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The rejection of claim 13 under 35 USC 101/112 is also withdrawn based on the amendment.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/17/2026 has been entered.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 5, 9, 11 – 18 are rejected under 35 U.S.C. 103 as being unpatentable over Pinel et al. (US 2011/0285124) in view of Oldigies et al. (US 2004/0214732)
In regards to claims 1, 2, 9, 11, Pinel teaches lubrication composition with an adaptable coefficient of friction for a threaded element of a threaded connection component (title). The composition may be applied in a solid form by spraying it in a molten state, or could be applied in the form of a dispersion or an emulsion in an organic compound or in water [0017]. The composition can comprise 10 to 25% of a rheoresistant material which can comprise 1 to 10% of polyalkyl methacrylate thus providing up to 2.5% of the methacrylate in the composition [0022 – 0024]. Although 2.5% does not overlap the claimed range, it is so close as to be obvious.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
It can comprise 5 to 20% polyethylene wax [0025]. It can comprise 0 to 20% carnauba wax [0028]. It can contain 1 to 12% of graphite, 0 to 4% of polytetrafluoroethylene and 1 to 3% of boron nitride etc. [0031 – 0033]. The composition may comprise a binder such a silicate (inorganic), polyurethane (organic) [0053, 0100]. Pinel does not recite the amount of such binders. However, in view of Martens et al. (DE 10 2014 105 434) which teaches the presence of binders at amounts of from 5 to 25% such as silicates or silanes in similar threaded coatings, the use of such ingredients as binders in Pinel and at the recited amounts would have been obvious as Pinel generally allows for the presence of silicate binders in the composition.
Pinel’s methacrylate (an acrylate) provides organic binding agent and the silicate provides inorganic binding agent of the claim. The waxes provide lubricant of the claim. The graphite and boron nitride provide the platelet shaped particles of the claims. Since the amount of the lubricant overlaps the claimed range and the presence of water is optional, the claimed range is obvious. Similarly, the binding agent and platelet-shaped particles overlap the claimed ranges.
Pinel fails to teach the particular platelet shaped particles of the claims.
Oldigies teaches coatings for threaded connections similar to Pinel (abstract). The coating can comprise boundary lubricants and surface protecting agents such as metal flakes [0010]. The boundary lubricant can be one or more compounds including a silicate such as mica which are layered silicates, and can be present in the composition in amounts of from 5 to 40% [0019, 0040 and 0046]. The metal powder or flakes can be copper, zinc, etc., which can be present in minor amounts such as from about 1 to about 18% of copper for instance, and in one embodiment about 3.5% copper, 0.51% Zn [0042, 0050, Table 1].
Thus, it would have been obvious for persons of ordinary skill in the art at the time the claim was filed to have added the boundary lubricant and/or surface protecting agents of Oldigies and in the recited amounts to the thread coating composition of Pinel, as Oldigies teaches suitable protection additives and useful amounts for threaded connection coatings.
In regards to claim 5, Pinel and Oldigies combined teach the composition. Pinel teaches the composition wherein the polyalkylmethacrylate ester (PAMA) is Viscosplex 6-950 which are alkyl methacrylates having 1 to 10 carbon groups prepared from the alcohols of the claim [0159]. DE 102007046223 teaches polymethacrylates having C1 to C10 alkyl groups includes Viscoplex 6-950 which is relied upon as evidence.
In regards to claim 12, Pinel and Oldigies combined teach the composition. Pinel teaches the composition which can be free of fluorine compounds such as polytetrafluoroethylene as previously stated.
In regards to claim 13, Pinel and Oldigies combined teach the composition. Pinel teaches the adjustable coefficient of friction composition for providing a coating (topcoat) to threaded connections.
In regards to claim 14, Pinel and Oldigies combined teach the composition. Pinel teaches a composition for coating a substrate which can be applied by spraying as previously stated. The coating is a dry film [0011]. Thus, the steps of coating parts of the coated surface and drying the surface would be intrinsically performed.
In regards to claim 15, Pinel and Oldigies combined teach the composition. Pinel provides for the method having the claimed composition and which would be expected to provide similar properties on the coated surfaces such as the coefficient of friction.
In regards to claims 16 – 18, Pinel and Oldigies combined teach the composition. Pinel teaches the threaded joints having the coating with the amounts of the lubricant and platelet-shaped particles of the claims. The coated component is metallic [0080].
Response to Arguments
Applicant’s arguments with respect have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that Pinel teaches up to 2.5% of polymethacrylate which does not overlap the claimed range. The argument is not persuasive.
While the amount does not overlap the claimed amount of organic binder, it is so close as to make the claims obvious. Also, Pinel allows for the presence of polyurethane which will also increase the amount of the organic binder.
Applicant argues that Pinel does not teach an inorganic binder at the claimed amounts. The argument is moot in view of the new rejections based on Martens.
Applicant argues that Pinel fails to teach the presence of 4 to 12% of platelet-shaped articles such as metal flakes, glass flakes, layered silicates. The argument is not persuasive.
Oldigies was added to teach the claimed limitation. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant previously argued that Pinel did not teach mixtures of organic binder and inorganic binder in the claimed amounts, nor does it teach the platelet-shaped particles of the claims in the claimed amounts. The argument was not persuasive.
The acrylate and silicate provide the organic and inorganic binder and are present in the claimed amounts. While Pinel does not teach the specific platelet particles of the claims, Oldigies has been added to teach such ingredients can be present in compositions for threaded connections in the claimed amounts, thus mooting the argument.
Applicant previously argued that the DE reference did not relate to aqueous compositions. The argument was not persuasive.
The DE reference was only relied upon as evidence to teach the chemical composition of Viscoplex, an ingredient in the primary reference of Pinel. The piecemeal analysis of the references is improper.
Applicant previously argued that the platelet particles provide improved coefficient of friction properties when used in the binders which is a synergistic effect. The argument was not persuasive.
Additives work synergistically together to improve a composition and thus the same synergistic effect that applicant alleges would be expected in the composition of Pinel in view of Oldigies. It was also noted that the applicant had not alleged the presence of unexpected results.
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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