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 .
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.
Claim 27 is 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 27 recites that “the brush portion is configured to apply, after 900 cycles, a cumulative radial force of at most 50 N less than an initial cumulative radial force applied to a tubular element in a first cycle of the 900 cycles”. It is unclear what structure(s) of the brush portion accomplish this result.
When claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008). In this case, the claims do not tie the claimed result to any particular structure. Furthermore, lines 31-37 on page 43 of the originally filed specification states that the result is tied not to a structure of the brush portion, but in the way the brush structure is used, i.e., that the brush was moved in a first direction and then a second direction without changing the orientation of the brush. With no guidance from the claims or the specification, the metes and bounds of claim 27 cannot be determined.
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.
Claim(s) 16-22, 24, and 27-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bagger (US 464843) in view of Cato (US 4069535).
Regarding claim 16, Bagger teaches a device for lubricating a surface of a tubular element and capable of being used with a medicament delivery device, the device comprising: a shaft portion (H) having a longitudinal axis, and a brush portion (L) located on the shaft portion, the brush portion comprising at least one radial projection, the at least one radial projection comprising at least one contact zone (outer diameter of L) for contacting a surface; wherein the brush portion comprises a brush portion material (felt or other suitable material, pg. 1, ll. 90-100) and a lubricant agent (gun oil, pg. 1, ll. 35-47) which is configured to be transferred from the at least one contact zone to a surface during use.
Bagger does not teach that the shaft portion is formed from plastic or that the brush portion comprises a core section that extends the length of the brush portion from which the radial projection(s) extend.
Bagger is silent as to the material of the shaft portion.
At the effective filing date of the claimed invention, it would have been an obvious matter of design choice to a person of ordinary skill in the art to have made the shaft portion from plastic because Applicant has not disclosed that the particular material of the shaft provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Bagger's device and the applicant's invention to perform equally well with either the shaft taught by Bagger or the claimed plastic shaft portion because both shafts are equally capable of supporting the brush portion.
Accordingly, it would have been obvious one of ordinary skill in the art at the effective filing date of the claimed invention to modify the shaft portion of Bagger to obtain a plastic shaft portion because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Bagger.
Cato teaches a brush portion (39) that comprises a core section (33) that extends the length of the brush portion from which at least one radial projection(s) (35) extend.
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have replaced the brush portion of Bagger with the brush portion of Cato, including a core section that extends the length of the brush portion from which the radial projection(s) extend, wherein doing so would merely have been a matter of simple substitution of one brush portion with another with predictable results.
Regarding claim 17, the combination of Bagger and Cato teaches the device according to claim 16, wherein the brush portion is configured such that the lubricant agent exudes from the brush portion material of the brush portion during use (Bagger pg. 1, ll. 90-100).
Regarding claim 18, the combination of Bagger and Cato teaches the device according to claim 17, wherein the lubricant agent is interspersed within the brush portion material of the brush portion (Bagger, the lubricant soaks into the felt; also note that the brush portion of Cato is a foam through which lubricant could travel) and able to migrate towards the at least one contact zone (Cato, “polyurethane foam”, see col. 4, ll. 12-19).
Regarding claim 19, the combination of Bagger and Cato teaches the device according to claim 17, wherein the at least one contact zone comprises at least one contact point configured to contact a surface of a tubular element to be lubricated (Cato 35).
Regarding claim 20, the combination of Bagger and Cato teaches the device according to claim 16, wherein the lubricant agent is interspersed within the brush portion material of the brush portion and able to migrate towards the at least one contact zone (Bagger, the lubricant soaks into the felt; also note that the brush portion of Cato is a foam through which lubricant could travel).
Regarding claim 21, the combination of Bagger and Cato teaches the device according to claim 16, wherein the at least one contact zone comprises at least one contact point configured to contact a surface of a tubular element to be lubricated (Cato, 35).
Regarding claim 22, the combination of Bagger and Cato teaches the device according to claim 21, wherein the at least one contact point is located at an extremity of the radial projection (Cato 35).
Regarding claim 24, the combination of Bagger and Cato teaches the device according to claim 21, wherein the at least one radial projection comprises at least one circular disk (Cato, 35) extending in a direction perpendicular to the longitudinal axis of the shaft portion.
Regarding claim 27 as best understood, the combination of Bagger and Cato teaches the device according to claim 16, wherein the brush portion is configured to apply, after 900 cycles, a cumulative radial force of at most 50 N less than an initial cumulative radial force applied to a tubular element in a first cycle of the 900 cycles. The result is assumed to be true based on the fact that the prior art teaches all the claimed structures of claim 27.
