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 .
DETAILED ACTION
This Final Office action is based on the 18/849131 application originally filed September 20, 2024.
Amended claims 1-9, filed April 17, 2026, are pending and have been fully considered. Claims 7-9 are new.
Terminal Disclaimer
The terminal disclaimer filed on April 17, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent Application Number 18/849083 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
Claims 1-9 are 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.
Regarding Claim 1 it is unclear to the ranges of 0.5% or more of first solid lubricant and second solid lubricant based on the total mass of the composition with the total mass of the first solid lubricant and the second solid lubricant is less than 15% by mass based on the total mass of the composition making the claim indefinite. The range of 0.5% or more of the first and solid lubricant fails to having a mass amount to only 15% by weight. It is not clear the upper limits due to the current specification defines specific upper limits due to the inflow ability of the grease (see page 7 of the current specification). It is recommended for applicants to amend the claims to a specific range of first and solid lubricants and/or provide further clarification.
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.
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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schlarb et al. (WO 2019/125757 A1) hereinafter “Schlarb” in view of Katou et al. (WO 2011/098616 A1) hereinafter “Katou”.
Regarding Claims 1 and 6-9
Schlarb discloses in the abstract, a lubricating grease composition.
Schlarb discloses in paragraph 0008, a suitable lubricating grease composition would therefore require to show the following properties:
High constant (or slightly declining) level of clamping force over several cycles.
Strong adhesion on metallic surfaces and resistance of being centrifuged off.
Sufficient chemical and physical resistance against all fluids (especially cutting fluids) used in the metalworking application. A hardening or washing-out of the lubricant will lead to insufficient lubrication and shorter re-lubrication intervals.
The performance of used cutting fluids should not be negatively influenced by the (chuck) lubricant.
The lubricant should not contain any toxic, environmental toxic or harmful substances.
The lubricant should have some corrosion protection to suppress corrosion which impacts negatively the lubrication and clamping forces.
Schlarb further discloses in paragraph 0010, a lubricating grease composition comprising:
a) From 15 to 65% by weight of one or more solid lubricants powders;
b) From 15 to 84% by weight of one or more base oils;
c) From 0.5 to 20% by weight of one or more adhesion improver;
d) From 0.5 to 15% by weight of one or more waxes; and
e) From 0 to 30% by weight of one or more thickeners.
Schlarb further discloses in paragraph 0012, component a) may be selected from one or more from the group of calcium oxide, zinc oxide, magnesium oxide, calcium hydroxide, zinc hydroxide, magnesium hydroxide, a carbonate such as calcium carbonate, zinc carbonate, magnesium carbonate, calcium fluoride, zinc fluoride, magnesium fluoride, polytetrafluoroethylene (PTFE), titanium dioxide, a phosphorus containing salt such as a phosphoric acid salt, a metaphosphoric acid salt, a diphosphoric acid salt (pyrophosphate), a triphosphoric acid salt (tripolyphosphate), a phosphorous acid salt, a diphosphorous acid salt, or a hypophosphorous acid salt and zinc salts not listed above.
Schlarb further discloses in paragraph 0014, if appropriate Component a), the solid lubricant, may be hydrated or treated to be rendered hydrophobic using, for example stearic acid and/or metal salts of fatty acids such as metal salts of monocarboxylic fatty acids or hydroxymonocarboxylic fatty acids, as well as metal salts of fatty acids derived from animal oils or from vegetable oil, e.g., a seed oil, which are used in the production of metal soaps. Preferable are metal salts of monocarboxylic fatty acids or hydroxymonocarboxylic fatty acids, especially metal salts of the aforementioned fatty acids having 8 to 22 carbon atoms. The following are specific examples of the above metal salts of monocarboxylic fatty acids: metal salts of a lauric acid, myristic acid, palmitic acid, stearic acid, behenic acid, myristoleic acid, palmitoleic acid, oleic acid, or a linoleic aid. The following are specific examples of metals salts of hydroxymonocarboxylic acids: metal salts of 12-hydroxystearic acid, 14-hydroxy stearic acid, 16-hydroxystearic acid, 6-hydroxystearic acid, or 9,10-hydroxystearic acid. The aforementioned metal salts of fatty acids may comprise metal salts of one or more types selected from the fatty acid salts of lithium, zinc, magnesium, sodium, or aluminum. Any suitable mixture of the above may be utilized, for example hydrated tricalcium phosphate and calcium carbonate treated with stearic acid. Component a) may be present in a range of from 15% by weight to 65% by weight of the composition, alternatively 20% to 60% by weight of the composition, alternatively 30% by weight to 60% by weight of the composition.
