Election/Restrictions
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election of the couplings shown in Figs. 2-3 (Species I) was made without traverse in the reply filed on Jan 7, 2025.
Specification
The disclosure is objected to because at page 8, line 15, the word “groove” is misspelled.
Claim Rejections - 35 USC § 112
Claims 1-3, 7-8 & 10 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. Line 8 recites the limitation, “an inner surface of the coupling”. It is unclear if this inner surface is the same as, or different from the inner surface recited in line 2.
Claim 8 recites the limitation, “a corresponding number of grooves that are configured to fit the plurality of teeth of the shaft through the grooves.” It is unclear if these grooves are the same as, or different from the plurality of grooves recited in claim 1.
Claim Rejections - 35 USC § 102
Claims 1-2 & 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sheth, US 7,775,779. At Fig. 5, Sheth shows a coupling (35), comprising:
an inner surface configured to receive a shaft (20) of an electric submersible pump assembly (300) through the inner surface; and
an outer surface having a torsional undercut (46) into the outer surface of the coupling, the cut having torsional/shear strength less than that of the shaft into the outer surface of the coupling so that the torsional undercut is configured to induce a failure of the coupling prior to a failure of the shaft (col. 7, lines 42-46),
wherein the shaft is a spline (28) with a plurality of teeth, and wherein the inner surface has a corresponding number of grooves that are configured to fit the plurality of teeth of the shaft through the grooves (col. 7, lines 3-7).
Claim Rejections - 35 USC § 103
Claims 3 & 10 are rejected under 35 U.S.C. 103 as being unpatentable over Sheth.
Claim 3. At Fig. 5, Sheth shows the torsional undercut (46), but does not expressly disclose a rectangular shape. However, applicant has not disclosed that a rectangular shape solves any particular problem or serves any other specific purpose. To the contrary, applicant discloses the torsional undercut may have any shape (see page 3, line 25 of the instant specification). As such, a rectangular shape is deemed to be a design consideration that fails to patentably distinguish over the prior art to Sheth.
Sheth discloses a torsional undercut (46) into the outer surface of the coupling (35) but does expressly disclose a second such undercut. However, including a second such cut would have been obvious to one of ordinary skill in the art, since such a modification would have involved a mere duplication of parts. The duplication of parts for a multiplied effect has no patentable significance and is considered well within the
purview and obvious to one of ordinary skill in the art. St. Regis Paper Co. v. Bemis Co.,
Inc. 193 USPQ 8, 11 (7th Cir. 1977).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Greg Binda whose telephone number is (571)272-7077. The examiner can normally be reached 9:30-5:30 et.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Greg Binda/Primary Examiner, Art Unit 3679
Prosecution Insights