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 dated 04/14/2026 has been considered and entered. The response was considered but was not found to be persuasive. Therefore, the previous rejections are maintained.
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, 4 – 10, 13, 16, 17, 20, 21 are rejected under 35 U.S.C. 103 as being unpatentable over Goto et al. (WO 2014024144A1)
In regards to claim 1, Goto teaches solid film for coating tubular threaded joints [0001]. The coating comprises one or more solid lubricant particles such as polytetrafluoroethylene (ptfe), graphite, boron nitride (BN) etc., and preferably ptfe or graphite, or their combinations, and thus can comprise ptfe as the sole solid lubricant [0050]. A combination of ptfe and graphite provides ptfe at up to 50% in the solid lubricant. When combinations are used comprising ptfe, graphite and other solid lubricants, the amount of ptfe can be lower than 50% which overlaps the claimed range. Goto teaches the solid lubricant such as ptfe can be present in amounts of from 2 to 20%, the resin such as PAI is present at from 5 to 25%, water is present at from 10 to 50%, solvent is present at from 25 to 55% in the composition before curing [0051, 0052]. Thus, after drying and curing, the amounts of each component would overlap the claimed range.
The coating can also comprise a powdered resin such as polyamide-imide (PAI) such as Torlon which is manufactured by SOLVAY [0021, 0042 – 0044]. Torlon are known to have molecular weights of 24000 as evidenced by Date et al. (JP 2013-209960). While the molecular weight of the ptfe solid lubricant is not recited, ptfe solid lubricant are known in the art to have molecular weights of less than 25000, such as 7,000 to 15,000 according to Kai (JP 11-199884A) and thus such molecular weights would be obvious for the ptfe solid lubricants of Goto. When each of the ptfe as solid lubricant and pai as resin are used alone, the claimed limitation is provided.
In regards to claim 2, Goto and Kai teach the composition and tubular threaded joint comprising the composition as previously discussed.
In regards to claims 4, 5, 13, Goto and Kai teach the component and the composition for coating as claimed, and thus would be expected to have similar properties such as hardness as claimed.
In regards to claims 6, 7, 16, 17, 20, Goto and Kai teach the tubular threaded joint and the coating film but does not particularly recite the presence of the salts. However, such salts are known to be useful as soaps for enhancing antiseizure and antirust effects in similar threaded joint compositions in view of Goto (JP 2013108556A) (hereinafter Goto 556) and which would have been obvious to have been added to Goto in order to enhance antiseizure and antirust effects of the composition [see 0060 and 0100 of Goto 556].
In regards to claims 8, 9, Goto and Kai teach the joint and composition having the box and pin of the threaded joint tubular and coated with the solid film [0066].
In regards to claim 10, Goto and Kai teach the joint and composition. Goto teaches film thickness of from 5 to 100 mm [0025].
In regards to claim 14, Goto and Kai teach the tubular good having the claimed coating film as previously discussed. There is a contact surface primer (base layer/film) comprising a phosphate [0008, 0071 and 0072]. The base layer may also be electroplated [0068].
In regards to claim 21, Goto and Kai teach the tubular good which can comprise chromium, such as 13% chromium, or 25% chromium in the steel [0086]. Thus, steel having the chromium content of the claims is overlapped and the property of being martensitic would be expected.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant alleges that the inventive examples demonstrate unexpectedly improved results when the claimed polymers are used in the molecular weight range of the claims. The argument is not persuasive.
The declaration by Toshiharu Hirama dated 04/14/2026 has been considered but was not found to be persuasive.
The inventive examples are not commensurate in scope with the claims.
While the claims allow PAI in the binder at 90% or higher, the inventive examples require the presence of PAI in the binder at 99% or 100% which does not support the breadth of the claims nor demonstrate criticality of the claimed range.
While the claims allow for the presence of the PAI to be at 35% to 80% in the coating film, the inventive examples do not particularly recite their amounts in the lubricant film which does not support the breadth of the claims nor demonstrate criticality of the claimed range.
While the claims require that the binder can comprise at least 90% of PAI as binder thus allowing other binders at 10% or more, the inventive examples 9 – 16 require that the binder is strictly PAI which does not support the breadth of the claimed range.
While the claims allow for PAI binder to have molecular weights of from 20,000 to 40,000, the inventive examples provide PAI having weights of 22,000 to 40,000 which fails to demonstrate criticality of the claimed range.
The results are not persuasive.
Some comparative examples demonstrated similar improvement as the inventive examples and it is unclear what makes the claimed compositions unexpectedly superior.
Thus, applicant fails to provide a demonstration of unexpected results that are commensurate in scope with the claims and sufficient to rebut the case of obviousness.
Previously, applicant argued that Date does not discuss criticality of having PAI at weights of from 20,000 to 40,000, but merely recites molecular weights of from 10,000 to 50,000. The argument was not persuasive.
Date is not the primary reference but were merely recited as evidence to show that Torlon has a molecular weight of 24000.
Previously, applicant further argued that it would not have been obvious to have combined Date with Goto to solve the problem of lubrication at connection parts as Date requires use of solvents to avoid solidification. The argument was moot.
Again, Date was an evidentiary reference that was not combined with Goto for making the rejections.
Previously, applicant argued that Kai did not teach criticality of the claimed molecular weights for PTFE but merely recites weights of 25000 or less and thus the results are unexpected in view of Kai. The argument was not persuasive.
The allegation of unexpected results is moot for reasons previously discussed above.
Previously, applicant argued that Kai did not teach the use of PTFE with binder and thus lacks motivation of solving problems of lubrication at connection parts. The argument is not persuasive.
Kai was merely added to recite molecular weights for PTFE useful for lubrication and not for solving issues relating to lubrication of connecting parts. The primary reference is Goto, not Kai.
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.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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