DETAILED ACTION
The present application and its arguments have been reviewed and currently claims 1-4 and 6-20 are rejected and claim 5 is cancelled.
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 .
Response to Arguments
Applicant's arguments filed 11/10/2025 have been fully considered but they are not persuasive.
In response to applicants arguments on page 7 that the OA provides an annotated figure that is incorrect, the examiner respectfully disagrees as the structure of the second recess 100 is an undercut radius as shown in annotated fig. 4 below that comprises an oblique open end which does not produce a normal vector parallel to a normal vector produced from the side of the box shoulder.
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In response to applicants arguments on page 7 that the drawings show the claimed subject matter based on paragraph 0040, the examiner respectfully disagrees as paragraph 0040 states:
“[0040] Referring to FIG. 4, which is a close up of the connection illustrated in FIG. 3, pin curvilinear sealing surface 36 is shown forming a metal-to-metal seal with box curvilinear sealing surface 74 . As described above, the main limitation on the travel of pin 12 into box 13 may be the seating of the pin end against the box internal shoulder 73 . This leaves a gap 990 between pin nose 38 and box shoulder 73 . The pin contacts internal shoulder 73 , thus closing gap 990 , only under conditions of high compressive loads. The size of gap 990 between the end of the pin and shoulder 73 may be chosen in order to maximize the compressive load capacity of the connection.”
Therefore, paragraph 0040 does not support “an open end of the second recess are … located in the same plane such that a normal vector of both the side of the box shoulder and the open end are parallel”.
In addition, it can be shown in annotated figure 2 below that the edge of the start of the undercut radius and the edge of the end of the undercut radius as axially separated, therefore, the open end of the recess is oblique under no load.
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In response to applicants arguments on page 7 that closing the gap would produce an open end of the second recess to be parallel, the examiner respectfully disagrees as it is unclear how closing the gap would change the structure of the open end of the second recess (ex., how would a pin nose pressing against the box shoulder cause the open end of the undercut radius to produce a plane that is in the same plane as the box shoulder?).
In response to applicants arguments on page 8 that “Figure 4 provides an illustration prior to “high compressive loads” wherein the pin 12 will close the gap and contact box shoulder 73. [0040] of the Application. When the pin 12 closes the gap and contacts box shoulder 73, the open end of the second recess would be parallel to the side of the box shoulder”, the examiner respectfully disagrees as it is unclear how closing the gap would cause the structure of the undercut recess to change under high compressive loads.
In response to applicants arguments on page 8 that the provided annotated figure is incorrect and that 0040 and figure 4 provide support for an open end of the recess vector to be parallel, the examiner respectfully disagrees because there is no figure provided showing the gap being closed and the open end of the undercut recess vector would be parallel to the box shoulder. In addition, as discussed above, there is no support in paragraph 0040 which would support the claim limitation.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the limitation “an open end of the second recess are … located in the same plane such that a normal vector of both the side of the box shoulder and the open end are parallel” must be shown or the feature(s) canceled from the claim(s) because the figure discloses that the open end is not parallel to the side of the box shoulder as shown in the annotated figure below. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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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 6-20 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.
The limitation “an open end of the second recess are … located in the same plane such that a normal vector of both the side of the box shoulder and the open end are parallel” has not been not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that at the time the application was filed, had possession of the claimed invention because the specification states that:
“FIG. 4 also depicts a recess 100 in box 13 adjacent io box shoulder 73 and engaged pin nose 38, In the drawing, recess 100 may be located below box curvilinear sealing surface 74 and pin curvilinear sealing surface 36. Recess 100 is an undercut radius in the box shoulder 73 that reduces the stress in this corner.”
The recess as shown in fig. 4 based on the specification does not show that the open end of the second recess is parallel to side of the box shoulder (ex., see annotated figure above).
Therefore, there appears to be no support in the specification that supports both the side of the box shoulder and the open end of the recess are parallel.
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 1-4 and 6-20 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.
In regards to claims 1 and 11, the limitation “an open end of the second recess are … located in the same plane such that a normal vector of both the side of the box shoulder and the open end are parallel” is unclear to the examiner as to how both an open end of the second recess and a side of the box shoulder are in the same plane because figure 4 of the present invention appears to show that open end would be slightly slanted due to the end points (ex., each plane would not be parallel to each other).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Pallini et al. (U.S. PGPub No. 2014/0054887) discloses a similar undercut radius to the present invention.
THIS ACTION IS MADE FINAL. 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 ALEXANDER TYLER RUFRANO whose telephone number is (571)272-6223. The examiner can normally be reached Mon - Fri 8:30AM to 4:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Troutman can be reached at (571) 270-3654. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.T.R./Examiner, Art Unit 3679
/Matthew Troutman/Supervisory Patent Examiner, Art Unit 3679