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 .
The amendment dated 11/04/2025 has been considered and entered. The response was considered but was not found to be persuasive. Therefore, the previous rejections are maintained.
Claim Objections
Claims 1 – 6, 9, 12 – 26 are objected to because of the following informalities: The claims recite that the R1, R2 and R3 groups attached to the COO are octanyl (i.e., CH3(CH2)6CO) rather than octyl, decanyl rather than decyl or ethylhexanyl rather than ethylhexyl which provides structures with COO-O. It appears that the claims should recite that the R1, R2 and R3 groups are derived from octanyl, decanyl or ethylhexanyl. For the sake of prosecution, the claims are interpreted as R1, R2 or R3 are derived from octanyl (i.e., octyl), decanyl (i.e., decyl) or ethylhexanyl (i.e., ethylhexyl). 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.
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 nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 – 6, 9, 12 – 26 are rejected under 35 U.S.C. 103 as being unpatentable over Kondo et al. (US 2010/0323934)
In regards to claim 1, Kondo teaches grease composition for constant velocity joint comprising an ester base oil produced from aliphatic alcohol and an aromatic carboxylic acid, a thickener, etc. at 10 to 95% of the base oil in mixture with synthetic hydrocarbon oil at from 90 to 5% in the base oil (abstract). The ester is prepared from C6 to C22 aliphatic alcohol or preferably C6 to C10 aliphatic alcohols such as hexanol, heptanol, octanol, nonanol, trimethyl-1-hexanol etc., and aromatic carboxylic acids such as hemimellitic acid etc., which provides the claimed structure having linear or branched, unsubstituted alkyl groups [0035 – 0039]. The ester is a full ester and thus has three R groups as claimed [0041]. Since any C6 to C22 aliphatic alcohol is useful, mixtures are obvious and which would provide the different R groups (i.e., R1, R2 and R3) groups of the claim. Mixtures of various esters of the structure is also obvious as they are similar components useful for the same purpose which would be blended for the same purpose as base oil.
In regards to claims 2 – 6, 9, 12, Kondo teaches the grease having the ester. The method of forming the ester from bio-based materials does not appear to carry patentable weight so long as the ester itself is taught. However, to the extent that biologically originated materials carry weight, they would have been obvious since there are only two possible groups to select from, biological or artificial origins for the ester. Thus, use of 100% bio-based carbon containing ester is obvious.
In regards to claim 13, Kondo teaches the grease having the ester present at from 10 to 95% of the base oil as previously stated. The balance of additives includes thickeners (B) at 1 to 30% in the composition, molybdenum disulfide (C) at 0.5 to 5%, molybdenum dialkyldithiocarbamate (D) at from 0.5 to 5% and zinc dithiophosphate at from 0.5 to 5% which provides a balance of base oil that provides hemimellitic esters at amounts overlapping the claimed range [0045 – 0052].
In regards to claim 14, Kondo teaches the grease having the hemimellitic acid esters of the claimed structure and thus would be expected to have similar properties such as kinematic viscosity.
In regards to claims 15, 18, 21, 22, Kondo teaches grease composition having the claimed ester as base oil, and synthetic hydrocarbon base oil as a second base oil, and additives but fails to teach the presence of polyisobutylene. Watanabe et al. (US 2020/0148970) teaches grease for constant velocity joints comprising hydrocarbon oils such as polyalphaolefins such as polyisobutylene etc., which are synthetic hydrocarbon oils [0031, 0234]. Thus, it would have been obvious for persons of ordinary skill in the art at the time the claims were filed to have used polyisobutylene of Watanabe as synthetic hydrocarbon oil in the grease of Kondo, as Watanabe teaches that they are suitable for use in greases for CV joints.
In regards to claim 16, Kondo teaches the grease having additional base oil in the claimed amounts as previously stated.
In regards to claim 17, Kondo teaches the grease having additional base oil such as synthetic hydrocarbon oil which are known to comprise polyalphaolefins. Blends including mineral oils may also be present [0035].
In regards to claims 19 – 26, Kondo teaches the grease having the claimed limitations as previously stated.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that esters having different R groups stemming from using different alcohols provide improved viscometric and pour point properties over the same esters prepared from a single alcohol according to examples 5 and 6 of the specification. The argument is not persuasive.
The sole inventive example is not commensurate in scope with the claims.
The sole inventive example 5 recites a specific mixed alcohol blend having specific amounts of alcohol comprising 25% octanol, 40% 2EH and 35% decanol while the claims recite esters having any of octanyl, decanyl or ethylhexanyl group as R1, R2 or R3 which does not support the breadth of the claims.
Thus, applicant fails to provide inventive examples that are commensurate in scope with the claims for demonstrating unexpected results sufficient to rebut the case of obviousness.
Applicant previously argued that Kondo did not prefer the use of hemimellitic acid for making the esters and thus it would not have been obvious to use it. The argument was not persuasive.
Hemimellitic acid is recited in a small list of acids useful for making the esters out of all useful aromatic acids suitable, and thus makes it obvious.
Applicant previously argued that there was no motivation to used mixed alcohols to prepare the hemimellitic acid ester of Kondo. The argument was not persuasive.
Kondo teaches alcohols suitable for preparing the ester and does not limit the alcohol used to one type and thus makes the use of mixtures to prepare the same type of ester, obvious.
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.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771