Patent Application 18904342 - BALL SCREW GREASE COMPOSITION FOR RACK-ASSISTED - Rejection
Patent Application 18904342 - BALL SCREW GREASE COMPOSITION FOR RACK-ASSISTED
Title: BALL SCREW GREASE COMPOSITION FOR RACK-ASSISTED ELECTRIC POWER STEERING
Application Information
- Invention Title: BALL SCREW GREASE COMPOSITION FOR RACK-ASSISTED ELECTRIC POWER STEERING
- Application Number: 18904342
- Submission Date: 2025-05-23T00:00:00.000Z
- Effective Filing Date: 2024-10-02T00:00:00.000Z
- Filing Date: 2024-10-02T00:00:00.000Z
- Examiner Employee Number: 84756
- Art Unit: 1771
- Tech Center: 1700
Rejection Summary
- 102 Rejections: 2
- 103 Rejections: 3
Cited Patents
The following patents were cited in the rejection:
Office Action Text
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 .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 8-10 and 12-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyajima et al., US Patent Application Publication No. 2007/0149422 (hereinafter referred to as Miyajima).
Regarding claims 1, 8-10 and 12-14, Miyajima discloses a grease composition for application in a steel rolling bearing screw part of rack-assisted electric power steering apparatus (as recited in claim 1 and reads on claim 14) (see Title, see Figure 8/Para. [0068] and Para. [0024], [0067] and [0075]) comprising 13 wt% of a diurea thickener formed by reacting 4'4-diphenylmethane diisocyanate and octyl amines (thickener as recited in claim 1 and the aliphatic thickener of formula (I) of claim 1 and reads on claim 8) (Para. [0033]-[0035]), 85 wt% of a PAO base oil having a KV40 of 30 mm2/s (PAO base oil as recited in claim 1 and reads on claims 9-10) (see Table 1/Example 3), 0.5 wt% of a calcium sulfonate (as recited in claim 1) (Para. [0072]) and 1 wt% of an aminic-type antioxidant (as recited in claim 12) (Para. [0072]) wherein the grease composition has a worked penetration of 303 (as recited in claim 1 and reads on claim 13) (see Table 1/Example 3).
Regarding claim 15, see discussion above.
Claim Rejections - 35 USC § 102
Claims 1, 8-9 and 12-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirooka et al., US Patent Application Publication No. 2017/0362530 (hereinafter referred to as Hirooka).
Regarding claims 1, 8-9 and 12-14, Hirooka discloses a grease composition for application in a steel rolling bearing screw part of rack-assisted electric power steering apparatus (as recited in claim 1 and reads on claim 14) (see Title and Para. [0002]-[0005] and [0125]-[0127]), comprising 8 wt% of a diurea thickener formed by reacting 4'4-diphenylmethane diisocyanate and octyl amines (thickener as recited in claim 1 and the aliphatic thickener of formula (I) of claim 1 and reads on claim 8) (Para. [0015] and [0042]-[0048]), 70 wt% of a PAO base oil having a KV40 of 82.8 mm2/s (PAO base oil as recited in claim 1 and reads on claim 9 – based on the concentration of the additives of Example 6) (see Table 1/Example 6), 0.5 wt% of a calcium sulfonate (as recited in claim 1) (see Table 1/Example 6) and 2 wt% of an aminic-type antioxidant (as recited in claim 12) (see Table 1/Example 6) wherein the grease composition has a worked penetration of 300 to 350 (as recited in claim 1 and reads on claim 13) (Para. [0074]).
Regarding claim 15, see discussion above.
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, 4-5 and 8-15 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al., US Patent Application Publication No. 2011/0160105 (hereinafter referred to as Tanaka).
