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 .
Election/Restrictions
Applicant's election with traverse of Species IV, including claims 1-3, 6-9, 25-28, 30-37 and 40 in the reply filed on June 17, 2026 is acknowledged. The traversal is on the ground(s) that Species III and IV are not patentably distinct. Rather, Species III and IV including figures 27-30 and 7-8 relate to a single Species. Applicant’s arguments are found to be persuasive. Thus, examination of Species III and elected Species IV follows below.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, a temperature sensor and a vibration sensor of claim 26 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2). Applicants photos appear to be color photographs reproduced in gray scale instead of black and white line drawings. Those figures show a lot of granularity and shading that affects the reproducibility.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 3 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. Line 2 recites “... the fluid source is a source of lubrication that is preferably an auto-lubrication device, …”. It is unclear if an auto-lubrication device is being claimed or not.
Claim 6 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 6 recites the limitation "the user" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 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. Line 2 recites “the modular device is connectable to another modular device…”. It is unclear what another modular device is. Is it the same as the modular device in claim 1? Can it be a modular device that is part of the overall modular device of claim 1?
Claims 8 and 9 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. Claim 8 recites “the modular device”. It is unclear if this is the modular device of claim 1 or the “another modular device” of claim 7.
Claim 26 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 26 recites “the flow measuring device includes one of more of: …a temperature sensor, and a vibration sensor.” It is unclear how a flow measuring device includes one or more of a temperature sensor, and a vibration sensor. A flow measuring device measures a volume or rate of fluid flow. A temperature sensor measures temperature. A vibration sensor measures vibration. How does a flow measuring device include a temperature sensor or a vibration sensor
Claim 31 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 31 recites “electrical insulation to minimize the potential to create an ignition while operating in a hazardous location. It is unclear what is meant by “minimize the potential to create an ignition”. Is Applicant claiming electrical insulation above and beyond standard material codes for electrical insulation material? What constitutes a hazardous location?
Claim 32 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 32 recites “the control module is comprised of materials adapted to reduce likelihood of ignition, preferably preventing ignition.” It is unclear is Applicant is claiming materials that prevent ignition or not. Also, it is unclear how infringement would be determined as to the choice of materials. Does this claim exclude all polymer based materials as they are more likely to ignite over metal components?
Claim 37 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. Line 3 recites “preferably being an auto-lubrication device,”. It is unclear if an auto-lubrication device is being claimed or not.
Claim Rejections - 35 USC § 102
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.(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 6-9, 25-28, 30, 33-37 and 40 are rejected under 35 U.S.C. 102(a)(1)(a)(2) as being anticipated by Meenakshisundaram et al., U.S. Patent Publication 2019/0257360.
As per claim 1, Meenakshisundaram et al. disclose a modular device (130) [lubrication application control system] (fig. 1) for dispensing and/or monitoring dispensing of a fluid (abstract), comprising:
a first coupling end (below 122) attachable to a fluid source (122);
a second coupling end (below 124) (fig. 1) attachable to a receiver (126, 125) [grease nipple, bearing]; and
a control module (100) [controller] arranged between the first coupling end and the second coupling end (fig. 1), the control module (100) including a flow measuring device (124) [lubrication meter] in fluid communication between the first end coupling and the second end coupling (coupling), the control module (100) is configured to enable and/or monitor dispensing of the fluid into the receiver (126, 125) (paras [0035, 0039]);
wherein the modular device (130) is configured to be operated remotely (paras [0032, 0039]).
As per claim 2, Meenakshisundaram et al. as set forth above, disclose the fluid is a non- compressible fluid. Grease is a non-compressible fluid. Paragraph [0035] discloses a grease nipple (126).
As per claim 3, Meenakshisundaram et al. as set forth above, disclose the fluid is lubricant (abstract), the fluid source is a source (122) of lubrication that is preferably an auto-lubrication device (122, 123), and the receiver (126, 125) [grease nipple, bearing] is a lubrication receiver.
As per claim 6, Meenakshisundaram et al. as set forth above, disclose the modular device (130) is connectable to a communications device (100) operable by the user via a wired and/or wireless connection (para [0032, 0049]).
As per claim 7, Meenakshisundaram et al. as set forth above, disclose the modular device (130) is connectable to another modular device (124) (paras [0032]) as part of a mesh network (paras [0014, 0023]).
As per claim 8, Meenakshisundaram et al. as set forth above, disclose the modular device (130) is connectable to a communications device (112) [display] operable by the user via a communications gateway (132) (fig. 1), the communications gateway optionally being a base station or router.
As per claim 9, Meenakshisundaram et al. as set forth above, disclose the communications gateway (132) is connectable to the communications device (112) via a network cloud (133) (fig. 1).
As per claim 25, Meenakshisundaram et al. as set forth above, disclose the flow measuring device (124) measures the amount of lubrication dispensed (para [0032]).
As per claim 26, Meenakshisundaram et al. as set forth above, disclose the flow measuring device (124) includes one or more of:
a means to measure the pressure of the lubrication dispensed,
a temperature sensor, and
a vibration sensor (128) (para [0047]).
