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 .
Remarks
This communication is in response to the reply received on 09/19/2025.
The reply amended claim 13.
Claims 1-20 are currently pending and have been examined.
Applicant’s remarks regarding the 35 USC 102 rejection are well taken. The rejection is withdrawn.
Applicant’s traversal of the 35 USC 112 rejection is not persuasive. The rejection is maintained.
The Office Action erroneously indicated that the 10/31/2024 IDS (10 pages), the 01/29/2024 IDS (8 pages), and the 05/02/2025 IDS (5 pages) were not considered. This is corrected below.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 10/31/2024 (10 pages), 01/29/2024 (8 pages), and 05/02/2025 (5 pages) are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
The information disclosure statement (IDS) submitted on 09/25/2025 was filed after the mailing date of the Office Action on 06/20/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings filed 05/31/2024 are acceptable.
Claim Interpretation Under 35 USC § 112
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
The following is a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f): "mechanism for," "module for," "device for," "unit for," "component for," "element for," "member for," "apparatus for," "machine for," or "system for." See MPEP 2181.I.A.
Such claim limitation(s) in the instant application is/are:
“an attachment system, configured to removably couple the removable portion to the mounted portion” in claim 7.
The presumption that 35 U.S.C. 112(f) does not apply to a claim limitation that does not use the term "means" is overcome when "the claim term fails to 'recite sufficiently definite structure' or else recites 'function without reciting sufficient structure for performing that function.' The following three prong analysis is used:
a) Does the claim limitation use the term "means" or "step" or a term used as a substitute for "means" that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function?
Yes. The term “system” is considered a non-structural term having no specific structural meaning = generic placeholder.
b) Is the generic placeholder is modified by functional language, typically, but not always linked by the transition word "for" (e.g., "means for") or another linking word or phrase, such as "configured to" or "so that"?
Yes. The generic placeholder is modified by functional language “removably couple the removable portion to the mounted portion”.
c) Is the term "means" or "step" or the generic placeholder modified by sufficient structure, material, or acts for performing the claimed function?
No. Claim 7 does not recite sufficient structure, material, or acts for performing the claimed function.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
The “an attachment system, configured to removably couple the removable portion to the mounted portion” in claim 7 is interpreted per the specification as a common threaded fastener.
[0031] The seal assembly 140 can be configured for sealing a power input shaft 108 of a progressive cavity pump 112. The seal assembly 140 can include a seal housing 404, which can include a mounted portion 406 and a removable portion 408, and an attachment system 414.
If applicant does not intend 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 avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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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 11-12 and 18 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 pre-AIA the applicant regards as the invention.
As to claims 11 and 18, the seal lacks antecedent basis. See the rejection of claims 1 and 17.
Claim 12 is rejected via dependency.
NOTE: any prior art rejection provided below is made as best understood in view of the 35 U.S.C. 112(b) issues above.
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 of this title, 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.
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.
Claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 17, 19 and 20, are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019154571 A1, hereinafter D1, in view of US 2010/0243233, hereinafter D2.
As to claim 1.
D1 discloses a seal assembly (seal 13 in the figures) for sealing a power input shaft (drive output shaft 8, fig. 4) of a progressive cavity pump (in its basic structure a stator 1, a rotor 2 rotating in the stator 1 and a drive 3 for the rotor 2), the seal assembly (seal 13) comprising:
a seal housing (seal housing 18) arranged around the power input shaft, the seal housing (seal housing 18) including:
a mounted portion (18a), mounted to the progressive cavity pump (in its basic a housing 4 with a stator 1, a rotor 2 rotating in the stator 1 and a drive 3 for the rotor 2 with 18a mounted to 4);
a removable portion (18b), removably coupled (compare figs. 3 and 4) to the mounted portion (18a), configured to (note the phrase “configured to” is typically used to connect structure to a function, similar to the word “for.” “Configured to” (for) usually means the structure can perform the function with no additional modification therefore this recitation is interpreted as a functional recitation. While features of an apparatus may be recited either structurally or functionally; apparatus claims cover what a device is, not what a device does. MPEP 2114) apply a compression force to a seal within the seal assembly (all functional implications have been carefully considered but are deemed not to impose any patentably distinguishing structure over that disclosed by the prior art reference. The function of apply a compression force to a seal within the seal assembly is an inherent characteristic of the prior art seal arrangement because it shares the same structure; note: the recitation of a seal is not a positive recitation. A claim is only limited by positively recited elements. MPEP 2115); and
a sealing element (sealing ring 25), configured to (note the phrase “configured to” is typically used to connect structure to a function, similar to the word “for.” “Configured to” (for) usually means the structure can perform the function with no additional modification therefore this recitation is interpreted as a functional recitation. While features of an apparatus may be recited either structurally or functionally; apparatus claims cover what a device is, not what a device does. MPEP 2114; all functional implications have been carefully considered but are deemed not to impose any patentably distinguishing structure over that disclosed by the prior art reference. The function of seal an interface is an inherent characteristic of the prior art sealing ring 25 because it shares the same structure) seal an interface (referring to the interface between 18b and 20);
wherein the seal housing (seal housing 18) is configured so that a portion of the mounted portion (18a) is in direct contact (fig. 2) with a portion of the removable portion (18b).
