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
Claim 24 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.
In claim 24, from which claim 16 depends, there is no antecedent basis for “the calcium sulfonate grease”. Claim 16, from which claim 24 depends, recites a “calcium sulfonate formulation” rather than a grease specifically.
Claim Rejections - 35 USC § 102
Claims 13-14 and 21-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zaki (U.S. Pat. No. 8,507,421).
In column 1 lines 14-19, Zaki discloses lubricating greases which include calcium lignin sulfonate. In Example 1 (column 8 lines 26-44) Zaki discloses a method comprising preparing a lithium 12-hydroxystearate grease, corresponding to the first step of claims 1 and 16, cooling the grease, corresponding to the second step of claims 1 and 16, and adding a calcium lignin sulfonate salt to the cooled grease, corresponding to the third and fourth steps of claims 1 and 16.
Claims 13-14 and 21-22 are written in product-by-process format, and the patentability of the claims is based on the product. Although Zaki does not specifically disclose cooling the lithium formulation to about 175° C, the grease composition of Zaki, comprising a lithium grease which meets the limitations of the claimed lithium formulation, including that of claims 14 and 22, and a calcium sulfonate, is obtainable from the method of claim 1, since combining a lithium grease and a calcium sulfonate grease would lead to an indistinguishable composition, and therefore meets the limitations of claims 13-14. Claims 21-22 simply requires a calcium sulfonate formulation, which is met by the calcium lignin salt, rather than a calcium sulfonate grease. It is noted that claims 1 and 16 do not require the calcium formulation to be mixed with the lithium formulation at a specific temperature (the open-ended “comprises” language allows for further cooling steps before mixing the lithium formulation and calcium sulfonate formulation), and in any case applicant has not established that the mixing temperature of the lithium formulation and calcium formulation affects the product. The greases of claims 13-14 and 21-22 are therefore anticipated by Zaki.
Claims 13-14 and 21-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu (CN 102051257 A).
An English-language machine translation of Liu, which was attached to the office action mailed 11/12/25, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the machine translation.
In paragraph 12 Liu discloses a composite lithium-based grease. In paragraphs 23-32 Liu discloses that the grease comprises lithium hydroxide, 12-hydroxystearic acid, and sebacic acid, and further comprises a complex calcium sulfonate grease. In paragraphs 41-48 Liu discloses that the grease is prepared by heating the lithium hydroxide with the 12-hydroxystearic acid and sebacic acid (steps 1-3 of Liu), meeting the limitations of the first step of claims 1 and 16, cooling the product (step 5 of Liu), corresponding to the second step of claims 1 and 16, and later adding the complex calcium sulfonate grease (step 7 of Liu), meeting the limitations of the fourth step of claim 1. The lithium formulation formed by heating the lithium hydroxide with the acids and cooling the products is a lithium complex grease, as recited in claims 14 and 22.
Claims 13-14 and 21-22 are written in product-by-process format, and the patentability of the claims is based on the product. Although Liu does not specifically disclose cooling the lithium formulation to about 175° C, the grease composition of Liu, comprising a mixture of a lithium complex grease and a complex calcium sulfonate grease, is obtainable from the method of claim 1, and therefore meets the limitations of claims 13-14 and 21-2222. It is noted that claim 1 does not require the calcium formulation to be mixed with the lithium formulation at a specific temperature (the open-ended “comprises” language allows for further cooling steps before mixing the lithium formulation and calcium sulfonate formulation), and in any case applicant has not established that the mixing temperature of the lithium formulation and calcium formulation affects the product. The grease of claims 13-14 is therefore anticipated by Liu.
Claims 13-15 and 21-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim (KR 10-2019-0080725 A).
