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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 4, 2025 has been entered. In the submission Claims 1, 6 8-13 and 18-19 were amended.
The rejection of the claims under 35 USC 112 is withdrawn in view of the amendment to the claims.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 6 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.
Claim 6 recites a conductive bearing grease comprising graphene. The claim also recites one or more conductive thickeners of carbon black, graphite and graphene nanoplates. It is not clear if the initial graphene is the same as the graphene nanoplates. If so, then it is unclear why there are two recitations of graphene. 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 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.
In the previous examined claim set (June 3, 2025), claim 6 was directed to a conductive grease comprising graphene wherein the conductive grease is configured to lower electric discharge energy between a metallic surface rolling relative to another metallic surface with a conductive grease layer between the surfaces to a value equal to or below 17 nanojoules. The claim was devoid of the type of oil that was used in preparing the grease. Applicant has now amended claim 6 to include specific base oils and conductive thickeners and non-conductive thickeners. Example 7 of Zhamu met the limitations of the claim presented June 3, 2025, whereas now it does not. The declaration presented by Annette von Jouanne has been considered but is not persuasive. Example 7 contains a Group III base oil and oxidized NGP (nano graphene platelets). Examples 1 and 4-5 contain PAO oils and NGPs. It is not clear how the greases of these examples differ from the grease of the present invention. The skilled artisan having Zhamu and the examples within Zhamu before him would have every expectation that the grease compositions of Zhamu would lower the electric discharge energy to the claimed threshold. Furthermore, in view of the amendment to claim 6, it is not clear what materials are actually present in the claims. See the rejection under 35 USC 112.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hong (US 20070158609) teaches a stable suspension of carbon nanoparticles in a thermal transfer fluid and nano-greases.
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/CEPHIA D TOOMER/Primary Examiner, Art Unit 1771 18310088/20260220