eDETAILED 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 .
Response to Arguments
Applicant’s arguments, see Pages 7-8, Independent Claim 8, filed 11/25/2025, with respect to the rejection(s) of claim(s) 8 and 9-13 under 35 U.S.C. 102 and 35 U.S.C. 103 respectively have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly found [and previously unused] prior art reference US-2016/0018336-A1, cited in the IDS.
Applicant’s arguments, see Pages , filed 11/25/2025, with respect to the rejection(s) of claim(s) 1-4 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly found [and previously unused] prior art reference .
Applicant’s arguments, see Pages , filed 11/25/2025, with respect to the rejection(s) of claim(s) 5 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of a new interpretation of WO-2014/192912-A1.
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.
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 non-obviousness.
Claim(s) 1-4 and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Katsaros (US 2016/0025619 A1) in view of Cosmo Oil Co. Ltd./Cosmo Research Institute (JP H09236593 A, hereinafter "Cosmo").
Regarding independent Claim 1, Katsaros discloses a grease deterioration detecting method ([0006] “The method allows a current lubricating-grease state to be determined”), which is a method for detecting deterioration of grease, the method comprising:
a measurement step of measuring a color of the grease with a sensor ([0018] “Grease color changes during operation are preferably determined by a color sensor”; Figure 2: element 5 is a color sensor; [0029]), but does not specifically teach:
a dilution step of diluting grease with a diluent to obtain diluted grease; and
a measurement step of measuring a color of the diluted grease with a sensor.
However, Cosmo, in the same field of monitoring grease, teaches a dilution step of diluting grease with a diluent ([0016] “the sample grease is diluted using the dilution solvent”) to obtain diluted grease ([0016] “since the thickener in the sample grease is hardly dissolved in the diluent solvent and most of the thickener is in the dispersed state, the thickener is precipitated, and then the supernatant liquid is collected”, wherein “the supernatant liquid” is diluted grease).
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Katsaros with the teachings of Cosmo, for a dilution step of diluting grease with a diluent to obtain diluted grease; and a measurement step of measuring a color of the diluted grease with a sensor, because “the method of the present invention can accurately analyze the amine-based antioxidant and the carbamate-based antioxidant as in the present embodiment” (Cosmo, para 34); further, diluting the grease allows for accurate spectroscopic analysis of the lubricant's health, ensuring the grease still meets performance specs.
Regarding Claim 2, modified Katsaros discloses the grease deterioration detecting method according to claim 1,
wherein the sensor is a color sensor (Figure 2: element 5 is a color sensor; [0029]).
Regarding Claim 3, modified Katsaros discloses the grease deterioration detecting method according to claim 1, but does not specifically teach that the diluent is an organic solvent.
However, Cosmo, in the same field of monitoring grease, teaches that the diluent is an organic solvent ([0016] “As the dilution solvent for diluting the sample grease by this method, various organic solvents capable of dissolving the base oil and various additives can be used”).
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Katsaros with the teachings of Cosmo, such that the diluent is an organic solvent, because the selective dissolving power of organic solvents provides high sensitivity and specificity for detecting and analyzing deterioration-related changes.
Regarding Claim 4, modified Katsaros discloses the grease deterioration detecting method according to claim 3, but does not specifically teach that the organic solvent is at least one selected from the group consisting of n-hexane, kerosene, and gasoline.
However, Cosmo, in the same field of monitoring grease, teaches that the organic solvent is at least one selected from the group consisting of n-hexane ([0016] “various organic solvents capable of dissolving the base oil and various additives can be used, and for example, n-hexane, chloroform and the like can be preferably used”), kerosene, and gasoline.
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Katsaros with the teachings of Cosmo, such that the organic solvent is at least one selected from the group consisting of n-hexane, kerosene, and gasoline, because n-hexane is a highly effective, non-polar solvent with a low boiling point, allowing it to easily dissolve oily substances and subsequently evaporate, leaving pure oil/grease behind.
Regarding Claim 15, modified Katsaros discloses the grease deterioration detecting method according to claim 1,
wherein the dilution step of diluting the grease with the diluent to obtain the diluted grease (see claim 1 rejection) comprises diluting just 10 mg of the grease with the diluent to obtain the diluted grease (Since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. (MPEP 2144.05)).
