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 filed March 18, 2026 has been entered. Claims 1-10 are withdrawn. Claims 16-20 are cancelled. Claims 11-14 are amended. Claims 21-25 are new. Therefore, claims 11-16 and 21-25 are currently pending in the application.
Election/Restrictions
Applicant is reminded of their election of Invention II, claims 11-15, drawn to a lubrication system in response to a Requirement for Restriction/Election dated December 31, 2024. New claims 23-25 contain subject of non-elected Invention I drawn to a driving unit. Therefore, claims 23-25 have been withdrawn.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the housing must be shown or the feature(s) canceled from the claim(s). No new matter should be added.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "146a" and "146b" have both been used to designate the feature above pump piston 144 (fig. 7). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 13 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. Line 1 recites “the lubrication system is configured for driving unit for a tapping tool…”. It is unclear if “driving unit” is the tool driving unit from claim 12 or a different driving unit.
Claims 21-22 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. Claim 21, lines 6-7 recite, “projection of lubricant is configured to be below and above, as well as a machined area within.” It is unclear how lubricant is projected above and within a machined area of the material. Figure 7 appears to show material (sheet metal 103) situated above the die containing a lubricant reservoir to project lubricant. How does lubricant get above the material? It appears that it would only be projected below the material.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 11-13 and 21-22 are rejected under 35 U.S.C. 102(a)(1)(a)(2) as being anticipated by Naumann et al., U.S Patent Publication 2002/0189904.
As per claim 11, Naumann et al. disclose lubrication system (abstract) (fig. 2) (20) [expanded device] for use with tooling usable with metal-fabricating presses or other machines comprising:
a housing (fig. E-1) for being located beneath a material (26) to be machined by a machining press (paras [0008, 0016]), the housing (fig. E-1)having a central recess defining a reservoir (24d) for lubricant (para [0034]), the housing (fig. E-1) having a depressible upper surface (21) that when depressed, triggers upward projection of lubricant from the recess (24d) at the material (26) to be machined (paras [0034, 0035]).
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As per claim 12, Naumann et al. as set forth above, disclose the housing (fig. E-1) comprises a die (fig. E-1), the upper surface of the die (21) configured to be depressed via downward contact by the material (26) to be machined, resulting from a corresponding force on the material (26) via a tool driving unit (paras [0008, 0016]) (abstract).
As per claim 13, Naumann et al. as set forth above, discloses the lubrication system is configured for driving unit for a tapping tool, wherein the upward projection of lubricant at the material to be machined comprises application of the lubricant below and above, as well as an area defined within, a pre- punched hole (the driving unit is recited as an intended use and the lubrication system of Naumann et al. is capable of performing the function if used with such a driving unit for a tapping tool).
As per claim 21, Naumann et al. disclose a lubrication system (abstract) (fig. 2) (20) [expanded device] for use with metal-fabricating presses or other machines comprising:
a die (fig. E-1) configured for being located beneath a material (26) to be machined (paras [0008, 0016]), the die having a central recess defining a reservoir (24d) for lubricant (para [0034]), the die when triggered configured to project lubricant from the recess (24d) at the material (paras [0034, 0035]) to be machined; and
wherein the central recess (24d) is so positioned such that projection of lubricant is configured to be below and above, as well as a machined area within, the material (paras [0034, 0035]) (fig. 2).
As per claim 22, Naumann et al. as set forth above, disclose an upper surface of the die is configured to be depressed via downward contact by the material (26) to be machined, from a corresponding force on the material via a tool driving unit and triggering the lubricant projection (paras [0008, 0016]) (abstract).
(the tool driving unit is recited as an intended use and the lubrication system of Naumann et al. is capable of performing the function if used with such a tool driving unit).
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 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.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Naumann et al., U.S Patent Publication 2002/0189904.
As per claim 14, Naumann et al. as set forth above, discloses a ball (21) and a valve (seat portion of 25 engaging with ball 21) housed within the lubricant reservoir, wherein depression of the upper surface corresponds with downward movement of the ball within the reservoir, which corresponds with the upward projection of the lubricant from the reservoir via the valve (Fig. 2).
Naumann et al. discloses a ball rather than a piston, however it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the shape of the ball to a piston, for example a tapered piston, as it is well known in the art a variety of shape configurations can be used in valve elements and seats and different configurations allow for different pressure surface or increased sealing surface area. Further it has been held that absent persuasive evidence that the particular configuration was significant, the change of shape is within the skill of one of ordinary skill in the art. In re Dailey, 357 F. 2d 669, 149 USPQ 47.
Allowable Subject Matter
Claims 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed March 18, 2026 have been fully considered but they are not persuasive. Regarding claim 11, Applicant argues on page 2 of the Remarks there are at least (4) four aspects that Applicant believes Naumann falls short of teaching. For example, Naumann focuses on an oil filter being lubricated, not a material to be machined by a machining press. In addition, the design of Naumann of focus per the rejection does not concern a central recess but instead two outer recesses. Moreover, there is no projection of lubricant from Naumann's design, but instead a simple opening from which lubricant can seep out. Finally, the area of lubrication is not relative to a material to be machined, but instead an end of an oil filter. Examiner respectfully disagrees.
Naumann focuses on an oil filter being lubricated, not a material to be machined by a machining press – Naumann discloses a device for depositing a flowable medium, in particular a lubricating oil, onto a workpiece (abstract). Naumann mentions an oil filter as a workpiece example (para [0035]). A workpiece not considered limited to an oil filter.
the design of Naumann… does not concern a central recess but instead two outer recesses – Cavities 24d of Nauman are connected by duct 24b and are considered a central recess.
there is no projection of lubricant from Naumann's design, but instead a simple opening from which lubricant can seep out – Naumann discloses “This enables lubricating oil to be discharged simultaneously at all the outlets…” (para 0035]. Since “the medium is applied…under positive pressure…” [para 0016], “discharged” and “upward projection” are equivalent.
the area of lubrication is not relative to a material to be machined, but instead an end of an oil filter – Naumann discloses a lubrication system beneath a material, having a central recess for lubricant, the housing having a depressible upper surface that when depressed, triggers upward projection of lubricant from the recess at the material. An oil filter is mentioned as an example of a material or workpiece. A “material to be machined” speaks to intended use and does not negate Naumann’s structural disclosure capable of supplying lubricant to an area to be machined.
Conclusion
THIS ACTION IS MADE FINAL. 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 MARK KENNETH BUSE whose telephone number is (571)270-3139. The examiner can normally be reached 8:00 am to 5:00 pm.
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/M.K.B/Examiner, Art Unit 3654
/ROBERT W HODGE/Supervisory Patent Examiner, Art Unit 3654
