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 .
The amendment dated 12/22/2025 has been considered and entered. The amendment now requires that the calcium carbonate is the primary structural component which was not previously recited in the claims, and thus necessitates new grounds of rejections.
The amendment to claim 1 which requires at least two structural ingredients at specific amounts appear to overcome rejections made over Zhou et al. (CN110437925A) alone which does not require both structural units at the amounts of the claims, and thus necessitates new grounds of rejections. The response has been considered but was not found to be persuasive over the rejections in view of Sawaguchi et al. (US 2019/0169522) which are hereby maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3 – 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claims recite a calcium carbonate as primary structural component which is not supported by applicant’s disclosure as originally filed. The disclosure only recites first structural component (i.e., calcium carbonate) and second structural component (i.e., calcium sulfonate).
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.
Claims 1, 3 – 21 are 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. The claims recite calcium carbonate as a primary structural component is ambiguous as it is unclear what the term “primary” implies. The examples in applicant’s disclosure do not provide compositions that can comprise calcium carbonates alone as structural component to justify the term primary as requiring no other structural component. In examples where calcium carbonate is used alone, there is 100% loss (i.e., failure).
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.
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.
Claims 1, 3, 4, 6, 8 – 11, 13 – 21 are rejected under 35 U.S.C. 103 as being unpatentable over Sawaguchi et al. (US 2019/0169522)
In regards to claim 1, Sawaguchi teaches lubricating grease comprising base oil, thickener, calcium carbonate solid lubricant present at from 1 to 60% of the grease and having particle diameter of from 0.1 to 30 mm, and wherein the base oil has a kinematic viscosity of 18 to 300 mm2/s at 40℃ and the grease has a worked penetration of 240 to 320 (abstract). The thickeners may be a single or mixtures of compounds including lithium soap, calcium soap, aluminum soap such as lithium salts of 12-hydroxystearic acid (HSA) (i.e., lithium thickener), calcium complex soap, or barium complex soap and mixtures [0015, 0031]. The composition may comprise optional additives such as rust inhibitors etc., such as calcium sulfonate rust inhibitor [0019, 0046]. In one embodiment, the rust inhibitor is present at 0.5% [0061, Examples 1 – 6]. In the examples, the thickener such as Li soap A), Ba complex soap B) and Li complex soap C) are present at from 8 to 30% [0031 – 0033]. The calcium carbonate in the oil will be expected to form similar stable particle suspension or colloidal dispersion in the lubricating grease.
In regards to claim 2, Sawaguchi teaches the grease comprising lithium, calcium, or aluminum thickeners and the optional presence of calcium sulfate in the claimed amounts as previously stated.
In regards to claims 3, 6, Sawaguchi teaches the grease having the calcium, lithium and barium soap, such as lithium soaps of acids such as 12-HSA as previously discussed, and thus makes calcium soaps of 12-HSA obvious for use as thickener in the amounts recited in the examples. Alternatively, in view of Fiddelars et al. (RU 2 536 866 C2) which teaches grease for automobile parts such as bearings and gears which are sliding parts similar to Sawaguchi, teaches thickeners such as metal salts of acids such as 12-hydroxystearic acids at from 1 to 15% in the grease can be metal salts such as alkali and alkaline earth metal salts (i.e., calcium salts) of such acid (specification). Thus, it would have been obvious for persons of ordinary skill in the art at the time the claims were filed to have used calcium 12-HSA salts as the calcium thickener and at amounts of from 1 to 15% in the composition of Sawaguchi, as Fiddelars teaches they are suitable for similar compositions.
In regards to claim 4, Sawaguchi teaches the grease having the claimed limitations as previously stated.
In regards to claim 8, Sawaguchi in view of Fiddelars and Niya teaches the claimed grease having the ingredients in the claimed amounts.
In regards to claims 9, 10, Sawaguchi teaches the grease having the claimed limitation as previously stated.
In regards to claim 11, Sawaguchi teaches the grease which may not contain the optional calcium sulfonate or other sulfur additives.
In regards to claims 13 – 21, Sawaguchi, and alternatively in view of Fiddelars and/or Niya, teach the claimed composition having the claimed ingredients in the claimed amounts and would be expected to have the same properties as claimed.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that Sawaguchi does not teach calcium carbonate as a structural component. The argument is not persuasive.
The claims are drawn to a composition comprising calcium carbonate in amounts of from 25 to 75% or from about 60% to 75%. Since Sawaguchi teaches a similar grease composition having calcium carbonate in amounts of up to 60%, the claimed limitation is overlapped and similar properties would be expected.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAIWO OLADAPO whose telephone number is (571)270-3723. The examiner can normally be reached 8-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAIWO OLADAPO/Primary Examiner, Art Unit 1771