DETAILED ACTION
This is the initial Office action for application SN 18/958,565 having an effective date of 25 November 2024 and a provisional priority date of 28 November 2023. Claims 1-20 are pending. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of Group II – Claims 6-20 in the reply filed on 13 November 2025 is acknowledged. The traversal is on the ground(s) that if the search and examination of the entire application can be made without serious burden, then the Examiner must examine it on the merits, even though it arguably may include claims to distinct or independent inventions. MPEP 803. This has been found to be persuasive, and the restriction requirement is withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 recites the American Petroleum Institute (API) group designations “an API group II+ oil” and “an API group III+ oil” which are indefinite since they are not API oil designations, and it is unclear what oils are encompasses by such groups.
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.
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.
Claim(s) 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Denpo et al (US 2002/0019319).
Denpo et al [“Denpo”] disclose conductive greases and rolling apparatus packed with the conductive grease. Denpo discloses that the conductive grease comprises a base oil, a thickener, a conductive solid powder, and at least one kind of wear inhibitor, an extreme pressure agent and an oiliness agent [0030].
Denpo discloses that the amount of the conductive solid powder is 0.1 to 10 wt.% based on the total weight of the grease, and the total amount of the at least one kind of wear inhibitor, an extreme pressure agent and an oiliness agent is 0.1 to 10 wt.% based on the total weight of the grease [0030].
Denpo discloses that the conductive solid powder is at least one kind of particle of which the main component is fibrous carbon, metallic particle, metallic compound particle and carbon nano-tube [0031]. Denpo teaches that the fibrous carbon is carbon black or acetylene black [0032]. Denpo teaches that the conductive solid powder may include metallic particles of gold, silver, copper, tin, zinc or aluminum [0050].
Denpo teaches that the base oil is a single or a mixture of at least two kinds of mineral oil, synthetic hydrocarbon oil, ester oil, fluorine oil, ether oil and polyglycol oil [0038]. Denpo teaches that the amount of base oil in the conductive grease is 75 to 90 wt.% based on the total weight of the grease [0039].
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Thus, the Examiner is of the position that Denpo meets the limitation of the claimed conductive grease comprising a base oil, an organic lubricant additive for enhancing lubrication of the base oil, and a conductive additive such as carbon black and/or metallic particles and/or carbon nano-tube.
Allowable Subject Matter
Claims 6-20 are allowed.
Independent Claim 6 is drawn to a testing platform for testing conductivity of a grease in bearings, and independent Claim 14 is drawn to a testing platform for testing grounding effectiveness of grease and ground solutions in a drivetrain. The claimed testing platforms were not found to be anticipated and/or obvious over the prior art references of record, alone or in combination. The closest prior art is IWASE et al (US 2023/0408435) which disclose a state detection method for detecting an oil film state according to a lubricant in a device (bearings) configured to lubricate a plurality of parts with the lubricant. However, IWASE et al does not disclose a testing platform for greases, and does not disclose testing the conductivity of greases as required by the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
EMcAvoy
January 5, 2026