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 .
Election/Restrictions
The examiner recognizes the election of group 1, claims 1-13 in the remarks of 4/15/2026 with traverse. Traversal is over grounds that there must be a burden of search. This restriction of claim 15 is upheld of the prior art below. Claim 14 is hereby rejoined as there is a lack of search burden and is rejected below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-14 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 9 requires inorganic phosphate salts as part of component B. Claim 1 requires inorganic phosphate salts (see also claim 7) as component A (referred to as the inorganic salt or salts). Claim 1 requires a ratio of component B:A of 0.1 to 1:1. Component B is referred to as particulate solid lubricant. Inorganic phosphate salts clearly fall into both categories A and B as defined in claim 1. It is unclear if the percentages and required ratio should include all inorganic salts for components A and B. Clarification in the claims and more clear definitions of these components should be reflected in the remarks and the claims. For the purpose of this office action it is assumed that the different types of inorganic salts may be treated as either A or B or both to fit the amount claim limitations. This applies to all dependent claims.
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.
Claim(s) 1-3, 5-9 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mochizuki et al (US 2016/0160150 A1).
Please note that the ordering of the rejection below is based on the labels presented in the instant application. i. e. Talking about component C refers to a rheological control agent, as defined by claim 1 of the claims.
Mochizuki teaches an aqueous lubricant composition for cold plastic working (abstract). The lubricant is boron free (there is no required boron containing component, also see p 12). The lubricant contains:
A. Water soluble inorganic salts. This includes combinations of sodium tripolyphosphate, potassium tripolyphosphate and combinations thereof are taught, see p 33.
B. At least one particulate solid lubricant. This includes polyethylene or polypropylene wax of mixtures thereof. See p 35-36. The particle size is 100 to 500 nm.
C. At least one rheological control agent. This includes stabilizers and the like. See p 40.
D. At least one base, see p 34. This is added so the pH of the composition is 9. See table 6 page 8.
E. A surfactant that may be nonionic or cationic, see p 40.
Regarding all the amounts above. The amount of total water must be at least 50% or above, see p 41. The invention may have a largely varying amount of solids in it, so after drying the coating may have 0.5 to 40g/m2 of the additives. See p 48. As the required percentage of the components above overlap the amounts as found in claim 1. The examples have the total amount of water at roughly 85%, see p 52.
Regarding the ratios of component c to a+b (as found in claim 5) and the ratio of b:a being from 0.2 to 1:1 these ratios are possible under the given amount of the components used.
In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1946), and MPEP 2144.05.
Allowable Subject Matter
There is no allowable subject matter due to 112 rejections. Below is a list of claims not rejected under prior art.
Regarding claim 4, the Brookfield viscosity is neither taught nor suggested. It cannot be inferred as the composition does not match close enough to the claimed invention.
Regarding claim 10-11 use of cellulose or polysaccharides as rheological control agents is neither taught nor suggested.
Regarding claims 12-13 the compounds listed being used as the base are neither taught nor suggested.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK C CAMPANELL whose telephone number is (571)270-3165. The examiner can normally be reached Monday-Friday 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANCIS C CAMPANELL/Examiner, Art Unit 1771
/PREM C SINGH/Supervisory Patent Examiner, Art Unit 1771
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