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 .
The amendments filed 12/12/25 overcome the rejections set forth in the office action mailed 10/1/25. New grounds of rejection, necessitated by the amendments, are set forth below.
Claim Rejections - 35 USC § 112
Claims 4, 13, and 15-18 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 and its dependent claims 15-18 require the component (a) to be a coupling agent (a2) which is a silane, titanium, aluminum, or zirconate coupling agent. However, claim 1, from which claim 4 depends, has been amended to recite a specific chemical formula for component (a), which does not encompass silane, titanium, aluminum, or zirconate coupling agents. It is noted that the formula in claim 1 is representative of the compound (a1) disclosed in the specification, which is different than the compound (a2).
Similarly, newly added claim 13 requires the component (a) to have a specific chemical formula corresponding to the compound (a1) of the specification, while claim 11, from which claim 13 depends, requires the component (a) to be a coupling agent (a2) which is a silane or zirconate coupling agent. The compound of claim 13 is neither a silane or zirconate coupling agent and therefore does not further limit claim 11.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
Claims 1-2, 5-7, and 9 is rejected under 35 U.S.C. 103 as being unpatentable over Oshiumi (U.S. Pat. No. 10,870,812).
In column 2 lines 1-6 Oshiumi discloses a surface protection composition containing a “high-consistency” material comprising a base oil, an amide compound, and a phosphorus composition. In Table 1, Oshiumi discloses a composition (Example 7) comprising a base oil, an amide compound, and tri(butoxyethyl)phosphate (TBEP, see column 20 line 10). TBEP meets the limitations of component (a) of amended claim 1 for the case where m is 3, n is 1, A1O is an alkyleneoxy group having 2 carbon atoms, and R1 is an alkyl group having 4 carbon atoms. In column 5 lines 1-10 Oshiumi discloses that the amide compound forms a semi-solid gel-like product when added to the base oil. The composition of Oshiumi is therefore a grease, as recited in claim 1, and the amide compound of Oshiumi meets the limitations of the thickener of component (c) of claim 1. In column 11 lines 13-18 Oshiumi discloses that the inclusion of the phosphorus composition makes the surface protection composition had to deform or flow even when placed under an external load. Since the composition of Oshiumi meets the compositional limitations of the claims, it will have a last non-seizure load meeting the limitations of claim 1. Claim 1 is therefore anticipated by Oshiumi. Similarly, since the composition of Oshiumi meets the compositional limitations of the claims, it will also have a weld point meeting the limitations of claim 5, and be capable of performing at least one of the intended uses of claim 6.
In Example 7 of Table 1, TBEP is present in an amount of 5% by weight, within the ranges recited in claims 2 and 7, and the thickener is present in an amount of 30% by weight, within the range recited in claim 9.
In light of the above, claims 1-2, 5-7, and 9 are anticipated by Oshiumi.
Claim Rejections - 35 USC § 103
Claims 1-2 and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Goto (JP 2018-115235 A) in view of Elliott (U.S. Pat. No. 2,820,766).
An English-language machine translation of Goto, which was attached to the office action mailed 10/1/25, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the machine translation unless otherwise noted. In paragraph 9 Goto discloses a urea-based grease composition comprising a base oil and a urea-based thickener, meeting the limitations of components (b) and (c) of claim 1. The grease of Goto also comprises a phosphorus-based wear inhibitor, as recited in component (a) of claim 1. In paragraph 82 Goto discloses that the maximum non-seizure load is preferably about 1570 N (160 kgf) or more, within the range recited in claim 1. In paragraph 81 Goto discloses that the welding load (weld point) is about 2452 N (250 kgf) or greater, meeting the limitations of claim 5. In Table 1 (original Japanese version only) Goto discloses compositions comprising the base oil and thickener in amounts within the ranges recited in claims 8-9, and in paragraph 33 Goto also discloses a thickener content within the range recited in claim 9. In paragraphs 26-30 (including formula 1 provided in the original Japanese version), Goto discloses that the thickener can have the structure recited in claim 10. In paragraph 64 Goto discloses that the phosphorus-based wear inhibitor is present in an amount of 0.1 to 1% by weight of phosphorus, leading to an overall amount of phosphorus-based wear inhibitor at least overlapping the ranges recited in claims 2 and 7.
