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 12/01/2025 has been considered and entered. The amendment requires that the calcium carbonate is surface treated with a rosin compound which Hayama et al. (WO2022/071491A1) does not teach, and which overcomes the previous rejections which are hereby withdrawn. New grounds of rejections are made below in further view of Nakatani et al. (JP 2009-209179A)
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/01/2025 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 – 4, 6 are rejected under 35 U.S.C. 103 as being unpatentable over Hayama et al. (WO2022/071491A1) in view of Akita et al. (CN 1961162A) and further in view of Nakatani et al. (JP 2009-209179A)
In regards to claims 1, 2, Hayama teaches lubricant composition having a consistency of 200 to 400 (i.e., grease) (abstract). The base oil is not limited and can be mineral and/or synthetic oil such as synthetic hydrocarbon oil, ester, polyglycol oils, and mixed synthetic oils [0010, 0011]. The lubricant is a grease [0032]. The composition contains solid lubricant such as alumina (i.e., aluminum oxide), zinc oxide, calcium carbonate etc. [0033]. The solid lubricants can be present at from 0.1 to 30% [0034]. The composition can comprise additional solid lubricants [0038]. Thus, combinations of the solid lubricants are obvious.
According to MPEP 2144.06, combining equivalents useful for the same purpose in order to form another additive for the same purpose is obvious, and thus the use of two or more solid lubricants such as alumina, zinc oxide and calcium carbonate would be obvious. The solid lubricants such as alumina and zinc oxide are thermally conductive fillers of the claims. Thus, Hayama provides the thermally conductive grease of the claims. The grease is useful in bearings, automobile parts and industrial machines etc. [0001, 0044].
While the particle sizes of the solid lubricants such as calcium carbonate are not particularly recited, Akita is added to teach analogous grease for bearings, automobile parts, and industrial machines which can comprise solid lubricants having particle sizes of from 0.1mm-100mm (i.e., 100 nm to 100,000 nm) (page 10).
Thus, such particle sizes would have been obvious for the solid lubricant particles of Hayama since Akita teaches suitable sizes for solid lubricants used in an analogous grease composition. Particle sizes of from 0.1mm-100mm (i.e., 100 nm to 100,000 nm) overlaps the sizes for the calcium carbonate, alumina and zinc oxide according to the limitations of calcium carbonate and fillers A and B of the claim. Alternatively, in view of Berry et al. (CN101855329A) which teaches grease for bearings and automobile parts comprising zinc oxide and alumina as heat conducting fillers in amounts of from 1 to 10% [0083]
Hayama teaches the composition which can comprise base oils including those of the claim and thus makes it obvious to comprise blends of polyalphaolefins and esters. The esters can be monoester, diester, polyol ester and aromatic esters [0010]. Such esters are known to include esters of organic acids and which would have been obvious.
Hayama does not particularly teach that the calcium carbonate is surface coated with rosin as claimed. Nakatani similarly teaches grease for rolling bearings [0056 – 0058]. The grease comprises calcium carbonate which are optionally further surface treated with rosin compounds in order to improve compatibility with base oil [0035].
Thus, persons of ordinary skill in the art at the time the claim was filed would have found it obvious to have surface treated the calcium carbonate particles of Hayama with rosin compounds in order to improve their compatibility with the oil, as Nakatani teaches such modifications are useful for similar grease.
In regards to claim 3, Hayama in view of Akita and Nakatani teaches the compositions having the solid lubricants including alumina, zinc oxide and calcium carbonate in amounts of from 0.1 to 30%, and thus allows any individual component to be present in varied amounts compared to the rest which overlaps the claimed limitation. Alternatively, in view of CN101855329A which teaches grease for bearings and automobile parts comprising zinc oxide and alumina as heat conducting fillers in amounts of from 1 to 10%, the claimed ratios of calcium carbon to alumina and zinc oxide amounts are overlapped and persons of ordinary skill in the art at the time the claim was filed would have found it obvious to have used such ingredients in the recited amounts in the composition of Hayama, as they are taught as suitable amounts for use in similar applications [0083].
In regards to claim 4, Hayama in view of Akita and Nakatani teaches the composition having polyglycol oils. Such polyglycols are well known to be polyalkylene glycols (i.e., PAG oils) which are obvious. Hayama also teaches dispersants comprising polyalkylene glycols and thus would comprise at least an OH group [0023].
In regards to claim 6, Hayama in view of Akita and Nakatani teaches the composition having the claimed ingredients.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that Hayama fails to teach surface treatment of the calcium carbonate with rosin. However, the argument is moot based on the teachings of Nakatani.
Applicant argues that the particle sizes of the calcium carbonate of the claims are not obvious because although there is an overlapping range at 100 nm, Akita prefers larger particle sizes and there would be no motivation to uses the sizes of the claims. The argument is not persuasive.
Overlapping ranges are prima facie obvious. Since, Akita teaches the claimed range, such ranges would be considered obvious and effective for the invention.
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771