Regarding claim 28, the combination of Bagger and Cato teaches the device according to claim 16, wherein the shaft portion comprises a guiding feature (Bagger, J) on an end of the shaft portion.
Regarding claim 29, the combination of Bagger and Cato teaches the device according to claim 28, wherein the guiding feature comprises an axle portion (Bagger, threaded portion of H) defining an extremity of the shaft portion, the axle portion being configured to allow the device to be gripped and/or driven through a tubular element to be lubricated during use (a user can grip element J of Bagger).
Regarding claim 30, the combination of Bagger and Cato teaches the device according to claim 28, wherein the guiding feature comprises a projection (Bagger, J) and an axle portion (Bagger, threaded portion of H), the projection having a surface extending substantially perpendicularly to the longitudinal axis of the shaft portion configured to prevent longitudinal movement of the brush portion relative to the shaft portion (Bagger, Fig. 4), the projection comprising a cavity (Bagger, through hole of J); and the axle portion having a cross-section configured to allow the device to be gripped and/or driven through a tubular element to be lubricated during use (a user can grip element J held on the axle portion).
The combination does not teach that the axle portion has a cross-shaped cross-section.
At the effective filing date of the claimed invention, it would have been an obvious matter of design choice to a person of ordinary skill in the art to have changed the shape of the axle portion of Bagger such that the axle portion comprises a cross- shaped cross-section because Applicant has not disclosed that the particular shape of the axle provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Bagger’s device and the applicant's invention to perform equally well with either the cylindrical axle taught by Bagger or the claimed axle with a cross-shaped cross-section because both axles are equally capable of being inserted into a tube.
Accordingly, it would have been obvious one of ordinary skill in the art at the effective filing date of the claimed invention to modify the axles shape of Bagger to obtain the invention as specified in claim 30 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Bagger and Cato.
Regarding claim 31, the combination of Bagger and Cato teaches the device according to claim 28, wherein a brush portion receiving section of the shaft portion extends away from the guiding feature in the longitudinal direction (Bagger, Fig. 4).
Claim(s) 23 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bagger and Cato as applied to claims 16 and 21 above, and further in view of Black (US 7367151).
Regarding claim 23, the combination of Bagger and Cato teaches the device according to claim 21, but does not teach that the at least one contact zone is closer to the longitudinal axis of the shaft portion at at least one end of the brush portion than the at least one contact zone spaced from the end of the brush portion in the longitudinal direction.
Black teaches a brushing portion (60) that is tapered at each end such that the at least one contact zone is closer to the longitudinal axis of the shaft portion at at least one end of the brush portion than the at least one contact zone spaced from the end of the brush portion in the longitudinal direction (Fig. 18).
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have modified the brushing portion of Bagger such that the at least one contact zone is closer to the longitudinal axis of the shaft portion at at least one end of the brush portion than the at least one contact zone spaced from the end of the brush portion in the longitudinal direction as taught by Black for the purpose of making it easier to guide the brushing portion in the tube (Black, col. 5, ll. 52-53).
Regarding claim 26, the combination of Bagger and Cato teaches the device according to claim 16, but does not teach that the at least one contact zone is closer to the longitudinal axis of the shaft portion at at least one end of the brush portion than the at least one contact zone spaced from the end of the brush portion in the longitudinal direction.
Black teaches a brushing portion (60) that is tapered at each end such that the at least one contact zone is closer to the longitudinal axis of the shaft portion at at least one end of the brush portion than the at least one contact zone spaced from the end of the brush portion in the longitudinal direction (Fig. 18).
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have modified the brushing portion of Bagger such that the at least one contact zone is closer to the longitudinal axis of the shaft portion at at least one end of the brush portion than the at least one contact zone spaced from the end of the brush portion in the longitudinal direction as taught by Black for the purpose of making it easier to guide the brushing portion in the tube (Black, col. 5, ll. 52-53).
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bagger and Cato as applied to claims 16 and 21 above, and further in view of Maslanka (US 8479344).
Regarding claim 25, the combination of Bagger and Cato teaches the device according to claim 21, but does not teach that the at least one radial projection comprises a helical form.
Maslanka teaches a radial projection that comprises a helical form (9a).
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have modified the brushing portion of Bagger such that the radial projection comprises a helical form as taught by Maslanka for the purpose of providing a space to hold any debris that needs to be removed from the tube (Maslanka, col. 6, ll. 23-25).
