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 21, 2025 in which claim 1 was amended and claims 5-12 were added.
The rejection of the claims under 35 USC 103 over Momiyama (US 20080132341) is withdrawn in view of the amendment to claim 1.
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Tanimura (US 20110059875-appears on PTO 1449) in view of Okaniwa (US 5,607,906) (appears on the current PTO-892) .
Tanimura provides a grease composition that can improve the durability and the temperature control properties of constant velocity joints (CVJ) and reduce the rotating torque at low temperatures, and a constant velocity joint where the above-mentioned grease composition is packed. The grease composition for constant velocity joints includes (a) a base oil containing a synthetic oil, and (b) a thickener (see abstract). In the Front-wheel drive (FF) cars and 4WD cars, the front wheels work to transmit power and control the steering. Those cars, therefore, adapt a drive shaft using a constant velocity joint capable of transmitting the rotational motion at constant speed regardless of various changes in the crossing angle formed by two axes in order to ensure smooth power transmission, for example, even when the steering wheel is turned to full lock (see para 0020). The constant velocity joints of the invention where the member for transmitting the torque is in the form of a ball include, for example, fixed type constant velocity joints such as Rzeppa joints (outboard joints) (see para 0053).
The synthetic oil used for the component (a) includes lubricating oils such as synthetic hydrocarbon oils, synthetic ester oils, synthetic ether oils, polyglycols and mixtures of those oils. Preferable examples of the synthetic oil include synthetic hydrocarbon oils and synthetic ester oils. In particular, polyalphaolefin.
The preferred thickener used as the component (b) is a diurea thickener (see para 0039). The diurea thickener has the following formula R1NH-CO-NH-C6H4-p-CH2-C6H4-p-NH-CO-NHR2 wherein R1 and R2 may be the same or different and are alkyl from 8-20 carbon atoms, an aryl having 6-12 carbon atoms, or a cycloalkyl group having 6-12 carbon atoms, preferably 6 carbon atoms (see para 0039-0041). The thickener may be used in an amount of 1 to 30 mass% (see para 0042).
Tanimura teaches a kinematic viscosity of the base oil at 100 C of 13.6 mm2/s (see Examples 1 and 2). Tanimura meets the limitations of the claims other than the differences that are set forth below.
Tanimura does not specifically teach that the oil has a kinematic viscosity at a temperature of -20 C of 3,000 to 20,000 mm2/s. However, no unobviousness is seen in this difference because Tanimura does teach that at 100 C the kinematic viscosity is within the claimed range of 8 to 20 mm2/s and exemplifies base oils having a kV at 100 C of 13.6, which would suggest that the oil would have the claimed kinematic viscosity at -20 C of 3,000 to 20,000 mm2/s.
Tanimura does not exemplify an outboard constant velocity filled with the grease. However, Tanimura does teach fixed type constant velocity joints, such as Rzeppa joints (outboard joints) (see para 0053) which are within the scope of his invention.
Tanimura does not specifically teach the addition of overbased Ca sulfonate. However, Okaniwa teaches these differences.
Okaniwa teaches a grease composition for constant velocity joints which consists essentially of: (a) a base oil; (b) a urea thickener; and (d) an overbasic metal salt selected from the group consisting of overbasic metal salts of petroleum sulfonates or alkyl aryl sulfonates (see abstract). Preferred metals include calcium (see col. 3, lines 51-55). The grease comprises 0.5 to 15 % by weight of the overbased salt (see col. 4, lines 28-34). The grease is used in constant velocity joints (see col. 1, lines 50-53).
It would have been obvious to one of ordinary skill in the art to have included an overbased Ca sulfonate in the grease composition because Tanimura teaches that conventional additives may be included in his grease composition and Okaniwa teaches that overbased Ca sulfonates are included in grease compositions that are used in constant velocity joints to perform their attendant function.
Claims 1, 2, 5-8 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Iwano (US 20060154831-appears on current PTO-892) in view of Chevron Phillips (hereinafter Chevron-appears on current PTO-892).
Iwano teaches a grease composition comprising at least a Ca sulfonate additive a urea compound as a thickener and a synthetic hydrocarbon oil as a base oil (see abstract).
The base oil used for the grease composition is not particularly limited but all of base oils can be used. Examples are mineral oil and a synthetic hydrocarbon typified by polyalphaolefin, and the like. Among them, the synthetic hydrocarbon oil is particularly preferable. The dynamic viscosity is preferably 6 to 15 mm2/s (100 C) (see para 0013).
