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(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 14 and 15 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 14 and 15 have the preamble “The threaded connection according to claim 12…” while claim 12 is directed to “The use according to claim 10…”. The dependent claims mix the classification of the claimed subject matter, the dependent claims of a use claim should not be use claims and not structure claims. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 3 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.
Regarding claims 3, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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)(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) 1-4 and 8-15 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Koch et al. (US 20110168286).
CLAIM 1: Koch threaded bushing (see Fig. 3) on an elongated body for a threaded connection with a threaded plug (see Fig. 3), wherein the threaded bushing (see Fig. 3) has a conical internal thread, in which adjacent flanks of the internal thread are designed as sections of two identical ellipses offset from one another (see Fig. 2, 6).
CLAIM 2: The two ellipses are standing ellipses (see Fig. 2, 6 showing standing ellipses).
CLAIM 3: A center axis of at least one of the two ellipses is arranged at an angle of 70° to 110° to the longitudinal axis of the elongated body (see claim 37).
CLAIM 4: The thread base between the adjacent flanks is designed as an envelope of the two ellipses (see Figs. 1,6).
CLAIM 8: The offset of the two ellipses is a pure translation in the direction of the longitudinal axis of the threaded bushing (see Fig. 1).
CLAIM 9: The elongated body is a rod section of a drill string for an earth drilling device or a drive element for a rod section of a drill string of an earth drilling device (see paragraph 0002).
CLAIM 10-12, 14, and 15: The use of the threaded bushing is inherent to the above structure.
CLAIM 13: The threaded plug has an external thread applied to a core, in which thread adjacent flanks of a thread of the threaded plug form sections of the same ellipse (see Fig. 3).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koch.
Koch discloses the elements of claim 1 as discussed above.
Koch fails to disclose the offset includes at least one translational displacement in the direction of the longitudinal axis of the threaded bushing, the extent of which is between 1/6 and 1/8 of the thread height; the offset includes at least one translational displacement in the direction of the longitudinal axis of the threaded bushing, the extent of which is between 1/37 and 1/27 of the distance between two adjacent thread bases; or the offset includes at least one translational displacement in the direction of the longitudinal axis of the threaded bushing, the extent of which is between 1/10 and 2/10 of the quotient of the major axis and minor axis of the identical ellipses.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Koch to have the described dimensions as routine optimization of the thread to achieve the desired coupling between the bushing and plug as the dimensions of the offset would be results effective variables that control the strength of the connections.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited art teaches threaded connections similar to the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK F LAMBE whose telephone number is (571)270-1932. The examiner can normally be reached M-Th 10-4.
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, Tara Schimpf can be reached at (571)270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK F LAMBE/Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676
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