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 .
Information Disclosure Statement
The listing of references in the PCT international search report is not considered to be an information disclosure statement (IDS) complying with 37 CFR 1.98. 37 CFR 1.98(a)(2) requires a legible copy of: (1) each foreign patent; (2) each publication or that portion which caused it to be listed; (3) for each cited pending U.S. application, the application specification including claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion, unless the cited pending U.S. application is stored in the Image File Wrapper (IFW) system; and (4) all other information, or that portion which caused it to be listed. In addition, each IDS must include a list of all patents, publications, applications, or other information submitted for consideration by the Office (see 37 CFR 1.98(a)(1) and (b)), and MPEP § 609.04(a), subsection I. states, “the list ... must be submitted on a separate paper.” Therefore, the references cited in the international search report have not been considered. Applicant is advised that the date of submission of any item of information in the international search report will be the date of submission of the IDS for purposes of determining compliance with the requirements for the IDS with 37 CFR 1.97, including all timing statement requirements of 37 CFR 1.97(e). See MPEP § 609.05(a).
The listing of references in the specification is also not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Objections
Claim 1, 5, 6, 8, 9, 11 and 13 is objected to because of the following informalities:
Claim 1, line 10, “that” and lines 12, 13, 15, 17, 18, 20 and 22 “that is applied to said seal lip” can be deleted. There is only one grease that appears to be positively recited by the claim and thus distinguishing it as “that” which is applied to a particular location is not necessary. If Applicant wants to positively claim two distinct greases, a bearing grease and a sealing grease should both be positively recited, then the “that is applied to said seal lip” distinction would be necessary but without a second grease positively recited the recitation is not necessary. If the intent is for the grease of the preamble to be the bearing grease then there would be a lack of antecedent basis issue for “said grease that is applied” to the seal lip in line 10 as this would be the first recitation of the second distinct grease.
Pending the correction above the same “that is applied to said seal lip” recitation in claims 5, 6, 8, 9 and 11 can also be deleted if only one grease remains positively recited.
Claim 13 as currently presented also only includes one grease and is objected to for the same reasons as claim 1 above.
Claim 13, lines 4-5, the additional line spacing should be deleted and “a” in front of fixed side appears to have been deleted with no corresponding indication of the deletion, the “a” should still be present.
Claim 13 also includes additional additions that are not underlined, including the addition of the kinematic viscosity and the expanded range for the worked penetration. Applicant is reminded that all additions or changes to the previous claim must be tracked using proper annotating to indicate additions and deletions. In the future changes not properly tracked will result in a notice of non-compliance. It is further noted that while claims 13 and 9 now recited different worked penetration ranges, if claim 13 is changed back to the narrower range as original presented and no other changes are made claims 9 and 13 would be substantially duplicate of each other.
Appropriate correction is required.
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.
Claim(s) 1, 5-7 and 9-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shibata, USP 9,623,703, in view of Miwa, JP2019039470.
Regarding claim 1, Shibata discloses a sealed rolling bearing having a grease composition (15) sealed in a bearing space for lubrication (15 is within the lip region of the seals just like in the instant application and column 6 lines 14-21 also references bearing grease distinct from the sealing grease), said sealed rolling bearing comprising: a seal member (8 or 9) that seals the bearing space (space between 10 and 2/3); a fixed side member (10); and a rotating side member (2/3), wherein: the seal member (8 or 9) is fixed to the fixed side member (10) and is configured to be in sliding contact with the rotating side member (both seal elements are attached to the outer ring just like in the instant application, seal 9 also has a slinger element attached to the inner ring just like seal 11 in the instant application), the seal member has a seal lip (13 and 19) that is in sliding contact with the rotating side member, said grease (15) that is applied to at least one of a sliding contact surface of the seal lip and a sliding contact surface of the rotating side member with which the seal lip is in sliding contact, said grease that is applied to the seal lip contains a base oil and a thickener (see column 8, lines 32-48 and Table 1), said grease that is applied to the seal lip has a base oil with a kinematic viscosity at 40 °C of the base oil is 6-45 mm°/s (see column 8, lines 32-38 and Table 1 which discloses values as low as 20), the worked penetration of the grease that is applied to said seal lip measured based on JIS K 2220 is 220-320 (the recitation regarding the standard used for measuring work penetration does not limit the claim, Shibata discloses worked penetrations within this claimed range, column 8, lines 32-48, Table 1 and claim 1).
Shibata, while further disclosing that the thickener can be a urea compound (see Table 1), does not disclose that the thickener is specifically a urea compound that is obtained by causing a polyisocyanate component and a monoamine component to react with each other, and the monoamine component is at least one of aliphatic monoamine and alicyclic monoamine.
Miwa teaches a grease usable in bearings that includes a thickener in the form of a urea compound (see last full paragraph on page 5 of the previously provided translation) and with specific regards to the urea compound that the compound is obtained by reacting a polyisocyanate component with a monoamine component with the monoamine being an aliphatic monoamine or alicyclic monoamine (see paragraph spanning pages 5 and 6).