Meenakshisundaram et al. discloses both a flow measuring device and a vibration sensor (128). It is unclear if a vibration sensor is being claimed as part of a flow measuring device and not understood why a flow measuring device would include a vibration sensor.
As per claim 27, Meenakshisundaram et al. as set forth above, disclose the control module (100) further includes a processing module (118) (fig. 2) with at least one source of memory (111) (fig. 2), the processing module arranged in communication with the flow meter (124, through meter interface 120), the processing module (118) further arranged in communication with a communication module (132) configured to transmit data between the processing module (118) and a communications device (131) for allowing a user to operate the modular device (130) remotely.
As per claim 28, Meenakshisundaram et al. as set forth above, disclose the control module (100) further includes a user interface (112) (fig. 1).
As per claim 30, Meenakshisundaram et al. as set forth above, disclose the user interface (112) comprises one or more of:
an NFC tag (para [0034]);
one or more LED indicators;
a Bluetooth beacon (para [0034]);
a button; or
an RFID tag (127).
As per claim 33, Meenakshisundaram et al. as set forth above, disclose wherein in use, the modular device (130) is fixed in position between the auto-lubrication device (122, 123) [fluid source, lubricant pump] and the lubrication receiver (126, 125). The fluid source 122, lubricant pump 123 in combination with controller 100 (fig. 1) is an auto-lubrication device.
As per claim 34, Meenakshisundaram et al. as set forth above, disclose the modular device (130) is configured to be operated remotely by a user (paras [0049, 0069, 0070]).
As per claim 35, Meenakshisundaram et al. as set forth above, disclose the modular device (130) is configured to be operated remotely such that there is automatic dispensing and/or automatic monitoring of dispensing (paras [0049, 0069, 0070]).
As per claim 36, Meenakshisundaram et al. as set forth above, disclose the modular device (130) (fig. 1) further comprises:
one or more additional coupling ends (below 122) that is attachable to a fluid source (122),
one or more additional coupling ends (below 124) that is attachable to a receiver (126, 125), and/or
one or more additional flow measuring devices (124) in fluid communication between:
any one of the one or more coupling ends attachable to a fluid source, and
any one of the one or more coupling ends attachable to a receiver.
Figure 1 in conjunction with paragraphs [0035-0037] disclose the modular device (130) is designed to lubricate multiple bearings (125). This requires multiple coupling ends (two for each bearing) and multiple flow measuring devices (124) as described in paragraph [0037] to measure lubrication volume to specific bearings.
As per claim 37, Meenakshisundaram et al. disclose a system for dispensing a lubricant (130) (fig. 1), the system comprising:
one or more modular devices (130) (fig. 1) for dispensing a lubricant, each modular device attachable between a source of lubrication (122), preferably being an auto-lubrication device (122, 123), and a lubrication receiver (126, 125);
a communications device (100) arranged to communicate with the one or more modular devices (fig. 1);
and
wherein the communications device (100) is arranged to receive event log data relating to completed lubrication tasks in accordance with an event schedule, the communications device further arranged to provide an updated event schedule for at least the next period (paras [0062-0067]);
wherein the communications device (100) is operable to dispense lubricant in accordance with the updated event schedule (paras [0062-0067]).
As per claim 40, Meenakshisundaram et al. disclose a method for dispensing lubricant (abstract) (fig. 1); comprising:
attaching a first coupling end (below 122) of a modular lubrication dispensing device (130) to an auto- lubrication device (122, 123) provided to a machine, the device including a control module (100);
attaching a second coupling end (below 124) of the device to a lubrication receiver (126, 125) of the machine;
measuring the flow of lubrication to the lubrication receiver (126, 125) using a flow measuring device (124) (para [0032]) arranged between the first coupling end and the second coupling end;
recording the appropriate amount and/or pressure of lubrication that has been dispensed by the auto lubrication device (124) (paras [0032, 0035]);
storing data on the measured flow of lubrication to memory included in the control module (paras [0054-0067]);
and
transmitting the stored data to a communications device for remotely reviewing the data (paras [0054-0067]).
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.
Claims 31 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Meenakshisundaram et al., U.S. Patent Publication 2019/0257360.
As per claim 31, Meenakshisundaram et al. as set forth above, disclose the claimed invention except for the control module includes electrical insulation to minimize the potential to create an ignition while operating in a hazardous location. It would have been obvious to one having ordinary skill in the art at the time the invention was made to choose electrical insulation material to minimize ignition potential to limit liability issues, since it has been held to be within the general skill of a worker in the art to select known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
As per claim 32, Meenakshisundaram et al. as set forth above, disclose the claimed invention except for the control module is comprised of materials adapted to reduce likelihood of ignition, preferably preventing ignition. It would have been obvious to one having ordinary skill in the art at the time the invention was made to choose control module materials to reduce likelihood of ignition to limit liability issues, since it has been held to be within the general skill of a worker in the art to select known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK KENNETH BUSE whose telephone number is (571)270-3139. The examiner can normally be reached 8:00 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Hodge can be reached at 571 272-20978. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300
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/M.K.B/Examiner, Art Unit 3654
/ROBERT W HODGE/Supervisory Patent Examiner, Art Unit 3654
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