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 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.
Claim 33-34 is/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. Claim 33 recites “the first side and the second side are transverse to one another”. This is not mentioned in the specification and is considered new matter. Note that transverse is defined as “situated or extending across something” so it is not clear what the intended relationship of the sides is meant to be and since it is not described with this term in the specification, it is especially unclear and the drawings are not sufficient to explain which sides are being referred to. Note that since the claims are generically referring to various sides and claiming different configurations of which sides are being referred to (i.e. compare claim 33-34 with claim 36), and since the specification does not use the term “transverse”, it becomes unclear which sides are even being referred to in each instance. This makes for an invention which will be difficult for the public to decipher if it were to become a patent.
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 33-34 is/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 33 recites “the first side and the second side are transverse to one another”. This is not mentioned in the specification and is considered new matter. Note that transverse is defined as “situated or extending across something” so it is not clear what the intended relationship of the sides is meant to be and since it is not described with this term in the specification, it is especially unclear and the drawings are not sufficient to explain which sides are being referred to. Note that since the claims are generically referring to various sides and claiming different configurations of which sides are being referred to (i.e. compare claim 33-34 with claim 36), and since the specification does not use the term “transverse”, it becomes unclear which sides are even being referred to in each instance. This makes for an invention which will be difficult for the public to decipher if it were to become a patent. The scope is thus unclear.
Claim 34 recites “the housing has a fourth housing bore formed into a third side, opposite the second side, of the housing, and the first housing bore and the second housing bore are positioned between the first side and the second side of the housing”. This appears to be claiming an impossible geometry since claim 28 requires that a plate has bores aligned with the first and second bores of the housing (and thus the first and second bores must be parallel to each other) and the plate is fastened to the first side. And claim 34 requires the housing bores to be between first and second sides of the housing so it is unclear how a third side could be opposite the second side. It appears this third side would actually be the first side and thus the entire claim is unclear and incomprehensible.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 17, 19, 21-23, 26, 28-36 is/are rejected under 35 U.S.C. 102a1 and a2 as being anticipated by Barnett (PGPub 2017/0204852).
Re Claim 17, Barnett discloses a fluid end assembly of a hydraulic fluid pump, the fluid end assembly comprising: a housing (plurality elements 26 together; Fig. 20) having a first housing bore (at 293, Fig. 19) formed through a first side of the housing and a second housing bore (Fig. 18, bore where plunger 256 is inserted) formed through a second side, opposite the first side, of the housing (Fig. 18-19);a retainer 40 closing the first housing bore; a reciprocating element 256 extending through the second housing bore at the second side of the housing (Fig. 18); and a plate 161 coupled to the first side of the housing, the plate comprising: a first external surface abutting the housing; a second external surface opposite the first external surface; a wall extending from the first external surface to the second external surface to define a plate bore axially aligned with the first housing bore, the plate bore receiving the retainer and removably securing the retainer to close the first housing bore (Fig. 18-22; para. 127-136).
Re Claim 19, Barnett discloses the plate 161 further comprises a plurality of fastener openings, each of the plurality of fastener openings extending through the plate so that a plurality of fasteners installed in the plurality of fastener openings can extend through the plate and into the housing to fasten the plate to the housing (Fig. 19; para. 127).
Re Claim 21, Barnett discloses the first housing bore and the second housing bore are circular (Fig. 18-22; para. 127-136).
Re Claim 22, Barnett discloses the housing comprises a third housing bore formed through the first side, and the plate comprises an additional wall extending from the first external surface to the second external surface to define an additional plate bore axially aligned with the third housing bore of the housing (Fig. 19; on an adjacent element 26, Fig. 20; Fig. 18-22; para. 127-136).
Re Claim 23, Barnett discloses the plate bore and the additional plate bore are arranged side-by-side along the plate (Fig. 19, 20; para. 127-136).
Re Claim 26, Barnett discloses the retainer [is offset from the housing while positioned in the plate bore] (Fig. 19, 20; para. 127-136). The recitations noted in brackets [ ] above are considered functional language. Barnett discloses all the claimed structure of the plate assembly, which read on those of the instant invention. Therefore, the plate of Barnett is capable of performing the same desired functions as the instant invention as claimed.
Re Claim 28, Barnett discloses a fluid end assembly of a hydraulic fluid pump, the fluid end assembly comprising: a housing (plurality elements 26 together; Fig. 20) having a first housing bore 293 (Fig. 19; this bore being on a first element 26, Fig. 20) and a second housing bore 293 (Fig. 19; this bore being on an adjacent element 26, Fig. 20); a plate 161 fastened to a first side of the housing, the plate having a first plate bore aligned with the first housing bore and a second plate bore aligned with the second housing bore (Fig. 19; para. 127); a first retainer 40 (Fig. 19; on a first element 26, Fig. 20) engaging the first plate bore and closing the first housing bore; a second retainer 40 (Fig. 19; on an adjacent element 26, Fig. 20) engaging the second plate bore and closing the second housing bore; and a reciprocating element 256 extending into the housing at a second side, different from the first side, of the housing (Fig. 18-22; para. 127-136).
Re Claim 29, Barnett discloses the reciprocating element extends into the housing toward the first housing bore or the second housing bore (Fig. 19-20).
Re Claim 30, Barnett discloses the first retainer extends at least partially out of the first plate bore, and the second retainer extends at least partially out of the second plate bore (Fig. 19-20).
Re Claim 31, Barnett discloses the housing has a third housing bore, and the reciprocating element extends into the housing via the third housing bore (Fig. 18-22; para. 127-136).
Re Claim 32, Barnett discloses a packing arrangement 54 disposed in the third housing bore and surrounding the reciprocating element (Fig. 18-22; para. 136).
Re Claim 33, as best understood, Barnett discloses the first side and the second side are transverse to one another (Fig. 18-22; para. 127-136).
Re Claim 34, as best understood, Barnett discloses the housing has a fourth housing bore formed into a third side, opposite the second side, of the housing, and the first housing bore and the second housing bore are positioned between the first side and the second side of the housing (Fig. 18-22; para. 127-136).
Re Claim 35, Barnett discloses the first housing bore is an outlet bore (Fig. 18-22; para. 127-136).
Re Claim 36, Barnett discloses the first side and the second side are opposite one another (Fig. 18-22; para. 127-136).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barnett in view of Patterson (PGPub 2017/0107983).
Re Claim 18, Barnett discloses the retainer includes external threads which can threadedly engaging internal threads (Fig. 19; para. 127) but does not disclose the wall includes internal threads. However, Patterson teaches a plate 15 with a bore having internal threading and a retainer 18 with external threads (para. 21). It would be obvious to one of ordinary skill in the art to utilize internal threads on a bore wall and a retainer with external threads, as taught by Patterson, since use of internal and external threads are a well-known and effective technique for retaining components and is extremely well-known configuration in the art and it would provide extra reinforcement of the fastener.
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 17, 20, 28-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17, 19 of U.S. Patent No. 11,131,295.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims of '295 "anticipate" the broader claims of the present application. Accordingly, the claims of the present application are not patentably distinct from those in '190. Since it is clear that the more specific '295 claims encompass the claims of the present application, following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Allowable Subject Matter
Claim 20, 24-25, 27 is/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 and if double patenting rejections are overcome.
Response to Arguments
Applicant’s arguments with respect to claim(s) s 17-36 have been considered but are moot in view of the new grounds of rejection.
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 RYAN J WALTERS whose telephone number is (571)270-5429. The examiner can normally be reached M-F 9am-5pm EST.
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, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ryan J. Walters/Primary Examiner, Art Unit 3799
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