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 .
Election/Restrictions
Applicant's election with traverse of Group II including claims 11-15 in the reply filed on February 28, 2025 is acknowledged. The traversal is on the ground(s) that all the claims are believed to have commonality, as they relate to aspects of driving units, such as presses or other machine, and features configured therefor. This is not found persuasive because the lubrication system of elected Group II, claims 11-15, is classified in B21D37/18 and is of a materially different design than those of the driving unit of Group I and the tool assembly of Group III, for example, Group I recites a driving unit for tooling including planetary gearing whereby upward movement of the lower portion triggers rotation of gears of the planetary gearing including sun gears planetary gears and Group III recites a driving unit having a helix drive and transmission assembly and the lubrication system of Group II is usable with a variety of machines and isn’t required to be used with the driving unit of Group I or Group III. Search strategies of the claimed lubrication system do no overlap the required search strategies of the other groups, for example, search strategies for the driving unit of Group I and the tool assembly of Group III would require search terms and areas directed towards the driving units such as planetary systems and helix drive systems, classified in F16H which would not be required to search for the lubrication system of Group II which is merely usable in such applications. Examining all the inventions would require review of thousands of additional references that would constitute a burden to the examiner.
The requirement is still deemed proper and is therefore made FINAL.
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 and central recess of claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 14 and 15 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 14 recites “wherein depression of the upper surface corresponds with downward movement of the piston…which corresponds with the upward projection of the lubricant”. It is unclear if depression of the upper surface powers the upward projection of the lubricant or if timing of the two events are being claimed as a corresponding relationship, not a cause/effect relationship.
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 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) configured 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 for triggering 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).
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.
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/M.K.B/Examiner, Art Unit 3654
/ANNA M MOMPER/Supervisory Patent Examiner, Art Unit 3619