Schlarb discloses in paragraph 0015, component b) is one or more base oils. Examples thereof include one or more base oil(s) classified by the American Petroleum in Groups I, II, III, IV and V. Lubricant base oils include natural lubricating oils, synthetic lubricating oils, and mixtures thereof.
Schlarb further discloses in paragraph 0018, Group V base oils include base oils not included in Groups I-IV such as polyinternal olefins (PIO); polyalkylene glycols (PAG); alkylated aromatics such as alkylated benzenes (e.g., dodecylbenzene, tetradecylbenzene, di-nonylbenzene, and di-(2-ethylhexyl)benzene); polyphenyls (e.g., biphenyls, terphenyl and alkylated polyphenyls); synthetic esters such as esters of dicarboxylic acids (e.g., dibutyl adipate, di(2-ethylhexyl)sebacate, di-n-hexyl fumarate, dioctyl sebacate, diisooctyl azelate, diisodecyl azelate, dioctyl phthalate, didecyl phthalate and dieicosyl sebacate); esters of carboxylic acids, polyol esters (e.g., neopentyl glycol, trimethylolethane, trimethylpropane, pentaerythritol, dipentaerythritol and tripentaerythritol); phosphate esters (e.g., tricresyl phosphate, trioctylphosphate, and diethyl ester of decylphosphonic acid); silicones, silicone based copolymers, polyisobutylene (PIB) and halogenated hydrocarbons.
It is to be noted, Schlarb discloses the base oils comprise Group V base oils including polyalkylene glycols but fails to specifically teach Group V base oils polyalkylene glycols comprise polyoxyalklyene glycols.
However, it is known in the art that synthetic oils of Group V of base oils include polyoxyalkylene glycols, as taught by Katou.
Katou discloses on page 3 lines 10-18, as to the applications of this grease composition, whilst it can naturally be used in generally used machines, bearings and gears, it displays excellent performance under the rather more rigorous conditions which accompany microvibrations. For example, it can be suitably used in automobile parts such as the needle bearings of universal joints, constant velocity joints (CVJ) , wheel bearings, ball screws, screws, flexible couplings, various kinds of gears, cams and chains.
Katou discloses on page 3 lines 24-27, the grease composition comprises base oils which belong to Group I, Group II, Group III, Group IV and Group V of the API (American Petroleum Institute) base oil categories.
Katou discloses on page 4 lines 28-34 and page 5 lines 1-11, the grease composition comprising Group V synthetic base oils include, for example, naphthenic mineral oils obtained by appropriate use of a suitable combination of refining processes such as solvent refining, hydrorefining, and dewaxing in respect of lubricating oil fractions obtained by atmospheric distillation of crude oil. It is also possible to use mixtures of the above mentioned paraffinic mineral oils and naphthenic mineral oils. As examples of synthetic oils mention may be made of polyolefins, dibasic acid diesters such as dioctyl sebacate, polyol esters, alkylbenzenes, alkylnaphthalenes , esters, polyoxyalkylene glycols, polyoxyalkylene glycol esters, polyoxyalkylene glycol ethers, polyphenyl ethers, dialkyldiphenyl ethers, fluorine-containing compounds (perfluoropolyethers, fluorinated polyolefins) and silicones.
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art that the synthetic base oils of Schlarb includes the polyoxyalkylene glycols of Katou due to Katou specifically disclosing Group V synthetic oils comprise known polyalkylene glycols (i.e. polyoxyalkylene glycols).
Schlarb further discloses in paragraph 0023, component e) is a thickener for stabilizing the composition, to help retain the base oil and increase resistance towards liquids such as cutting fluids: these may include metallic single and complex soaps of lithium, aluminium, zinc, magnesium, sodium, barium and calcium as well as non-soap organic (Polymer, Polyurea, PTFE) and inorganic (Silica, Bentonite) materials and mixtures thereof, for example, lithium- l2-hydroxystrearate and zinc stearate. Component e) may be present in the composition in a range of from 0 to 30% by weight of the composition.
