DETAILED ACTION
Election/Restrictions
Regarding the initial 11/6/2025 restriction, applicant’s election without traverse of the Group I reciprocating piston assembly of in the reply filed on 1/5/2026 remains acknowledged.
Regarding the additional 2/25/2026 restriction (necessitated by subsequent 1/5/2026 amendment), applicant's election with traverse of intermediate product species/invention of Group I-A in the reply filed on 4/17/2026 is acknowledged. The traversal is on the grounds that: firstly, Groups I-A and I-B are not distinctly mutually exclusive from one another being that claim 1 does not expressly recite “plastic” and thus cannot be used as a plastic assembly; and secondly that a search of both inventions together would not be unduly burdensome. This is not persuasive. Claim 1 fails to set forth any particular material and thus the scope of claim 1 broadly encompasses/allows any number of materials such that claim 1 does not forbid use as a plastic assembly (i.e., the lack of recitation of “plastic” does not serve as a negative limitation forbidding plastic) and thus can be used as such. For example, US6719115 discloses a plastic piston (425) that reads on the piston of elected claim 1 but does not read on the steel piston surface of non-elected claim 21. Note that mutual exclusivity does not require a complete lack of any commonality between species/inventions but rather that a first has a feature lacking from a second, while the second has a feature not in the first. In the instant case, claim 1 of invention I-A lacks numerous particulars that are expressly required by claim 21 of invention I-B (e.g., “aluminum”, “steel”, etc.). Conversely, claim 21 of invention I-B lacks numerous particulars that are expressly required by claim 1 of invention I-A (e.g., “configured to contain a hydraulic fluid”, “configured to cause displacement of hydraulic fluid”, etc.) Applicant has failed to “submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case” as is applicant’s burden in a proper traverse of patentable distinctness in accordance with MPEP 809.02(a) and form paragraph 8.01. There is a serious burden to examining multiple species/inventions together since the mutually exclusive features result in differing scopes of protection that require separate search queries. Further note that while different searches are an indicator of likely burden, the burden of examination is not limited solely to search but rather includes numerous other activities, the burden of which multiplies with the number of inventions/species under examination. Lastly, the examiner notes that the search, examination and preparation of the current Office Action for only the elected invention/species has depleted the time available for a single application such that any additional search/examination for the non-elected invention/species would have been unduly burdensome as a factual matter.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-15 remain canceled by applicant.
Claims 16-20 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to the nonelected tool invention of group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/5/2026.
Claims 21-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected final product species/invention group I-B, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 4/17/2026.
Claim Rejections - 35 USC § 112
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.
Claims 3, 5 and 8 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 3 is unclear as to how the limitation “bore is constructed from aluminum” is to limit the claim. The commonly accepted meaning of “bore” is an empty opening in an element rather than the material of the element itself. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). Accordingly, for purposes of applying the prior art against the claims elsewhere below, the examiner will interpret the limitation to mean --the body that has the bore is constructed from aluminum--.
Claim 5 recites “an inner surface of the passageway is at least partially coated with the friction reducing material” which is unclear as to how the previously recited friction reducing material (on piston or in bore) can be “the” same element/coating that is on the inner surface of the sleeve passageway. Perhaps applicant means to claim distinct coatings of common type on the various elements, or perhaps applicant interprets the bore and passageway as different labels for the same element. If the latter, note that MPEP 2173.05(o) states "where a claim directed to a device can be read to include the same element twice, the claim may be indefinite. Ix parte Kristensen, 10 USPQ2d 1701 (Bd. Pat. App. & Inter. 1989)".
Claim 8 recites “the friction reducing material” in a manner that creates an unclear double inclusion of elements, similar to claim 5 above.
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.
The prior art structures bolded below are presumed to be inherently capable of meeting the claimed functions/properties italicized below in accordance with MPEP §2112.01(I) and MPEP §2114, which state that where the prior art structure is substantially identical to the claimed structure, the PTO may presume claimed functions/properties to be inherently capable thereto, thus presenting a prima facie case and properly shifting the burden to applicant to obtain/test the prior art and provide evidence to the contrary.
Claims 1, 2, 4-7, 9 and 10 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by US 6719115.
Claim 1. A reciprocating assembly (figures 7 and/or 8) for driving a working portion of a tool, the reciprocating assembly comprising: a body (410 and/or 430) having a bore (bore in 410/430 receiving piston 425) configured to contain a hydraulic fluid; and a piston (425) received within the bore and configured to move within the bore in a reciprocating motion between an extended position and a retracted position, wherein displacement of the piston within the bore is configured to cause displacement of hydraulic fluid when hydraulic fluid is in the bore; wherein an outer surface of the piston and/or an inner surface of the bore (inner surface of 430) at least partially coated with a friction reducing material (see col.28, ll.19-37 “diamond-like carbon”).
