Detailed Action
Status of Claims
This is the first office action on the merits. Claims 1-18 are currently pending and addressed below.
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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. PCT/EP2022/054823, filed on 26 February 2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/24/2023 has being considered by the examiner.
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.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,598,159. Although the claims at issue are not identical, they are not patentably distinct from each other because:
An obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but an examined application claim is not patentably distinct from the reference claim(s) because the examined 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). Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 1 is generic to all that is recited in claim 1 of US Pat No 11,598,159 . In other words, claim 1 of U.S. Patent No. 11,598,159 fully encompasses the subject matter of claim 1 and therefore anticipates claim 1. Since claim 1 is anticipated by claim 1 of the patent, it is not patentably distinct from claim 1. Thus the invention of claim 1 of the patent is in effect a “species” of the “generic” invention of claim 1. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 1 is anticipated (fully encompassed) by claim 1 of the patent, claim 1 is not patentably distinct from claim 1, regardless of any additional subject matter present in claim 1.
In regards to the dependent claims 2-12 of claim 1 and for the same reasons as above,
Claims 2-3 are anticipated by Claim 1 of US Pat No 11,598,159
Claim 4 is anticipated by Claim 2 of US Pat No 11,598,159
Claim 5 is anticipated by Claim 3 of US Pat No 11,598,159
Claim 6 is anticipated by Claim 4 of US Pat No 11,598,159
Claim 7 is anticipated by Claim 5 of US Pat No 11,598,159
Claim 8 is anticipated by Claim 6 of US Pat No 11,598,159
Claim 9 is anticipated by Claim 7 of US Pat No 11,598,159
Claim 10 is anticipated by Claim 8 of US Pat No 11,598,159
Claim 11 is anticipated by Claim 9 of US Pat No 11,598,159
Claim 12 is anticipated by Claim 10 of US Pat No 11,598,159
An obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but an examined application claim is not patentably distinct from the reference claim(s) because the examined 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). Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 13 is generic to all that is recited in claim 11 of US Pat No 11,598,159 . In other words, claim 11 of U.S. Patent No. 11,598,159 fully encompasses the subject matter of claim 13 and therefore anticipates claim 13. Since claim 13 is anticipated by claim 11 of the patent, it is not patentably distinct from claim 11. Thus the invention of claim 13 of the patent is in effect a “species” of the “generic” invention of claim 11. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 13 is anticipated (fully encompassed) by claim 11 of the patent, claim 13 is not patentably distinct from claim 11, regardless of any additional subject matter present in claim 13.
In regards to the dependent claims 14-15 of claim 13 and for the same reasons as above,
Claim 14 is anticipated by Claim 12 of US Pat No 11,598,159
Claim 15 is anticipated by Claim 15 of US Pat No 11,598,159
An obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but an examined application claim is not patentably distinct from the reference claim(s) because the examined 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). Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 16 is generic to all that is recited in claim 14 of US Pat No 11,598,159 . In other words, claim 14 of U.S. Patent No. 11,598,159 fully encompasses the subject matter of claim 16 and therefore anticipates claim 16. Since claim 16 is anticipated by claim 14 of the patent, it is not patentably distinct from claim 14. Thus the invention of claim 14 of the patent is in effect a “species” of the “generic” invention of claim 16. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 16 is anticipated (fully encompassed) by claim 14 of the patent, claim 16 is not patentably distinct from claim 14, regardless of any additional subject matter present in claim 16.
In regards to the dependent claims 17-18 of claim 13 and for the same reasons as above,
Claim 17 is anticipated by Claim 15 of US Pat No 11,598,159
Claim 18 is anticipated by Claim 16 of US Pat No 11,598,159
Claim Objections
Claim 3 is objected to because of the following informalities: The claim language states “the coupling according to claims 1” which Examiner assumes is a typographical error as the claim language is only directed towards claim 1. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rindeskar (WO 2019170436).
