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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/23/26 has been entered.
Claim Rejections - 35 USC § 103
Claims 1-7, 9-11, 15-19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Yanagisawa (JP 2021-123691 A) in view of Saito (U.S. PG Pub. No. 2017/0275558).
An English-language machine translation of Yanagisawa, which is attached, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the machine translation unless otherwise stated.
In paragraph 1 Yanagisawa discloses a lubricating grease composition, and in paragraph 8 discloses that the composition comprises a base oil and a thickener. In paragraph 16 Yanagisawa discloses that the base oil is preferably a synthetic hydrocarbon oil, which can be a polyalphaolefin, as recited for the base oil of claim 1. In paragraphs 19 and 22 Yanagisawa discloses that the thickener is preferably a urea-based thickener, in particular a diurea thickener as in the urea-based thickener of claim 1.
In paragraph 17 Yanagisawa discloses that the base oil preferably has a viscosity ranging from 10 to 30 mm2/s at 40° C (paragraph 17 of the original Japanese reference makes clear that the “NER” in the machine translation corresponds to the superscript “2”), within the ranges recited in claims 6 and 18. In paragraph 8 Yanagisawa discloses that the grease further comprises an acidic phosphate ester, as recited in claim 10. In paragraph 30 Yanagisawa discloses that the acidic phosphate ester is preferably present in an amount of 0.1 to 10% by weight, more preferably 1 to 5% by weight, encompassing the range recited in claim 11.
In paragraph 13, Yanagisawa discloses that the grease is preferably used in sliding portions between rubber members and metal members. In paragraphs 39 and 41 and the ensuing examples, Yanagisawa discloses sliding between a metal plate or disk and a ball or O-ring made of NBR, meeting the method limitation of newly added claim 21.
The differences between Yanagisawa and the currently presented claims are:
i) Yanagisawa does not specifically disclose the urea-based thickeners of claim 1, in particular diurea thickeners having the claimed ratio of chain hydrocarbon groups to alicyclic hydrocarbon groups.
ii) Yanagisawa does not specifically disclose the worked penetration of the grease. This relates to claims 4 and 16.
iii) Yanagisawa does not disclose combining the polyalphaolefin base oil with an ester oil. This relates to claims 7, 9, and 19.
iv) Some of the ranges of Yanagisawa and Saito overlap or encompass the claimed ranges rather than falling within them.
With respect to i), In paragraph 1 Saito discloses a grease composition used for lubricating mechanical parts having steel portions to be lubricated. In Example 5 of Table 1 (paragraph 91), Saito discloses a grease composition comprising a synthetic hydrocarbon oil E and an alicyclic aliphatic diurea D. In the section of paragraph 91 following the tables (page 8 of Saito), Saito discloses that the acyclic aliphatic diurea D is the reaction product of a mixture of cyclohexylamine and octadecylamine with one mole of diphenylmethane diisocyanate, where the molar ratio of cyclohexylamine to octadecylamine is 3:7, leading to a diurea product meeting the limitations of the urea-based thickener (B) of claim 1 where the groups derived from the octadecylamine are the chain hydrocarbon group of claim 1 and the groups derived from the cyclohexylamine are the alicyclic hydrocarbon group of claim 1, where the X/Y ratio is 7:3, within the range recited in claim 1. The octadecyl and cyclohexyl groups derived from the octadecylamine and cyclohexylamine are saturated, meeting the limitations of claims 2-3 and 15.
It would have been obvious to one of ordinary skill in the art to include the diurea thickener of Saito as the diurea thickener in the grease composition used in the method of Yanagisawa, since it falls within the scope of the diurea thickeners disclosed by Yanagisawa and Saito teaches that it is suitable for use as a grease thickener.
With respect to ii), Saito discloses in paragraph 63 that the grease of the reference preferably has a worked penetration of 200 to 400, encompassing the ranges recited in claims 4 and 16. Saito further teaches that the worked penetration of the grease is adjusted according to the application. Saito therefore indicates that the worked penetration is a result-effective variable adjustable by one of ordinary skill in the art. Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It therefore would have further been obvious to adjust the worked penetration of the grease of Yanagisawa and Saito to arrive at a range within or overlapping the ranges recited in claims 4 and 16.
