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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 10/3/2025 has been entered.
Response to Amendment
Applicants’ response filed 10/3/2025 amended claims 1, 5, 12, 15 and 23, cancelled claim 11 and added new claims 24-25. Applicants’ amendments overcome the 35 USC 112 rejections from the office action mailed 6/3/2025; therefore, the rejections are withdrawn. Also, applicants’ amendments in light of their arguments are persuasive in overcoming the 35 USC 103 rejection over Egersdorfer in view of King from the office action mailed 6/3/2025; therefore, this rejection is withdrawn. Neither applicants’ amendments nor arguments addressed below overcome the 35 USC 103 rejections over Takezaki and Fahl in view of Hishinuma from the office action mailed 6/3/2025; therefore, these rejections are maintained below.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/19/2025 was filed after the mailing date of the final office action on 6/3/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 103
5. 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.
6. 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.
7. Claims 1-4, 8, 13-16, 19, 21-22 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Takezaki et al., JP Publication No. JP2011-111475A (hereinafter referred to as Takezaki).
Regarding claims 1-4, 13-14, 16, 19 and 25, Takezaki discloses a grease composition (as recited in claim 1) (see Abstract) for use in window regulators of automobiles that have application in temperatures ranging from -20 to 150°C (as recited in claims 16 and 19) (Para. [0014] and [0117]) comprising up to 90 wt% of a silicone or PAO base oil (as recited in component (A) of claim 1 and reads on claim 13) (see Examples 1 and 3-4 and see Table 1 and see Claims 1-4 of Takezaki) to which is added 1 to 50 wt% of a resin fine particle which includes polyetheretherketone (PEEK) having an average particle size of 0.1 to 50 microns (as recited in component (B1) of claim 1 and reads on claims 2-4) (see Examples 1 and 3-4 and see Table 1 and see Claims 1-4 of Takezaki) wherein Table 1 does not include any PTFE, nor mandatory additional thickeners, but when present can be present in a range of 1 to 100 parts by weight and includes bentonite (as recited in claim 1 and reads on claims 14 and 25) (see Examples and Para. [0021]).
Takezaki discloses all the limitations discussed above but does not disclose the KV40 of the PAO base oil as recited in claim 1.
It is the position of the examiner that the range recited in claim 1 is very broad and most PAO base oils would fall within the range. Also, KV40 is related to molecular weight of the PAO which is a result effective variable which can be optimized without undue experimentation thus rendering the claims obvious.
Regarding claim 8, the claim is read on by Takezaki as Takezaki discloses all the compound limitations of claim 1 and therefore inherently reads on claim 8.
Regarding claims 15 and 21-22, see discussion above.
Claim Rejections - 35 USC § 103
8. Claims 1, 5-6, 8, 10, 12-13 and 15-25 are rejected under 35 U.S.C. 103 as being unpatentable over Fahl, US Patent No. 4,784,795 (hereinafter referred to as Fahl) in view of Hishinuma et al., US Patent Application Publication No. 2011/0218128 (hereinafter referred to as Hishinuma).
Regarding claims 1, 5-6, 8, 10, 12-13 and 16-25, Fahl discloses grease compositions for use in water fittings for use in temperatures ranging from -40 to 200°C (as recited in claims 16-18 and 22) (see Title) comprising a mixture of base oils including 60 wt% of a dimethylpolysiloxane base oil having a KV25 of 60,000 mm2/s (as recited in component (A) of claims 1 and 23 and reads on claim 20) (see Example 3) and 0 to 10 wt% of methylphenylpolysiloxane (as recited in claim 14) (Col. 4/L. 3-29) to which is added 5 to 25 wt% of thickeners including polyureas, terephthalamates, plastic powders of widely varying types such as polyamide powder, or polyfluoroethylene-propylene powder or inorganic thickeners as highly disperse silicon dioxides, bentonites, montmorillonites, hectorites and metal oxides (component (B) of claims 1 and 23 and reads on claim 12) (Col. 3/L. 9-27) wherein the composition does not contain PTFE (as recited in claim 1 and reads on claim 21) (see Example 3) nor additional mandatory thickeners (as recited in claim 25) (see Examples).
Fahl discloses all the limitations discussed above but does not disclose the particle size of the thickeners as recited in component (B) of claims 1 and 23.
Hishinuma discloses a grease composition (see Title) for use in food products/bearings (as recited in claims 8 and 19) (Para. [0025] and [0086]) comprising a base oil (see Abstract), a lithium-based thickener (see Abstract) and solid lubricants including melamine cyanurate and boron nitride having an average particle size of 0.1 to 20 µm (as recited in claim component (B6) of claims 1 and 23 and reads on claims 5-6 and 24) (Para. [0049]). It would have been obvious to one of ordinary skill in the art at the time of the invention to use the solid lubricants of Hishinuma in the composition of Fahl in order to enhance the viscometric properties of the composition as the compounds are disclosed as oiliness agents in Hishinuma.
Regarding claim 15, see discussion above.
Response to Arguments
9. Applicants’ arguments filed 10/3/2025 regarding claims 1-6, 8, 10 and 12-25 have been fully considered and not persuasive in regards to the Takezaki obviousness rejection and the Fahl in view of Hishinuma obviousness rejection set forth above.
Applicants’ arguments regarding the Takezaki reference are herein considered and are not persuasive. Applicants argue that Takezaki is not clear on whether the concentration range recited in the reference is regarding the entire lubricant composition and this is further exemplified by the example formulations of Takezaki which are outside the claimed range. This argument is not persuasive. Claim 3 of Takezaki explicitly discloses a concentration range for the fluorine-free material that encompasses and overlaps the range recited in the instant claims and clearly refers to the concentration of the fluorine-free material in relation to the entire lubricant composition. 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).”
Applicants rely on Example 3 of Fahl to say that the claims as instantly recited are not read on by Fahl as the range for the methylphenyl polysiloxane used in Fahl is outside the claimed range. This argument is not persuasive. Fahl explicitly discloses the use of Fahl in a concentration ranging from 0 to 15 wt% which clearly overlaps the range recited in claim 23. 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).”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771
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