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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 is defining the invention, a lubricant composition for a bearing, based on one constituent of the lubricant, the base oil, and a final physical property of the blended oil, which as claimed, has a different viscosity than the base oil. However, the written description provides no guidance as to any specific blend that meets the requirement of the claimed invention. In other words, the claim and the corresponding disclosure is claiming a new and novel oil composition but yet the specifics of this composition have not been explicitly set forth in the disclosure and thus it is unclear what blend or blends Applicant has actually invented and was in possession of at the time of filing. Applicant, in the current amendment has added a ratio of a viscosity index, however this also does not aid in defining what the actual new, novel and inventive blend is.
The claims and specification cover a genus that can include any base oil with the claimed property blended with any other material that increases the viscosity with a specific ratio, however Applicant doesn’t provide any specific example of the new oil blend in which they claim to have developed and thus it is unknown what Applicant was actually in possession of at the time of filing. While specifics of the base oil are defining the actual blend or blends that meet the claim requirements have not been set forth yet the specification states in paragraph 0067 that “it is important to set a kind of additive, an addition ratio, the number of additives and the like” to achieve the final viscosity but no specifics of this “important” aspect have been defined. The amendment adds a ratio but this alone is not what the specification states is important. The specification, in paragraph 0066, provides a non-limiting list of additives however no specific additives or ratios of additives to base oil have been set forth.
Ultimately the recitation of claim 1 can cover any number of combinations of base oil plus additives, including infinite combinations of additives, that can result in the final property and is ultimately covering a genus while a single working example has not been provided/described by Applicant. The claims therefore cover all possible permutations and there is no evidence in the record as to what specific blend or blends Applicant considered or was in possession of at the time of filing.
In other words the claim can be viewed as defining the oil based on its final property and additive amount of one specific component of a blend but covers an infinite number of permutations or blends of base oil(s) with the property of the base oil as claimed with any imaginable blend of additives. Without reciting the particular components of the blend the claim is unlimited in nature. The specification does not provide any specific examples of blends that would meet the claim limitation to indicate what Applicant was actually in possession of while the specification simultaneously acknowledges that the additives are critical to the final property of the blend. One of ordinary skill in the art would not know from the claim terms what blends are actually included or excluded from the claims. In other words one of ordinary skill in the art would not have knew every possible permutation that allows for the stated property to occur. Thus the specification is not commensurate in scope with the claims. Please see Supplementary Examination Guidelines for Determining Compliance With 37 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162 (Feb. 9, 2011) and MPEP 2173.05(g).
The limitation presented by the claims represents a genus because it encompasses more than one species. See MPEP § 2163(II)(A)(3)(a). The genus includes a number of different possible blends that could achieve the property. Generic claim language and lack of any specific example of a new or novel oil blend in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340, 94 USPQ2d 1161, 1171 (Fed. Cir. 2010) (en banc) ("[A]n adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries."). In this case the disclosure acknowledges that the additives are critical to the practice of the invention and provides, in no specific terms, four comparative examples in table 1 but what these specific examples are is unknown. The claims are currently constructed using unlimited recitations thus being generic to all species both disclosed and non-disclosed, see MPEP 2173.05(g).
For example, Applicant is stating and claiming that the generic blend is new, however lubricant blends already meeting the final property in the claim are known, these have been given the general classification of ISO VG 100, SAE 90 and 85W-140. As an example, would any SAE 90 oil blend that has PAO and ester oil read on the claim?
While generically describing the inventive concept of a new oil blend, claims 1-10 are also rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the generic blend, does not reasonably provide enablement for any specific species that meets the claim limitations. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims. As explained above, the breadth of the claims could include an infinite number of oils that would meet the designations defined above, the nature of the invention is a new and novel blend yet a specific example of this new blend has not been set forth and one having ordinary skill in the art would know if they are infringing upon the claimed invention. Every currently existing oil blend would have to undergo testing to determine the specifics and if they are infringing and every future blend, even if using an otherwise unique or new additive, as an example, could be included. Ultimately the breadth of the claims is unduly broad covering a whole genus while not a single example has been described in any detail and the level of experimentation required to measure/test every possible permutation is undue.
Ultimately, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). In other words, in claim 1 Applicant is seeking coverage for a new/novel oil blend but has not disclosed the specific composition of the blend and thus it cannot be said that Applicant has adequate described or disclosed what they actually invented as the specification does not define any specific blends but only references blending elements to achieve the final result, if a new blend (or a blend with additives and specific amounts or ranges added to the base) is not described than Applicant has not properly disclosed their invention in a way that would allow one having ordinary skill in the art to actual make and use the blend without undue experimentation.
Response to Arguments
Applicant's arguments filed February 23, 2026 have been fully considered but they are not persuasive.
Applicant begins the remarks by pointing to features regarding the eccentricity of the bearing and difficulties of some lubricants, specifically problems with lubricants with a polymer-based viscosity index improver. However nothing in the claims addresses eccentricity in bearings and nothing in independent claim 1 would exclude an oil blend with polymer-based viscosity index improvers from being used. This is the underlying issue behind the rejection under 35 USC 112(a) above, the claim does not explicitly define a new oil blend only properties of the blend or additives and now, in light of the amendment, an amount/ratio of viscosity index improver. This ratio still does not define what the other, disclosed as critical aspects of the improvement, materials of the blend are. Thus the claims still cover a genus which is now only narrowed to a specific wt% of index improver not a particular type and nothing in the claims excludes the index improver from being a polymer.
Applicant concludes the argument by stating "Thus, one of ordinary skill in the art can deduce that the base oil exhibiting the properties according to the present application accounts for the majority of the lubricating oil composition exhibiting the properties according to the present application. Since the content of the viscosity index improver is clear, a person of ordinary skill in the art can determine the type and content of additives other than the viscosity index improver without any particular difficulty." However this requirement for one skilled in the art to ultimately “deduce” the invention by Applicant is the problem. One having ordinary skill in the art should know from the disclosure what Applicant has invented, there should be no need to deduce what is need and then on their own “determine the type and content of additives”. Ultimately this requires undue experimentation and the disclosure fails to actually define or disclose the invention. Because of this the rejection under 35 USC 112(a) is maintained.
Conclusion
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.
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/JAMES PILKINGTON/Primary Examiner, Art Unit 3617