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 .
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.
Claim 6 is 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.
In claim 6, lines 1-2, the limitation “wherein an initial volume of the diluted lubricant is larger at a start of the introducing step” is vague and indefinite. Where has this feature been described in the specification? Does this limitation mean that when fluid leaves a volume, there is less fluid in that volume, so basically just a statement of conservation of mass? What structure is being claimed?
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,366,325. Although the claims at issue are not identical, they are not patentably distinct from each other. Comparing claim 1 of 12,366,325, with claim 1 of the current application, the claims are identical with the exception that in the current limitation has been deleted: “calculating a ratio of polarized lubricant to water based on a daily production volume of the fluid production pump”. It would have been obvious to omit this limitation, therefore the claims are not patentably distinct.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,366,325.
Claim 3 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,366,325.
Claim 4 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,366,325.
Claim 5 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,366,325.
Claim 9 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,366,325.
Claim 10 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,366,325.
Claim 12 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,366,325.
Claim 13 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 11,873,946. Although the claims at issue are not identical, they are not patentably distinct from each other. Comparing claim 11 of 11,873,946, with claim 13 of the current application, the claims are identical with the exception that in the current limitation has been deleted: “the method further comprising the step of calculating a ratio of polarized lubricant to water based on a daily production volume of the fluid production pump”. It would have been obvious to omit this limitation, therefore the claims are not patentably distinct.
Claim 14 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 11,873,946.
Claim 15 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 11,873,946.
Claim 18 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 11,873,946.
Claim 19 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 11,873,946.
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.
Claim(s) 1-6 and 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bellos, US Patent 3,661,784.
Regarding claim 1, Bellos discloses a method of lubricating a fluid production pump (see column 4, line 57-column 5, line 42), the method comprising the steps of: mixing a polarized lubricant with water to produce a diluted lubricant (see col 4, line 60); creating a flowpath within the fluid production pump (see col 5, line 4-5); and repeatedly introducing a periodic volume of diluted lubricant within the flowpath (see col 5, line 32) to allow the diluted lubricant to react with components of the fluid production pump and form a protective barrier on the components of the fluid production pump according to a predefined lubrication schedule (see col 5, line 35-38). Bellos does not specify that the mixing step includes producing a diluted lubricant having a ratio of water to polarized lubricant in a range of 1:1-13:1. It would have been obvious to one having ordinary skill in the art at the time of the effective filing date to employ a lubricant in the specified concentration range since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. One having ordinary skill in the art at the time of the effective filing date of the invention would be motivated employ a lubricant in the specified concentration range in order to improve the system corrosion resistance and efficiency for a specific environment and workload schedule.
Regarding claim 2, Bellos discloses the method recited in claim 1, wherein the creating step (as described above) includes creating a closed loop flowpath (“closed system” from col 5, line 25) within the fluid production pump (as described above).
Regarding claim 3, Bellos discloses the method recited in claim 2, further comprising the steps of: undoing the closed loop flowpath from the fluid production pump after the circulating step (see col 5, line 35-37); and creating a serial flowpath (see col 5, line 22) through the fluid production pump before the operating step (as described above).
Regarding claim 4, Bellos discloses the method recited in claim 1, further comprising the step of disposing the initial volume of the diluted lubricant within the flowpath (see col 5, line 31-35).
Regarding claim 5, Bellos discloses the method recited in claim 4, wherein the mixing step (see col 4, line 60) is performed before the disposing step (as described above).
Regarding claim 6, as best understood, Bellos discloses the method recited in claim 1, wherein the initial volume of the diluted lubricant is larger at the start of the introducing step (due to conservation of mass).
Regarding claim 12, Bellos discloses the method recited in claim 1, further comprising the step of filling a scratch (covering all surfaces) formed in the protective barrier (coating) with the periodic volume of polarized lubricant (see col 5, line 37).
Regarding claim 13, Bellos discloses a method of reducing friction in a fluid production pump, the method comprising: circulating a diluted lubricant through the fluid production pump (see col 5, line 32) to allow the diluted lubricant to be attracted to the fluid production pump via a positive ion charge of the diluted lubricant (see column 4, line 57-column 5, line 42). Bellos does not specify that the mixing step includes producing a diluted lubricant having a ratio of water to polarized lubricant in a range of 1:1-13:1. It would have been obvious to one having ordinary skill in the art at the time of the effective filing date to employ a lubricant in the specified concentration range since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. One having ordinary skill in the art at the time of the effective filing date of the invention would be motivated employ a lubricant in the specified concentration range in order to improve the system corrosion resistance and efficiency for a specific environment and workload schedule.
Regarding claim 14, Bellos discloses the method recited in claim 13, further comprising the step of repeatedly introducing additional diluted lubricant through the fluid production pump according to a predefined lubrication schedule (see col 5, line 35-38).
Regarding claim 15, Bellos discloses the method recited in claim 13, wherein the circulating step (as described above) includes circulating the diluted lubricant through a closed loop flowpath (see col 5, line 25) formed within the fluid production pump.
Claims 9-10 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Bellos in view of Kayser et al., US PGPub 2012/0088698.
Bellow discloses the method recited in claims 1 and 13 but does not specify that the polarized lubricant in the mixing step includes a plant based fluid or an emulsifier. Kayser teaches lubricant compound for coating industrial equipment (see [0003]) wherein the compound includes a plant based fluid (see [0099]-[0100]) (claims 9 and 18) or an emulsifier (see [0027]) (claims 10 and 19). It would have been obvious to provide the compound described by Kayer to the system disclosed by Bellos in order to improve the system corrosion resistance and efficiency for a specific environment and workload schedule.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A RIEGELMAN whose telephone number is (571)270-7956. The examiner can normally be reached 8-6 EST Monday - Friday.
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MICHAEL A. RIEGELMAN
Primary Examiner
Art Unit 3654
/MICHAEL A RIEGELMAN/Primary Examiner, Art Unit 3654
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