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 .
Election/Restrictions
Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/17/2025.
Claim Rejections - 35 USC § 102 and 103
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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, 7-9, and 12-14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Berthou et al. (WO2018029381, cited in IDS).
Claim 1: Berthou discloses a method, comprising: arranging lubrication material (e.g. grease - page 14, line 16) with a fastening member (10), wherein the lubrication material is at a first temperature during the arranging of the lubrication material such that the lubrication material is solid and forms a self-supporting lubrication ring (ring 20/30, see e.g. page 12, lines 16-17 - solid/self-supporting implied at page 14, lines 23-24 for NLGI grade 3/firm, lines 30-32 and page 15, lines 20-21, where the melting point is the transition between solid and liquid such that at temperatures below it the lubricant would be substantially solid) and the arranging of the lubrication material includes one of: mounting the self-supporting lubrication ring onto a shank (14) of the fastening member (e.g. page 15, lines 20-21).
Alternatively, the fastener is implicitly used in a structure having a surface (e.g. of S1) defining an aperture (8 - Figs. 1-2; see also abstract and page 10, lines 19-20), and inserting the shank (14) of the fastening member into the aperture (Id.), but Berthou does not necessarily disclose mounting the self-supporting lubrication ring onto the surface defining the aperture such that the lubrication ring extends around the aperture; and after the arranging of the lubrication material, inserting the shank of the fastening member into the aperture. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the ring to the assembly according to these steps since it has been held that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). Please note that in the instant application, paragraph 3, Applicant has not disclosed any criticality for the order of steps. Both methods would be expected to result in the same assembly incorporating the ring.
Claim 7: Berthou further implies controlling a temperature of the lubrication material to be below a phase-change temperature (melting point) associated with the lubrication material, wherein the lubrication material is in a non-solid state when above the phase-change temperature (i.e. melted) and the lubrication material is in a solid state when below the phase-change temperature (page 14, lines 30-32 and as noted above).
Claim 8: The temperature of the lubrication material is controlled to be below the phase-change temperature (melting point) during a period of time leading up to the arranging of the lubrication material with the fastening member (implied from the above in that the lubricant is applied below the melting point and any time immediately prior to application would implicitly be at roughly the same temperature).
Claim 9: The lubrication material comprises a material selected from the following materials: a petroleum-based lubrication material; a molybdenum disulfide lubrication material; and grease (e.g. grease as cited above).
Claim 12: The lubrication material is not necessarily a petroleum-based lubrication material. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a petroleum-based lubrication material since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Please note that in the instant application, paragraph 54, Applicant has not disclosed any criticality for the specific lubricant.
Claim 13: The lubrication material may comprise molybdenum disulfide (page 12, line 23). Alternatively, as noted above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used molybdenum disulfide since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Please note that in the instant application, paragraph 54, Applicant has not disclosed any criticality for the specific lubricant.
Claim 14: The lubrication material comprises grease (as cited above).
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Berthou et al. in view of Bobrowsky (U.S. Patent 3,105,048).
Berthou further discloses that the self-supporting ring may be formed on a tool (page 15, lines 20-21), but not necessarily by cutting (claim 10) or punching (claim 11) the self-supporting lubrication ring out of a layer of the lubrication material at or below a phase-change temperature associated with the lubrication material, wherein the lubrication material is in a non-solid state when above the phase-change temperature and the lubrication material is in a solid state when below the phase-change temperature. However, Bobrowsky teaches that lubrication rings may be formed by cutting or punching the self-supporting (solid) lubrication ring out of a layer of the lubrication material (column 1, lines 28-32). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have cut or punched the self-supporting lubrication ring out of a layer of the lubrication material as taught by Bobrowsky as a form of tool forming otherwise disclosed by Berthou in order to have facilitated mass manufacture, for example. In view of the composition of Berthou, it would have also been obvious to have formed the rings at or below a phase-change temperature (melting point) associated with the lubrication material, wherein the lubrication material is in a non-solid state when above the phase-change temperature and the lubrication material is in a solid state when below the phase-change temperature, such that the rings would be relatively firm or solid as required for said punching or cutting.
Allowable Subject Matter
Claims 2-6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Berthou et al. is considered the closest prior art of record. However, Berthou discloses that the grease will be selected from greases having a melting point higher than the temperature at which said grease is to be applied to the fastener, suggesting it is applied below the melting point. Berthou does not necessarily disclose or teach preloading the head against the first component axially through the lubrication material, wherein the lubrication material is at a second temperature, which is higher than the first temperature, such that the lubrication material is semi-solid prior to the preloading of the head, in addition to the additional limitations of claims 1 and 2.
Claims 3-6 depend from claim 2.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent 5,533,852 discloses a bolt arrangement including a solid dry lubricant material 22, typically in the form of an annulus
U.S. Patent 5,407,312 discloses a fastener including a reservoir channel under the head for containing a supply of a function-facilitating material in which such material is selected from the group of solid materials including bonding agents, friction-inducing agents, lubricants, resilience-providing agents, sealing agents such as a caulking compound, and combinations thereof.
U.S. PGPub 2004/0005207 discloses a bolt arrangement including a ring membrane 22 of lubricant such as molybdenum disulfide (paragraph 21).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P TRAVERS whose telephone number is (571)272-3218. The examiner can normally be reached 10:00AM-6:30PM.
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/Matthew P Travers/ Primary Examiner, Art Unit 3726
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