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 .
The amendments filed 7/21/25 do not overcome the rejections set forth in the office action mailed 4/21/25. The discussion of the rejections has been updated in order to reflect the claim amendments.
Claim Rejections - 35 USC § 103
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Vennampalli (U.S. PG Pub. No. 2021/0207054) in view of Su (CN 109679714 A)
In paragraph 20 Vennampalli discloses a zinc complex grease composition comprising base oils, saponifiable materials, zinc oxide, alkali hydroxides, and complexing agents, corresponding to components (i) through (v) of claim 1. In paragraphs 52-59 Vennampalli indicates that the complexing agents can be complexing acids. In paragraph 69 Vennampalli discloses that other performance additives may be added to the grease composition. The grease composition of Vennampalli therefore meets the limitations of claim 1, for both the case where the performance additives are present and the case where the performance additives are not present.
In Table 2 Vennampalli discloses compositions comprising Group I base oils, which are mineral oils as recited in claim 2, having viscosities of 95 cSt and 430 cSt at 40°, meeting the ISO VG 100 and ISO VG 460 grades respectively, both within the range recited in claim 2.
In paragraphs 55-57 and 69 Vennampalli discloses that the saponifiable material, complexing acid, and performance additives can be various types recited in claim 4.
The differences between Vennampalli and the currently presented claims are:
i) Vennampalli does not disclose specific suitable alkali hydroxides.
ii) Vennampalli does not specifically disclose the amounts of the alkali hydroxide or the performance additive.
With respect to i), an English-language translation of Su, which is attached, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the translation. In paragraph 16, Su discloses a complex sodium-based grease comprising a complex sodium-based thickener. In paragraph 22, Su discloses that the complex sodium-based thickener is prepared by the reaction of sodium hydroxide with a mixture of a high molecular weight acid which can be stearic acid or 12-hydroxystearic acid, as also disclosed in paragraph 55 of Vennampalli and corresponding to the claimed saponifiable material, and a low molecular weight acid which can be adipic or sebacic acid, as disclosed in paragraph 57 and corresponding to the claimed complexing acid. It is noted that while paragraph 22 of the translation of Su says “sodium lithium hydroxide”, all the examples disclosed by Su (paragraphs 185, 193-194, 203-204, 213-214, and 223-224), as well as the method disclosed on paragraph 26 of Su, simply disclose “sodium hydroxide”, as recited in component (iv) of amended claim 1. The resulting thickener when the sodium hydroxide of Su is used as the alkali hydroxide in the composition of Vennampalli will be a zinc-sodium thickener as recited in amended claim 1. It therefore would have been obvious to one of ordinary skill in the art to use sodium hydroxide as the alkali hydroxide in the grease of Vennampalli, since Su teaches that sodium is a useful metal for preparing complex grease thickeners. It is also noted that Su teaches in paragraphs 32-38, that the complex sodium-based greases, when further comprising a benzotriazole derivative, possess various improved properties; benzotriazole qualifies as a “performance additive” as recited in component (vi) of claim 1 and its inclusion in the grease of Vennampalli and Su would not violate the “consisting of” language of the claim.
With respect to ii), the concentration ranges implied by the contents of the components disclosed in paragraphs 25-30 and 51 of Vennampalli will at least overlap the ranges recited in amended claims 1 and 3, noting that paragraphs 25-30 and 51 disclose a minimum of 64 parts by weight of base oil, saponifiable material, zinc oxide, and complexing agent, leaving up to 36 parts by weight of other components such as the sodium hydroxide and performance additive. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);”
In light of the above, claims 1-4 are rendered obvious by Vennampalli in view of Su.
Claims 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Vennampalli in view of Su as applied to claims 1-4 above, and further in view of Beret (U.S. PG Pub. No. 2012/0004153).
The discussion of Vennampalli in view of Su in paragraph 3 above is incorporated here by reference. Vennampalli discloses in paragraph 52 that the grease can be prepared in an open kettle by a process where some of the zinc oxide is added prior to adding the complexing acid and the remainder of zinc oxide is added after the complexing acid, and in paragraph 53 Vennampalli discloses that the grease can be prepared by a single step process in a closed kettle, where the single step process corresponds to steps (a) through (f) of claim 5, but does not disclose a single step process carried out in an open kettle. Vennampalli does disclose broadly in paragraph 57 that the complexing agents can be added prior to the addition of zinc oxide. Vennampalli also does not disclose the specific temperatures recited in claims 6-7.
