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 amendments filed 12/8/25 overcome the rejections set forth over Ghosh and Gao in the office action mailed 8/7/25, but do not overcome the rejection set forth over Corby, which is maintained below. The discussion of Corby has been updated in order to reflect the claim amendments. New grounds of rejection necessitated by the amendments are also set forth below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1, from which claim 20 depends, has been amended to require that the nonionic surfactant be a fatty alcohol alkoxylate. However, claim 20 recites some options that are not fatty alcohol alkoxylates, such as surfactants based on sorbitan esters, castor oil ethoxylate surfactant, or fatty alcohol surfactant without any alkoxylate component. Claim 20 therefore fails to further limit amended claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Claims 1-2, 6, 16, 18, 20-22, 26, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Corby (U.S. PG Pub. No. 2004/0029741).
In paragraph 14 Corby discloses a liquid composition for producing a dry lubricant film on a surface by discontinuous application of the composition. In paragraphs 41-43 Corby discloses that the composition can comprise 10 to 90% by weight of an oil and 10 to 50% by weight of water, where the oil can be a vegetable oil. In paragraph 57 Corby discloses that the composition preferably comprises 0.1 to 10% by weight of a surfactant, and in paragraph 59 Corby discloses that nonionic surfactants are particularly useful surfactants. In paragraphs 60-61 Corby discloses condensation products of fatty alcohol with ethylene oxide as nonionic surfactants, also meeting the limitations of the fatty acid alkoxylate of amended claim 1. It is noted that “fatty alcohol alkoxylate” as defined in the current application includes surfactants which contain a carboxyl group, as exemplified in paragraph 65 of the current specification. The concentration ratios of vegetable oil and surfactant in the composition of Corby therefore lead to a range of ratios encompassing the range recited in claim 1, and the water content overlaps the range recited in claim 1. In paragraph 33 Corby discloses that the composition can also comprise a biocide, and in paragraph 78 Corby discloses that the composition can comprise EDTA, which is a chelating agent, meeting the limitations of the optional biocide and chelating agent of claim 1.
The vegetable oil and surfactant concentration ranges disclosed by Corby and discussed above also overlap or encompass the ranges recited in claims 2 and 6, and the water concentration range also overlaps the range recited in claim 6. Alternatively, Corby also discloses in paragraph 30 that the composition can be substantially non-aqueous and in paragraph 41 that water is an optional component. Corby therefore also discloses compositions that are substantially free of water, as recited in claim 16. In paragraph 43 Corby discloses that the vegetable oil can be various oils recited in claim 18.
In paragraphs 60-61 Corby discloses that the nonionic surfactant can be a fatty alcohol ethoxylate or ethoxylate/propoxylate surfactant, as recited in claim 20, where the number of carbon atoms in the fatty alcohol overlap or fall within the ranges recited in claim 21, and the ethylene oxide or ethylene oxide/propylene oxide is present in a number of moles within or overlapping the ranges recited in claim 21. In paragraph 59 Corby discloses that the nonionic surfactants can also be derived from alkoxylated monocarboxylic acids having 10 to 24 carbon atoms, leading to surfactants meeting the limitations of claim 22. None of the compounds recited in claim 26 are required by Corby and Corby therefore discloses compositions free of those compounds. In paragraphs 16-17 Corby discloses that the composition can be applied to a conveyor belt surface discontinuously without further dilution, meeting the limitations of claim 31.
The difference between Corby and the currently presented claims is that some of the ranges of Corby overlap the amended claims rather than falling within them. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” Claims 1-2, 6, 16, 18, 20-22, 26, and 31 are therefore rendered obvious by Corby.
Claims 1, 3-5, 11-14, 18, 20-21, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Kupper (U.S. PG Pub. No. 2005/0070448).
