DETAILED ACTION
The amendment filed 3/11/2026 has been entered.
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 remarks indicate that the obviousness-type double patenting rejections under USP 10,598,258 and 11,959,533 are traversed, but the response includes no substantial argument toward these rejections and therefore those rejections are repeated herein.
Applicant argues that the 102 rejections under Yi should be withdrawn since Yi does not state that the input gears (41) and the output gear (51) are part of a planetary gear train. This argument is not persuasive because Yi clearly disclose those components and as claimed (in claim 21) the planetary gear train need only comprise a plurality of input hears and a final drive gear. Therefore Yi remains considered to meet the claims as applied below. Applicant also argues that since the technical reports submitted (various reports submitted on IDS) do not find that Yi discloses a planetary gear train, then Yi can not disclose such. Although these submissions have been reviewed by the examiner, they appear applicable to a different interpretation of Yi, which also includes a different claim interpretation for “a planetary gear train”, and therefore these arguments are not found persuasive as relevant to the claims at hand. In this case, as claimed in claim 21, “a planetary gear train” is only recited as comprising input gears and an output gear, both of which are clearly evident to one of ordinary skill in the art as disclosed by Yi and noted in the rejection below. Applicant also argues that the examiner’s use of “inherency” that the final drive gear of Yi is connected to the pump crankshaft is insufficient since Yi says nothing about “how” the gear is connected. This argument is not persuasive because the examiner maintains that the final drive gear of Yi must be connected to the pump crankshaft for operation of the device and further, the “how” as argued by applicant is not relevant, since it is not present in the claim. The examiner notes that claim 29 which includes further structure defining the planetary gear train, is not rejected under Yi.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “means for transferring power” in claim 47, where the sufficient structure is also recited in claim 47 as “a planetary gear train”.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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.
Claim(s) 21, 23-24, 28, 31, 33-34, 38, 40-41, and 47 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Yi (CN 103742382; as submitted on IDS filed 1/17/2025, also see attached translation).
In regard to claim 21, Yi discloses a hydraulic fracturing system for fracturing a subterranean formation, the hydraulic fracturing system comprising: a multi-plunger hydraulic fracturing pump (5, as in fig 2) configured to pump fluid to a wellbore associated with the subterranean formation, the multi-plunger hydraulic fracturing pump comprising a pump crankshaft (inherent to pump where crankshaft runs through 5, as in paragraph 43 see translation); a plurality of motors (4) positioned to power the multi-plunger hydraulic fracturing pump; and a planetary gear train positioned to translate power from the plurality of motors to the pump crankshaft of the multi-plunger hydraulic fracturing pump (as including 41/51), the planetary gear train comprising: a plurality of input pinion gears (41) connected to the plurality of motors; and a final drive gear (51) connected to the pump crankshaft of the multi-plunger hydraulic fracturing pump (as inherently connected to power the system to perform as intended).
In regard to claim 23, Yi discloses wherein the multi-plunger hydraulic fracturing pump has three plungers (see annotated figure below where 5 plungers are shown with pump).
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In regard to claim 24, Yi discloses wherein the multi-plunger hydraulic fracturing pump has five plungers (see annotated figure above where 5 plungers are shown with 5).
In regard to claim 28, Yi discloses wherein the planetary gear train comprises a main gear (51) that contacts each of the plurality of input pinion gears (as in fig 2), wherein the main gear comprises external gear teeth that mate with external gear teeth of the plurality of input pinion gears (as shown in fig 2).
In regard to claim 31, Yi discloses a hydraulic fracturing method comprising: by operation of a multi-plunger hydraulic fracturing pump (5) of a hydraulic fracturing system, pumping fluid to a wellbore associated with a subterranean formation, the multi- plunger hydraulic fracturing pump comprising a pump crankshaft (inherent to pump; also see paragraph 43); powering the multi-plunger hydraulic fracturing pump with a plurality of motors (4); and translating power from the plurality of motors to the multi-plunger hydraulic fracturing pump through a planetary gear train (41/51), wherein translating power through the planetary gear train comprises translating power through: a plurality of input pinion gears (41) that are driven by the plurality of motors; and a final drive gear (51) that drives the pump crankshaft.