Rindeskar discloses in regards to claim 1. A coupling for connecting downhole tubulars, comprising:
a tubular body (Rindeskar Fig 1; 1 tubular body);
a female coupling part (Rindeskar Fig 1; 2);
a male coupling part (Rindeskar Fig 8; 4);
and at least one of:
a male screw thread formed on an outer surface of the body (Rindeskar Fig 1 & 8; 4t), and a female screw thread formed in an inner surface of the body (Rindeskar Fig 1 & 8; 2t),
wherein the at least one thread has a thread-form including a crest (Rindeskar Fig 5A; A1), a root (Rindeskar Fig 5a; A4), and a pair of flanks (Rindeskar Fig 5a; E1 & E2), wherein the crest and the root are each cambered about a respective first and second camber radius along the entire length of the thread-form (Rindeskar Fig 4; Fig 5A and Fig 5B are cross sections of each end of the thread form with a first and second camber radius along the entire length of the thread form denoted by Rb-T (Root) and Rb (Crest)), and wherein the male screw thread has a camber radius (Rindeskar Fig 4) and the female screw thread has a camber radius (Rindeskar Fig 6), the ratio of the male thread camber radius to the female thread camber radius (Rbm/ Rbf) being > 1.0 and ≤ 1.1 (Rindeskar Fig 4; Rb and Fig 6; Rb-T Page 8 line 1-3 “The height T may be less than one percent of the outer camber radius Rb such that the inner camber radius Rb-T is also greater than the outer diameter of the male coupling part 4” Examiners position is that Fig 4; Rb is equal to 101 for illustrative purposes. Page 9 line 30-32 “The height T may be less than one percent of the outer camber radius Rb such that the inner camber radius Rb-T is also greater than the outer diameter of the female coupling part 4” Examiners position is that Fig 6; Rb-T is 100. Therefore, Rbm/Rbf-T has a ratio of 1.01 Page 6 line 31-32 to Page 7 line 1-2 Female and Male threads are complementary and similar with a calculated Rb shown in Fig 3 disclosing the formula for calculating the Cambered Helix)
Rindeskar discloses in regards to claim 2. The coupling according to claim 1, wherein Rbm/ Rbf is between 1.01 and 1.05 (Rindeskar Fig 4; Rb and Fig 6; Rb-T Page 8 line 1-3 “The height T may be less than one percent of the outer camber radius Rb such that the inner camber radius Rb-T is also greater than the outer diameter of the male coupling part 4” Examiners position is that Fig 4; Rb is equal to 101 for illustrative purposes. Page 9 line 30-32 “The height T may be less than one percent of the outer camber radius Rb such that the inner camber radius Rb-T is also greater than the outer diameter of the female coupling part 4” Examiners position is that Fig 6; Rb-T is 100. Therefore, Rbm/Rbf-T has a ratio of 1.01 Page 6 line 31-32 to Page 7 line 1-2 Female and Male threads are complementary and similar with a calculated Rb shown in Fig 3 disclosing the formula for calculating the Cambered Helix) .
Rindeskar discloses in regards to claim 3. The coupling according claims 1, wherein each first and second camber radius (Rb, Rb-T) is between 700 - 1900 mm (Rindeskar page 6 line 18-20 Camber radius between 1.05m (1050 mm) to 1.7m (1700 mm).
Rindeskar discloses in regards to claim 4. The coupling according to any preceding claim, wherein each flank of the pair of flanks is straight, and each flank is connected to an adjacent crest and/or root by a respective arc (Rindeskar Page 2 line 21-22 each flank is straight and connected to an adjacent crest and/or root).
Rindeskar discloses in regards to claim 5. The coupling according to claim 1, wherein a centerline of the thread-form is perpendicular to an arc of each first and second camber radius (Rindeskar Page 2 line 24-28 centerline of the thread form is perpendicular to the arcs of each camber radius), and is inclined relative to a longitudinal axis of the coupling by an acute and nearly perpendicular first angle adjacent to a start of the at least one thread and inclined by a second angle adjacent to an end of the at least one thread (Rindeskar Page 2 line 24-28 centerline of the thread form is perpendicular to the arcs of each camber radius is inclined relative to a longitudinal axis of the coupling by an acute and nearly perpendicular first angle), and the second angle is less than the first angle (Rindeskar Page 2 line 24-28 centerline of the thread form is perpendicular to the arcs of each camber radius is inclined relative to a longitudinal axis of the coupling by an acute and nearly perpendicular first angle and the second angle is less than the first angle).
