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 NPL in the IDS was stricken-through because the reference was not provided.
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 – 20 are 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.
Each of the independent claims 1, 16 recites polymer composite, wherein “a polymer” is present at 40% or less which is indefinite because the term “a polymer” is not the same as “the polymer” and therefore does not limit the polymer to what is required by the composite and can refer to any known polymer. Since “a polymer” can be present at less than 40%, such as including 0%, any and all known polymer composites having 0% of a polymer meets the claimed limitation. Thus, the polymer would vary from person to person of ordinary skill in the art. Furthermore, it is unclear if the less than 40% is intended for any single polymer in the composite or for all polymeric components of the composite. For the sake of examination, the less than 40% is take as an amount for a single polymer in the composite. Thus, any polymer composite having the shore D hardness of the claim would intrinsically have 0% of any myriads of polymers and thus would be taken as meeting the claim.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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, 3, 5 – 7, 16, 19 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Watson (US 2008/0016671) or, in the alternative, under 35 U.S.C. 103 as obvious over Watson (US 2008/0016671)
In regards to claim 1, Watson teaches a sleeved composite pipe comprising polyethylene pipe or high-density polyethylene (HDPE) installed over a hollo metal pipe (abstract). The composite pipe thus provides an encasing member. The composite pipe also provides inner and outer surfaces, opening, first and second ends as claimed. In the example, the composite has a Shore “D” hardness of 65 [0033, Table 1]. A lubricant is added to the inner wall surface (i.e., inner space) of the plastic pipe sleeve (i.e., polymeric composite) [0051, 0052]. Since the device comprises the encasing member and lubricating composition, it appears that the lubricating device limitation of the claim is provided as anticipated or obvious.
In regards to claim 3, Watson provides the device having the claimed polymer as previously stated.
In regards to claim 5, Watson provides the device which is a pipe thus providing the cylindrical shape.
In regards to claims 6, 7, Watson provides the device and lubricant. The claims recite the presence of ingredients at about 0% or higher, thus making the presence of such recited ingredients unrequired.
In regards to claim 16, Watson provides the lubricant device having the encasing member and lubricant. The claim allows for the inorganic solid lubricant to be present at about 0%, thus making the presence of the inorganic solid lubricant unrequired.
In regards to claim 19, Watson provides the device and lubricant. The presence of the recited additives at amounts of about 0% or higher, makes the presence of the ingredients unrequired.
Claims 1 – 20 are rejected under 35 U.S.C. 103 as obvious over Mitrovich et al. (US 2017/0190997)
In regards to claim 1, Mitrovich teaches lubricant composition having a biodegradable plastic such as polyhydroxyalkanoate (PHA) and/or polybutylene succinate (PBS) and at least one lubricant (abstract). The lubricant can be in the form of a stick and can be used as railway lubricant such as for lubricating wheel flange [0016, 0018 and 0043]. The lubricant stick can be similar to those discussed by Mitrovich which are discussed in the background of the invention such as comprising plastics wherein the lubricant is embedded, and which provides an encasing member comprising plastic composite such as PHA and/or PBS etc. [0009, 0010, and 0052]. Mitrovich recites suitable plastics including HDPE, PLA, PHA, PBS, etc., having Shore D hardness within the claimed range [0045, Table B].
A lubricant stick that is encased by plastic, provides the composite having a first and second ends, inner surface and space comprising the lubricant, and opening and outer surfaces as claimed. Thus, the device of the claim, i.e., lubricant stick or an applicator comprising the lubricant stick, is provided (see claim 1). The bioplastic component of the composition can be from about 30% to about 90% thus providing polymer(s) in amounts of the claim [0061].
In regards to claim 2, Mitrovich teaches the device, wherein the lubricant can be vegetable oil such as soybean oil etc., which contain fatty acids such as stearic acid [0035 – 0037].
In regards to claim 3, Mitrovich teaches the device and composition having the claimed limitation as previously stated.
In regards to claim 4, Mitrovich teaches the device and composition wherein the bioplastic comprises a polyester [0022].
In regards to claim 5, Mitrovich teaches the device and composition comprising a lubricant stick as previously stated. Thus, providing a cylindrical shaped encasing member as claimed.
In regards to claim 6, Mitrovich teaches the device and composition wherein the lubricant comprises solid lubricants such as molybdenum disulfide, graphite etc. [0039].
In regards to claim 7, Mitrovich teaches the device and composition wherein additives can be present at from 0 to 10%, and thus provides the claimed limitation which allows about 0% of the recited ingredients [0072].
In regards to claims 8, 10, Mitrovich teaches the device and composition comprising a lubricant but does not particularly recite that the composition comprises grease. However, Mitrovich recites that such solid stick lubricants of the prior art are known to comprises greases thus making it obvious to prepare a grease lubricant for the invention [0006 – 0010]. Greases such as lithium, calcium sulfonate and urea greases are conventional in the art and would have been obvious to persons of ordinary skill in the art. Greases have NLGI grades of greater than 1.
In regards to claims 9, 11, 12, Mitrovich teaches the device and composition which can comprise solid lubricants that are not limited to graphite (3D), molybdenum disulfide (3D) etc. as previously discussed. While other 2D solid lubricants such as boron nitride, graphene etc., were not particularly recited, they are conventional in the art and would have been obvious as Mitrovich allows for the use of known solid lubricants in general.
In regards to claim 13, Mitrovich teaches the device and composition comprising solid lubricant such as graphite and molybdenum disulfide which are typically in the range of the claim.
In regards to claims 14 – 20, Mitrovich teaches the device and composition having the claimed limitations as previously stated.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAIWO OLADAPO whose telephone number is (571)270-3723. The examiner can normally be reached 8-5pm.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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