In paragraphs 70-71 Kupper discloses compositions for the lubrication of conveyor belts, comprising oil, water, and nonionic emulsifiers. In paragraphs 90-91 and 95-96 Kupper discloses that the composition can further comprise triglycerides which can be castor oil, a vegetable oil as recited in claims 1 and 18. In paragraphs 93, 99, and 101-102 Kupper discloses that the composition can comprise fatty alcohol ethoxylates and/or propoxylates, meeting the limitations of the nonionic surfactant of amended claim 1 as well as claim 20, and where the carbon number of the alcohol and moles of ethylene oxide are within or overlapping the ranges recited in claim 21. The concentration ranges disclosed in paragraphs 125-129 of Kupper have a maximum concentration for components (a) through (d) of 90%, implying that the lower bound of the water concentration range is at most 10%, and the water concentration range will therefore overlap the range recited in claim 1.
In paragraphs 88-89 Kupper discloses that the composition comprises wax esters, which are the esters of long-chain carboxylic acids with long-chain alcohols, and where the alcohol residue has 6 to 22 carbon atoms, within the range recited in claims 3 and 8. The wax esters of Kupper therefore meet the limitations of claims 3 and 8. The wax esters of Kupper are monoesters, meeting the limitation of condition (a) of claim 11, and have structures meeting the limitations of claim 12. Kupper discloses in paragraph 89 that the esters can be derived from capric, caproic, or caprylic acid, leading to esters meeting the limitations of claim 13. Kupper also discloses that suitable alcohol reactants include lauryl alcohol, myristyl alcohol, oleyl alcohol, linolyl alcohol, linolenyl alcohol, palmitoleyl alcohol, and stearyl alcohol, which will lead to esters recited in claim 14 when reacted with capric, caproic, or caprylic acid.
Additionally, Kupper discloses in paragraphs 125-129 that the composition has a triglyceride to wax ester weight ratio of 1:1250 (0.04:50) to 10:1, overlapping the ranges recited in claim 4 when the triglyceride is castor oil. The wax ester concentration disclosed by Kupper of 1 to 50% by weight overlaps the range recited in claim 5.
The composition of Kupper does not require any of the components recited in claim 26 and therefore meets the limitations of a composition free of those components.
The difference between Kupper and the currently presented claims is that some of the ranges of Kupper overlap or encompass the claimed ranges rather than fall within them. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Claims 3-5, 8, and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Corby in view of Kupper.
The discussions of Corby in paragraph 4 above and Kupper in paragraph 5 above are incorporated here by reference. Corby discloses a conveyor lubricating composition meeting the limitations of claims 1 and 6, but does not disclose the further inclusion of the fatty alcohol ester required in claims 3-5, 8, and 10-14.
Kupper, as discussed above, discloses a conveyor lubricating composition comprising a wax ester meeting the limitations of claims 3, 8, and 11-14. The compositions of Kupper can also comprise a vegetable oil (natural triglyceride such as castor oil) and a fatty alcohol alkoxylate. The inclusion of the wax ester of Kupper in the composition of Corby therefore meets the limitations of claims 3, 8, and 11-14.
Additionally, based on the concentrations of vegetable oil (10 to 90%), water (10 to 50%), PTFE (2 to 25%), and surfactant (0.1 to 10%) disclosed in paragraphs 41, 48, 53, 57, the additional components, such as the wax ester of Kupper, can be present in an amount of up to 77.9% by weight, encompassing the range recited in claim 5, and leading to a range of ratios of vegetable oil to wax ester encompassing the ranges recited in claims 4 and 10. The inclusion of the wax ester of Kupper in the composition of Corby therefore also meets the limitations of claims 4-5 and 10.
It would have been obvious to one of ordinary skill in the art to include the wax ester of Kupper in the composition of Corby, since Kupper teaches in paragraph 69 that the compositions of the reference (which comprise the wax esters in combination with triglycerides and fatty acid alkoxylates) have good adhesion, good lubricating properties, form an easily removable film, and are storage stable.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Corby in view of Valencia Sil (U.S. PG Pub. No. 2018/0362878) and Theyssen (U.S. PG Pub. No. 2011/0020558).
