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 .
Status of Claims
The amendment filed on July 28, 2026 is acknowledged. Claims 1, 4, 5, 8 and 9 are pending in this application. Claims 2, 3, 6 and 7 have been cancelled.
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.
Claim(s) 1, 4, 5, 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Ishida et al. USPGPUB 20190107154.
Claim 1, Ishida discloses a sealing device (bearing seal 11)(Fig. 1)([0026], l. 1) for sealing an annular gap between an inner member (inner ring member 4)([0025], l. 6) and an outer member (outer ring 2)([0025], l. 5) of a hub bearing (bearing device 1)([0025], l. 3), the inner member being rotatable relative to the outer member; Ishida (see Fig. 5) further discloses the sealing device 10 comprising: a body (seal lip member 81); a first lip (first lip portion 811)([0041], ll. 1 – 2) protruding from the body; a second lip (second lip portion 812 or third lip portion 813)([0041], ll. 4 – 5) protruding from the body and positioned apart from the first lip in a radially inward direction of the first lip; a first grease g4 ([0043], l. 12) applied to a surface of the first lip (as shown in Fig. 5, grease g4 applied in corner portion s4 engages the surface of lip 811); and a second grease g3 ([0043], l. 7) applied to a surface of the second lip (as shown in Fig. 5, grease g3 applied in space portion s3 engages the surfaces of lips 812 and 813), wherein the first lip and the second lip each extend from the body toward either the inner member or the outer member, and properties of the first grease differ from properties of the second grease ([0054]: “…the properties of the greases g1 (g3) and g2 (g4) supplied to the respective parts are not particularly limited. However, the properties of the greases g1 (g3) and g2 (g4) may include the type of thickener, the type of base oil, kinematic viscosity at 40° C. of the base oil, and the like, and these may be suitably adopted according to required specifications. For example, when it is required to reduce the rotational torque generated by the sliding resistance between the second and third lip portions 612 (812) and 613 (813) and the inner ring 5, grease made of base oil having a kinematic viscosity of 10 mm.sup.2/s to 30 mm.sup.2/s at 40° C. may be used. In addition, the greases g1 (g3) and g2 (g4) supplied to both portions need not be the same in property”).
Ishida does not expressly disclose the content percentage of the thickener in the second grease being less than the content percentage of the thickener in the first grease such that the second grease is relatively softer than the first grease.
However, Ishida teaches, in [0054], ll. 3 – 7, that “the properties of the greases g1 (g3) and g2 (g4) may include the type of thickener, the type of base oil, kinematic viscosity at 40° C. of the base oil, and the like, and these may be suitably adopted according to required specifications” and, in [0054], ll. 12 – 13, that “the greases g1 (g3) and g2 (g4) supplied to both portions need not be the same in property.” When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions (i.e. modifying grease properties achieved desire performance), a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show it was obvious under 35 U.S.C. 103. KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007). Thus, modifying the device of Ishida such that the content percentage of the thickener in the second grease is less than the content percentage of the thickener in the first grease such that the second grease is relatively softer that the first grease, would have been obvious to try before the effective filing date of the claimed invention, in order to provide grease properties that meet required specifications for a given application.
Claim 4, Ishida discloses a shear viscosity of the second grease under sliding differing from a shear viscosity of the first grease under sliding ([0054], ll. 12 – 13).
Claim 5, Ishida discloses all of the limitations of the invention of claim 4, except for the shear viscosity of the second grease under sliding being less than the shear viscosity of the first grease under sliding.
However, Ishida teaches, in [0054], ll. 3 – 7, that “the properties of the greases g1 (g3) and g2 (g4) may include the type of thickener, the type of base oil, kinematic viscosity at 40° C. of the base oil, and the like, and these may be suitably adopted according to required specifications” and, in [0054], ll. 12 – 13, that “the greases g1 (g3) and g2 (g4) supplied to both portions need not be the same in property.” When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions (i.e. modifying grease properties achieved desire performance), a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show it was obvious under 35 U.S.C. 103. KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007). Thus, modifying the device of Ishida such that the shear viscosity of the second grease under sliding is less than the shear viscosity of the first grease under sliding, would have been obvious to try before the effective filing date of the claimed invention, in order to provide grease properties that meet required specifications for a given application.