Claim(s) 32-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bagger and Cato as applied to claim 31 above, and further in view of Sharpe (US 3214780).
Regarding claim 32, the combination of Bagger and Cato teaches the device of claim 31, but does not teach that the brush portion receiving section comprises at least one radial projection.
Sharpe teaches a brush receiving portion with at least one radial projection (9).
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have modified the brush receiving portion of Bagger to include at least one radial projection as taught by Sharpe for the purpose of precluding the brush portion from slipping longitudinally or circumferentially (Sharpe, col. 2, ll. 5-9).
Regarding claim 33, the combination of Bagger, Cato, and Sharpe teaches the device according to claim 32, wherein the at least one radial projection extends longitudinally along the shaft portion configured to prevent rotational movement of the brush portion relative to the shaft portion (Sharpe, 9, see col. 2, ll. 5-9).
Claims 34-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bagger, Cato, and Sharpe as applied to claims 32 and 33 above, and further in view of Crawford (US RE46065).
Regarding claim 34, the combination of Bagger, Cato, and Sharpe teaches the device according to claim 33, but does not teach that the at least one radial projection comprises a circular disk extending perpendicularly to the longitudinal axis and configured to prevent longitudinal movement of the brush portion relative to the shaft portion.
Crawford teaches a circular disk (106a) extending perpendicularly to the longitudinal axis and configured to prevent longitudinal movement of the brush portion (108) relative to the shaft portion.
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have provided the device of Bagger with at least one radial projection that comprises a circular disk extending perpendicularly to the longitudinal axis and configured to prevent longitudinal movement of the brush portion relative to the shaft portion as taught by Crawford for the purpose of forcing the brushing portion into any grooves in the tube (Crawford, col. 3, ll. 51-60).
Regarding claim 35, the combination of Bagger, Cato, and Sharpe teaches the device according to claim 32, but does not teach that the at least one radial projection comprises a circular disk extending perpendicularly to the longitudinal axis and configured to prevent longitudinal movement of the brush portion relative to the shaft portion.
Crawford teaches a circular disk (106a) extending perpendicularly to the longitudinal axis and configured to prevent longitudinal movement of the brush portion (108) relative to the shaft portion.
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have provided the device of Bagger with at least one radial projection that comprises a circular disk extending perpendicularly to the longitudinal axis and configured to prevent longitudinal movement of the brush portion relative to the shaft portion as taught by Crawford for the purpose of forcing the brushing portion into any grooves in the tube (Crawford, col. 3, ll. 51-60).
Response to Arguments
Applicant's arguments filed 19 December 2025 have been fully considered but they are not persuasive.
Applicant argues that the indefiniteness rejection of claim 27 is improper because the claimed result is quantified and repeatable, and the claims and specification provide sufficient context for understanding that the structure of the brush portion that applies the cumulative radial force to the tubular element is at least one contact zone of the at least one radial projection.
Examiner disagrees. Applicant has not pointed to any structures and/or materials that enable the claimed invention to achieve the claimed result. Merely pointing out which surface engages the tube is insufficient because there is no guidance as to what structural or material features enable the brush to retain most of the radial force after 900 cycles.
MPEP 2173.05(g) sets out three factors to determine if a functional limitation is ambiguous: (1) whether there is a clear cut indication of the scope of the subject matter covered by the claim; (2) whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained; and (3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim.
In this case, there is no clear cut indication of scope. Applicant has provided no guidance as to how the claimed result is achieved. Is it dependent on the shape of the brushing portion, the size of the brushing portion, the material of the brushing portion, or combination of these factors? Turning to the second factor, the language does not set forth well-defined boundaries, but instead only a result obtained: that the radial force reduces by 50 N or less after 900 cycles. Considering the third factor: one of ordinary skill in the art would not know from the claim terms what structure or steps are encompassed by the claim because the claim does not define what a cycle is, nor does it imply or cite any structure or material that lets the brush portion retain most of its radial force.
In response to the arguments that the prior art does not teach a core section that extends the length of the brush portion, it is noted that the newly cited Cato reference is relied upon to teach this feature.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY S OLIVER whose telephone number is (571)270-3787. The examiner can normally be reached Monday-Friday, 7-3 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Angwin can be reached at (571)270-3735. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRADLEY S OLIVER/Examiner, Art Unit 3754
/DAVID P ANGWIN/Supervisory Patent Examiner, Art Unit 3754