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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 1/29/2026 has been entered.
Response to Amendment
Applicants’ response filed 1/29/2026 amended claims 1, 7 and 22-24, cancelled claims 4 and 18, and added new claim 26. Applicants’ amendments in light of their arguments are persuasive in overcoming the 35 USC 103 rejections over Mihara, Lutz, and Mihara in view of Perera from the office action mailed 10/31/2025; therefore, these rejections are withdrawn. A new ground of rejection necessitated by applicants’ amendments is set forth below.
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.
Claims 1-8, 12-13, 15-16 and 19-26 are rejected under 35 U.S.C. 103 as being unpatentable over Takagi et al., US Patent Application Publication No. 2010/0222618 (hereinafter referred to as Takagi) in view of Lutz et al., Canadian Patent No. CA2797272C (hereinafter referred to as Lutz).
Regarding claims 1-4, 6-8, 12-13, 15-16 and 19-25, Takagi discloses a metalworking lubricant composition for use in cutting or grinding various metals (as recited in claims 13 and 21) (Para. [0087] and see Claim 8 of Takagi) comprising a vinylidene compound, base oil having a KV40 of 9.5 mm2/s (as recited in claims 15-16), water and amine compounds, such as, dicyclohexylamine and diethanolamine, and fatty acids, such as, dodecanedicarboxylic acid (as recited in claim 1 and reads on claims 19-20) (see Table 1 and Para. [0068]).
Takagi discloses all the limitations discussed above but does not explicitly disclose the cyclic compound as recited in claim 1.
Lutz discloses an antimicrobial composition that can be used in metal-working fluids (Para. [0056]) comprising 0.1 to 20 wt% of delta-gluconolactone (as recited in claims 1-4, 7 and 22-25) (see Abstract and Para. [0054]), and water (as recited in claims 8 and 12) (Para. [0060]) wherein the composition does not contain a phosphorus-containing compound (as recited in claim 6) (Para. [0055]). It would have been obvious to one of ordinary skill in the art at the time of the invention to use the cyclic compounds of Lutz in the composition of Takagi in order to enhance the antimicrobial properties of the composition.
Regarding claim 5, Takagi/Lutz do not explicitly disclose the water-soluble lubricant composition being classified as recited in claim 5. However, it is the position of the examiner that as Takagi/Lutz discloses all the limitations of claim 1 that the composition disclosed therein would inherently read on claim 5.
Regarding claim 26, the antimicrobial agent is optional and is therefore read on by the combination of Takagi and Lutz.
Claim Rejections - 35 USC § 103
Claim 14 is unpatentable over Takagi in view of Lutz as applied to claims 1-8, 12-13, 15-16 and 19-26 above, and further in view of Perera et al., US Patent Application Publication No. 2021/0024850 (hereinafter referred to as Perera).
Regarding claim 14, Takagi/Lutz discloses all the limitations discussed above but does not explicitly disclose treating the workpiece with a formed-in-place gasket after processing.
Perera discloses in paragraph 0003 the general use of formed-in-place (FIP) gaskets. It would have been obvious to use FIP gaskets in the processing or workpieces of Lutz based on the disclosure of Perera as it is a combination of prior art elements according to known methods to yield predictable results.
Response to Arguments
8. Applicants’ arguments filed 1/29/2026 regarding claims 1-3, 5-8, 12-16 and 19-26 have been fully considered and are moot as the rejections from the previous office action have been withdrawn as discussed above.
It is the position of the examiner that the references discussed above adequately read on the claims as instantly recited.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 5712726381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771