Claim 8, Ishida discloses all of the limitations of the invention of claim 1, except for a water resistance of the first grease being greater than a water resistance of the second grease.
However, Ishida teaches, in [0054], ll. 3 – 7, that “the properties of the greases g1 (g3) and g2 (g4) may include the type of thickener, the type of base oil, kinematic viscosity at 40° C. of the base oil, and the like, and these may be suitably adopted according to required specifications” and, in [0054], ll. 12 – 13, that “the greases g1 (g3) and g2 (g4) supplied to both portions need not be the same in property.” When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions (i.e. modifying grease properties achieved desire performance), a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show it was obvious under 35 U.S.C. 103. KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007). Thus, modifying the device of Ishida such that a water resistance of the first grease is greater than a water resistance of the second grease, would have been obvious to try before the effective filing date of the claimed invention, in order to provide grease properties that meet required specifications for a given application.
Claim 9, Ishida discloses all of the limitations of the invention of claim 1, except for a color density of the first grease being greater than a color density of the second grease.
However, Ishida teaches, in [0054], ll. 3 – 7, that “the properties of the greases g1 (g3) and g2 (g4) may include the type of thickener, the type of base oil, kinematic viscosity at 40° C. of the base oil, and the like, and these may be suitably adopted according to required specifications” and, in [0054], ll. 12 – 13, that “the greases g1 (g3) and g2 (g4) supplied to both portions need not be the same in property.” When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions (i.e. modifying grease properties achieved desire performance), a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show it was obvious under 35 U.S.C. 103. KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007). Thus, modifying the device of Ishida such that a color density of the first grease is greater than a color density of the second grease, would have been obvious to try before the effective filing date of the claimed invention, in order to provide grease properties that meet required specifications for a given application.
Response to Arguments
Applicant's arguments (see pg. 7 – 10) filed Jully 22, 2026 have been fully considered but they are not persuasive. The Applicant’s arguments are based on an unsupported assumption that the sealing function of the second grease (g3) necessarily requires the second grease (g3) to possess the same or greater firmness than the first grease (g4). While Ishida explains that the second grease (g3) blocks the through-hole 813a to inhibit the entry of muddy water when rotation stops, Ishida does not state that this function requires a particular thickener content, consistency, or hardness relative to the grease applied at the other lip.
To the contrary, Ishida expressly teaches that the properties of the greases used at the respective sealing locations are independently selectable. Specifically, Ishida discloses (see [0054], ll. 12 – 13] that:
“the properties of the greases g1 (g3) and g2 (g4) may include the type of thickener, the type of base oil, kinematic viscosity at 40°C of the base oil, and the like, and they may be suitably adopted according to required specifications,” and further that “the greases g1 (g3) and g2 (g4) supplied to both portions need not be the same in property.”
This disclosure expressly contemplates selecting different grease properties, including the type of thickener, for the respective sealing locations according to the desired performance characteristics. Thus, Ishida does not limit the greases to having identical consistencies or prohibit one grease from containing a lower thickener content than another.
The Applicant’s assertion that the second grease (g3) must be relatively firm to seal the through-hole is not commensurate with the disclosure of Ishida. Even assuming the first grease (g4) requires sufficient shape retention to perform its sealing function, such a requirement does not establish that the second grease (g3) cannot be softer than the first grease (g4), nor does it preclude selecting different thickener contents to satisfy the respective sealing requirements. A grease may be sufficiently soft relative to another grease while still possessing adequate consistency to remain within the through-hole and provide the intended sealing function.
Accordingly, Ishida’s express teaching that the greases need not be the same in property and that grease characteristics—including the type of thickener—may be selected according to the required specifications would have suggested to one of ordinary skill in the art the use of greases having different consistencies or thickener characteristics at the respective sealing locations, including a second grease having a lower thickener content than the first grease where appropriate to achieve the desired balance of sealing performance, torque reduction, and durability. Therefore, the rejection of claim 1 as obvious over Ishida 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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/PHILLIP A JOHNSON/Primary Examiner, Art Unit 3617
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