Regarding claims 1, 4-5 and 8-14, Tanaka discloses a grease composition for use in a steel ball screw part of a rack-assisted electric power steering device (as recited in claim 1 and reads on claim 14) (Para. [0003] and [0063]) comprising 90 wt% of a PAO base oil having a KV40 of 31.2 cSt (PAO base oil as recited in claim 1 and within the KV40 recited in claim 1 and reads on claims 9-10) (Para. [0043]/Base Oil B and see Table 1/Example 2), 10 wt% of a diurea thickener formed by reacting 2 mol of octylamine and 1 mol of 4,4’-diphenylmethane diisocyanate (reads on formula (I)/diurea thickener of claim 1 and reads on claim 8) (Para. [0043]/Thickener A and see Table 1/Example 5) to which is added 1 wt% of a fatty acid, such as, palmitic acid (fatty acid as recited in claim 1 and reads on claims 4-5 and 11) (Para. [0063] and see Table 1/Example 5) and additives, such as, oiliness agents and solid lubricants (as recited in claim 12) (Para. [0037]-[0038]) wherein the grease has a worked penetration of 273 and ranges from 266 to 297 (as recited in claim 1 and reads on claim 13) (see Table 1/Example 5 and Para. [0063]).
Tanaka differs from instant claim 1 in that Tanaka does not explicitly disclose a single embodiment comprising a PAO base oil, diurea thickener and fatty acid as recited in claim 1.
It is the position of the examiner, however, that one of ordinary skill in the art at the time of the invention would immediately envisage the grease composition of the instant claim 1 from the disclosure of Tanaka.
Regarding claim 15, see discussion above.
Claim Rejections - 35 USC § 103
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka in view of Tanaka et al., International Publication No. WO/2017/125581 (hereinafter referred to as Tanaka ‘858 – for citation purposes USPG-PUB No. 2021/0171858 is being used).
Regarding claims 2-3, Tanaka discloses all the limitations discussed above but does not explicitly disclose the specific calcium sulfonate recited in claims 2-3.
Tanaka ‘858 discloses a grease composition for use in a steel ball screw part of a rack-assisted electric power steering device (Para. [0066] and [0073]) comprising a PAO base oil (Para. [0026]) to which is added a urea-based thickener (Para. [0029]) and 0.1 to 10 wt% of a calcium sulfonate, such as, Na-Sul 729 which has a BN of 0.26 mgKOH/g (as recited in claim 2-3 – Na-Sul 729 is a known neutral calcium dinonylnaphthalene sulfonate) (Para. [0019] and [0086]/see Table 1/Example 5). It would have been obvious to one of ordinary skill in the art at the time of the invention to use the calcium sulfonate compound of Tanaka ‘858 in the grease composition of Tanaka in order to enhance the rust prevention properties of the grease composition (Para. [0057] of Tanaka ‘858).
Claim Rejections - 35 USC § 103
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka in view of Kochi et al., International Publication No. WO/2017/146257 (hereinafter referred to as Kochi – for citation purposes USPG-PUB No. 2020/0181528 is being used).
Regarding claims 6-7, Tanaka discloses all the limitations discussed above but does not explicitly disclose a triglyceride compound, nor specifically hydrogenated castor oil as recited in claims 6-7.
Kochi discloses a grease composition for steering devices (Para. [0002]) comprising 50 to 99 wt% of a PAO base oil having a KV40 ranging from 10 to 200 cSt (Para. [0033]-[0034]) to which is added 1 to 8 wt% of a thickener, such as, a diurea thickener formed by reacting 4,4′-diphenylmethane diisocyanate and aliphatic amine including octylamine and/or stearylamine (Para. [0038]-[0042]), and 1 to 20 wt% of a polar wax such as, hydrogenated castor oil which is a glyceride of 12-hydroxystearic acid (as recited in claims 6-7) (Para. [0045]-[0046]). It would have been obvious to one of ordinary skill in the art at the time of the invention to use the thickener of Kochi in the grease composition of Tanaka as it is a simple substitution of one known element for another in order to obtain predictable results, and the polar wax of Kochi because with little to no polar wax, a failure to suppress shrinkage of the dust cover may occur and if the content of the polar wax is too large this may deteriorate the low-torque performance at low temperature (Para. [0046] of Kochi).
Double Patenting
10. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
11. Claims 1-15 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-14 of co-pending Patent No. 12,139,688. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The co-pending '688 patent discloses the same grease components as do the instant claims and therefore would have been obvious in light of the disclosures discussed above and incorporated herein by reference. These are the same reaction components recited in the instant claims. In re Vogel, 422 F. 2d 438, 164 USPQ 619, 622 (CCPA 1970).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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 5712726381. 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.
/VISHAL V VASISTH/Primary Examiner, Art Unit 1771
