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 12/10/2025 has been considered and entered. The response has been considered but was not found to be persuasive. Therefore, the previous rejections are maintained.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/13/2026 has been entered.
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 – 3, 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 regards 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 regards to claims 2, 3, 5, Okaniwa and Katou combined teach the grease having the claimed ingredients in the recited amounts.
In regards to claim 6, Okaniwa and Katou combined teaches grease for gears thus providing for the gear as a mechanical part comprising the grease.
In regards to claims 7 – 13, Okaniwa and Katou combined teach the grease which comprises the base oil in the claimed amounts absent the additives.
In regards 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 provides a declaration by Yoshiyuki Nagasawa dated 12/10/2025 for arguing that the composition of the claims provides beneficial effects when the first and optionally second solid lubricants of the claims are used. The argument is not persuasive.
Combination of known additives, of the prior art, into their grease to provide improvement is expected.
To the extent that 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 any suitable amount or from 0.5 to 20% in a dependent claim as first solid lubricant in the composition, the examples requires 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 to be present at any suitable amount or from 0.5 to 10% in the grease, the inventive examples require either a tricalcium phosphate or a sodium sebacate each to be used alone at the claimed amounts, which does not support the breadth of the claims.
While the claims can allow for the ptfe and the phosphate and/or sebacate to be used at ratios of 10:3-5, the inventive examples do not particularly limit the ratios but allows for ratios of 10:0.5-10 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 demonstrated an improvement in load bearing performance of the grease. The results do not demonstrate criticality of the claimed amounts or ratios. The results do not demonstrate synergistic benefits but merely provides 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, 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.
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771