Regarding Claim 16, modified Katsaros discloses the grease deterioration detecting method according to claim 1,
wherein the dilution step of diluting the grease with the diluent to obtain the diluted grease (see claim 1 rejection) further comprises diluting 1 part by mass of the grease with 10 parts by mass or more and 1,000 parts by mass or less of the diluent (Since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. (MPEP 2144.05)).
Claim(s) 5-7 and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Onuma et al. (WO 2014/192912 A1) in view of Tatsuoka et al. (JP 5843223 B2).
Regarding independent Claim 5, Onuma discloses a grease deterioration detecting method ([0026] “a determination method for determining the state of a liquid material”, wherein “a liquid material” is interpreted as grease; [0113] “the determination target of the determination system may be a liquid other than oil”, wherein “a liquid other than oil” is interpreted as grease), which is a method for detecting deterioration of grease, the method comprising:
a step of measuring a color ([0108] “The assessment system calculates the maximum color component difference based on the RGB values”) of the thin-film grease (Figure 17; [0103] “a predetermined amount of lubricant is poured into the recess 101”; [0113] “the determination target of the determination system may be a liquid other than oil”, wherein “a liquid other than oil” is interpreted as grease) with a camera or a sensor (Figure 17: element 24 is a light-receiving element; [0103]),
in which a degree of deterioration of the grease is determined by the measurement ([0108] “The assessment system … uses the deterioration assessment map to determine the range to which the calculated maximum color component difference falls”), but does not specifically teach a step of forming a thin film by sandwiching grease between a pair of plates made of a transparent material and spreading the grease.
However, Tatsuoka, in the same field of evaluating the deterioration of a grease-like substance, teaches a step of forming a thin film by sandwiching grease between a pair of plates (Figure 3: microgram-order sample 4, sandwiched between glass plates 1a and 1b, becomes a film) made of a transparent material (Figure 3; [0026] “two clean glass plates (glass slides are suitable) 1a and 1b”) and spreading the grease (Figure 4; [0030] “the spread X1 in the X-axis direction and the spread Y1 in the Y-axis direction of the sample that has spread between the glass plates 1a and 1b”).
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Onuma with the teachings of Tatsuoka, for a step of forming a thin film by sandwiching grease between a pair of plates made of a transparent material and spreading the grease, because “The degree of grease deterioration can then be evaluated from the rate of change in the area of the spreading consistency.” (Tatsuoka, para 34)
Regarding Claim 6, modified Onuma discloses the grease deterioration detecting method according to claim 5,
wherein the sensor is a color sensor (Figure 17: element 24 is a light-receiving element; [0099] “color sensor 24 is an RGB sensor capable of identifying R, G, and B values”).
Regarding Claim 7, modified Onuma discloses the grease deterioration detecting method according to claim 5, but does not specifically teach that the transparent material is at least one selected from the group consisting of glass, acryl, polyethylene terephthalate, and polycarbonate.
However, Tatsuoka, in the same field of evaluating the deterioration of a grease-like substance, teaches that the transparent material is at least one selected from the group consisting of glass (Figure 3; [0026] “two clean glass plates (glass slides are suitable) 1a and 1b”), acryl, polyethylene terephthalate, and polycarbonate.
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Onuma with the teachings of Tatsuoka, wherein the transparent material is at least one selected from the group consisting of glass, acryl, polyethylene terephthalate, and polycarbonate, because “by stretching the sample thinly between glass plates, the apparent color difference became larger, especially for samples after the second load test, making it possible to use this as a classification index for the degree of grease deterioration.” (Tatsuoka, para 73)
Regarding Claim 18, modified Onuma discloses the grease deterioration detecting method according to claim 5, and the step of forming the thin film by sandwiching the grease between the pair of plates made of the transparent material and spreading the grease (see claim 5 rejection), but does not specifically teach that the step of forming the thin film by sandwiching the grease between the pair of plates made of the transparent material and spreading the grease comprises sandwiching and spreading just 0.5 mg or more and 2 mg or less of the grease between the pair of plates.
