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 01/23/2026 has been considered and entered. The amendment overcomes the rejections Suetsugu et al. (US 2018/0037842) for failing to teach the amounts of urea thickener as claimed, and which are hereby withdrawn. The amendment does not overcome the rejections based on obviousness in view of Watanabe (US 2020/0148970) which are hereby 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/23/2026 has been entered.
Claim Rejections - 35 USC § 103
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.
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.
Claims 1, 2, 4 – 10, 12 – 14, 17 – 19 are rejected under under 35 U.S.C. 103 as obvious over Watanabe (US 2020/0148970)
In regards to claim 1, Watanabe teaches grease composition comprising base oil A), thickener B) and an additive C) (abstract). The thickener may be a soap-based or urea-based thickener [0041]. The thickener has a particle size of 1 mm or less [0067, 0068]. The thickener can be one or more, i.e., mixtures [0041]. The thickener is present in the grease in preferred amounts of from 1 to 40%, and thus allows for urea thickener to be present in amounts overlapping the claimed range [0085]. Also, the preferred amount of the thickener in general is so close to the claimed range that it makes it obvious. A generally allowed range would be broader than the preferred range and thus could be further closer to and/or overlap the claimed range.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). Since the lubricant has the claimed ingredient having particle diameters in the claimed range, it would be expected to provide similar shear viscosity and shear rate properties as claimed.
It is noted that a prima facie case of either obviousness has been established when the reference discloses all the limitations of a claim except for a property and the examiner cannot determine whether or not the reference possesses properties that render obvious the claimed invention but has a basis for shifting the burden of proof to applicant, as per In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See also In re Best, 195 USPQ 430,433 (CCPA 1977) as to the providing of this rejection under 35 USC 103 in addition to the rejection made above under 35 USC 102.
In regards to claim 2, Watanabe teaches the lubricant having a urea thickener as previously stated.
In regards to claim 4, Watanabe teaches the lubricant which would be suitable for providing the intended use as impregnated bearing oil as claimed.
In regards to claim 5, Watanabe teaches the use of the composition for bearings and machine tools and thus when the composition is applied to such devices the claimed limitation is intrinsically provided [0238].
In regards to claim 6, Watanabe teaches the composition having the claimed thickener having particles in the claimed size and thus provides the method of producing the lubricant by mixing the thickener in the oil.
In regards to claim 7, Watanabe provides the method and teaches the composition having the claimed thickener as previously stated.
In regards to claim 8, Watanabe provides the method and teaches the composition having the thickener in amounts overlapping the claimed range as previously discussed.
In regards to claim 9, Watanabe provides the method and teaches the composition having the worked penetration of the claim [0227].
In regards to claims 10, 12 – 14, 17 – 19, Watanabe provides the composition, thickener and worked penetration. The composition will be capable of providing the intended use as impregnation bearing oil.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant provides a second declaration by Shizuka Agano dated 01/23/2026 in support of demonstrating unexpected results. Both declarations have been considered but were not found to be persuasive.
The inventive examples are not commensurate in scope with the claims.
While the claims allow for the particle sizes of the thickener to be 0.10-9.5 mm, the inventive examples 1 to 3 requires sizes of from about 4 to about 8 mm which does not support the breadth of the claimed range.
While the claims require thickeners to be present in oil in amounts of from 0.1% to less than 0.8% in the composition, the inventive examples strictly require the presence of the thickener at 0.5% which does not support the breadth of the claims nor demonstrates criticality of the claimed range.
The result is not persuasive.
The results only demonstrate a single thickener concentration of 0.5% which does not demonstrate criticality at 0.1% or at 0.8%.
Applicant thus fails to provide inventive examples that are commensurate in scope with the claims and sufficient to demonstrate unexpected results for rebutting the case of obviousness.
Applicant argues that neither Watanabe nor Suetsugu teach the claimed amount of thickener or the claimed properties of the grease. The arguments are not persuasive.
The arguments over Suetsugu et al. (US 2018/0037842) are moot as the reference is not currently being applied in making the rejections as discussed above. Watanabe teaches thickeners having preferred amounts that are so close to the claimed range as to make it obvious. Since the grease of Watanabe is similar to that of the claims, similar properties would be expected.
Applicant argues that the claimed composition demonstrates superior and unexpectedly improved results over the prior art. The argument is not persuasive based on the lack of commensurate scope and lack of a proper demonstration of unexpected results as discussed above.
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771