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
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 4 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 4 recites “the amine-based rust inhibitor is a fatty acid amine salt”. There is no antecedent basis for “the amine-based rust inhibitor”. Claim 1, from which claim 4 depends, already specifically recites a fatty acid amine salt.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Inami (U.S. PG Pub. No. 2015/0330451) in view of Kimura (JP H07-30350 B2) and Iino (U.S. Pat. No. 9,732,798).
In paragraph 1 Inami discloses a rolling bearing and a grease enclosed therein. In paragraph 11 Inami discloses that the grease comprises a base oil, as recited in claim 1, and a mixture of a carboxylic acid-based rust inhibitor, a carboxylate-based rust inhibitor, and an amine-based rust inhibitor, and in paragraph 38 discloses that the amine-based rust inhibitor can be an amine salt of a fatty acid, all as recited for the rust inhibitor of claim 1. In paragraph 39 Inami discloses that each of the rust inhibitor species are present in amounts within the ranges recited in claim 1. In paragraph 11 Inami also discloses that the grease has a penetration of 300 to 400, overlapping the range recited in claim 1.
The differences between Inami and the currently presented claims are:
i) In paragraph 41 Inami discloses that the thickener is not particularly limited and can be a complex lithium soap, or a lithium salt of an N-alkyl-substituted monoamide acid, but does not specifically disclose a complex amido-lithium soap as recited in claims 1-2. In paragraph 41 Inami specifically points to JP H07-30350 (Kimura) for its teachings regarding certain lithium soaps.
ii) Inami discloses in paragraph 50 that the composition can comprise an amine-based antioxidant or a phenol-based antioxidant, but does not disclose a mixture of antioxidants in the amounts recited in claim 1.
iii) Some of the ranges of Inami and Iino overlap the claimed ranges rather than falling within them.
With respect to i), an English-language machine translation of Kimura, which is attached, is used in setting forth this rejection, and the page and paragraph numbers referred to herein are those of the translation.
In the first paragraph of page 3 of the translation, Kimura discloses a grease comprising a mixture of a lithium salt of an N-alkyl substituted monoamic acid, a lithium salt of a dibasic acid, and an N-alkyl substituted diamine, meeting the limitations of the complex amido-lithium soap thickener of claims 1-2.
It would have been obvious to one of ordinary skill in the art to include the amido-lithium soap thickener of Kimura as the thickener in the composition of Inami, since Inami specifically points to Kimura for its teachings regarding thickeners, and since Kimura teaches in the paragraph bridging pages 2-3 that the thickener mixture improves the load-bearing capacity of the grease.
With respect to ii), in column 1 lines 6-8 Iino discloses a grease for a rolling bearing. In column 3 lines 26-28 Iino discloses that the grease can comprise a combination of an amine-based antioxidant and a phenol-based antioxidant, as recited in claim 1. In column 5 lines 42-46 Iino discloses that di(4-octylphenyl)amine, which is a synonym for p,p′-dioctyldiphenylamine as recited in claim 3, is a preferred amine-based antioxidant. In column 10 lines 36-39 Iino discloses that benzenepropanoic acid, 3,5-bis(1,1-dimethylethyl)-4-hydroxy C7-C9 side chain alkyl ester, as recited in claim 3 is a preferred phenol-based antioxidant. In column 11 lines 9-18 Iino discloses that the amine-based antioxidant and phenol-based antioxidant are preferably included in a total of 0.1 to 4% by weight of the grease, where the amine-based antioxidant and phenol-based antioxidant are more preferably present in a weight ratio of 8/2 to 6/4, leading to concentration ranges for each antioxidant overlapping the ranges recited in claim 1.
It would have been obvious to one of ordinary skill in the art to include the antioxidant mixture of Iino as the antioxidant in the composition of Inami since Iino discloses that it is a suitable antioxidant mixture for a grease useful in a rolling bearing.
With respect to iii), 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);”
Claims 1-3 are therefore rendered obvious by Inami in view of Kimura and Iino. As discussed above, Inami discloses a rolling bearing comprising the grease, and since the bearing and grease meet the compositional limitations of the claims, the bearing will be capable of performing the intended use of claim 5. Claim 5 is therefore met as well.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Inami, Kimura, and Iino as applied to claims 1-3 and 5 above, and further in view of Isa (WO 2023/038149 A1) and Ozaki (JP 2009-227958 A).
The discussion of Inami, Kimura, and Iino in paragraph 7 above is incorporated here by reference. Inami, Kimura, and Iino discloses a grease composition meeting the limitations of claim 1. Inami discloses in paragraph 35 that a preferred carboxylate-based rust inhibitor is zinc naphthenate, and in paragraph 38 that a preferred amine-based rust inhibitor is an amine salt of a fatty acid, both as recited in claim 4. In paragraph 34 Inami discloses that the carboxylic acid-based rust inhibitor can be an alkenylsuccinic acid half ester, but does not disclose the specific carboxylic acid-based rust inhibitor of claim 4.
While Isa was published 3/16/23 and the current application contains a foreign priority claim to a Japanese application filed 11/7/22, applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
An English-language equivalent of Isa, U.S. PG Pub. No. 2024/0263099, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the English-language equivalent.
In paragraphs 7 and 35-37 Isa discloses a grease composition comprising a rust (corrosion) inhibitor mixture corresponding to the rust inhibitor of Inami and of claim 1. In paragraph 35 Isa discloses that preferred carboxylic acid-based corrosion inhibitors are alkenyl succinic acid half esters and tetrapropenyl butanedioic acid, as recited in claim 4. Inami does not specifically disclose that the alkenyl succinic acid half esters are tetrapropenyl succinic acid half esters.
An English-language machine translation of Ozaki, which is attached, is also used in setting forth this rejection, and the page and paragraph numbers referred to herein are those of the English-language reference.
In paragraphs 41-42 and 52 Ozaki discloses grease compositions comprising a half ester of tetrapropenyl succinic acid, as recited in claim 4, and demonstrating high rust prevention effect.
It would have been obvious to one of ordinary skill in the art to include the tetrapropenyl succinic acid half ester of Ozaki as the alkenyl succinic acid half ester of Inami and Isa, since Ozaki teaches that it is an effective rust inhibitor in a grease composition, and it would have been obvious to one of ordinary skill in the art to combine the tetrapropenyl succinic acid half ester of Ozaki and tetrapropenyl butanedioic acid of Isa as the carboxylic acid-based rust inhibitor or Inami, meeting the limitations of claim 4, since case law holds that “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted).
In light of the above, claim 4 is rendered obvious by Imani in view of Kimura and Iino, and further in view of Isa and Ozaki.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771