In regard to claim 33, Yi discloses wherein the multi-plunger hydraulic fracturing pump has three plungers (see annotated figure above).
In regard to claim 34, Yi discloses wherein the multi-plunger hydraulic fracturing pump has five plungers (see annotated figure above).
In regard to claim 38, Yi discloses wherein translating power through the planetary gear train comprises translating power through a main gear (51) that contacts each of the plurality of input pinion gears, wherein the main gear comprises external gear teeth that mate with external gear teeth of the plurality of input pinion gears (as in fig 2).
In regard to claim 40, Yi discloses comprising limiting a maximum pump speed of the multi-plunger hydraulic fracturing pump, wherein the maximum pump speed is limited by a selection of a gear ratio of the planetary gear train and a speed at which the plurality of motors operate (inherent that gear selection would limit speed).
In regard to claim 41, Yi discloses wherein the maximum pump speed correlates with a critical plunger speed of the multi-plunger hydraulic fracturing pump (inherent that a “critical plunger speed” may be defined as correlating to the maximum pump speed).
In regard to claim 47 Yi discloses a hydraulic fracturing system for fracturing a subterranean formation, the hydraulic fracturing system comprising: a multi-plunger hydraulic fracturing pump (5) that pumps fluid to a wellbore associated with the subterranean formation; a plurality of motors (4) that operate in parallel to power the multi-plunger hydraulic fracturing pump; and means for transferring power from the plurality of motors to the multi-plunger hydraulic fracturing pump, the means for transferring power comprising a planetary gear train (41/51 as in fig 2).
Claim Rejections - 35 USC § 103
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.
Claim(s) 22, and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yi in view of Coli et al. (US 2012/0255734).
In regard to claim 22, Yi discloses all the limitations of this claim, as applied to claim 21 above, and including each of the plurality of input pinion gears is connected to a respective one of the plurality of motors (as in fig 2), but does not disclose wherein the plurality of motors comprises a plurality of electric motors.
Coli et al. et al. disclose a system wherein motors are positioned to translate power to a hydraulic fracturing pump, wherein the motors are electric (paragraph 9, 11, 13, etc). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the motors of Yi as electric motors, as taught by Coli et al. since choosing from a finite number of identified predictable solutions (for motor type) with a reasonable expectation of success is considered obvious to one of ordinary skill.
In regard to claim 32, Yi discloses all the limitations of this claim, as applied to claim 31 above, and including each of the plurality of input pinion gears is connected to a respective one of the plurality of motors (as in fig 2), but does not disclose wherein the plurality of motors comprises a plurality of electric motors.
Coli et al. disclose a system wherein motors are positioned to translate power to a hydraulic fracturing pump, wherein the motors are electric (paragraph 9, 11, 13, etc). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the motors of Yi as electric motors, as taught by Coli et al. since choosing from a finite number of identified predictable solutions (for motor type) with a reasonable expectation of success is considered obvious to one of ordinary skill.
Claim(s) 25-27, 35-37 and 49-50 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yi in view of Norris et al. (US 2017/0114625).
In regard to claim 25, Yi discloses all the limitations of this claim as applied to claim 21 above, except for wherein the multi-plunger hydraulic fracturing pump has seven plungers. Norris et al. teach a system wherein a multi-plunger pump may have any number of plungers (paragraph 38). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the system of Yi, with seven plungers, as taught by Norris et al. in order to increase capacity of the system, as suitable to the operation (as in paragraph 38 of Norris et al.).
In regard to claim 26, Yi discloses all the limitations of this claim as applied to claim 21 above, except for wherein the multi-plunger hydraulic fracturing pump has nine plungers. Norris et al. teach a system wherein a multi-plunger pump may have any number of plungers (paragraph 38). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the system of Yi with nine plungers, as taught by Norris et al. in order to increase capacity of the system, as suitable to the operation (as in paragraph 38 of Norris et al.).