In paragraph 29 Beret discloses an open kettle process for preparing the complex grease, where lithium hydroxide is added to a mixture of the mono-acid (saponifiable material) and di-acid (complexing acid). Performing the open kettle process of Vennampalli in a single step manner, as taught by Beret, where the zinc oxide and alkali hydroxide as added to a mixture of the saponifiable material and complexing acid, therefore meets the limitations of claim 5, as well as claims 8-10, which recite limitations analogous to those of claims 2-4.
It would have been obvious to one of ordinary skill in the art to add the zinc oxide and alkali hydroxide to a mixture of the saponifiable material and complexing acid in the open kettle process of Vennampalli, since Beret teaches that it is a suitable method of preparing a complex grease in an open kettle process.
Additionally, differences in concentration or temperature generally will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It therefore would have been a matter of routine experimentation to optimize the process of Vennampalli and Beret in order to arrive at the claimed temperature ranges. It is noted that Vennampalli does disclose in paragraphs 33-35 the concept of raising the temperature level in three steps throughout the process. Claims 6-7 are therefore also rendered obvious by Vennampalli in view of Su and Beret.
In light of the above, claims 5-10 are rendered obvious by Vennampalli in view of Su and Beret.
Response to Arguments
Applicant's arguments filed 7/21/25 have been fully considered but they are not persuasive. Applicant argues that the prior art dopes not teach greases having the claimed concentration of sodium hydroxide. However, as discussed in the rejection, Vennampalli discloses in paragraphs 25-30 and 51 that the greases comprise a minimum of 64 parts by weight of base oil, saponifiable material, zinc oxide, and complexing agent, leaving up to 36 parts by weight of other components such as the sodium hydroxide and performance additive, and therefore implying a sodium hydroxide concentration encompassing the claimed range. Applicant argues that Su teaches a concentration range of 5 to 35% by weight for the sodium complex thickener, allegedly outside the range recited in the amended claims. While Su is not specifically cited for its teachings regarding sodium hydroxide content, it is noted that the concentration of sodium hydroxide, which is a reactant used to make the sodium complex thickener, will be significantly lower than the concentration of the thickener, since the majority of the molecular weight of the thickener comes from the acid reactants described in paragraph 22 of the translation of Su, rather than the sodium hydroxide. The teachings of Su therefore reinforce the examiner’s position regarding the obviousness of the concentration range recited for the sodium hydroxide rather than negating it.
Applicant also argues that they do not understand the motivation for combining Vennampalli and Su, and notes that a clear reason or rationale for a person of ordinary skill in the art to combine the elements in the claimed manner must exist. In this case, the rationale for combining Vennampalli is simple; Vennampalli discloses that the complex grease can comprise an alkali hydroxide, but does not disclose specific suitable alkali metals. As discussed in the rejection, Su discloses that sodium is a suitable alkali metal for forming thickeners in a complex grease composition, and that greases comprising sodium-based thickeners in conjunction with a benzotriazole derivatives possess improved properties. Su therefore does not merely provide evidence that the claimed sodium hydroxide exists; Su provides motivation for selecting a specific alkali hydroxide from the class of alkali hydroxides disclosed by Vennampalli.
Applicant argues that the claimed combination of zinc and sodium complex thickeners provides a synergistic effect. The examiner maintains the position taken in paragraph 5 of the office action mailed 4/21/25 regarding the lack of commensurateness of the results provided by applicant with the scope of the claims.
Regarding the method claims, applicant argues that the processing temperature required by Su is outside the claimed range, but Su is not relied upon to teach the processing temperature. As the combined grease and method of Vennampalli, Su, and Beret is different from the grease of Su alone, one of ordinary skill in the art would not be bound by Su’s teaching regarding reaction temperatures, and would instead seek to optimize the temperatures. It is noted that only claims 6-7 recite temperatures.
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.
/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771