Shibata also further discloses that the base oil can include a synthetic oil (see column 9, lines 30-31) but does not specifically disclose that the base oil is only formed of synthetic hydrocarbon oil or a mixed oil of synthetic hydrocarbon oil and ester oil.
Miwa further teaches that a grease or a bearing can include base oil, specifically a synthetic hydrocarbon oil (PAO) alone or PAO and ester oil used together (see page 5 of the translation, paragraph beginning with “When the lubricant composition is used as a grease”).
It would have been obvious to one having ordinary skill in the art to modify Shibata and replace the grease with any other previously known bearing grease, including one that uses a urea compound obtained by reacting a polyisocyanate component with a monoamine component along with a base oil of only synthetic hydrocarbon oil or a mix of synthetic hydrocarbon oil and ester oil, as taught by Miwa, since substituting between different known greases provides the same predictable result of lubricating the sliding contact surfaces to reduce wear within the device.
Regarding claim 5, Shibata discloses that the kinematic viscosity at 40 °C of the base oil is 6-20 mm°/s, and the worked penetration of the grease that is applied to said seal lip is 220-270 (see Table 1, grease B), however Miwa also discloses at the bottom of page 5 and the middle of page 6 in the translation values within the same range or the specific grease blend being taught.
Regarding claim 6, Shibata further discloses that esters can be mixed in to avoid rust in column 10, lines 21-23, esters being an antirust agent, the worked penetration of the grease is 220-280 (the worked penetration disclosed by Shibata anticipates this range).
Regarding claim 7, Shibata discloses that the antirust agent is at least one of an ester-based antirust agent and a sulfonate-based antirust agent (column 10, lines 21-23 discloses both esters and sulfonates as antirust agents).
Regarding claim 9, Shibata in view of Miwa, as applied above, does not disclose that the grease contains an antioxidant, the grease contains 0.1 mass% or more and less than 3 mass% of the antioxidant relative to the total amount of the base oil and the thickener, and the worked penetration of the grease is 240-300.
Miwa further teaches that the bearing grease can contain an antioxidant in the range of 0.1-3 mass% with the worked penetration being in the claimed range (see the bottom of page 6 disclosing the antioxidant and the % range and the middle of page 6 which covers a worked penetration of 200-350).
It would have been obvious to one having ordinary skill in the art to modify Shibata and replace the grease with any other previously known bearing grease, including one with an antioxidant within the range of 0.1-3 mass % and a worked penetration within the range of 240-300, as taught by Miwa, since substituting between different known bearing greases provides the same predictable result of lubricating the sliding contact surfaces to reduce wear within the device.
Regarding claim 10, Shibata in view of Miwa discloses that the antioxidant is an amine-based antioxidant (see bottom of page 6 of Miwa).
Regarding claim 11, Shibata discloses that the seal member is formed of nitrile rubber (see column 8, lines 19-31, NBR is a nitrile rubber), the seal lip includes a first seal lip (13c or 19b), a second seal lip (13b or 19c) and a third seal lip (13a or 19a) in this order from an inner side of the bearing space, and the grease is applied to the sliding contact surface of each of the seal lips (the grease 15 contacts each seal lip).
Regarding claim 12, Shibata discloses that the sealed rolling bearing is configured as a bearing that rotatably supports an axle (the bearing is a wheel hub bearing, this is the same type of bearing illustrated in figure 1 of the instant application and thus the bearing of the prior art supports in axle in the same manner as in the instant application).
Regarding claim 13, Shibata discloses a sealed rolling bearing has a grease lubricant composition (15 or the bearing grease disclosed in column 6, lines 14-21) sealed in a bearing space comprising: a seal member (8 or 9) that seals the bearing space (space between 10 and 2/3); a fixed side member (10); and a rotating side member (2/3), wherein: the seal member (8 or 9) is fixed to the fixed side member (10) and is configured to be in sliding contact with the rotating side member (both seal elements are attached to the outer ring just like in the instant application, seal 9 also has a slinger element attached to the inner ring just like seal 11 in the instant application), the seal member has a seal lip (13 and 19) that is in sliding contact with the rotating side member, said grease (15) that is applied to at least one of a sliding contact surface of the seal lip and a sliding contact surface of the rotating side member with which the seal lip is in sliding contact with, the grease contains a base oil and a thickener (see column 8, lines 32-48 and Table 1) and that said grease that is applied to the seal lip has a base oil with a kinematic viscosity at 40 °C of the base oil is 6-45 mm°/s (see column 8, lines 32-38 and Table 1 which discloses values as low as 20), the worked penetration of the grease that is applied to said seal lip measured based on JIS K 2220 is 220-320 (the recitation regarding the standard used for measuring work penetration does not limit the claim, Shibata discloses worked penetrations within this claimed range, column 8, lines 32-48, Table 1 and claim 1).
Shibata, while further disclosing that the thickener can be a urea compound (see Table 1), does not disclose that the thickener is specifically a urea compound that is obtained by causing a polyisocyanate component and a monoamine component to react with each other, and the monoamine component is at least one of aliphatic monoamine and alicyclic monoamine and that the grease contains the base oil, the thickener and an antioxidant, the grease contains 0.1 mass% or more and less than 3 mass% of the antioxidant relative to the total amount of the base oil and the thickener, and the worked penetration of the grease measured based on JIS K 2220 is 240-300.
