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 .
This Office action is in response to the amendment filed July 31, 2025 in which claims 1, 2, 5, 7, and 10-20 were amended and claims 22 and 23 were added.
The rejection of the claims under 35 USC 112 is withdrawn in view of the amendment to the claims.
The rejection of the claims under 35 USC 103 is withdrawn in view of the amendment to the claims which overcame the prior art.
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.
Claims 1-3, 5-6, 9-16, 18-19 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over WO2016167327 (appears on the current PTO-892).
WO teaches functional nanoparticles including an active substance, the functional nanoparticles being dispersed in microparticles that include a readily water-soluble solute, and/or being present on the surface of the microparticles (see abstract).
Fullerene may be used as the active substance of the present invention (see page 7, third paragraph). The nanoparticles have a particle size of 10 to 500 nm (see page 4, fifth full paragraph). The particle diameters of the nanofunctional particles and microparticles of WO are determined by DLS (Dynamic Light Scattering) measurement according to the method described in the examples (page 4, eight full paragraph). The nanoparticles may be produced by adding a surfactant to a liquid containing the active substance. The surfactant may be for example, sucrose fatty acid esters such as sucrose lauric acid ester, sucrose behenic acid ester, sucrose erucic acid ester, sorbitan fatty acid esters such as sorbitan monooleate, sorbitan trioleate, and glycerol fatty acid esters such as glycerol monostearate and glycerol monooleate (see page 8, third and fourth paragraphs). The nanoparticles may be added to oils such as liquid paraffin (see page 11, first paragraph). Liquid paraffin would be considered a lubricating oil.
When the active ingredient is fullerene, sucrose fatty acid esters are the preferred surfactant (see page 8, fifth and sixth paragraphs). The claims set forth that the active substance may be fullerenes, that the nanoparticles contain a surfactant and the surfactant is a sucrose fatty acid ester (see claims). Since WO sprays the composition, it is the examiner’s position that as the composition is exiting the nozzle of the sprayer that it would lubricate the device (see Examples 8 and 9 and claims). WO meets the limitations of the claims other than the differences that are set forth below.
WO does not exemplify a solid-in-oil complex that contains the claimed surfactant and active ingredient. However, WO provides all of the details regarding these components and teaches that the surfactant may be the claimed surfactants and that the active ingredient may be applicant’s claimed fullerene.
With respect to the less-oil-soluble substance functioning as a load carrying additive, a base number enhancer and a passivating agent, WO teaches fullerene which is one of Applicant’s substances. It is well settled that a compound and its properties are inseparable. If the compound performs these functions in the instant invention then it would also perform these functions in WO.
Claims 17, 20 and 22 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CEPHIA D TOOMER whose telephone number is (571)272-1126. The examiner can normally be reached Monday-Friday.
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 571-272-6368. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CEPHIA D TOOMER/Primary Examiner, Art Unit 1771 18245196/20251003