Goto does not disclose the inclusion of the specific compounds having phosphate ester moieties of claim 4. In paragraph 67 Goto discloses that the composition can comprise additional additives.
Elliott, in column 1 lines 19-28, discloses lubricants useful over a wide range of temperatures, including high temperatures. It is noted that Goto discloses in paragraph 2 that urea-based greases are used under high temperatures. Elliott discloses in column 2 lines 13-15 and from column 4 line 56 through column 5 line 21 that the composition comprises a neutral phosphate ester, and in column 5 line 12 specifically discloses tri(butoxyethyl)phosphate, which meets the limitations of component (a) of amended claim 1 for the case where m is 3, n is 1, A1O is an alkyleneoxy group having 2 carbon atoms, and R1 is an alkyl group having 4 carbon atoms. The inclusion of the tri(butoxyethyl)phosphate of Elliott as the phosphorus-based wear inhibitor in the composition of Goto therefore meets the limitations of amended claims 1-2, 5, and 7-10. Additionally, Since the grease of Goto and Elliott has meets the compositional limitations of the claims and has the claimed maximum non-seizure load and weld point, it qualifies as an extreme-pressure wear-resistant grease for the intended uses recited in claim 6.
It would have been obvious to one of ordinary skill in the art to include the tri(butoxyethyl)phosphate of Elliott as the phosphorus-based wear inhibitor in the composition of Goto, since Elliott discloses that it is effective in inhibiting wear in lubricants used at high temperatures, and also because Elliott teaches in column 5 lines 14-21 that they are soluble in diester lubricants, which are among the preferred base oils identified in paragraph 15 of Goto.
Claims 8 are rejected under 35 U.S.C. 103 as being unpatentable over Oshiumi.
The discussion of Oshiumi in paragraph 4 above is incorporated here by reference. Oshiumi discloses a composition meeting the limitations of claim 1, but does not specifically disclose a composition comprising the base oil in an amount within the range recited in claim 8.
In column 6 lines 27-38, Oshiumi discloses that the amide compound is even more preferably present in an amount of 5 to 50 parts by mass with respect to 100 parts by mass of the lubricant base oil. In column 10 lines 54-58 Oshiumi discloses that the base oil and amide combined (component A of Oshiumi) are more preferably present in a ratio of 70:30 to 90:10 relative to the phosphorus compound (b1) of Oshiumi, and in column 12 lines 13-17 Oshiumi discloses that the base oil, amide, and phosphorus compound (b1) are more preferably present in a ratio of 90:10 to 99:1 relative to the phosphorus compound (b2) of Oshiumi. The base oil of Oshiumi is therefore present in an amount of about 42% (100 parts base oil, 50 parts amide, 64.3 parts (b1), 23.8 parts (b2)) to about 85% (100 parts base oil, 5 parts amide, 11.7 parts (b1), 1.2 parts (b2)) relative to the required components of Oshiumi, overlapping the range recited in claim 8; based on the concentrations disclosed for additional components in columns 13-15 of Oshiumi, the concentration of base oil in the composition of Oshiumi will still overlap the range recited in claim 8. See MPEP 2144.05(I): “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 light of the above, claim 8 is rendered obvious by Oshiumi.
Allowable Subject Matter
Claims 11-12 and 14 are allowed. Newly added claims 11-12 and 14 require the grease composition to comprise a silane or zirconate coupling agent having a phosphate ester moiety within the molecule. The prior art, as exemplified by the references discussed above and in the previous office action, does not disclose or render obvious these compositions. Kato and Yamazaki, discussed in the previous office action, disclose grease compositions comprising titanium-based coupling agents comprising a phosphate ester moiety, but there would be no motivation for one of ordinary skill in the art to replace these with the claimed silane or zirconate coupling agents.
Response to Arguments
Applicant’s arguments filed 12/12/25 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The newly applied Oshiumi and Elliott references address the limitations introduced by the amendment to claim 1 and its dependent claims.
Conclusion
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.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771