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 06/17/2026 has been considered and entered. The response was considered but not found to be persuasive. Therefore, the previous rejections are maintained.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/17/2026 has been entered.
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 – 22 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 secondary 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 – 22 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 various thickeners as secondary structural component which is ambiguous as it is unclear what the term “secondary” implies. The examples in applicant’s disclosure do not provide compositions where the recited thickeners were used as secondary, subordinate or a less important structural component. Thus, the term secondary is ambiguous.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6 – 8 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. The claims each recites calcium carbonate at from about 25% to 50% or from about 25% to about 35% which do not further limit the amounts of from about 60% to 75% in the independent claim 1. 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 § 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 – 22 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.
In regards to claim 22, Sawaguchi, and alternatively in view of Fiddelars and/or Niya teaches the composition. Sawaguchi teaches the composition can comprise thickeners which are not limited to metallic soaps [0015]. While Sawaguchi does not particularly recite urea thickener, since the preferred metallic soaps were non-limiting, other conventional thickeners such as polyurea thickeners would be obvious to persons of ordinary skill in the art for use in the composition of Sawaguchi.
Claims 1, 3 – 6, 13 – 22 are rejected under 35 U.S.C. 103 as being unpatentable over Schlarb et al. (WO 2019/125757 A1)
In regards to claims 1, 22, Schlarb teaches lubricating grease composition (title). The composition can comprise one or more solid lubricants at 15 to 65% as a component a) such as calcium carbonate, one or more base oils at from 15 to 84% as a component b), one or more thickeners at from 0 to 30% as a component e) [0010 – 0012]. The thickener can be bentonite (i.e., bentonite clay), or a polyurea, or calcium or lithium metallic or complex soap such as lithium 12-hydroxystearate (i.e., lithium 12-HAS), thus making calcium 12-HSA also obvious [0023].
In regards to claims 3 – 6, Schlarb teaches the grease having the claimed limitations as previously stated.
In regards to claims 13 – 22, Schlarb teaches the grease having the claimed limitations as previously stated.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that Sawaguchi does not allow the grease to contain calcium carbonate at above 60% while the claims recite amounts of about 60% to 75%. The argument is not persuasive.
Amounts of about 60% includes an amount of 60% or even less than 60% and thus the amounts recited by Sawaguchi obviates the claimed range.
Applicant argues that the calcium carbonate of Sawaguchi is a solid lubricant rather than a structural component as claimed. The argument is not persuasive.
The claims are drawn to a composition having calcium carbonate. Sawaguchi teaches similar composition having similar ingredients in amounts overlapping the claimed range. The calcium carbonate would be effective to provide the structural unit limitation of the claim.
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
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.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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