Claim 2. The reciprocating assembly of claim 1, wherein the friction reducing material is a diamond like carbon (DLC) coating (see col.28, ll.19-37 “diamond-like carbon”).
Claim 4. The reciprocating assembly of claim 1, further comprising a pump sleeve (430) received within the bore and including a passageway (passageway within 430), wherein the piston is at least partially received within the passageway and is configured to move within the passageway in the reciprocating motion between the extended position and the retracted position.
Claim 5 (as best understood, see 35 USC 112 rejections). The reciprocating assembly of claim 4, wherein an inner surface of the passageway is at least partially coated with the friction reducing material (see col.28, ll.19-37 “diamond-like carbon”).
Claim 6. The reciprocating assembly of claim 4, wherein the piston includes a first diameter (a first one of the different diameters of 425 as seen in fig.7) and a second diameter (a second one of the different diameters of 425 as seen in fig.7) that is smaller than the first diameter, the second diameter sized to be inserted into the passageway.
Claim 7. The reciprocating assembly of claim 1, further comprising a valve assembly (70; or aerating arrangements/valves in figs 20a-24b; or 1554 as seen in fig.29) fluidly connected to the bore, wherein the valve assembly is configured to drain the displaced hydraulic fluid from the bore.
9. (Original) The reciprocating assembly of claim 1, wherein the body is connected to a pump attachment and an oil tube is positioned within the piston and in fluid connection with the pump attachment.
10. (Original) The reciprocating assembly of claim 9, further comprising a seal disposed between the bore and the piston, wherein the seal is configured to limit hydraulic fluid from exiting the bore after entering the bore from the piston.
Claims 1-4 and 6-10 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by JP2008164097.
Claim 1. A reciprocating assembly for driving a working portion of a tool, the reciprocating assembly comprising: a body (3) having a bore (12) configured to contain a hydraulic fluid; and a piston (5) received within the bore and configured to move within the bore in a reciprocating motion between an extended position and a retracted position, wherein displacement of the piston within the bore is configured to cause displacement of hydraulic fluid when hydraulic fluid is in the bore; wherein an outer surface of the piston (outer surface of 5) and/or an inner surface of the bore at least partially coated with a friction reducing material (20).
Claim 2. The reciprocating assembly of claim 1, wherein the friction reducing material is a diamond like carbon (DLC) coating (20).
Claim 3 (as best understood, see 35 USC 112 rejections). The reciprocating assembly of claim 2, wherein the [body that has the] bore is constructed from aluminum (see English translation attached to this action, disclosing “aluminum-bronze alloy”) and the piston is constructed from steel (see English translation disclosing “steel” for the piston), the DLC coating configured to reduce abrasiveness between the aluminum and the steel.
Claim 4. The reciprocating assembly of claim 1, further comprising a pump sleeve (14) received within the bore and including a passageway (passageway within 14), wherein the piston is at least partially received within the passageway and is configured to move within the passageway in the reciprocating motion between the extended position and the retracted position.
Claim 6. The reciprocating assembly of claim 4, wherein the piston includes a first diameter (outer diameter of 5) and a second diameter (inner diameter of 5) that is smaller than the first diameter, the second diameter sized to be inserted into the passageway.
Claim 7. The reciprocating assembly of claim 1, further comprising a valve assembly (11 and/or 6) fluidly connected to the bore, wherein the valve assembly is configured to drain the displaced hydraulic fluid from the bore.
Claim 8 (as best understood, see 35 USC 112 rejections). The reciprocating assembly of claim 7, wherein the valve assembly comprises a valve (6) configured to move within the body, the valve at least partially coated with the friction reducing material (see English translation describing DLC coating for 6).
Claim 9. (Original) The reciprocating assembly of claim 1, wherein the body is connected to a pump attachment (11) and an oil tube (6) is positioned within the piston and in fluid connection with the pump attachment.
Claim 10. (Original) The reciprocating assembly of claim 9, further comprising a seal (14) disposed between the bore and the piston, wherein the seal is configured to limit hydraulic fluid from exiting the bore after entering the bore from the piston.
Conclusion
The prior art made of record on the attached PTO-892 and not relied upon above is considered pertinent to applicant's disclosure due general structural similarity thereto. Note especially US20180216593 which reads on multiple current claims, disclosing DLC coating on all elements that are in contact with the fuel (piston, valves, injector, cylinder, etc.), but is not applied formally so as to avoid unnecessary duplication of rejection in accordance with MPEP 904.03. In the interest of compact prosecution, the examiner suggests that any amendment to overcome the rejections above also be carefully drafted to avoid subsequent rejection by any and all references of record.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTOR L MACARTHUR whose telephone number is (571)272-7085.
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/VICTOR L MACARTHUR/Primary Examiner, Art Unit 3618
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