Miwa teaches a grease usable in bearings that includes a thickener in the form of a urea compound (see last full paragraph on page 5 of the previously provided translation) and with specific regards to the urea compound that the compound is obtained by reacting a polyisocyanate component with a monoamine component with the monoamine being an aliphatic monoamine or alicyclic monoamine (see paragraph spanning pages 5 and 6) and that the bearing grease can contain an antioxidant in the range of 0.1-3 mass% with the worked penetration being in the claimed range (see the bottom of page 6 disclosing the antioxidant and the % range and the middle of page 6 which covers a worked penetration of 200-350).
Shibata also further discloses that the base oil can include a synthetic oil (see column 9, lines 30-31) but does not specifically disclose that the base oil is only formed of synthetic hydrocarbon oil or a mixed oil of synthetic hydrocarbon oil and ester oil.
Miwa further teaches that a grease or a bearing can include base oil, specifically a synthetic hydrocarbon oil (PAO) alone or an ester oil alone, or alternative with PAO and ester oil used together (see page 5 of the translation, paragraph beginning with “When the lubricant composition is used as a grease”).
It would have been obvious to one having ordinary skill in the art to modify Shibata and replace the grease with any other previously known bearing grease, including one that uses a urea compound obtained by reacting a polyisocyanate component with a monoamine component along with a base oil of only synthetic hydrocarbon oil or a mix of synthetic hydrocarbon oil and ester oil and including an antioxidant within the range of 0.1-3 mass % and a worked penetration within the range of 240-300, as taught by Miwa, since substituting between different known greases provides the same predictable result of lubricating the sliding contact surfaces to reduce wear within the device.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shibata, USP 9,623,703, in view of Miwa, JP2019039470, as applied to claim 6 above, and further in view of Imai, JP2007154032.
Regarding claim 8, Shibata further discloses an antirust agent in the form of ester-based antirust agent and a sulfonate-based antirust agent (column 10, lines 21-23 discloses both esters and sulfonates as antirust agents) being added to the grease.
Shibata does not disclose that the grease contains 0.5 mass% or more and less than 1.5 mass% of the antirust agent relative to the total amount of the base oil and the thickener.
Imai teaches a bearing grease wherein antirust agents are added in a range of 0.01 to 10% mass which renders obvious the claimed range (see page 6 of attached translation, paragraph beginning “Other additives include”).
It would have been obvious to one having ordinary skill in the art to modify Shibata and add the antirust agent within the range of 0.5-1.5 mass%, as taught by Imai, since adding a known additive to a grease within an already known range provides the same predictable result of providing a grease with a desired amount of antirust agent that prevents the formation of rust without degrading the quality of the grease itself.
Response to Arguments
Applicant's arguments filed June 5, 2026 have been fully considered but they are not persuasive.
Applicant first states that the amendment to the independent claims points out two distinct greases, however as addressed in the objection above this is not the case. However, even if this was the case the primary reference to Shibata discloses a grease used for the seals and a grease used for the bearing region in column 6, lines 14-21. With regards to claim 13 Applicant states that the claim defines a bearing “having a grease” in reference to the bearing grease and “a grease applied to the sliding surfaces” of the seal, however what claims 1 and 13 actually state is “a grease lubrication composition” in the preamble and the first reference to a grease is in the body of the claim by stating “said grease”, this would be in reference to the grease in the preamble not another additional grease like Applicant is arguing.
Applicant then uses this position of two distinct greases claimed for the foundation of the argument against the teaching reference to Miwa which discloses “bearing grease”. However, once, in the case of the argument, the prior art establishes two distinct greases, a bearing grease and a sealing grease, which Shibata does, substituting between different known greases is within the level of ordinary skill in the art regardless of where the grease is used. However, in this case the argument is actually inconsistent with the claim which only positively sets forth one grease, but the position remains the same that substituting one known grease for another is within the level of ordinary skill in the art. Applicant is not arguing the actual rejection but is rather focused on the disclosed utility of the grease which is unpersuasive as explained above, however it is further pointed out that in all greased bearings some of the grease leaks and makes contact with the sealing elements and thus a bearing grease would also function as a sealing grease during operation, thus arguing that because of the different utility of the grease disclosed in Miwa that is not applicable to the claimed invention is still unpersuasive.
Because of the different disclosed utilities Applicant reaches the ultimate conclusion that there is no motivation to combine, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation to combine is not dictated or governed by the disclosed utility, the question is does one having ordinary skill in the art have the ability to select and substitute different greases, the conclusion reached in the previous office action is yes and Applicant is not specifically challenge this conclusion. Substituting between different known greases, regardless of the disclosed utility is within the level or ordinary skill in the art as all greases are used for the general purpose of providing a long-lasting lubricant and protectively seal devices.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES PILKINGTON whose telephone number is (571)272-5052. The examiner can normally be reached Monday through Friday 7-3.
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/JAMES PILKINGTON/Primary Examiner, Art Unit 3617
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