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 .
DETAILED ACTION
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
CLAIM INTERPRETATION
The presence of claim limitations that are preceded by the phrases “wherein” often raises a question as to the limiting effect of the claim limitations (see MPEP §2111.04). The Examiner has interpreted the limitations following the phrase “wherein” as positively being claimed (i.e. the claim limitations are required and/or the claim limitations following the “wherein clause” limits the structure), where “wherein” is being used as a transitional phrase.
Specification
The amendment to the specification received on June 24, 2026, is acceptable. The specification objections are hereby withdrawn.
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 1-4 and 6-12 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 1 recites “the pipe or conduit being connected and/or fixed at an inlet side to the outlet (5) of the first pump (1) and at an outlet side to the inlet (4) of the second pump (2)”, which is confusing. How is “an inlet side to the outlet” and “the outlet side to the inlet”? The Examiner believes that the inlet side and outlet side might be referring to the pipe or conduit. In addition, the “outlet side” appears to be the same as the “first outlet” of the intermediate part, and therefore, it is confusing what the relationship is between these elements. The intermediate part also has “an inlet (8)”, which is changed to “an inlet side” at the end of the claim resulting in confusion on why there is a change in terminology. Adding “inlet side” and “outlet side” makes the claim confusing. If “the pipe or conduit is connected and/or fixed to the outlet (5) of the first pump (1) and to the inlet (4) of the second pump (2)”, reciting that the pipe or conduit has an inlet side and an outlet side is confusing, since it is clear that the respective sides of the pipe or conduit connects the two locations (i.e. the pipe or conduit connects the outlet (5) of the first pump (1) to the inlet (4) of the second pump (2)). The Examiner recommends removing “at an inlet side” and “at an outlet side”, since these limitations add confusion to the claim.
Claim 1 recites “constituted of an opening, such as a drilled opening”, which is indefinite, since it is unclear if “a drilled opening” is positively recited. The Examiner recommends removing “such as a drilled opening”.
Claims 2-4 and 6-12 are rejected by virtue of their dependence on claim 1.
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 1-3, 6, 8, 9, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over KUMAMOTO (Japanese Patent Publication JP 2014-169672, a machine translation was provided in the IDS filed on 9/21/2024 and is utilized in the rejection below ), in view of FANG (U.S. Patent Publication US 2005/0089424), in view of CERVENY (U.S. Patent Publication US 2010/0071988), and in view of LI (Chinese Patent Publication CN 202132219 U, a machine translation is provided with the foreign patent on 8/29/2025 and is utilized in the rejection below).
Regarding claim 1, KUMAMOTO discloses: a grease pump (KUMAMOTO discloses an oil pump and not specifically a “grease” pump, it is noted that the material to be pumped is not required to be disclosed, where only the pump has to be capable of pumping grease. Since oil is a viscous material, KUMAMOTO is capable of pumping grease) for use in pumping grease (this is an intended use limitation, whereas stated above, the pump of KUMAMOTO is capable of pumping grease, and therefore meets the claimed limitation), comprising two positive displacement rotary pumps (70, 80), a first pump (70) and a second pump (80), wherein each pump comprises an inlet (see Marked up Figures 1 and 3 of KUMAMOTO) for grease (oil) at the suction side and an outlet (44b, 52; 44b, 13) for grease on the discharge side, the inlet of the first pump is connectable to a reservoir (OP) (see Marked up Figure 1) of grease (oil) by a connection (see Marked up Figure 1), wherein the grease pump comprises an intermediate part (the intermediate part is the part that has the passage between 70 and 80) (see Marked up Figures 1 and 3) comprising an inlet (44b) (see Marked up Figures 1 and 3), a first outlet (44e) and a flow path (44f) for grease (oil) (see Marked up Figures 1 and 3 that shows the flow path with arrows), the outlet of the first pump connected to the inlet of the intermediate part (see Marked up Figures 1 and 3) and the first outlet of the intermediate part connected to the inlet of the second pump (see Marked up Figures 1 and 3), thereby forcing grease (oil) from the reservoir of grease through the first pump, through the intermediate part and through the second pump to the outlet of the second pump (see arrows in Figures 1 and 3 that shows the flow of working fluid) during operation, wherein the intermediate part is a connecting part between the first pump and the second pump in a fluid path from the outlet of the first pump to the inlet of the second pump (see Marked up Figures 1 and 3), and wherein the intermediate part is either:
- (i) constituted of a plate or block of material positioned between the first pump and the second pump, wherein the flow path is constituted of an opening, such as a drilled opening (see Marked up Figures 1 and 3, that shows the intermediate part is a block of material position between the first pump and the second pump); or
- (ii) constituted at least in part by a pipe or conduit made of a rigid material, the pipe or conduit being connected and/or fixed at an inlet side to the outlet of the first pump and at an outlet side to the inlet of the second pump (this limitation does not need to be met since (i) was met, due to this is an alternative configuration).
