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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 4/13/2026 has been entered.
Response to Amendment
Applicants’ response filed 4/13/2026 did not include any claim amendments. Applicants’ arguments in light of the Affidavit filed 4/3/2026 signed by Hisayuki Osawa overcome the 35 USC 102 rejection over Saita and the 35 USC 103 rejection over Yoshinari from the office action mailed 10/16/2025; therefore, these rejections are withdrawn. A new ground of rejection is set forth below.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Cha et al., Korean Publication No. KR20040011235A 9hereinafter referred to as Cha).
Regarding claims 1-6, Cha discloses a grease composition comprising; 10-25 wt% of a diurea compound formed by reacting MDI and octadecylamine as the sole thickener (as recited in claim 1 and reads on claim 3) (Para. [0020]-[0021]), a major concentration of a mineral base oil having a KV100 of 6-10 cSt (as recited in claim 1 and reads on claims 4-6) (Para. [0015] and see Examples) wherein the temperature the base grease is heated to is 195°C (which reads on the roll stability test limitation of claim 1 per the instant specification and the Affidavit filed 4/13/2026 by applicants).
Cha discloses all the limitations discussed above but does not explicitly disclose the worked penetration as recited in claim 1, nor the limitations of claim 2.
It is the position of the examiner that as Cha discloses the grease components discussed above that Cha would therefore inherently read on the limitations of claims 1-2.
Response to Arguments
Applicants’ arguments filed 4/13/2026 regarding claims 1-6 have been fully considered and are moot as the rejections from the previous office action have been withdrawn as discussed above.
It is the position of the examiner that the reference discussed above adequately reads on the claims as instantly recited.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 5712726381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771
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