An English-language machine translation of Kim, which was attached to the office action mailed 11/12/25, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the machine translation. In paragraph 1, Kim discloses a grease composition comprising a base oil, a lithium-based thickener, and an additive comprising an overbased calcium sulfonate, where the overbased calcium sulfonate comprises crystalline calcite. In paragraph 54 Kim discloses that the overbased calcium sulfonate preferably has a total base number of 300 to 500, encompassing the range recited in claim 15. In paragraphs 73-75 Kim discloses that the grease is manufactured by preparing a lithium formulation (paragraph 73), which is a lithium grease containing components recited in claim 14 and 22, and then adding additives including the overbased calcium sulfonate.
Claims 13-15 and 21-22 are written in product-by-process format, and the patentability of the claims is based on the product. Although Kim does not specifically disclose cooling the lithium formulation to about 175° C, the grease composition of Kim, comprising a mixture of a lithium grease and an overbased calcium sulfonate, is obtainable from the method of claim 1, since combining a lithium grease and a calcium sulfonate grease would lead to an indistinguishable composition, and therefore meets the limitations of claims 13-15. Claims 21-22 simply requires a calcium sulfonate formulation, which is met by the overbased calcium sulfonate, rather than a calcium sulfonate grease. It is noted that claim 1 does not require the calcium formulation to be mixed with the lithium formulation at a specific temperature (the open-ended “comprises” language allows for further cooling steps before mixing the lithium formulation and calcium sulfonate formulation), and in any case applicant has not established that the mixing temperature of the lithium formulation and calcium formulation affects the product. The grease of claims 13-15 is therefore anticipated by Kim.
Claim Rejections - 35 USC § 103
Claims 16-17 and 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Zaki.
In column 1 lines 14-19, Zaki discloses lubricating greases which include calcium lignin sulfonate. In Example 1 (column 8 lines 26-44) Zaki discloses a method comprising preparing a lithium 12-hydroxystearate grease, corresponding to the first step of claim 16, cooling the grease, corresponding to the second step of claim 16, and adding a calcium lignin sulfonate salt to the cooled grease, corresponding to the third and fourth steps of claim 16, noting that the “preparing” of the third step is a broad term and any calcium lignin sulfonate must have been prepared in some manner, and must have been prepared separately in order for it to be added to the grease.
Lithium 12-hydroxystearate grease is a lithium-based grease as recited in claim 23. Table 1 of Zaki (following example 1) discloses the composition of the grease product, which contains 5% by weight of calcium lignin sulfonate and 0.5% by weight of a diphenyl amine antioxidant, leaving 94.5% by weight of the lithium 12-hydroxystearate grease. The lithium 12-hydroxystearate grease portion of the product comprises about 90.8% by weight of base oil (85.85 / 94.5), about 6.3% by weight of 12-hydroxystearic acid (6.00 / 94.5), and about 1.9% by weight of lithium hydroxide (1.8 / 94.5), all within the ranges recited for the base oil, first lithium hydroxide, and first fatty acid of the lithium-based grease of claim 23.
The differences between Zaki and the currently presented claims are:
i) Example 1 of Zaki does not specifically disclose cooling the lithium 12-hydroxystearate grease to about 175° C. The example discloses adding the calcium lignin sulfonate to the grease at a temperature of 93 to 110° C.
ii) Example 1 of Zaki discloses preparing the lithium 12-hydroxystearate grease of Zaki by mixing oil, fatty acid, lithium hydroxide, and water, heating the mixture and cooling it, but does not disclose the specific order of steps of claim 17.
With respect to i), Zaki discloses more broadly in column 7 lines 2-4 that the calcium lignin sulfonate is added to the base grease at a temperature above about 80° C, encompassing the range implied by “about 175° C” in the second step of claim 16. It therefore would have been obvious to one of ordinary skill in the art to cool the grease of Zaki to a temperature in the range of above about 80° C prior to adding the calcium lignin sulfonate. 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);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Alternatively, differences in temperature generally will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In this case, Zaki teaches in column 8 lines 38-41 that the temperature of 93 to 110° C is effective to drive off the moisture from the calcium lignin sulfonate; one of ordinary skill in the art would expect higher temperatures above the boiling point of water, such as about 175° C, to be at least equally effective in driving off moisture. It therefore would have been within the scope of ordinary skill in the art to optimize the temperature at which the calcium lignin sulfonate is added to the lithium 12-hydroxystearate grease.