KUMAMOTO discloses the claimed limitations, however, fails to disclose specifically the intermediate part is a separate component, grease (KUMAMOTO discloses oil), and the grease pump is positioned within a portable box containing at least the first pump, the second pump, and the intermediate part.
Regarding claim 1, FANG teaches: an intermediate part as a separate part (31-34, partition plates) located between different pumping sections (211, 221, 231, 241, 251).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to the housing including an intermediate piece as a separate component, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Furthermore, FANG teaches utilizing intermediate parts between adjacent pumping units (i.e. the first and second pumps). It would have been obvious to a person having ordinary skill in the art at the time of the invention was made to have an intermediate part located between the first and second pumps in the grease pump of KUMAMOTO, in order to minimize the outer diameter, reduce weight, and manufacturing costs (see Abstract of FANG).
Regarding claim 1, CERVENY teaches: the pump is positioned within a portable box (toolbox size housing (16)) containing a pump (mechanical pump, claim 6).
It would have been obvious to a person having ordinary skill in the art at the time of the invention was made to have substituted the pump system of KUMAMOTO for the mechanical pump system of CERVENY, in order to provide the advantage of making portable the pump system of KUMAMOTO.
The modified pump of KUMAMOTO/ FANG / CERVENY is silent as to being a grease pump (i.e. that the pump is pumping grease).
Regarding claim 1, LI teaches: an oil injection pump that functions to perform grease injection (see First paragraph under detailed description).
It would have been obvious to a person having ordinary skill in the art at the time of the invention was made to have the modified pump of KUMAMOTO/ FANG / CERVENY to pump grease, since using a pump that pumps oil to pump grease is well-known in the art as evidence by LI. Furthermore, LI interchangeable recites oil and grease in their specification.
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Regarding claim 2, CERVENY further teaches: the portable box comprises a handle (22).
Regarding claim 3, KUMAMOTO discloses: the grease pump comprises a motor (engine) (¶0019) configured to drive the first pump and the second pump (see Figures 1 and 3 that shows that the rotating shaft (30) is connected to the first and second pumps and are disclosed to be driven by the motor (engine)), wherein the grease pump comprises a single motor driving the first pump and the second pump by a common drive shaft (30) (see Figure 1).
Regarding claim 6, the KUMAMOTO discloses: the reservoir of grease (oil) (OP) (see Figure 1) and fails to specifically disclose the reservoir is a grease cartridge containing a batch of grease.
Regarding claim 6, CERVENY further teaches: a reservoir of grease is a grease cartridge containing a batch of grease (refillable grease cartridges (5)).
It would have been obvious to a person having ordinary skill in the art at the time of the invention was made to utilize a refillable grease cartridge in the modified grease pump of KUMAMOTO/ FANG /CERVENY/LI, in order to allow for the grease source to be portable and exchangeable if needed.
Regarding claim 8, the modified grease pump of KUMAMOTO/ FANG /CERVENY/LI teaches: wind turbine (technical field section: wind power generation is disclosed by LI) lubrication pump comprising the grease pump according to claim 1 (see rejection of claim 1 above).
Regarding claim 9, the modified grease pump of KUMAMOTO/ FANG /CERVENY/LI has KUMAMOTO further disclosing: wherein the reservoir of grease (oil) (KUMAMOTO discloses the reservoir (OP) in Figure 1), comprises a grease (oil) for connection to the inlet (see Marked up Figures 1 and 3 of KUMAMOTO) of the first pump ((70), see Marked up Figures 1 and 3 of KUMAMOTO) for providing the grease (oil) for the inlet at the suction side of the first pump (see Marked up Figures 1 and 3 of KUMAMOTO).
The combination of KUMAMOTO / FANG /CERVENY / LI as discussed above discloses using grease, however, fails to specifically disclose using a grease cartridge.
Regarding claim 9, CERVENY further teaches: using a grease cartridge (refillable grease cartridges (5)).
It would have been obvious to a person having ordinary skill in the art at the time of the invention was made to utilize a refillable grease cartridge in the modified grease pump of KUMAMOTO/ FANG /CERVENY/LI, in order to allow for the grease source to be portable and exchangeable if needed.