D1 does not disclose the sealing element seals an interface between the mounted portion (18a) and the removable portion (18b) but instead provides a seal between the removable portion (18b) and a counter ring (20).
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D2 is in a related field of sealing around a rotating rod and teaches a removable portion (seal support 64) configures to seal an interface (via seal 65) compressed between the removable portion and a mounted portion (housing 24).
Accordingly, it would have been obvious to one of ordinary skill in the art before the claimed invention was effectively filed to have combined D2 (directed to shaft sealing) and D1 (directed to a progressive cavity pump rotor seal) and arrived at a seal including a removable portion, removably coupled to the mounted portion, configured to apply a compression force to a seal within the seal assembly. One of ordinary skill in the art would have been motivated to make such a combination because all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods (e.g. selecting a removable portion including a seal [0016]) with a reasonable expectation of success and with no change in their respective functions and one of ordinary skill in the art would have recognized that the results of the combination were predictable (e.g. improved sealing between the fixed and removable portions [0016]).
As to claim 2.
D1 discloses a first radial alignment feature (hole for fastener, shown but not numbered) on the mounted portion (18a); and a second radial alignment feature (a corresponding hole for fastener) on the removable portion (18b), wherein the first radial alignment feature (hole for fastener, shown but not numbered) corresponds to the second radial alignment feature (fig. 3), wherein the radial alignment features are configured to (note the phrase “configured to” is typically used to connect structure to a function, similar to the word “for.” “Configured to” (for) usually means the structure can perform the function with no additional modification therefore this recitation is interpreted as a functional recitation. While features of an apparatus may be recited either structurally or functionally; apparatus claims cover what a device is, not what a device does. MPEP 2114; all functional implications have been carefully considered but are deemed not to impose any patentably distinguishing structure over that disclosed by the prior art reference. The function of providing radial alignment is an inherent characteristic of the prior art arrangement because alignment of the holes, i.e. radial alignment, is necessary for fastener installation) radially align (as in fig. 3) the removable portion (18b) with the mounted portion (18a).
As to claim 3.
D1 discloses one of the first radial alignment feature or the second radial alignment feature (holes) includes a radially outward facing surface (surfaces of 18a, 18b defining holes);
another one of the first radial alignment feature or the second radial alignment feature includes a radially inward facing surface (surfaces of 18a, 18b defining holes); and
the radially inward facing surface is configured to bear on the radially outward facing surface (when assembled as in fig. 2) to radially align the removable portion (18b) with the mounted portion (18a).
As to claim 4.
D1 discloses the radially outward facing surface is included on a raised lip; and the radially inward facing surface is included on a channel (see annotated figure 3).
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As to claim 5.
D1 discloses the mounted portion (18a) and the removable portion (18b) are in direct contact on both sides of the channel (fig. 2).
As to claim 6.
D1 discloses an O-ring (sealing ring 25), positioned in the channel (fig. 4), wherein the sealing element includes the O-ring (fig. 4).
As to claim 7.
D1 discloses an attachment system (fig. 4 shown but not numbered), configured to removably couple the removable portion (18b) to the mounted portion (18a), wherein the direct contact between the mounted portion (18a) and the removable portion (18b) controls a longitudinal position and an angular axial alignment of the removable portion (18b) to the mounted portion (18a).
As to claim 8.
D1 discloses wherein the direct contact between the mounted portion (18a) and the removable portion (18b) controls the compression of the sealing element (as in fig. 2 where an assembled state is shown).