In light of the above, the method of claims 16 and 23 is rendered obvious by Zaki, and since the product of Zaki is a grease, claims 21-22 are also rendered obvious.
With respect to ii), case law holds that the selection of any order of mixing ingredients is prima facie obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). It therefore would have been obvious to one of ordinary skill to combine the 12-hydroxystearic acid with the oil and the lithium hydroxide/water mixture simultaneously, as recited in the third step of claim 17, rather than first adding the acid to the water, as in example 1 of Zaki. It is also noted that paragraph 22 of the current specification defines step 106 of figure 1 as including methods where the fatty acid is added to the oil prior to the addition of the aqueous lithium hydroxide. t It would have additionally been obvious to one of ordinary skill in the art to heat the oil prior to the addition of the acid and the lithium hydroxide/water mixture, in order to provide a temperature above the melting point of the fats. While Zaki does not explicitly disclose separate steps of heating the mixture to form a dehydrated mixture and heating the dehydrated mixture to form a molten mixture, Zaki discloses heating the mixture of oil, 12-hydroxystearic acid, lithium hydroxide, and water to 210-220° C, which will accomplish the dehydration of the mixture as it is raised above the boiling point of water, and then turns the mixture molten, as evidenced by Zaki’s teaching that the mixture is pumped prior to cooling. Claim 17 is therefore also rendered obvious by Zaki.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Zaki in view of Liu.
The discussions of Zaki in paragraphs 3 and 6 above and the discussion of Liu in paragraph 10 above are incorporated here by reference. Zaki discloses a method meeting the limitations of claim 16, and in column 5 lines 62-65 discloses that the grease thickener can be a lithium complex thickener. Zaki does not specifically disclose preparing the lithium formulation by the method of claim 18.
An English-language machine translation of Liu, which was attached to the office action mailed 11/12/25, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the machine translation. In paragraphs 41-45, Liu discloses a method for preparing a lithium complex grease corresponding to the method of claim 18, where the 12-hydroxystearic acid is the first fatty acid, and the sebacic acid is the second fatty acid, where the 12-hydroxystearic acid is first saponified with lithium hydroxide prior to the addition of the sebacic acid and additional aqueous lithium hydroxide. Preparing the lithium complex grease of Zaki by adding sebacic acid and additional lithium hydroxide to the saponified lithium 12-hydroxystearate mixture in example 1 of Zaki, followed by heating and cooling the resulting reaction mixture in accordance with paragraphs 44-46 of Liu, meets the limitations of claim 18.
It would have been obvious to one of ordinary skill in the art to prepare the lithium complex grease of Zaki by incorporating sebacic acid and additional lithium hydroxide in accordance with the teachings of Liu, since Liu teaches that it is a suitable method for preparing a complex lithium grease.
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Zaki in view of Kim.
The discussions of Zaki in paragraphs 3 and 6 above are incorporated here by reference. Zaki discloses a grease meeting the limitations of claim 13, and in column 7 lines 5-16 discloses that the grease can comprise various additives including overbased calcium sulfonate. Zaki does not specifically disclose the inclusion of a calcite calcium sulfonate having the TBN values recited in claim 15.