Regarding claim 11, the method for lubricating a lubrication system is an inherent method in the modified grease pump of KUMAMOTO/ FANG /CERVENY/LI as discussed above in claim 1.
Regarding claim 12, the method for lubricating a lubrication system is an inherent method in the modified grease pump of KUMAMOTO/ FANG /CERVENY/LI as discussed above in claim 6.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over the modified grease pump of KUMAMOTO/ FANG /CERVENY/LI as applied to claim 1 above, and further in view of CONLEY (U.S. Patent Publication US 2013/0277147).
Regarding claim 4, the modified grease pump of KUMAMOTO/ FANG /CERVENY/LI discloses the claimed invention as discussed above, however, fails to disclose the grease pump comprises a power supply, or a controller controlling the amount of grease through the pumps (controller….controls the first pump and the second pump, see claim 1), or both a power supply and a controller controlling the amount of grease through the pumps.
It would have been obvious to a person having ordinary skill in the art at the time of the invention was made to have the grease pump comprises a power supply, or a controller controlling the amount of grease through the pumps, or both a power supply and a controller controlling the amount of grease through the pumps in the modified grease pump of KUMAMOTO/ FANG /CERVENY/LI, in order to provide the advantage of using a single controller to control both the first and second pumps. Furthermore, it requires only routine skill in the art to utilize a controller to control the operation of the first and second pumps in order to obtain the desired output.
Claims 7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over the modified grease pump of KUMAMOTO/ FANG /CERVENY/LI as applied to claim 1 above, and further in view of LIU (Chinese Patent Publication CN 108533936 A, a machine translation was provided with the foreign reference on 8/29/2025 and is utilized in the rejection below).
Regarding claims 7 and 10, the modified grease pump of KUMAMOTO/ FANG /CERVENY/LI discloses the claimed invention, however, fails to disclose the grease pump comprises a tube or pipe or hose for connecting and filling a central lubrication system for a wind turbine.
Regarding claims 7 and 10, LIU teaches: the grease pump comprises a tube or pipe or hose for connecting and filling a central lubrication system for a wind turbine (see Abstract and ¶0007-¶0008 that discloses a supply pipeline connected with lubricating point of bearing to be lubricated).
It would have been obvious to a person having ordinary skill in the art at the time of the invention was made to have the grease pump comprises a tube or pipe for connecting and filling a central lubrication system for a wind turbine in the modified grease pump of KUMAMOTO/ FANG /CERVENY/LI, in order to provide the advantage of solving the demand of bearing lubrication (see the invention content section of LIU).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over any one of claims 2/1 or 3/1 of U.S. Patent No. 12,123,410 B2 in view of CERVENY. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is recited in U.S. Patent No. 12,123,410 B2 except for the pumps are positioned within a portable box.
Regarding claim 1, CERVENY teaches: the pump is positioned within a portable box (toolbox size housing (16)) containing a pump (mechanical pump, claim 6).
It would have been obvious to a person having ordinary skill in the art at the time of the invention was made to have substituted the pump system of U.S. Patent No. 12,123,410 for the mechanical pump system of CERVENY, in order to provide the advantage of making portable the pump system of U.S. Patent No. 12,123,410. Furthermore, placing pumps inside a box to provide ease of transportation requires only routine skill in the art and predictable results (i.e. ease of transportation).
Response to Arguments
The amendments have resolved the 112(a) and specification rejections, which are hereby withdrawn.
Applicant argues the combination of KUMAMOTO/ CERVENY/ LI as not disclosing the amended claim limitation. The Examiner has added the additional reference of FANG that discloses it is known to utilize an intermediate part between adjacent pumps (see rejection above). Furthermore, the arguments that the intermediate part has to be separate from the first pump and the second pump was not persuasive, since the first pump and second pump does not disclose a housing located around it. The Examiner did include the additional reference to show that it is well known to have a separate part between pumping units. The Examiner would also suggest looking at GREEN (U.S. Patent 1,531,607) that also shows a similar configuration where different pumping units have an intermediate part between them. The dependent claims were argued with regard to the amendment made to claim 1, which is discussed above.
The double patenting rejection was amended to different claims that do disclose the amendments to claim 1 (see revised double patenting rejection above). The Examiner is confused on the argument that U.S. Patent No. 12,123,410 does not have the amended features, especially since these features are recited in claims 2 and 3.
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.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARY DAVIS whose telephone number is (571)272-9965. The examiner can normally be reached M-F, 8 am-4pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Essama Omgba can be reached at (469) 295-9278. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mary A Davis/Primary Examiner, Art Unit 3746
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