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 .
This Office action is in response to the amendment filed August 18, 2025 in which claims 1, 5, 11 and 18 were amended.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 4 and 6-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim (US 20170066992-appears on PTO 892).
Kim teaches a lithium salt thickener that enhances thermal stability at high temperature and operability at low temperature, and a grease composition including the same (see abstract). The grease composition comprises a) a synthetic polyalphaolefin (PAO) base oil, b) a lithium-based thickener and, c) general grease additives (see para 0011). The grease contains from 70-85 % by weight oil (see para 0020). The lithium thickener is present in an amount of 10 to 20 % by weight (see para 0022).
Kim also teaches that an oil separation regulator may be included as an additive. Grease exhibits an oil separation phenomenon wherein a base oil and a thickener may become separated during storage and thus oil ingredients are separated. Such an oil separation phenomenon may more readily occur at high temperature. Accordingly, Kim teaches that a styrene-based copolymer as an oil separation regulator may be included in the grease composition in order to reduce oil separation even at high temperature. The regulator may be a styrene-ethylene/propylene block copolymer (first polymer). The oil separation regulator may be used in an amount of 0.5 to 3% by weight based on the total weight of the grease composition (see para 0025). The grease also contains a viscosity regulator such as a hybrid olefin ester copolymer (second polymer). To further increase performance of the grease and satisfy user requirements, various additives may be included, such as an extreme pressure additive, an antioxidant, a corrosion inhibitor, etc. and as needed, a rust inhibitor, and/or a metal passivant (see 0023 and 0026). Kim exemplifies the components in paragraphs 0034-0040 and Table 1.
Accordingly, Kim teaching all the material limitations of the claims anticipates the claims.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 5 and 11-16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 20170066992 in view of WO 2006102153 (appears on PTO-892).
Kim has been discussed above. Kim does not specifically teach the method of making the grease. However, WO teaches this difference.
WO teaches a synthetic grease comprising a lithium thickener (see page 33; para 102). WO teaches that the grease may be prepared by any method known to a person of ordinary skill in the art and that the base oil is blended or mixed with the additives, each individually or in one or more additions in any order. WO teaches that the solubilizing of the additives can be assisted by heating the mixture to a temperature between about 25 and 200 C (see page 34, para 103).
It would have been obvious to one of ordinary skill in the art to prepare the grease as claimed because Kim does not have a preferred method and WO teaches that greases may be prepared by any method known to a person of ordinary skill in the art.
With respect to claims 14-16, the claimed steps are obvious steps and conditions that one skilled in the art would use in preparing a grease, as set forth by WO.
Claims 1, 2 and 4-10 are rejected under 35 U.S.C. 103 as being unpatentable over Brauer (US 5,358, 664) (appears on the PTO-892).
Brauer teaches gelled oils comprising an oil, an aluminum soap complex (thickener), a bleed inhibitor (first polymer) and an antioxidant (see abstract). The oil component may be 40-90 % of the composition; the bleed inhibitor may be about 5-50 %; the aluminum soap complex may be about 4-15 % and the antioxidant may be about 0.1- 2 % of the composition (see col. 3, lines 1-14).
The oil component may be mineral oil, polyalphaolefin, naphthenic or paraffinic (see col. 3, lines 20-25). The composition may also employ lithium soaps (see col 4, lines 40-44). The bleed inhibitors include styrene-ethylene-propylene-styrene block copolymers and styrene-ethylene-propylene block copolymers (see col. 5, lines 1-8). Brauer also teaches that a mixture of the bleed inhibitors may be used wherein the inhibitor may be alpha olefin oligomers of C2-C9 alkenes or block copolymers (second polymer) (see col. 4, lines 60-68). Brauer meets the limitations of the claims other than the differences that are set forth below.
Brauer does not exemplify a composition wherein all of the grease components are present. However, it would have been obvious to one of ordinary skill in the art to prepare the claimed grease because Brauer has set forth all of the components and proportions for these components.
Brauer does not exemplify a mixture of the first and the second polymer. However, Brauer does teach that more than one bleed inhibitor may be used in the composition, which suggests the use of two of the polymeric materials.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that neither Kim nor WO (Walton) discloses, teaches, or suggests the second polymer additive recited in claim 1. Furthermore, Applicants submit that Kim does not disclose, teach, or suggest any component-other than the oil separation regulator corresponding to the first polymer additive-that improves the separation resistance (long-term lubricity) and water washout characteristics of the grease composition. Likewise, Applicants submit that Walton also fails to disclose any component that improves the separation resistance (long-term lubricity) and water washout characteristics.
Kim teaches in paragraph 0024 that a viscosity regulator may be included as an additive. This viscosity regulator is a hybrid olefin ester copolymer which anticipates the olefin copolymer (OCP) of the claims. Since Kim anticipates claim 1, the grease composition would inherently improve the separation resistance and water washout characteristic.
Applicant argues that Brauer discloses a leak suppressant that serves the role of the second polymer additive of the present application. However, Applicants submit that the leak suppressant is a synthetic hydrocarbon oil or a block copolymer, not a hydrogenated styrene diblock copolymer or wax as recited in amended claim 1.
Brauer teaches the use of a bleed inhibitor which may be the styrene-ethylene-propylene-styrene block copolymer or styrene-ethylene-propylene block copolymer (first polymer). Brauer also teaches that the bleed inhibitor may be olefin copolymers (ethylene-propylene) (second polymer and an olefin copolymer (OCP). Brauer teaches that preferably a mixture of bleed inhibitors may be used. Therefore, Brauer suggests that the claimed first and second polymers may be used in his invention.
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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/CEPHIA D TOOMER/Primary Examiner, Art Unit 1771 18779572/20251107