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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/20/2026 has been entered.
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, the “marking-off line” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The nature of the invention, the level of predictability in the art, and the amount of direction provided are not clear. Claim 1 recites inserting an insertion part “not beyond the position of the marking-off line” and “the greasing pipe circumvents the inner components at a height position at which the greasing pipe does not come into contact with the inner components”. Fig. 9 shows the surfaces 111b and 115 of the insertion part 121 being flushed with the surrounding housing structure. The insertion part would be guided upward by the surface 115 engaging with the surface of 21c and is prevented from going up any further towards the inner components because surface 111b would serve as a stopper against the surface of 30. How is the greasing pipe able to “circumvent” the inner components as a function of the marking-off line when fig. 9 shows the insertion part already at its travel limits? With respect to claims 1 and claim 3, how is the jig able to travel past “beyond the position of the marking-off line” when fig. 9 shows the insertion part already at its travel limits? The insertion part does not appear capable of extending further into the housing, past the marking-off line, to come into contact with the inner components.
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by Williams (US 4,141,434) or, in the alternative, under 35 U.S.C. 103 as obvious over Burbidge et al. (US 2,488,959). Williams discloses a greasing method of feeding grease to a portion requiring greasing that is housed inside a housing (1), the greasing method comprising:
Re claim 1, a first step of mounting a first jig (51) having a base part (body of 51) and an insertion hole (13) onto the housing; a second step of inserting a greasing pipe (17) and a second jig (14) into the insertion hole of the first jig in a state where the first jig is mounted on the housing (fig. 4); and a third step of feeding grease to the portion requiring greasing through the greasing pipe (grease is fed through 24), wherein: the second step includes a step of inserting an insertion part (14) of the second jig into the insertion hole of the first jig up to a position at which a marking-off line (the threading forms a marking-off line; fig. 2 shows six lines formed by the thread to the left of 21 where anyone of these lines could serve as the marking-off line for the operator to gauge how far the second jig is inserted) is bore on the insertion part of the second jig, but not beyond the position of the marking-off line (fig. 4 shows the second jig is inserted up to the marking-off line), the housing includes inner components (components shown in fig. 4) that are capable of coming into contact with the greasing pipe during a process of inserting the second jig into the insertion hole (fig. 4), and the position of the marking-off line is a position at which the greasing pipe is positioned at a position at which the greasing pipe circumvents the inner components at a height position at which the greasing pipe does not come into contact with the inner components of the housing when the second jig is inserted into the insertion hole up to the marking-off line (the position shown in fig. 4 is at the marking-off line and prevents 17 from coming into contact with the components).
Re claim 2, wherein, in the second step, there is a clearance between a side surface of the insertion part (outer surface of 14) and an inner surface of the insertion hole (inner surface of 13) in the state where the insertion part of the second jig is inserted into the insertion hole of the first jig (a clearance exist between the two surfaces in order for 14 to fit through 13).
Re claim 3, further comprising a fourth step between the second step and the third step that includes a step of inserting the inserting part beyond the position of the marking-off lines to thereby insert a leading end portion of the greasing pipe to the portion requiring greasing (the insertion part is moved further inward by rotating 14 so that the threading would advance 14 closer to the portion that requires greasing).
Re claim 4, further comprising a fourth step between the second step and the third step that includes a step of inserting the insertion part of the second jig into the insertion hole of the first jig up to a position at which a stopper (21) of the second jig comes into contact with the base part of the first jig (fig. 2 and fig. 4).
Re claim 6, further comprising a step of taking an image of an internal structure of the housing by imaging means that takes an image of the internal structure of the housing on a leading end side of the greasing pipe (the step may be done by an operator using a camera to take an image of the internal structure).
While it is believed that Williams disclosed the marking-off line, Burbidge further teaches:
Re claim 1, a tube (26) comprising marking-off line (29).
Williams does not disclose:
Re claim 5, wherein: the insertion hole has a first hole and a second hole that extend through the base part; and the greasing method further comprises a step of, after performing the first step to the third step involving the first hole, performing the second step and the third step for the second hole while maintaining a state where the first jig is mounted on the housing.
It would have been obvious to person having ordinary skill in the art before the effective filing date of the claimed invention to employ marking-off line, as taught by Burbidge, to serve as a visual indicator to let the operator know the extent of the depth of the tube inserted within the housing.
Regarding claim 5, to would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ another hole and another greasing pipe and jig in order to simultaneously lubricate another section of the housing, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. V. Bemis Co., 193 USPQ 8.
Response to Arguments
Applicant's arguments filed 3/20/2026 have been fully considered but they are not persuasive.
On page 4 of the Remarks, Applicant argues the intended use argument does not apply to the method step. On page 5, Applicant argues Williams thread is a single thread and thus a single line. Examiner respectfully disagrees. The intended use is directed to the structure of the thread markings of Williams. Visually, the thread portion 14a of Williams would provide a visual indication of how far the thread is received within the house therefore could be construed as the claimed marking-off line. The claims do not preclude the thread markings from be construed as a marking-off line. Whether the thread is one continuous circumferential line or, when viewed from one side, made up of a plurality of non-continuous lines, the thread would serve as a visual indicator as claimed.
The Burbidge reference is now introduced to further teach that using visual indicators, such as the marking-off line, are known to determine the depth of insertion.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MINH D TRUONG whose telephone number is (571)270-3014. The examiner can normally be reached M-F 9-5 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) 272-2097. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Minh Truong/Primary Examiner, Art Unit 3654
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