However, Tatsuoka, in the same field of evaluating the deterioration of a grease-like substance, teaches sandwiching and spreading just 0.5 mg or more and 2 mg or less of the grease between the pair of plates ([0068] “About 0.5 mg of a sample is placed on the approximate center of a clean slide glass … using a clean needle, and the slide glass is inhibited from side slip. […] A slide glass of the same size was placed on the top of the sample”).
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Onuma with the teachings of Tatsuoka, wherein the step of forming the thin film by sandwiching the grease between the pair of plates made of the transparent material and spreading the grease comprises sandwiching and spreading just 0.5 mg or more and 2 mg or less of the grease between the pair of plates, because “The degree of grease deterioration can then be evaluated from the rate of change in the area of the spreading consistency.” (Tatsuoka, para 34)
Regarding Claim 19, modified Onuma discloses the grease deterioration detecting method according to claim 18, wherein the step of forming the thin film by sandwiching the grease between the pair of plates made of the transparent material and spreading the grease comprises sandwiching and spreading the 0.5 mg or more and 2 mg or less of the grease (see claim 18 rejection), but does not specifically teach that the step of forming the thin film by sandwiching the grease between the pair of plates made of the transparent material and spreading the grease comprises sandwiching and spreading the 0.5 mg or more and 2 mg or less of the grease to a diameter of 5 mm or more and 15 mm or less.
However, Tatsuoka, in the same field of evaluating the deterioration of a grease-like substance, teaches sandwiching and spreading the 0.5 mg or more and 2 mg or less of the grease ([0068] “About 0.5 mg of a sample is placed on the approximate center of a clean slide glass … using a clean needle, and the slide glass is inhibited from side slip. […] A slide glass of the same size was placed on the top of the sample”) to a diameter of 5 mm or more and 15 mm or less ([0045] “a spread diameter of about 5 to 10 mm”).
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Onuma with the teachings of Tatsuoka, wherein the step of forming the thin film by sandwiching the grease between the pair of plates made of the transparent material and spreading the grease comprises sandwiching and spreading the 0.5 mg or more and 2 mg or less of the grease to a diameter of 5 mm or more and 15 mm or less, because “even a microgram-order sample can be accurately evaluated for deterioration in a short time.” (Tatsuoka, para 45)
Regarding Claim 20, modified Onuma discloses the grease deterioration detecting method according to claim 19,
wherein the step of forming the thin film by sandwiching the grease between the pair of plates made of the transparent material and spreading the grease comprises sandwiching and spreading the 0.5 mg or more and 2 mg or less of the grease to the diameter of 5 mm or more and 15 mm or less (see claim 19 rejection) and to a thickness of 20 pm or more and 0.1 mm or less (Since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. (MPEP 2144.05)).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Ganiger et al. (US 2021/0139040 A1) in view of Schornstein (US 2016/0018336 A1).
Regarding independent Claim 8, Ganiger discloses a lubricant deterioration detecting method comprising:
a step of imaging (Figure 8; [0103] “image capture component 810 can be suitably positioned near the lubrication circuit 108 and can capture an image”) only a lubricant (Figure 8: element 110 is a lubricant; [0092]) or the lubricant diluted with a solvent (moot) using an imaging device (Figure 8: element 810 is an image capture component; [0092]); and
a step of determining a deterioration state of the lubricant (Figure 8; [0101] “determine a health and/or composition of the lubricant 110”) from image information ([0104] “Based on the captured image”) of only the imaged lubricant (Figure 8: element 110 is a lubricant; [0092]) or the imaged lubricant diluted with the solvent (moot) based on image information of standardized colors (Figure 8; [0101] “based on comparing the color patterns 812 to baseline color patterns 814”), but does not specifically teach:
a step of imaging only a lubricant or the lubricant diluted with a solvent together with a color chart using an imaging device; and
a step of determining a deterioration state of the lubricant from image information of only the imaged lubricant or the imaged lubricant diluted with the solvent based on image information of the imaged color chart.
However, Schornstein, in the same field of assessing automotive fluids, teaches a color chart ([0016] “one or more selected from the group consisting of a control, a standard, a color chart and a comparative visual indicia”).