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding Claims 2-5
Schlarb further discloses in paragraph 0012, component a) may be selected from one or more from the group of calcium oxide, zinc oxide, magnesium oxide, calcium hydroxide, zinc hydroxide, magnesium hydroxide, a carbonate such as calcium carbonate, zinc carbonate, magnesium carbonate, calcium fluoride, zinc fluoride, magnesium fluoride, polytetrafluoroethylene (PTFE), titanium dioxide, a phosphorus containing salt such as a phosphoric acid salt, a metaphosphoric acid salt, a diphosphoric acid salt (pyrophosphate), a triphosphoric acid salt (tripolyphosphate), a phosphorous acid salt, a diphosphorous acid salt, or a hypophosphorous acid salt and zinc salts not listed above.
Schlarb further discloses in paragraph 0014, component a) may be present in a range of from 15% by weight to 65% by weight of the composition.
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
Applicant's arguments filed April 17, 2026 have been fully considered but they are not persuasive.
Applicants argued: “Schlarb et al. describes that component a) solid lubricants powder is presented in a range of from 15% by weight to 65% by weight of the composition (claim 1 and paragraph [0014]). In addition, the total mass of the component a) in the Examples of Schlarb et al. is not less than 20.69% by weight of the composition. On the other hand, claim 1 of the present application specifies the feature that "a total mass of the first solid lubricant and the second solid lubricant is less than 15% by mass," which is outside the range disclosed in Schlarb et al.”
Applicants arguments are not deemed persuasive. As stated in the above rejection, Schlarb further discloses in paragraph 0010, a lubricating grease composition comprising from 15 to 65% by weight of one or more solid lubricants powders and Schlarb further discloses in paragraph 0012, component a) may be selected from one or more from the group of calcium oxide, zinc oxide, magnesium oxide, calcium hydroxide, zinc hydroxide, magnesium hydroxide, a carbonate such as calcium carbonate, zinc carbonate, magnesium carbonate, calcium fluoride, zinc fluoride, magnesium fluoride, polytetrafluoroethylene (PTFE), titanium dioxide, a phosphorus containing salt such as a phosphoric acid salt, a metaphosphoric acid salt, a diphosphoric acid salt (pyrophosphate), a triphosphoric acid salt (tripolyphosphate), a phosphorous acid salt, a diphosphorous acid salt, or a hypophosphorous acid salt and zinc salts not listed above. Second, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
Applicants argued: “In addition, Schlarb et al. merely lists polytetrafluoroethylene (PTFE) as one example of the solid lubricant and does not use PTFE in the Examples. On the other hand, claim 1 of the present application specifies that a content of the first solid lubricant (e.g., PTFE) is 0.5 % by mass or more based on a total mass of the composition. Katou et al. only shows the classification of polyoxyalkylene glycols (POAG) and does not disclose or suggest any solid lubricant content.”
Applicants arguments are not deemed persuasive. It is maintained, Schlarb specifically discloses the claimed polytetrafluoroethylene as a solid lubricant. Schlarb is not relied upon for only the examples but rather its entire teachings. Of the prior art it is not picking and choosing to select one element from one list, however long the list may be. When the species is clearly named, the selection from a long list does not avoid a 103 rejection. See Ex parte A, 17 USPQ 2d 1716 (Bd. Pat. App. & Inter. 1990). Second, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sato et al. (US 2017/0074326) discloses in the abstract, a grease composition for a wheel bearing, containing (a) a base oil consisting of a mineral oil and a synthetic hydrocarbon oil, wherein the ratio of the synthetic hydrocarbon oil to the total amount of the mineral oil and the synthetic hydrocarbon oil is 40 to 60 mass %, and the base oil has a kinematic viscosity at 40° C. of 40 to 65 mm2/s; (b) a thickener of formula (A) wherein R2 is diphenylmethane, and R1 and R3, which may be the same or different from each other, each represent cyclohexyl group or a straight-chain or branched alkyl group having 16 to 20 carbon atoms, with a molar ratio of the cyclohexyl group to the total number of moles of the cyclohexyl group and the alkyl group being 50 to 90 mol %; (c) an amine type antioxidant; and (d) an amine phosphate type anti-wear agent.
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 LATOSHA D HINES whose telephone number is (571)270-5551. The examiner can normally be reached Monday thru Friday 9:00 AM - 6:00 PM.
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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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/Latosha Hines/Primary Examiner, Art Unit 1771
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