An English-language machine translation of Kim, which was attached to the office action mailed 11/12/25, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the machine translation. In paragraph 1, Kim discloses a grease composition comprising a base oil, a lithium-based thickener, and an additive comprising an overbased calcium sulfonate, where the overbased calcium sulfonate comprises crystalline calcite. In paragraph 54 Kim discloses that the overbased calcium sulfonate preferably has a total base number of 300 to 500, encompassing the range recited in claim 15. 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);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). The inclusion of the overbased calcium sulfonate of Kim containing calcite and having a TBN of 300 to 500 as the overbased calcium sulfonate of Zaki therefore meets the limitations of claim 15, as well as claims 13-14 for the case where the overbased calcium sulfonate of Zaki and Kim is the calcium sulfonate formulation. It is noted that claims 13-15 are recited in product-by-process format, and the patentability of the claim is determined by the product and not the process by which it is obtained. It is also noted that the “comprises” language of claim 1 allows for additional unrecited steps, and claims 13-15 therefore allow for a grease obtainable by a method where the overbased calcium sulfonate is the calcium sulfonate formulation of the claims, and then the calcium lignin sulfate of Zaki is added in an additional unrecited step.
Allowable Subject Matter
Claims 1-6, 8, and 25 are allowed. Claims 19-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 1 has been amended to incorporate the limitations of claim 7, which was indicated as containing allowable subject matter in the office action mailed 11/12/25. Zaki and/or Kim, as discussed above, disclose the method of claim 1 where the calcium sulfonate formulation is a calcium lignin sulfonate or an overbased calcium sulfonate. Neither Zaki nor Kim provide any teaching that would motivate the use of a calcium sulfonate grease or a calcium sulfonate complex grease (the “calcium sulfonate complex variation” of amended claim 1), as the calcium sulfonate formulation to be mixed with the lithium grease of Zaki. While Zaki does disclose calcium greases in column 6 lines 3-8 and examples 4-5 in columns 12-14, these calcium greases are used instead of the lithium greases, and Zaki does not provide any motivation for combining these greases with the lithium-based greases, nor does Zaki provide any method for doing so. Amended claim 1 and its dependent claims are therefore allowed. Newly added claims 19-20 and 25 includes similar limitations and is therefore allowable for the same reason. Claims 19-20 are analogous to previous claims 11-12, which were indicated as containing allowable subject matter in the office action mailed 11/12/25.
Liu, as discussed above, discloses a method of preparing a lithium complex grease and a complex calcium sulfonate grease. However, Liu does not disclose or provide any motivation for cooling the lithium complex grease (lithium formulation) to about 175° C at any point in the method described in paragraphs 41-48, noting that the broadest definition of “about” in paragraph 70 of the current application is +/- 5%, leading to a range of 166.25° to 183.75° C. Liu discloses cooling the formulation from 200° to 220° C to a range of 100° to 120° C prior to adding the additives. It is not clear that the additives of Liu would be stable if added at about 175° C, and one of ordinary skill in the art would therefore not arrive at a temperature of about 175° C via optimization. Liu also does not provide any reason to re-heat the product obtained in paragraph 47 to above about 175° C and then cool to about 175° C before mixing with the complex calcium sulfonate grease. Liu therefore does not disclose or render obvious the method claims of the current invention.
Response to Arguments
Applicant's arguments filed 2/6/26 have been fully considered but they are not persuasive. Applicant argues that the cited references do not teach certain features in claim 16. However, as discussed in the rejection, Zaki discloses adding the calcium lignin sulfonate at a temperature of above about 80° C, encompassing the claimed range and therefore rendering it obvious. Alternatively, as also discussed in the rejection, it would have been within the scope of ordinary skill in the art to optimize the temperature at which the calcium lignin sulfonate is added. Since the calcium lignin sulfonate is added to the lithium grease of Zaki, it must have been prepared separately. Applicant argues that “Zaki is not about blending two grease chemistries”, but claim 16 does not require blending two grease chemistries, since it only recites a calcium sulfonate “formulation” rather than a grease. Applicant’s arguments regarding claim 16 are therefore not persuasive.
Regarding claims 13-15, as discussed in the above rejections the claims are in product-by-process format, and therefore do not require all the process limitations of claim 1 as long as the compositions would be obtainable from the method of claim 1. Those claims therefore remain rejected even though claim 1 and its dependent method claims are allowed.
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