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Ganiger with the color chart of Schornstein, for a step of imaging only a lubricant together with a color chart using an imaging device; and a step of determining a deterioration state of the lubricant from image information of only the imaged lubricant based on image information of the imaged color chart, because using color charts is a crucial part of a proactive, "lean" lubrication management system, saving money on unnecessary oil changes and maintenance.
Claim(s) 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ganiger et al. (US 2021/0139040 A1) and Schornstein (US 2016/0018336 A1) as applied to claim 8 above, and further in view of Sekiguchi et al. (US 2022/0156909 A1).
Regarding Claim 9, modified Ganiger discloses the lubricant deterioration detecting method according to claim 8 and the image information of the color chart (see claim 8 rejection), but does not specifically teach that white balance of the image information of only the imaged lubricant or the imaged lubricant diluted with the solvent is corrected based on white balance of the image information of the color chart, and
a deterioration state of the lubricant is determined based on the corrected image information.
However, Sekiguchi, in the same field of lubricating oil degradation evaluation, teaches that white balance of the image information of only the imaged lubricant is corrected (Figure 1; [0036] “correction data 201 is data for adjusting a white balance when the evaluation lubricating oil serving as the evaluation target is imaged and performing a correction”) based on white balance (Figure 1; [0036] “adjusting a white balance”) of the image information of the color chart (see claim 8 rejection), and
a deterioration state of the lubricant is determined based on the corrected image information (Figure 1; [0038] “evaluation unit 30 creates an evaluation result 300 showing a degree of degradation of the evaluation lubricating oil from the image analysis data 200”).
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Ganiger with the teachings of Sekiguchi, such that white balance of the image information of only the imaged lubricant is corrected based on white balance of the image information of the color chart, and a deterioration state of the lubricant is determined based on the corrected image information, because white balance correction normalizes color and neutralizes color casts caused by ambient lighting conditions, and by removing unwanted color biases, white balance makes it possible to isolate true color changes in an object, which are often the primary indicators of deterioration.
Regarding Claim 10, modified Ganiger discloses the lubricant deterioration detecting method according to claim 8, but does not specifically teach that the imaging device has a white balance correction function.
However, Sekiguchi, in the same field of lubricating oil degradation evaluation, teaches that the imaging device (Figure 1: element 21 is an imaging apparatus; [0025]) has a white balance correction function (Figure 1; [0036] “adjusting a white balance when the evaluation lubricating oil serving as the evaluation target is imaged and performing a correction” implies a white balance correction function, which is a setting that adjusts the colors in an image to compensate for the color temperature of the light source, as known in the art).
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Ganiger with the teachings of Sekiguchi, wherein the imaging device has a white balance correction function, because white balance corrects for the "color temperature" of different light sources, ensuring that all non-white colors are rendered accurately and naturally.
Regarding Claim 11, modified Ganiger discloses the lubricant deterioration detecting method according to claim 10, but does not specifically teach that the imaging device is a digital camera or a camera-equipped portable terminal.
However, Sekiguchi, in the same field of lubricating oil degradation evaluation, teaches that the imaging device is a digital camera or a camera-equipped portable terminal ([0028] “Examples of the imaging apparatus 21 having the communication function include a digital camera, portable terminal, and smartphone”).
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Ganiger with the teachings of Sekiguchi, wherein the imaging device is a digital camera or a camera-equipped portable terminal, because digital cameras used in lubricant deterioration detection provide a powerful, non-intrusive, and repeatable method for visual analysis of wear particles and fluid condition.
Regarding Claim 12, modified Ganiger discloses the lubricant deterioration detecting method according to claim 8, but does not specifically teach that the lubricant is lubricating oil or grease.
However, Sekiguchi, in the same field of lubricating oil degradation evaluation, teaches that the lubricant is lubricating oil ([0021] “an oil type such as an automobile oil, industrial lubricating oil, and marine lubricating oil”).
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Ganiger with the teachings of Sekiguchi, wherein the lubricant is lubricating oil, because determining lubricating oil deterioration is crucial for predictive maintenance, as it helps prevent costly equipment failure by detecting issues like additive depletion, oxidation, and contamination before they cause damage. This proactive approach extends equipment life, minimizes unplanned downtime, and reduces maintenance costs through timely interventions such as oil changes or filter replacements, ultimately saving money and ensuring operational reliability.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Ganiger et al. (US 2021/0139040 A1) and Schornstein (US 2016/0018336 A1) as applied to claim 8 above, and further in view of Endo et al. (WO 2010/021283 A1).
