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 May 4, 2026 in which claims 6 was amended.
The rejection of claim 6 under 35 USC 112 is withdrawn in view of the amendment to the claim.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 6, 8-9 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Zhamu (US 20110046027).
Zhamu teaches a lubricant composition having improved lubricant properties, comprising: (a) a lubricating fluid; and (b) nano graphene platelets (NGPs) dispersed in the fluid, wherein nano graphene platelets have a proportion of 0.001% to 60% by weight based on the total weight of the fluid and the graphene platelets combined. With the addition of a thickener or a desired amount of NGPs, the lubricant becomes a grease composition (see abstract).
Zhamu teaches that nanoparticles have a high surface affinity and chemical reactivity and their small sizes enable them to penetrate wear crevices. Nanoparticles are emerging as additive components in industrial lubricants, such as greases (see para 0008). Instead of trying to develop lower-cost processes for Carbon Nanotubes, Zhamu sought to develop an alternative nanoscale carbon material with comparable properties that can be produced much more cost-effectively and in larger quantities. This development work led to the discovery of processes and compositions for a new class of nano material now commonly referred to as nano graphene platelets (NGPs) (see para 0020).
The lubricating fluid is selected from the group consisting of synthetic oils, greases, oil-soluble polymer composition, and combinations thereof. The lubricating fluid can be selected from the group consisting of polyalphaolefins, polyol esters, and combinations thereof. The polyol ester can be selected from the group consisting of pentaerythritol ester, trimethylolpropane ester, neopentyl glycol ester and combinations thereof (see para 0044). Suitable examples include a mixture of two polyalphaolefins, a mixture of two polyol esters, a mixture of one polyalphaolefin and one polyol ester, a mixture of three polyalphaolefins, a mixture of two polyalphaolefins and one polyol ester, a mixture of one polyalphaolefin and two polyol esters, and a mixture of three polyol esters. In all the combinations, the fluid preferably has a viscosity of from about 1 to about 1,000 centistokes (see para 0075).
For the nano-greases of Zhamu, NGPs also function as a thickening agent to modulate viscosity (see para 0049) For lubricant or grease applications, the ultra-high thermal conductivity of NGPs is of particular interest since, in most of the friction-reducing or anti-wear applications, adequate heat dissipation is an important requirement (see para 0057).
In a preferred embodiment of Zhamu, the lubricating fluid is grease, which is made by combining synthetic lubricating fluid with a thickening agent. The thickeners are generally silica gel and fatty acid soaps of lithium, calcium, strontium, sodium, aluminum, and barium. Carbon black may be added as a thickener to enhance high-temperature properties of synthetic lubricant greases. In practicing the present invention, NGPs can be used to replace some, if not all, of the conventional thickeners (see para 0076).
Zhamu does not specifically teach that the grease is formulated to lower electric discharge energy between a metallic surface rolling relative to another metallic surface with a grease layer between the surfaces to a value equal to or below 17 nanojoules or a volume resistivity of the grease is 20 to 650 Ω*cm (Claims 6 and 13). However, it would be reasonable to expect that Zhamu would meet these limitations because he teaches a grease wherein the base oil may be the same as that of the present invention, and he adds the claimed graphene nanoplatelets in proportions that overlap those of the present invention.
Zhamu does not specifically teach kV of 30-125 mm2/s at 40 C. However, no unobviousness would have been seen in this difference because Zhamu teaches that the base oils have a viscosity from about 1 to about 1000 cSt and he teaches adding from 0.001-60% by wt of the nano graphene platelets, which amount overlaps the claimed proportions. Given these teachings, it would be reasonable to expect that the skilled artisan would arrive at the claimed viscosity, absent evidence to the contrary.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Zhamu (US 20110046027) as applied to the claims above, and further in view of Ravindran et al. (effects of Graphene Nanoplatelet Size and Surface Area on the AC Electrical Conductivity and Dielectric Constant of Epoxy Nanocomposites -appears on previous PTO-892)
Zhamu does not specifically teach the surface area of the graphene nanoplatelets. However, Ravindran teaches that some commercial graphene nanoplatelets have surface areas of 80 m2/g, 300 m2/g, 500 m2/g and 750 m2/g (see page 2, section 2.1).
