and in particular, to a grease composition for constant velocity joints, suitably used in a fixed-type or slide-type constant velocity joint for automobiles.
Kakizaki discloses in paragraph 0010, a conventional grease compositions can efficiently be eliminated by incorporating, into a base oil, a combination of a specific diurea thickener, two kinds of specific organic molybdenum compounds, molybdenum disulfide, calcium phenate or calcium sulfonate and a specific extreme-pressure agent.
Kakizaki discloses in paragraph 0032, the foregoing molybdenum dialkyl dithiocarbamate insoluble in the base oil (hereafter simply referred to as “oil-insoluble MoDTC”) used as the component (c), the term “insoluble in the base oil (oil-insoluble properties)” used herein means that when the dialkyl dithiocarbamate is added to the base oil in a concentration of 0.5% by mass, insolubles remain in the base oil. Preferably, the term means that 98% by mass of the added component (c) remain as insolubles. When insolubles remain in the base oil, the resulting mixture is not transparent, but is in a colloidal state or a suspension, which can be observed with naked eyes.
Kakizaki discloses in paragraph 0034, the content of the oil-insoluble MoDTC or the component (c), on the basis of the total mass of the composition, falls within the range of, for instance, from 0.1 to 10% by mass and preferably 0.5 to 5% by mass.
Kakizaki further discloses in paragraph 0035, in respect of the foregoing molybdenum dialkyl dithiocarbamate soluble in the base oil (hereafter simply referred to as “oil-soluble MoDTC”) used as the component (d) in the present invention, the term “soluble in the base oil (oil-soluble properties)” used herein means that when the dialkyl dithiocarbamate is added to the base oil in a concentration of 0.5% by mass, insolubles do not remain in the base oil. Kakizaki discloses in paragraph 0036, the content of the oil-soluble MoDTC or the component (d), on the basis of the total mass of the composition, falls within the range of, for instance, from 0.1 to 10% by mass and preferably 0.5 to 5% by mass.
Kakizaki discloses in paragraph 0037, in this respect, a mixing ratio of the oil-insoluble MoDTC or the component (c) to the oil-soluble MoDTC or the component (d) preferably ranges from 5:95 to 95:5 as expressed in terms of the mass ratio.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art add the molybdenum dithiocarbamate of E. and Kakizaki to the grease oil composition of Imai. The motivation to do so is to use oil-soluble and oil-insoluble molybdenum dithiocarabmate in solid and liquid state in order to aid in anti-friction properties in grease compositions for rolling bearing, a sliding bearing, a gear, a ball thread, a linear guide, a linear bearing, a cam, various joints, etc.
It is to be noted, Imai discloses in paragraph 0016, examples of the metal for overbased metal sulfonate that can be used in the invention include Ca, Na, Ba, Li, Zn, Pb, and the like but fails to teach if the overbased metal sulfonate is basic or neutral.
However, it is known in the art to use overbased calcium sulfonate and neutral metal sulfonates in a grease composition, as taught by Endo.
Endo discloses in the abstract, the lubricant composition comprises a base oil and an additive, which is at least one selected from the group consisting of an organic sulfonate, a carboxylate, a thiocarbamate and a thiophosphoric acid ester salt. The lubricant composition can effectively suppress hydrogen embrittlement-caused flaking of an element, such as a rolling bearing, a sliding bearing, a gear, a ball thread, a linear guide, a linear bearing, a cam and various joints in a high concentration hydrogen environment.
Endo further discloses in paragraph 0014, a preferable organic sulfonate is represented by the general formula (1). An organic sulfonate may be any of a neutral, basic or overbasic organic sulfonate. The basic or overbasic organic sulfonate is prepared by reacting an organic sulfonate with excess of calcium carbonate and/or magnesium carbonate. Although there is no particular restriction on the base number of an organic sulfonate (includes zinc and calcium), it is preferably from 0 to 1,000 mg KOH/g.
Endo discloses in paragraph 0016, preferable specific examples include zinc dioctylnaphthalene sulfonate, calcium dioctylnaphthalene sulfonate, ammonium dioctylnaphthalene sulfonate, zinc dinonylnaphthalene sulfonate, calcium dinonylnaphthalene sulfonate, ammonium dinonylnaphthalene sulfonate, zinc didecylnaphthalene sulfonate, calcium didecylnaphthalene sulfonate, ammonium didecylnaphthalene sulfonate, zinc petroleum sulfonate, calcium petroleum sulfonate, ammonium petroleum sulfonate and overbasic calcium alkylbenzene sulfonate.