Regarding Claim 13, modified Ganiger discloses the lubricant deterioration detecting method according to claim 8, but does not specifically teach that the solvent contains an organic solvent, a kerosene compound, or a gasoline compound.
However, Endo, in the same field of lubricant deterioration determination, teaches that the solvent contains an organic solvent ([0009] “the protic solvent is a protic organic solvent”).
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Ganiger with the teachings of Endo, wherein the solvent contains an organic solvent, because the selective dissolving power of organic solvents provides high sensitivity and specificity for detecting and analyzing deterioration-related changes.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Ganiger et al. (US 2021/0139040 A1) and Schornstein (US 2016/0018336 A1) as applied to claim 8 above, and further in view of Honda et al. (US 2012/0086942 A1).
Regarding Claim 14, modified Ganiger discloses the lubricant deterioration detecting method according to claim 8, and the step of imaging only the lubricant together with the color chart using an imaging device (see claim 8 rejection), but does not specifically teach that the step of imaging only the lubricant together with the color chart using an imaging device comprises:
placing the lubricant or the lubricant diluted with the solvent onto the color chart; and
imaging the lubricant or the lubricant diluted with the solvent and the color chart together while the lubricant or the lubricant diluted with the solvent remains placed onto the color chart.
However, Honda, in the same field of oil state monitoring methods, teaches placing the lubricant onto the color chart ([0007] “a color chart which is laid on the inside face of the container”; [0007] “the estimated-lubricant oil being held in the container”).
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Ganiger with the teachings of Honda, by placing the lubricant onto the color chart, because “The device for simple estimation of lubricant oil-life expectancy judges lubricant oil-degradation levels by estimating lubricant oil-life expectancy according to relation between visible colors and invisible colors in the color chart with human eyes with the estimated-lubricant oil being held in the container.” (Honda, para 7)
Ganiger is also silent with respect to imaging the lubricant or the lubricant diluted with the solvent and the color chart together while the lubricant or the lubricant diluted with the solvent remains placed onto the color chart.
However, Ganiger teaches imaging the lubricant (Figure 8; [0103] “image capture component 810 can be suitably positioned near the lubrication circuit 108 and can capture an image”; Figure 8: element 110 is a lubricant; [0092]).
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Ganiger for imaging the lubricant and the color chart together while the lubricant remains placed onto the color chart, to determine “the health … of the lubricant based on the comparison.” (Ganiger, para 121)
Allowable Subject Matter
Claim 17 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claim 17, the prior art of record does not teach or suggest that the dilution step of diluting the grease with the diluent to obtain the diluted grease further comprises collecting the grease from three portions of a rolling bearing, the three portions comprising a first portion at a vicinity of a cage of the rolling bearing, a second portion in a vicinity of and inside a seal of the rolling bearing, and a third portion in a vicinity of and outside the seal.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US-2019/0086382-A1 discloses: a lubricant deterioration detection device including a gas sensor configured to detect a carbonyl compound; a lubricant deterioration detection device including a gas sensor configured to detect at least one of n-hexanal and n-heptanal; a lubricant deterioration state evaluation method including in situ determining an amount of a gaseous carbonyl compound generated from a lubricant in a rolling bearing lubricated with the lubricant to evaluate a deterioration state of the lubricant; and a lubricant deterioration detection device that includes a housing rotatably storing a rolling bearing, a gas sensor located outside the housing, and a gas inlet pipe connecting a gas outlet port formed on the housing to a gas inlet port of the gas sensor and configured to introduce a gas in the housing into the gas sensor, and a deterioration state of a lubricant in the rolling bearing is detected by a detected value of the gas sensor.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Akbar H Rizvi whose telephone number is (571) 272-5085. The examiner can normally be reached Monday - Friday, 9:30 am - 6:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tarifur R Chowdhury can be reached at (571) 272-2287. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AKBAR H. RIZVI/
Examiner, Art Unit 2877
/TARIFUR R CHOWDHURY/Supervisory Patent Examiner, Art Unit 2877
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