In regard to claim 27, Yi discloses all the limitations of this claim as applied to claim 21 above, except for a variable frequency drive. Norris et al. disclose a system comprising a variable frequency drive (paragraph 55) configured to control a pump rotational speed of the multi-plunger hydraulic fracturing pump (as varying operation of the pump as in paragraph 55). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the system of Yi, with a variable frequency drive, as taught by Norris et al. in order to control operation of the pump (as in paragraph 55 of Norris et al.).
In regard to claim 35, Yi discloses all the limitations of this claim, as applied to claim 31 above, except for wherein the multi-plunger hydraulic fracturing pump has seven plungers. Norris et al. teach a method wherein a multi-plunger pump may have any number of plungers (paragraph 38). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the method of Yi, with seven plungers, as taught by Norris et al. in order to increase capacity of the system, as suitable to the operation (as in paragraph 38 of Norris et al.).
In regard to claim 36, Yi discloses all the limitations of this claim, as applied to claim 31 above, except for wherein the multi-plunger hydraulic fracturing pump has nine plungers. Norris et al. teach a method wherein a multi-plunger pump may have any number of plungers (paragraph 38). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the method of Yi, with nine plungers, as taught by Norris et al. in order to increase capacity of the system, as suitable to the operation (as in paragraph 38 of Norris et al.).
In regard to claim 37, Yi disclose all the limitations of this claim as applied to claim 31 above, except for a variable frequency drive. Norris et al. disclose a method comprising a variable frequency drive (paragraph 55) configured to control a pump rotational speed of the multi-plunger hydraulic fracturing pump (as varying operation of the pump as in paragraph 55). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the method of Yi with a variable frequency drive, as taught by Norris et al. in order to control operation of the pump (as in paragraph 55 of Norris et al.).
In regard to claim 49, Yi discloses all the limitations of this claim, as applied to claim 47 above, except for wherein the multi-plunger hydraulic fracturing pump has seven plungers. Norris et al. teach a method wherein a multi-plunger pump may have any number of plungers (paragraph 38). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the method of Yi with seven plungers, as taught by Norris et al. in order to increase capacity of the system, as suitable to the operation (as in paragraph 38 of Norris et al.).
In regard to claim 50, Yi discloses all the limitations of this claim, as applied to claim 47 above, except for wherein the multi-plunger hydraulic fracturing pump has nine plungers. Norris et al. teach a method wherein a multi-plunger pump may have any number of plungers (paragraph 38). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the method of Yi with nine plungers, as taught by Norris et al. in order to increase capacity of the system, as suitable to the operation (as in paragraph 38 of Norris et al.).
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 21-27, 31-37, 40-42, 47, 49 and 50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,598,258. Although the claims at issue are not identical, they are not patentably distinct from each other because, for example, claim 21 is generic to all that is recited in claim 1 of the patent. Although ‘258 only recites “a planetary gear train” such a train would inherently contain at least a “final drive gear” as claimed and the “multi-plunger hydraulic fracturing pump” as in claim 1 of ‘258 inherently contains a crankshaft connected to the planetary gear train. Therefore claim 1 of ‘258 fully encompasses the subject matter of claim 21 and therefore anticipates claim 21. Similarly claims 22-27, 31-37, 40-42, 47, 49 and 50 are anticipated by the additional subject matter recited in the claims of ‘258.
Claims 21-50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,959,533. 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 21 is generic to all that is recited in claim 1 of U.S. Patent No. 11,959,533. In other words, claim 1 of ‘533 fully encompasses the subject matter of claim 21 and therefore anticipates claim 21. Since claim 21 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 21. 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 21 is anticipated (fully encompassed) by claim 1 of the patent, claim 21 is not patentably distinct from claim 1, regardless of any additional subject matter present in claim 1. Instant claims 22-50 are also similarly encompassed by claims 1-25 of the patent and are considered as obvious over the claims of the patent.
Conclusion
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 D Andrews whose telephone number is (571)272-6558. The examiner can normally be reached M-F, 7-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at 571-272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D. ANDREWS/Primary Examiner, Art Unit 3672
3/23/2026