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 09/17/2025 has been considered and entered. The response has been considered but was not found to be persuasive. Therefore, the previous rejections are maintained and new clarifications are made using the prior art references as necessitated by 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/17/2024 has been entered.
Specification
The disclosure is objected to because of the following informalities: Tables 1 to 5 are illegible. Please submit legible copies of the Tables.
Appropriate correction is required.
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 [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% in the composition [0052].
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.
As previously stated on record, Tables 1 to 5 in the specification are illegible and most of the information in the data cannot be determined.
The inventive examples are not commensurate in scope with the claims.
While the claims allow a maximum amount of PAI in the claimed coating composition, the inventive examples require its presence at specific amounts which does not support the breadth of the claims.
While the claims allow 20 to 50% of PTFE in the coating composition, the inventive examples require specific amounts of the PTFE in the composition which does not support the breadth of the claimed ranges.
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 the PTFE solid lubricant to have molecular weights of 30,000 or less, the inventive examples 9 to 16 only requires a specific range 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 9 – 16 fails to provide PAI having the upper weight of 40,000 which fails to demonstrate criticality of the claimed range.
Thus, at least based on the limited data that is legible for use in analyzing the allegations of unexpected results, applicant fails to provide inventive examples that are commensurate in scope with the claims and sufficient to demonstrate unexpected results to rebut the case of obviousness. Again, applicant should resubmit Tables 1 to 5 for proper review.
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
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771