While Saito does not specifically disclose the unworked penetration of the composition at -40° C, or the ratio of the unworked penetration at -40° C to the worked penetration at 25° C, Yanagisawa and Saito meet the compositional limitations of the claims, and as discussed above, Saito discloses a thickener having groups derived from octadecylamine (stearylamine) and cyclohexyl amine in a molar ratio of 7:3, within the claimed range and corresponding to thickener (B1) of the examples of the current specification. The examples of the current specification provide evidence that the grease of Yanagisawa and Saito, containing the thickener of Sato and having a worked penetration within the claimed range, will have an unworked penetration at -40° C and a ratio of unworked to worked penetration in ranges at least overlapping the ranges recited in claims 1, 5, and 17; the examples having an unworked penetration or ratio outside the claimed ranges are those that have a stearylamine to cyclohexylamine outside the claimed range.
With respect to iii), Yanagisawa discloses in paragraph 16 that ester oils, as recited in claims 7 and 19, are also suitable base oils, and in paragraph 18 discloses specific suitable ester oils such as DOS, which has a viscosity of 11 mm2/s, within the range recited in claim 9. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted). It therefore would have been obvious to one of ordinary skill in the art to combine the polyalphaolefin oil and the ester oil in the base oil of the composition and method of Yanagisawa and Saito, rendering claims 7, 9, and 19 obvious.
With respect to iii), See MPEP 2144.05(I): “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);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
In light of the above, claims 1-7, 9-11, 15-19, and 21 are rendered obvious by Yanagisawa in view of Saito.
Claims 8 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Yanagisawa in view of Saito as applied to claims 1-7, 9-11, 15-19, and 21 above, and further in view of Takane (U.S. PG Pub. No. 2016/0002558).
The discussion of Yanagisawa in view of Saito in paragraph 3 above is incorporated here by reference. Yanagisawa and Saito render obvious a composition meeting the limitations of claims 7 and 19, comprising a combination of polyalphaolefin oil and ester oil, but do not specifically disclose the concentration of ester oil.
Takane, in paragraph 15, discloses a bearing grease composition comprising a base oil and a thickener. In paragraph 22 Takane discloses that the thickener can be a diurea compound, as in the composition of Yanagisawa and Saito. In paragraph 34 Takane discloses that a mixture of a polyalphaolefin and an ester is a preferred based oil. In paragraph 57 Takane discloses that the mass ratio of the polyalphaolefin to the ester is preferably in a range of 50:50 to 93:7, particularly preferably from 70:30 to 90:10, leading to ester concentrations relative to the overall base oil overlapping the ranges recited in claims 8 and 20. See MPEP 2144.05(I): “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);”
It would have been obvious to one of ordinary skill in the art to include the ester in the polyalphaolefin/ester base oil blend of Yanagisawa and Saito in the amount taught by Takane, since Takane teaches that it is a preferred ester amount for a similar diurea-thickened grease.
Response to Arguments
Applicant's arguments filed 2/23/26 have been fully considered but they are not persuasive. Applicant argues that Saito is silent about a temperature at which the worked penetration is measured. The examiner submits that one of ordinary skill in the art would understand that the lack of explicit disclosure regarding the temperature would indicate room temperature (about 25°), a position supported by Saito measuring other properties at 25° C (see paragraphs 68-76). Moreover, as discussed in the rejection, Saito indicates that the worked penetration is a result-effective variable, and one of ordinary skill in the art would therefore been motivated to optimize the worked penetration at whatever temperature was needed for the application.
Applicant also argues that Saito does not teach the unworked penetration and the ratio of unworked penetration to worked penetration recited in the amended claims. However, as discussed in the rejection set forth above, the examples of the current specification indicate that the relationship of the unworked penetration to the worked penetration is a function of the thickener, particularly the ratio of octadecylamine to cyclohexylamine, and the thickener of Saito relied upon in the rejection (alicyclic-aliphatic diurea D disclosed in paragraph 91 of Saito, after the tables) has a ratio of 7:3, corresponding to the thickener (B1) used in the inventive examples of the specification. The grease of Yanagisawa and Saito, when blended or optimized to a worked penetration value within the claimed range or a range encompassing the claimed range, will therefore also have an unworked penetration and a ratio of unworked penetration to worked penetration in ranges at least overlapping the ranges recited in the amended claims.
Conclusion
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771