Rindeskar discloses in regards to claim 6. The coupling according to claim 1, wherein each first and second camber radius is at least 5 times greater than an outer diameter of the coupling (Rindeskar Page 2 line 30-31 each camber radius is at least 5x greater than the outer diameter of the coupling).
Rindeskar discloses in regards to claim 7. The coupling according to claim 1, wherein the thread-form is asymmetric (Rindeskar Page 2 line 31-32 asymmetric thread form).
Rindeskar discloses in regards to claim 8. The coupling according to claim 1, wherein the thread-form is trapezoidal (Rindeskar Page 2 line 31-32 Trapezoidal thread form).
Rindeskar discloses in regards to claim 9. The coupling according to claim 1, wherein a sweep angle of the at least one thread ranges between one and 10 degrees (Rindeskar Page 3 line 1-2 sweep angle is between 1 and 10 degrees).
Rindeskar discloses in regards to claim 10. The coupling according to claim 1, wherein the root and the crest are concentric (Rindeskar Page 3 line 3-2 root and crest are concentric).
Rindeskar discloses in regards to claim 11. The coupling according to claim 1, wherein an arc length of the root and an arc length of the crest are equal (Rindeskar Page 3 line 1-5 arc lengths of the root and crest are equal).
Rindeskar discloses in regards to claim 12. The coupling according to claim 1, wherein an arc length of the root and an arc length of the crest are not equal (Rindeskar Page 3 line 1-5 arc lengths of the root and crest are not equal).
Rindeskar discloses in regards to claim 13. A connection, comprising:
a coupling according to claim 1 (See claim 1 above),
the coupling including the female coupling part having the female thread,
and the male coupling part having the male thread,
which is screwed into the female thread,
wherein one of the flanks is a contact flank and the other flank is a non-contact flank when the female and male coupling parts are in compression (Rindeskar Page 3 line 9-10 a contact flank and a non-contact flank when the couplings are under compression),
wherein each flank is straight (Rindeskar Page 2 line 21-22 each flank is straight and connected to an adjacent crest and/or root),
each thread-form has a centerline perpendicular to an arc of each respective camber radius (Rindeskar Page 2 line 24-28 centerline of the thread form is perpendicular to the arcs of each camber radius),
each flank has a flank angle inclined relative to the respective centerline, and each contact flank angle is greater than the respective non-contact flank angle (Rindeskar page 3 line 10-13 each flank has a flank angle inclined relative to the respective centerline).
Rindeskar discloses in regards to claim 14. The connection according to claim 13, wherein each non-contact flank angle is less than 45 degrees (Rindeskar page 3 line 15).
Rindeskar discloses in regards to claim 15. The connection according to claim 14, wherein each coupling is made from a metal or alloy (Rindeskar page 3 line 21), the male coupling part has an outer diameter portion, a reduced diameter portion having the male thread, and a shoulder connecting the two portions, and the shoulder is engaged with an end of the female coupling part to form a metal to metal seal (Rindeskar page 3 line 21-24 contains a male coupling part with an outer diameter, a reduced diameter portion having the male thread, and a shoulder connecting the two portions and the shoulder is engaged with a female coupling part to form a metal to metal seal).
Rindeskar discloses in regards to claim 16. A drill rod for percussive drilling, comprising:
a rod body (Rindeskar page 3 line 26 a rod body);
a coupling according to claim 1, the coupling including the female coupling part having the female thread and, which is welded to a first end of the rod body2 and the male coupling part having the male thread and, which is welded to a second end of the rod body (Rindeskar page 3 line 26-29 a female thread that is welded to the first end of the rod body and a male thread which is welded to the second end of the rod body).
Rindeskar discloses in regards to claim 17. The drill rod according to claim 16, wherein an outer diameter of the female and male couplings ranges between 5 and 20 centimeters, and wherein each camber radius is greater than one meter (Rindeskar page 6 line 18-20).
Rindeskar discloses in regards to claim 18. A drill string comprising a drill rod according to claim 16 (Rindeskar page 3 line 26 a rod body).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas D Wlodarski whose telephone number is (571)272-3970. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm.
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/NICHOLAS D WLODARSKI/Examiner, Art Unit 3672
/Nicole Coy/Supervisory Patent Examiner, Art Unit 3672