Endo discloses in paragraph 0027, the lubricant composition is liquid or semi-solid and contains preferably 65% by mass or more of the thickening agent and 0.5 to 20 mass-% of at least one additive selected from the group consisting of an organic sulfonate, a carboxylate, a thiocarbamate and a thiophosphoric acid ester salt.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to use the disclosed amount of overbased calcium sulfonate and neutral zinc sulfonate of Endo in the combination of sulfonates of Imai. The motivation to do so is to use a metal sulfonate that aids in suppressing hydrogen embrittlement-caused flaking of a rolling bearing, a sliding bearing, a gear, a ball thread, a linear guide, a linear bearing, a cam, various joints, etc.
Imai discloses in paragraph 0022, the urea-containing thickener used in the invention includes all the urea-based thickeners including diurea. Particularly preferable diurea thickeners may be represented by the following formula (1):
R1NH—CO—NH—R3—NH—CO—NHR2 (1)
wherein R1 and R2, which may be the same or different, represent an alkyl group having 6 to 30 carbon atoms, an aryl group having 6 or 7 carbon atoms, or cyclohexyl group; and R3 is a bivalent organic group, for example, —C6H4—CH2—C6H4—, —C6H3(CH3)— or the like. Imai discloses in paragraph 0023, the diurea thickener as mentioned above can be obtained by a reaction of an alkyl monoamine such as octylamine, stearylamine, dodecylamine, hexadecylamine or the like, an aryl monoamine such as aniline, p-toluidine or the like, a monoamine such as cyclohexylamine or the like with a diisocyanate such as diphenylmethane-4,4′-diisocyanate, 2,4-tolylene-diisocyanate, 2,6-tolylene-diisocyanate or the like. The most preferable thickener is a diurea compound represented by formula (I) wherein R1 and R2, which may be the same or different, represent an alkyl group having 6 to 30 carbon atoms or cyclohexyl group; and R3 is —C6H4—CH2—C6H4— or —C6H3(CH3)—.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed May 14, 2026 have been fully considered but they are not persuasive.
Applicants argued: “Imai et al. fails to teach or suggest the presently claimed grease composition comprising, among others, component (f) and there would have been no motivation to include component (f).”
Applicants arguments are not deemed persuasive. As stated in the above rejection, Imai is not relied upon to teach component (e) and (f) of the presently claimed invention. However, it is known in the art to use overbased calcium sulfonate and neutral metal sulfonates in a grease composition, as taught by Endo. Therefore, it is maintained Imai modified by Endo discloses component (e) and (f) of the presently claimed invention. Additionally, the present claims are directed to comprising. Applicants open-ended claim language “comprising” allows for the addition of other additives to the composition such as those set forth in the prior art.
Applicants argued: “The presently claimed invention is patentable because it provides unexpected results. The specification of the present application demonstrates in Examples unexpectedly superior results which can be achieved in the presently claimed invention.”.
Applicants arguments are not deemed persuasive. Applicants also argue that examples and comparative examples defined in the specification. The examiner acknowledges these results, however, the examples are insufficient to overcome the above rejection because (1) applicants have not compared the claimed invention to the teachings of the reference(s) and (2) the examples are not commensurate in scope with the claims because the examples are directed to specifics not literally defined by the claims, for example, the examples use specific amounts, specific sulfonates and a specific oil blend which are all not commensurate in scope with claim 1 at least. The examples no way allow the examiner to determine a trend for the results for any and all amounts of additive. Evidence of unexpected results must be clear and convincing. In re Lohr 137 USPQ 548. Evidence of unexpected results must be commensurate in scope with the subject matter claimed. In re Linder 173 USPQ 356.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kuwabara et al. (US 2006/0068996) discloses in paragraph 0009, a grease composition for use in high contact pressure ball type constant velocity joints which has an excellent pitting-inhibitory effect as compared with conventional grease compositions for constant velocity joints, and ball type constant velocity joints containing the grease composition.
Yamazaki (US 2015/0247105) discloses in the abstract, a grease composition for constant velocity joints which comprises the following components: (a) a base oil, (b) a thickener, (c) a montan wax, (d) a zinc sulfonate, and (e) a sulfurized molybdenum dialkyldithiocarbamate.
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 on 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
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