DETAILED ACTION
This is in response to applicant arguments filed 11 March 2026. Claims 1-11 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 .
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) 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita Hagino et al (US 2025/0101335) in view of Kawamura (US 2007/0161520).
Applicant's arguments filed 11 March 2026 have been fully considered but they are not persuasive. As previously set forth, Yamashita Hagino et al [“Yamashita”] discloses a grease composition and a steering gear device such as a rack and pinion steering device. The grease composition comprises a base oil, a thickener, and an extreme pressure additive. The base oil contains trimellitate ester and a polyalphaolefin (synthetic hydrocarbon oil). The thickener contains lithium 12-hydroxystearate. The extreme pressure additive contains molybdenum dialkyl dithiocarbamate.
The worked penetration of the grease composition is preferably No. 00 to No.2. [0108]. Yamashita teaches that by adjusting the worked penetration within this range, sufficient leakage resistance can be ensured when the grease composition is sealed within the steering device, and the grease composition can satisfactorily flow into the friction face of the lubricated member. Yamashita teaches that the grease can suitably be used in the steering gear device of an automobile [0109]-[0110]. The examiner is of the position that the claimed penetration of the grease composition of 235 to 370 is within No.00 to No.2 disclosed in Yamashita.
Yamashita teaches that the proportion of the molybdenum dialkyl dithiocarbamate to the total amount of the base oil and thickener is 0.6 mass % or more and 16.0 mass % or less [0006].
Yamashita teaches that the base oil kinematic viscosity of the polyalphaolefin at 40°C is preferably 20 to 60 mm2/s [0087]. Yamashita teaches that the base oil kinematic viscosity of the trimellitate triester at 40°C is preferably 37 to 57 mm2/s [0089].
The grease composition of Yamashita may contain other additives including rust inhibitors [0106]. Yamashita teaches that when the grease composition contains other additives, the total content of the other additives in the grease composition is preferably 15 mass % or less with respect to the total mass of the base oil and the thickener [0107].
Applicant’s grease composition differs from Yamashita by further including Na (sodium) sebacate and a sulfonate. However, Kawamura is added to teach that such additives are known in grease compositons as rust inhibitors.
Kawamura discloses a grease composition comprising a synthetic hydrocarbon base oil and a urea thickener. Kawamura discloses that a rust resisting effect is increased by using a metallic salt of a polybasic additive (preferably sodium sebacate [0036]), a polyvalent alcohol, and at least one compound selected from a sulfonate (preferably a calcium salt of a sulfonic acid [0043]) and a fatty ester as essential ingredients [0016]. Kawamura teaches that the content of each of the essential ingredients is 0.1 to 10 parts by weight based on 100 parts by weight of the total amount of base oil and thickener [0017].
Thus, having the prior art before the inventors at the time the invention was made it would have been obvious to have added sodium sebacate and calcium sulfonate as taught by Kawamura, to the grease composition of Yamashita, if the known imparted properties were so desired.
Where there is a reason to modify or combine the prior art to achieve the claimed invention, the claims may be rejected as prima facie obvious provided there is also a reasonable expectation of success. The reasonable expectation of success requirement refers to "the likelihood of success” in combining or modifying prior art disclosures to meet the limitations of the claimed invention. See Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1375, 2023 USPQ2d 1100 (Fed. Cir. 2023) and Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367, 119 USPQ2d 1171, 1176 (Fed. Cir. 2016).
Response to Arguments
In response applicant argued that neither Yamashita nor Kawamura teach or suggest that the addition of rust inhibitors such as Na sebacate or a sulfonate improves extreme pressure performance. Applicant points to the results of Example 1 vs. Comparative Example 1 and argues that the improvement in extreme pressure performance was by no means expected at the time of filing. Applicant arguments are not deemed to be persuasive.
The results set forth in Table 1 have been carefully considered. Ex. 1 containing 2% disodium sebacate and 1% neutral Ca sulfonate, the extreme pressure performance was 3089 N, whereas Comp. Ex. 1 containing 0% disodium sebacate and 1% overbased Ca sulfonate, the extreme pressure performance was 2452 N. However, Comp. Ex. 3 containing 2% disodium sebacate and 0% sulfonate, the extreme pressure performance was 3089 N, the same as Ex.1. Thus, it is not clear that unexpected results are demonstrated in a grease containing both disodium sebacate and Ca sulfonate.
Further, claim 1 recites “0.1 to 10% by mass Na sebacate” and “0.1 to 5% by mass of a sulfonate” (not Ca sulfonate). Thus, the examiner is of the position that inventive Ex.1 is not commensurate in scope with the claims.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELLEN M MCAVOY whose telephone number is (571)272-1451. The examiner can normally be reached Monday-Friday 9:30am - 7:00 pm EST.
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/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
EMcAvoy
May 2, 2026
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