The discussion of Corby in paragraph 4 above is incorporated here by reference. Corby discloses a composition meeting the limitations of claim 1. In paragraphs 14, 17, and the reference’s claim 1, Corby discloses discontinuously applying the composition to a conveyor belt surface without further dilution. In paragraphs 73-76 Corby indicates that the composition is applied to the surface intermittently. The differences between Corby and the currently presented claim are:
i) Corby does not specifically disclose re-applying the composition when the coefficient of friction on the surface reaches a certain level,
ii) Corby does not disclose the intermittent application of water to facilitate the removal of blackness from the surface.
With respect to i), Valencia Sil discloses dry lubricant compositions for conveying containers, and in paragraphs 28-33 Valencia Sil discloses intermittently applying a dry lubricant composition to a conveyor surface, where a feedback loop may trigger application of the lubricant composition when the coefficient of friction reaches an unacceptably high level. Valencia Sil discloses that the lubricant can maintain a coefficient of friction below about 0.2, encompassing the value recited in claim 27 at which the lubricant composition is reapplied. Valencia Sil therefore meets the limitations of the third step of claim 27.
With respect to ii), Theyssen discloses in paragraph 1 a method of lubricating a conveyor belt in a dry lubrication process. In paragraphs 25-31 Theyssen discloses that the method of lubricating a conveyor belt includes an additional step of applying a liquid composition to the surface of the conveyor belt after the application of the lubricant concentrate. In paragraph 103 Theyssen discloses that the liquid composition can comprise water. In paragraph 125 Theyssen discloses that the step of applying the lubricant concentrate (step a of Theyssen) and the step of applying the liquid composition (step b of Theyssen) can be carried out in several times in alternate order. In paragraphs 33-34 Theyssen discloses that the application of the liquid concentrate serves to remove blackness (dirt) from the surface. The step of applying the water-containing liquid composition of Theyssen therefore meets the limitations of the second and fourth steps of claim 27, noting that the “comprising” language of the claim allows for other components than water to also be applied to the surface in these steps.
It would have been obvious to one of ordinary skill in the art to monitor the friction coefficient on the surface in the process of Corby and re-apply the lubricant composition when the friction coefficient reaches a certain value, since Valencia Sil teaches that it is a suitable method of maintaining the friction coefficient at a desired level in a process of dry lubricating a conveyor surface. It would have been obvious to one of ordinary skill in the art to intermittently and alternately apply the water-containing liquid composition of Theyssen in order to remove dirt and reduce blackening of containers being conveyed on the conveyor belt surface.
Response to Arguments
Applicant's arguments filed 12/8/25 have been fully considered but they are not persuasive. Applicant argues that the examples of Corby do not contain any “polyalkyoxylene containing surfactants of fatty acids”. However, as acknowledged in applicant’s remarks, the disclosure of Corby discloses fatty alcohol alkoxylates. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Similarly, applicant argues that the examples of Corby contain a higher amount of water than recited in the claims, but as discussed in the rejections, the disclosure of Corby discloses water contents in a range overlapping the claimed range.
Applicant also argues that the data provided in the specification demonstrates the criticality of the claimed ratio of vegetable oil to nonionic surfactant, citing the data provided in Table 4 of the specification. In order to successfully rebut a prima facie case of obviousness, applicant must demonstrate unexpected results commensurate in scope with the claim. See MPEP 716.02(d). In this case, the inventive examples provided by applicant comprise sunflower oil as the vegetable oil and a specific fatty acid ethoxylate, while the claims allow for any vegetable oil and any fatty alcohol alkoxylate. The inventive examples also comprise the vegetable oil and nonionic surfactant in specific amounts, while claim 1 allows for the vegetable oil and nonionic surfactant to be present in any amount as long as the ratio falls within the claimed range. Most of the inventive examples are free of water, and the examples that do contain water have a maximum of 3%, while the claims allow for up to 15% by weight of water. Applicant has not provided any comparative examples where the ratio of vegetable oil to nonionic surfactant is less than about 1:1. One of ordinary skill in the art therefore would not be able to conclude from the data provided by applicant that the superior results would be maintained across the full scope of the claims, or that the critical range of vegetable oil to nonionic surfactant would remain the same across the full scope of the claims. Applicant therefore does not overcome the prima facie cases of obviousness set forth in the rejections.
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 JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771