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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/03/2025 has been entered.
Response to Amendment
Applicants’ response filed 10/3/2025 amended claims 1, 4, 9, 12 and 15, cancelled claim 8, and added new claims 18-19. Applicants’ amendments overcome the 35 USC 112 rejections from the office action mailed 6/4/2025; therefore, the rejections are withdrawn. Applicants’ amendments in light of their arguments are persuasive in overcoming the 35 USC 103 rejection over Egersdorfer in view of Sakai from the office action mailed 6/4/2025; therefore, this rejection is withdrawn. Neither applicants’ amendments nor arguments addressed below overcome the 35 USC 103 rejection over Takezaki from the office action mailed 6/4/2025; therefore, this rejection is maintained below.
Information Disclosure Statement
The information disclosure statement filed 6/12/2025 fails to comply with 37 CFR 1.98(a)(3) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each patent listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
The information disclosure statement (IDS) submitted on 8/26/2025 was filed after the mailing date of the final office action on 6/4/2025. 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 § 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 1 is 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 1 is indefinite because the claim includes a broad concentration limitation for the fluorine-free material and a narrower limitation for the fluorine-free material within the same claim.
Claim Rejections - 35 USC § 103
8. 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.
9. 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.
10. Claims 1-5, 7, 9-10, 12-15 and 17-19 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, 7, 9-10, 13-15 and 18-19, Takezaki discloses a grease composition (as recited in claim 1) (see Abstract) for use in sliding members of window regulators of automobiles that have application in temperatures ranging from -20 to 150°C (as recited in claims 13-15) (Para. [0001]-[0002], [0004], [0014], [0017] and [0117]) comprising up to 90 wt% of a silicone, PAO or ester base oil (as recited in component (A) of claim 1 and reads on claim 10) (see Examples 1 and 3-4 and see Table 1 and see Claims 1-4 of Takezaki and Para. [0020]) 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 (as recited in claim 1 and reads on claims 7, 9 and 18-19) (see Examples and Para. [0144]).
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 5, the claim is read on by Takezaki as Takezaki discloses all the compound limitations of claim 1 and therefore inherently reads on claim 5.
Regarding claims 12 and 17, see discussion above.
Claim Rejections - 35 USC § 103
11. Claims 5, 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Takezaki in view of over Egersdorfer et al., US Patent Application Publication No. 2017/0321143 (hereinafter referred to as Egersdorfer).
Takezaki discloses all the limitations discussed above including the presence of ester base oils, but does not explicitly disclose the specific ester or ether base oils recited in claim 16.
Egersdorfer discloses a high temperature grease for the food industry and have a certification rating according to NSF/H1 wherein applications can be as high as 250°C and include grease application to bearings (as recited in claims 5 and 14) (see Title and Abstract and Para. [0008] and [0042]) comprising 43 to 93.9 wt% of a trimellitic ester base oil having a KV40 within the range recited in claim 1 (as recited in claim 16) (see Abstract and Para. [0013] and see Table 1), bentonite and silicate thickeners and urea-based thickeners (see Example 17/Table 5 and Para. [0055]-[0056]), and solid lubricants including boron nitride (BN) wherein the grease does not include PTFE (see Examples). It would have been obvious to one of ordinary skill in the art at the time of the invention to use the ester base oil of Egersdorfer in the composition of Takezaki as it is a simple substitution of one known element for another in order to obtain predictable results.
Response to Arguments
12. Applicants’ arguments filed 10/03/2025 regarding claims 1-5, 7, 9-10 and 12-19 have been fully considered and are moot in regards to the rejections that were withdrawn as discussed 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).”
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 5712726381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771
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