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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 1/7/2026 has been entered.
Response to Amendment
Applicant’s response filed 1/7/2026 amended claims 1 and 12. There is no support for applicant’s substantive amendments to instant claims 1 and 12 (as discussed below). Applicant’s arguments are persuasive in overcoming the 35 USC 103 rejection over Weitz in view of Burdick from the office action mailed 5/7/2025; therefore, this rejection is withdrawn. A new ground of rejection is set forth below.
Specification
The amendment filed 1/7/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: claims 1 and 12 are amended to include ", retains a viscosity suitable for flooding the wireline.” Applicant points to paragraph 5 of the instant specification for support for this amendment. Paragraph 5 in pertinent part states:
By flooding the cable and drum, the lubricant undesirably gets all over the wireline vehicle (and possibly other nearby vehicles and equipment). In doing so, the lubricant comes in contact with the seals on the truck/vehicle, and especially the side and back windows, as well as the tires. The rubber and other materials used on window and door seals as well as the tires are not resistant to oils, especially large quantities, but are instead designed to be resistant to water/rain in service. The truck seals and tires are designed to keep rain water out. Since mineral oil does not typically come in contact with these seals and tires, they are not designed to be resistant to mineral oil, particularly in these quantities/amounts. Because of this, users see degradation of tires and window seals, which causes additional replacement costs of truck components on each job . . . .”
From this disclosure it is assumed that flooding the wireline is an undesired outcome and not one that is exemplified by the instant composition. Therefore, there is no support for this amendment in the specification. Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
5. 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.
6. Claims 1 and 12 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The added material which is not supported by the original disclosure appears in claims 1 and 12 as discussed above.
Claim Rejections - 35 USC § 103
7. 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.
8. 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.
9. Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Burdick, International Publication No. WO93/02164 (hereinafter referred to as Burdick) in view of Mettath et al., US Patent Application Publication No. 2019/0078009 (hereinafter referred to as Mettath).
Regarding claims 1-12, Burdick discloses a microemulsion metalworking composition concentrate characterized by an aqueous continuous phase and an organic dispersed phase comprising water insoluble polyalkylene glycol droplets having a submicron particle size (as recited in claims 1, 12 and reads on claims 2-4). The concentrate consists essentially of water (as recited in claims 1, 12 and reads on claims 9-11), an emulsifier which is a water-soluble, base-neutralized phosphate ester, a water insoluble polyalkylene oxide alcohol and minor concentrations, such as, 1 to 20 wt% of additives including amine borate esters (amine borates as recited in claims 1, 12 and reads on claim 7) and disodium dimercaptothiadiazole (1,3,4-Thiadiazolidine-2,5-dithione disodium salt as recited in claims 1, 12 and reads on claim 8) (see Abstract and Page 8/L. 6-32).
Burdick discloses all the limitations discussed above but does not explicitly disclose the polyalkylene glycol copolymer recited in claims 1 and 12.
Mettath discloses an additive composition for a drilling fluid, as well as a method of increasing the lubricity and reducing the coefficient of friction of a drilling fluid. The additive composition comprising 1 to 100 wt% of a polyalkylene glycol copolymer (Para. [0033]-[0045]). It would have been obvious to one of ordinary skill in the art at the time of the invention to use the polyalkylene glycols of Mettath in the composition of Burdick in order to enhance the lubricous properties of the composition.
Regarding claims 13-17, see discussion above.
Response to Arguments
10. Applicant’s arguments filed 1/7/2026 regarding claims 1-17 have been fully considered and moot as the rejections from the previous office action have been withdrawn as discussed above.
It is the position of the examiner that the references discussed above adequately read on the claims as instantly recited.
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.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771