Examples of the thickener are a soap-based and a urea-based thickener typified by diurea. A particularly preferable thickener is the urea-based thickener. The urea-based thickener has high resistance to heat generated by lubrication under heavy load and is cheaper than the other thickeners (see para 0014). The amount of thickener present in the grease is 3 to 30 % by mass (see para 0015).
The base number of the overbased Ca sulfonate is not limited, preferably, it may be up to 500 mg KOH/g. Preferably, 0.1 to 10% by weight of the Ca sulfonate is contained in the grease composition (see para 0016). Iwana teaches that the grease may contain the overbased Ca sulfonate, a diurea thickener and PAO(8) as the base oil (see para 0022). Iwano meets the limitations of the claims other than the differences that are discussed below.
Iwano does not specifically teach that the PAO has a kinematic viscosity at a temperature of -20 C of 3,000-20,000 mm2/s. However, Chevron teaches this difference.
Iwano teaches using PAO(8) as the synthetic oil. Chevron teaches that PAO(8) has a kinematic viscosity at 100 C of 7.9 cSt, a kinematic viscosity at 40 C of 46.0 and a kinematic viscosity at -40 C of 17,094 cSt (see document in its entirety). These teachings suggest that at -20 C that the oil would have a kinematic viscosity at -20 C of at least 3,000.
It would have been obvious to one of ordinary skill in the art to use PAO(8) as the synthetic oil because Iwano teaches that the preferred oil is PAO(8) and Chevron teaches that the skilled artisan would recognize that PAO(8) would have a kinematic viscosity at -20 C of at least 3,000 cSt.
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Iwano (US 20060154831) in view of Chevron Phillips as applied to the claims above, and further in view of Nakata (US 20110168479 - appears on current PTO-892).
Iwano has been discussed above. Iwano does not teach the formula of the diurea. However, Nakata teaches this difference.
Nakata teaches a grease composition for a speed reduction gear and a power steering apparatus (see abstract). The diurea has the following formula
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98
380
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In the formula R1 indicates a diisocyanate residue and R2 and R3 indicate amine residues that may be the same or different and is synthesized by reacting a diisocyanate compound and diamine compounds (see para 0030-0031). As examples of the diurea thickener, one type or two or more types of reaction product among a reaction product of 4,4'-diphenylmethane diisocyanate, an alkyl phenyl amine in which the number of carbons of the alkyl portion is 8 to 18 (p-dodecylamine, etc.), and cyclohexylamine, a reaction product of the 4,4'-diphenylmethane diisocyanate, stearylamine (octadecylamine), and oleylamine, and a reaction product of the 4,4'-diphenylmethane diisocyanate, stearylamine, and octylamine can be used (see para 0034).
It would have been obvious to one of ordinary skill in the art to have selected the diurea thickener because Nakata teaches that such thickeners are used in grease compositions, such as those of Iwano.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that because the viscosity-temperature characteristics vary depending on the type of base oil that the examiner’s position is flawed with respect to Tanimura’s teaching of a kV at 100 C would equate to a kV at -20 C. Applicant relies upon Comparative Examples 1 and 2 to show that a kV at 100 C does not guarantee that the grease will not solidify at -20 C.
Applicant discloses that the kinematic viscosity of the base oil at 100 C is 8 to 20 mm2/s. Claim 1 is directed to a synthetic oil. After reviewing the data, it is not clear if in each example that the oils are different and that that would explain the difference in kV. In the present specification it is noted that Comparative Examples 1 and 2 are a mixture of mineral oil and synthetic oil wherein either the majority of the base oil is synthetic or there is a 50/50 split of mineral oil/polyalphaolefin. In the examples of the invention the amount of mineral oil ranges from no mineral oil to 30 % of mineral oil. This too could explain the difference in kV at 100 C. Tanimura teaches that polyalphaolefins are the preferable example of the synthetic hydrocarbon oil and that the base oil may completely consist of synthetic oils. It is the examiner’s position that Applicant has not provided any data that would dissuade the examiner from her position regarding the oils of Tanimura meeting the limitation regarding the kV at -20 C. Furthermore, there is no explanation as to why Examples 4 and 5 (100% synthetic hydrocarbon oil) have a kV at 100 C that differ from each other as well as Comparative example 3, also a 100% synthetic oil. Applicant’s data is confusing and is not persuasive.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
/CEPHIA D TOOMER/Primary Examiner, Art Unit 1771 18863555/20251213
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