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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 1, 2025 has been entered.
Specification
The amendment filed December 1, 2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: “such as grease with consistency grade NGI 0 to 6” and a grease cartridge e.g. a standardized, unpressurized grease cartridge”.
Even though applicant asserts that the amendment to the specification contains no new matter, this is not the case. The original disclosure had no discussion of the consistency grade of the grease, and that the grease cartridge was unpressurized. Adding new information to the specification without a clear connection to the original disclosure that recited the amended specification is considered new matter. Applicant has not provided where in the specification this added information is at in the original disclosure.
Applicant is required to cancel the new matter in the reply to this Office Action.
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 1-4 and 6-12 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant has amended claim 1 to recite grease “with consistency grade NGLI 0 to 6” and an “unpressurized” reservoir, claim 6 now recites “an unpressurized grease”, claim 9 now recites “an unpressurized cartridge”, and claim 12 now recites “an unpressurized grease cartridge”. As discussed above where the applicant has also tried to add these limitations to the specification, as stated above, there is no support from the original disclosure for these amended claim limitations or specification amendments. In addition, the arguments that this is not new matter was not persuasive. Applicant has not provided any location in the original disclosure reciting any of the amended claim limitations where the grease “with consistency grade NGLI 0 to 6” (claim 1), an “unpressurized” reservoir” (claim 1), “an unpressurized grease” (claim 6), “an unpressurized cartridge” (claim 9), and “an unpressurized grease cartridge” (claim 12). All of these amended claim limitations are considered as new matter. In addition, “unpressurized” is a negative limitation, where the original disclosure has to explicitly disclose this negative limitation.
Claims 2-4 and 6-12 are also rejected by virtue of their dependence on claim 1.
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 claim 16/1 of U.S. Patent No. 12,123,410 B2. 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 current amendment. The limitations directed to an unpressurized reservoir is met by U.S. Patent No. 12,123,410 B2 since it does not recite that the reservoir is pressurized, and therefore, the negative limitation (unpressurized) is met by the US Patent (negative limitations do not have to be explicitly claimed in the prior art, and therefore U.S. Patent No. 12,123,410 B2 meets the claimed limitation). The limitation directed to the grease with consistency grade NGLI 0 to 6 is not disclosed by U.S. Patent No. 12,123,410 B2, however, U.S. Patent No. 12,123,410 B2 discloses pumping grease, where grease of NGLI 0 to 6 is considered to be pumpable by the grease pump of U.S. Patent No. 12,123,410 B2.
Response to Arguments
Applicant's arguments filed December 1, 2025 have been fully considered but they are not persuasive.
Applicant’s amendments to the specification and claims are considered new matter. The statement that the amendment does not contain new matter was not persuasive. Applicant has not provided any location in the original disclosure that supports the amendments made to both the specification and the claims (see discussion above in the Specification section and 112(a) rejections).
The Examiner would like to note that the prior art does not disclose an NGLI within a range of 0 to 6, however, from applicant’s own table (see Page 6 of applicant’s arguments) that grease is also available at 000 grade, which is stated to be “very fluid”. Oil is a viscous fluid. An argument can be made that a 000 graded grease is pumpable in the oil pump of KUMAMOTO. Specific materials that are pumped are given little weight, where the prior art only has to be able to pump the specific material.
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