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 06/18/2026 has been considered and entered. The response was considered but was not found to be persuasive. Therefore, the previous rejections are maintained.
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, 5 – 14 are rejected under 35 U.S.C. 103 as being unpatentable over Okaniwa et al. (JP 29 60 561 B2) in view of Katou et al. (WO 2011 098 616 A1)
In regard to claim 1, Okaniwa teaches grease for a reduction gear [0001]. The grease comprises polyoxyalkylene ether such as polyoxypropylene monobutyl ether at 100 parts as base oil, 2 to 35 parts of fatty acid metal salt such as lithium 12-hydroxystearic acid salt (i.e., thickener), 1 to 35 parts of polytetrafluoroethylene (ptfe) meeting the limitation of the first solid lubricant of the claim [0005 – 0011, Examples 1 – 5]. The composition can comprise additives such as antioxidants, rust inhibitors, metal deactivators, extreme pressure agents and antiwear agents such as phosphorus compounds etc., and, wherein such additives can be present in combined amounts of 5% or less [0012 – 0014]. The second solid lubricant of the claim such as tricalcium phosphate or sodium sebacate is not particularly recited.
Katou teaches grease composition for various types of gears such as for automobile parts similar to Okaniwa (page 3). The grease comprises a tricalcium phosphate (page 2). The tricalcium phosphate is present at from 0.1 to 20% which can further improve thickening and improves anti-fretting corrosion properties (page 6). Optional ingredients can include rust inhibitors such as sodium sebacate and thus when used, would be present at very minor amounts of from about 0% to less than 50% in the composition (page 12, 16). The tricalcium phosphate and/or sodium sebacate each provide the second solid lubricant of the claim.
It would have been obvious for persons of ordinary skill in the art at the time the claim was filed to have added the additives of Kato, such as tricalcium phosphate and optionally sodium sebacate and in their recited amounts, as ingredients in the grease of Okaniwa, as Katou teaches that they are useful for improving the properties of the grease.
In regard to claim 5, Okaniwa and Katou combined teach the grease having the claimed ingredients in the recited amounts.
In regard to claim 6, Okaniwa and Katou combined teaches grease for gears thus providing for the gear as a mechanical part comprising the grease.
In regard to claims 7 – 13, Okaniwa and Katou combined teach the grease which comprises the base oil in the claimed amounts absent the additives.
In regard to claim 14, Okaniwa and Katou combined teach the grease. Okaniwa does not require the presence of reactive additives.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 3, 5, 6, 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 6 of copending Application No. 18/849,131. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application recites grease and mechanical component containing the grease having a polyoxyalkylene ether, ptfe and tricalcium phosphate as the first and second solid lubricant in the claimed amounts.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 7 – 13 are further rejected in view of Okaniwa et al. (JP 29 60 561 B2) and optionally further in view of Katou et al. (WO 2011 098 616 A1) which provide the amount of the base oil and the type, the presence of the claimed thickeners in the claimed amounts and the presence of optional additives such as antioxidant which are useful in grease compositions and thus would be obvious to have added them to the grease of the copending application.
Response to Arguments
Applicant’s arguments have been considered but were not found to be persuasive.
Applicant argues the prior art do not demonstrate the effects of load bearing performance and heat resistance of the composition. The argument is not persuasive.
The claims do not recite such limitations. Also, to the extent that Okaniwa in view of Katou teaches the composition and ingredients of the claims, it would be expected to demonstrate similar properties.
Applicant argues there is no reason for combining Okaniwa and Katou to provide the effect of improved load bearing performance but that the examiner applies hindsight reasoning for their combination. The argument is not persuasive.
Okaniwa and Kato are drawn to grease and additives for gear and thus provide motivation for their combination. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant maintains that the combination of the claimed ingredients provides synergistic benefits not contemplated by the prior art.
To the extent that the applicant is attempting to demonstrate synergistic, surprising and unexpected benefits from the use of the solid lubricants in the grease, the results have been considered but were not found to be persuasive.
The inventive examples are not commensurate in scope with the claims.
While the independent claim allows the ptfe to be present at 1 to 15% in the claims as first solid lubricant in the composition, the examples require that it is present at the specific amount of 10% which does not support the breadth of the claims.
While the claims allow the second solid lubricant of tricalcium phosphate and/or sodium sebacate in the grease, the inventive examples require either a tricalcium phosphate or a sodium sebacate each to be used alone which does not support the breadth of the claims.
The results are not persuasive.
The results compare inventive compositions having the claimed solid lubricant with a comparative example that does not comprise the second solid lubricant additive and demonstrates an improvement in load bearing performance of the grease. The results do not demonstrate criticality of the claimed amounts. The results do not demonstrate synergistic benefits but merely provide additive benefits of using higher concentrations of solid lubricants (ptfe + tricalcium phosphate/sodium sebacate) in the inventive greases as compared to comparative grease with lower amount of solid lubricant.
Therefore, the applicant fails to provide inventive examples that are commensurate in scope with the claims for demonstrating unexpectedly improved results sufficient to rebut the case of obviousness.
Applicant does not disparage the rejections based on obviousness double patenting which are hereby maintained.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAIWO OLADAPO whose telephone number is (571)270-3723. The examiner can normally be reached 8-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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