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 October 15, 2025 in which claims 1, 3, 5, and 9-13 were amended.
The rejections of the claims under 35 USC 112 are withdrawn in view of the amendments to the claims.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 1-2, 4-9, 13, 16-17 and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Seemeyer (US 20200157454- appears on PTO 892).
Seemeyer teaches a lubricant to treat surfaces of drive elements in machines and conveying systems, which are used for the production of foodstuffs, in which direct contact of the lubricant composition with the food is possible and corresponding food-legal approval of the lubricant composition is required (USDA or NSF, Kosher, Halal) (see para 0095). The lubricant is used in installations and machines for producing and conveying foodstuffs (see para 0096).
The base oil of the lubricant composition is selected from the group consisting of polyglycols, silicone oils, PFPE, mineral oils, esters, synthetic hydrocarbons, including preferably PAO, m-PAO, native oils and derivatives of native oils, and the mixtures of base oils mentioned above. Particular preference is given to using as base oil synthetic hydrocarbons, including polyalphaolefins (PAO) and metallocene-catalyzed PAO (m-PAO) and mixtures thereof (see para 0054; 0057). The base oils have a viscosity in the range of 30-300 mm2/s and is present in the composition in an amount of 50 to 99 % by weight. This teaching suggests a pour point of at most -20 C (see para 0060 and 0062).
The lubricant may be a grease that is thickened with ureas, Aerosil, metal soaps and metal complex soaps. Preferred thickeners are lithium soaps and lithium complex soaps (see para 0055; 0088). The thickener is present in an amount of from 3 to 40% by wt and a solid lubricant (PTFE, BN, etc.) may be present in an amount up to 30 % by wt (see para 0055; 0068; claim 16). Seemeyer teaches that up to 15 % by wt of customary additives may be present in the composition (see para 0056; 0068). Seemeyer meets the limitations of the claims other than the differences that are set forth below.
Seemeyer does not exemplify a mixture of grease wherein both PAO and m-PAO are present or wherein a further base oil is used in the claimed proportions. However, given that Seemeyer teaches that the base oil is present in the composition in an amount of 50 to 99% and teaches that a mixture of PAO and m-PAO may be used and a mixture of other base oils, a prima facie case of obviousness exists because it would have been obvious to one of ordinary skill in the art to optimize the proportions of the PAO and m-PAO and the additional base oil through routine experimentation for the best results. As to optimization of results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Seemeyer does not specifically teach that a co-thickener is present in less than 5 wt% in relation to the total weight of the lubricant composition. However, it would have been reasonable to one skilled in the art to use less than 5 wt % of a co-thickener because Seemeyer teaches that the composition may contain up to 40% by weight of the thickener and to add an additional 5 % would produce a grease that would lead to critical issues such as excessive heat generation, hardening of the grease, component wear and potential equipment failure.
With respect to the lubricant composition being NSF/H1 compatible, it would be reasonable to expect that the lubricant of Seemeyer would meet this limitation because he teaches that the lubricant meets the approval of NSF.
Claims 3, 10-12, 14-15, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Seemeyer (US 20200157454) as applied to the claims above, and further in view of JP2008143958.
Seemeyer has been discussed above. Seemeyer does not specifically teach that the polyalphaolefin is produced from the claimed olefins of claim 3. However, JP teaches this difference.
JP teaches a grease that contains C2-C20 olefins (decene) that are dimerized in the presence of a metallocene complex catalyst (see abstract and page 4, fifth paragraph beneath BEST MODE).
Seemeyer does not specifically teach that the thickener may be polyisobutylene or a lithium soap of 12-hydroxystearic acid and/or stearic acid. However JP teaches this difference (see page 8, para 9 through line 1 of page 9 and the last paragraph of page 9).
It would have been obvious to one of ordinary skill in the art to prepare the PAO from an C2-C20 olefin because JP teaches that these olefins are normally used to prepare such PAO.
It would have been obvious to one of ordinary skill in the art to use a lithium soap of 12-hydroxystearic acid and/or stearic acid to thicken the grease because JP teaches that these are the preferred thickeners for grease compositions. It also would have been obvious to one of ordinary skill in the art to include polyisobutylene in the claimed proportions because JP teaches that the compound is a known thickener that is used in grease compositions.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that Seemeyer mentions lithium soap (as well as polyalphaolefin) only in rote lists (see. e.g., para [0055] / [0059]). Applicant argues that the examples of Seemeyer nor the teachings of Seemeyer disclose lithium soap in combination with polyalphaolefin. Lastly, Applicant argues that Seemeyer does not explicitly disclose that, if lithium soap is used together with polyalphaolefin, the amount of the other thickeners (co- thickener) is below 5 wt.%.
It should be pointed out that Seemeyer does not anticipate the present claims, but instead renders the claims obvious. Seemeyer teaches that the preferred base oil is polyalphaolefin and that one of the particularly preferred thickeners include lithium soaps or lithium complex soaps. These are preferred components and are not “only in rote lists”. With respect to the use of less than 5 wt % of a co-thickener, it would have been reasonable to one skilled in the art to use less than 5 wt % of a co-thickener because Seemeyer teaches that the composition may contain up to 40% by weight of the thickener and to add an additional 5 % would produce a grease that would lead to critical issues such as excessive heat generation, hardening of the grease, component wear and potential equipment failure. Furthermore, the skilled artisan would know how to optimize the use of any secondary thickener to produce a grease having the desired properties.
Applicant argues that JP (Fujinami) cannot be properly combined with Seemeyer because JP has no relevance to food-grade lubricants or lubrication. Rather, the disclosure of JP describes a grease for machine applications such as automobiles, industrial machines, or small bearings in electrical devices such as hard drive disks or CD players, with an object of JP being low evaporation loss.
The skilled artisan reading JP would definitely recognize that machine tools used in the food/feed, etc. process would be considered an industrial machine. JP teaching the use of a base oil that is used in these industries and using a lithium soap and polyisobutylene that are also used in these industries would imply that the lubricant would be NSF/HI compatible. Furthermore, the skilled artisan having Seemeyer before her/him would recognize that only compounds that are food safe should be added to Seemeyer.
Applicant argues that the polyisobutylene of the present invention can act as a viscosity index improver and allows an increase in base oil viscosity and an improvement in adhesion.
JP teaches the use of the polyisobutylene as a thickener. However, it is well known in the lubricant art that lubricating oil additives may have multiple uses. The use of the polyisobutylene as a thickener would also perform/function as a viscosity index improver.
Applicant argues that unexpected results are obtained with the use of the polyisobutylene. However, it should be noted that the showings are not commensurate in scope with the claims. The independent claim does not contain a polyisobutylene and the examples do not contain co-thickeners. The examiner cannot ascertain if unexpected results are obtained.
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 CEPHIA D TOOMER whose telephone number is (571)272-1126. The examiner can normally be reached Monday-Friday.
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/CEPHIA D TOOMER/Primary Examiner, Art Unit 1771 18850583/20251212