It would have been obvious to use graphene nanoplatelets having a surface area of 2-2000 m2/g because Ravindran teaches that commercially available graphene nanoplatelets have surface areas that fall within the claimed range.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that the rejections rest on the premise that Zhamu discloses greases with overlapping components and broad ranges and, therefore, it would have been reasonable to expect those greases to inherently achieve the claimed discharge-energy performance. Applicant argues that the evidence now of record demonstrates that Zhamu's compositions do not achieve, and would not have been expected to achieve, an electric discharge energy meeting the 17 nJ threshold in bearing contact surfaces. Applicant argues that the premise cannot remain standing because the claimed limitation is both critical and non-obvious, and the data establishes a clear link between the claimed limitation for the grease and the unexpected bearing discharge-energy performance. Applicant argues that neither Zhamu nor the art of record recognizes this bearing-specific discharge-energy metric, teaches how to measure it, or provides any guidance to achieve it in a grease composition. Applicant argues that Zhamu's closest grease fails the claimed discharge-energy requirement by two orders of magnitude.
Claim 6 recites a grease comprising at least one of a polyolester (POE) and a polyalphaolefin (PAO) as the base oil. The claim contains one or more thickeners selected from carbon black, graphite and graphene nanoplatelets. The claim also contains one or more nonconductive thickeners. Applicant claims that the grease is formulated to lower the electric discharge energy in a rolling metallic contact to a value equal to or below a 17 nJ threshold. Applicant argues that neither Zhamu nor the art of record recognizes this bearing specific discharge energy metric, teaches how to measure it, or provides any guidance to achieve it in a grease composition.
The examiner maintains that Zhamu at least suggests the grease composition because he teaches PAO and POE base oils, graphene nanoplatelets, and a thickener that may be silica gel (nonconductive thickener). Carbon black may also be added as a thickener to enhance high temperature properties of the grease.
Applicant’s original data and the data provided in the present declaration have been considered. The examiner does not find any unexpected results. The examiner will first discuss the original data as it relates to claim 6.
Regarding FIG 19, all of the grease compositions have fumed silica, carbon black and graphite and those greases also contain graphene. Claim 6 does not require the presence of the combination of carbon black, graphite, and graphene. With respect to the nonconductive thickener of the claims this limitation reads on every nonconductive thickener that exist and is not limited to silica. The claims and the data of the specification are not commensurate in scope. Throughout the arguments Applicant maintains that the data is the direct result of the unique characteristics of the claimed invention; however, the grease of claim 6 may comprise just the oil, carbon black and a nonconductive thickener; or the grease may comprise the oil, graphite and the nonconductive thickener; or the grease may comprise the oil, graphene nanoplatelets and the nonconductive thickener. There is no data that show the electric discharge energy lowered to 17 nJ or less with the above combinations. Claim 6 is also devoid of proportions, whereas FIG 19 has proportions for all of the components. The examiner cannot ascertain if such lowered electric discharge energy results are obtained when these proportions are not used.
With respect to the present declaration comparing Example 1 of Zhamu to the present invention, Applicant shows that the grease of Zhamu comprising PAO and graphene produces an electric discharge energy of 812.54 nJ. The examiner’s position regarding this data is that if Applicant were to run the grease of claim 6 comprising the base oil, graphene and a nonconductive thickener that a result would be obtained that is similar to Zhamu’s grease. As stated above, the invention appears to lie in the presence of all of the components of claim 6, in the exemplified amounts and a base oil.
Applicant raises the issue of Zhamu using graphene as a thickener. The examiner finds this argument irrelevant because it matters not why Zhamu adds the graphene because in the end the amount of graphene used by Zhamu overlaps the amount that Applicant has set forth in claims 8 and 9 (0.1-20 wt%) and it should be noted that Zhamu exemplifies 2.5% in Example 1. Also, it should be noted that claim 8 may contain as much as 20% of graphene, which clearly would be an amount that would thicken the grease.
Applicant argues that the functional language “formulated to ...equal to or less than a 17 nJ threshold is a patentable limitation in the art and must be given weight.
The examiner has given weight to the limitation and maintains that since Zhamu teaches all of the material limitations of claim 6 that the skilled artisan would have a reasonable expectation that the grease of Zhamu containing a base oil, carbon black or graphene and silica gel would lower the electric discharge energy to equal to or less than a 17 nJ threshold. Applicant has shown that the electric discharge energy is a desired result that may be obtained when the grease contains all of the compounds set forth in claim 6 in the proportions set forth in FIG 19. Claim 6 has not been drafted wherein all of the compounds and proportions are present.
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 CEPHIA D TOOMER whose telephone number is (571)272-1126. The examiner can normally be reached Monday-Friday.
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 571-272-6368. 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 18310088/20260515
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