DETAILED ACTION
The amendment filed 1/22/2026 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 initially argues that the prior Office action fails to examine or mention various claims and requests that the previous finality be withdrawn. This argument is not persuasive since those claims were indeed examined previously and were indicated as rejected under non-statutory double patenting in the Office action mailed 10/29/2025. All claims currently stand rejected under non-statutory double patenting as below, but it should be noted that claims only rejected under non-statutory double patenting would be considered allowable with a filing to overcome the non-statutory double patenting (i.e. filing a terminal disclaimer).
Applicant’s arguments regarding the prior rejections of claims 27, 41, 50 and 54 are moot as those claims, as instantly amended, have overcome the prior rejections.
Applicant also argues that claims 60-76 are allowable for at least the same reasons as argued for claims 1-59, but this argument is not persuasive since, e.g. claim 60 does not include all the limitations as argued for claims 1-59.
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.
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.
Claims 1-28, 43-50 and 64-76 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.
Claims 1, 15, and 64 each recite “the center rod including a centering section […] whereby liquids in the well flow through the centering section”. However, as best understood by the examiner, the fluids do not flow “through” the centering section (as the rod is solid, as in figs 9-10), but flow “around” or “along” the centering section. Therefore, these claims are indefinite as it does not appear that the any fluids flow “through” any portion of the center rod. Claims 2-14, 16-28, 43-50 and 65-76 are indefinite as being dependent from an indefinite claim.
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) 60-62 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boyd et al. (US 2016/0245417) in view of Herrera (US 2012/0049513).
In regard to claim 60, Boyd et al. disclose a plunger assembly for removing liquids in a well, said assembly comprising: a body (42/16, as in fig 2) having a bore (52) there-through; and the body including a first terminal end and a second terminal end (as in fig 2), wherein the second terminal end includes a clutch (42) in a clutch receptacle in the bore (as in fig 2). Boyd et al. do not disclose a ramped surface sufficient to deform a clutch as the clutch crosses the ramped surface for mounting in the bore.
Herrera teaches installing a compressible element into a groove within a bore (16 into 19 as in fig 1) and teaches a ramped surface (13) sufficient to deform the element as the element crosses the ramped surface for mounting in the bore. It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the plunger of Boyd et al. with the ramped surface, as taught by Herrera in order to more easily install the clutch within the bore since combining prior art elements according to known methods to yield predictable results is considered obvious to one of ordinary skill.
In regard to claim 61, Boyd et al. disclose wherein the bore has a first inside diameter and the clutch receptacle has a second inside diameter, where the second inside diameter is greater than the first inside diameter (as in fig 2, diameter of bore where 34 is within vs diameter where 42 is located).
In regard to claim 62, Boyd et al. disclose wherein the bore includes an outlet (18) through the body, where the outlet is located between the first terminal end of the body and the second terminal end of the body (as in fig 2).
Claim(s) 63 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boyd et al. in view of Herrera as applied to claim 62 above, and further in view of Jeffries (US 9,068,443).
Boyd et al. and Herrera disclose all the limitations of this claim, as applied to claim 62 above, and Boyd et al. including a center rod (34) mounted in the bore to move between an open position and a closed position, and where in the open position flow from the well enters the bore through the first terminal end of the body and exits the bore through the outlet (as in fig 2 as open) but do not disclose in the closed position flow from the well does not enter the bore through the first terminal end of the body. Jeffries et al. disclose a plunger assembly wherein in a closed position flow from the well does not enter a bore of body through the first terminal end of the body (as in fig 2, when plunger 66 is “closed” as seating on 64, flow would not enter body 30). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the body of Boyd et al., as modified by Herrera, as two-pieces, as taught in Jeffries et al. (and thus provide in a closed position flow from the well does not enter the body as claimed) in order to provide the components of the plunger as separately replaceable as needed (without requiring replacement of entire device).
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 1-76 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-46 of copending Application No. 18/464,112 in view of Milton (US 3,090,315). ‘112 claims a center rod plunger including a body, center rod, and clutch (as in claims 1, 15, 29 and 55), but does not recite a centering section. Milton a center rod plunger wherein the center rod includes a centering section (38) whereby the centering section contacts with an inside diameter of a bore (col. 3, lines 31-33) to assist in maintaining the center rod in a more centered position and whereby liquids in the well through the centering section. It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the center rod, as claimed in ‘112, with a centering section, as taught by Milton, in order to ensure the rod reciprocates parallel to the body as intended. Claims 2-14, 16-28, 30-54 and 56-76 appear encompassed by claims 2-46 of ‘112.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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.
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, 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
3/3/2026
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