As to claim 9.
D1 discloses wherein the mounted portion (18a) is mounted to an intake chamber (intake 6 to “chamber” defined by 4) of the progressive cavity pump ( in its basic structure a stator 1, a rotor 2 rotating in the stator 1 and a drive 3 for the rotor 2).
As to claim 10.
D1 discloses wherein the seal is configured to (note the phrase “configured to” is typically used to connect structure to a function, similar to the word “for.” “Configured to” (for) usually means the structure can perform the function with no additional modification therefore this recitation is interpreted as a functional recitation. While features of an apparatus may be recited either structurally or functionally; apparatus claims cover what a device is, not what a device does. MPEP 2114. All functional implications have been carefully considered but are deemed not to impose any patentably distinguishing structure over that disclosed by the prior art reference) prevent a material within the intake chamber from flowing out of the intake chamber along the power input shaft (the claimed function of is an inherent characteristic of the prior art seal because seals prevent undesired flow).
As to claim 11.
D1 discloses further comprising the seal (see 35 U.S.C. 112 rejection supra), wherein the seal includes a single spring mechanical seal (seal 19 has a single spring element 21).
As to claim 12.
D1 discloses wherein the removable portion (18b) is configured to interface with a static portion of the seal, wherein the removable portion (18b) is configured to apply a compression force to the single spring mechanical seal through the static portion, wherein the direct contact between the mounted portion (18a) and the removable portion (18b) controls the compression force on the single spring mechanical seal (seal 19 has a single spring element 21).
As to claim 17.
D1 discloses a progressive cavity pump system, comprising:
a prime mover including a prime mover shaft (drive output shaft 8);
a progressive cavity pump, including a power input shaft (connecting shaft 9); and
a seal assembly for sealing the power input shaft (connecting shaft 9) of a progressive cavity pump, the seal assembly comprising:
a seal housing (seal housing 18) arranged around the power input shaft (connecting shaft 9), the seal housing (seal housing 18) including:
a mounted portion (18a), mounted to the progressive cavity pump (in its basic a housing 4 with a stator 1, a rotor 2 rotating in the stator 1 and a drive 3 for the rotor 2 with 18a mounted to 4);
a removable portion (18b), removably coupled (compare figs. 3 and 4) to the mounted portion (18a), configured to (note the phrase “configured to” is typically used to connect structure to a function, similar to the word “for.” “Configured to” (for) usually means the structure can perform the function with no additional modification therefore this recitation is interpreted as a functional recitation. While features of an apparatus may be recited either structurally or functionally; apparatus claims cover what a device is, not what a device does. MPEP 2114) apply a compression force to a seal within the seal assembly (all functional implications have been carefully considered but are deemed not to impose any patentably distinguishing structure over that disclosed by the prior art reference. The function of apply a compression force to a seal within the seal assembly is an inherent characteristic of the prior art seal arrangement because it shares the same structure; note: the recitation of a seal is not a positive recitation. A claim is only limited by positively recited elements. MPEP 2115); and
a sealing element (sealing ring 25), configured to (referring to note the phrase “configured to” is typically used to connect structure to a function, similar to the word “for.” “Configured to” (for) usually means the structure can perform the function with no additional modification therefore this recitation is interpreted as a functional recitation. While features of an apparatus may be recited either structurally or functionally; apparatus claims cover what a device is, not what a device does. MPEP 2114; all functional implications have been carefully considered but are deemed not to impose any patentably distinguishing structure over that disclosed by the prior art reference. The function of seal an interface is an inherent characteristic of the prior art sealing ring 25 because it shares the same structure) seal an interface (referring to the interface between 18b and 20);
wherein the seal housing (seal housing 18) is configured so that a portion of the mounted portion (18a) is in direct contact with a portion of the removable portion (18b).
D1 does not disclose the sealing element seals an interface between the mounted portion (18a) and the removable portion (18b) but instead provides a seal between the removable portion (18b) and a counter ring (20).
D2 is in a related field of sealing around a rotating rod and teaches a removable portion (seal support 64) configures to seal an interface (via seal 65) compressed between the removable portion and a mounted portion (housing 24).
Accordingly, it would have been obvious to one of ordinary skill in the art before the claimed invention was effectively filed to have combined D2 (directed to shaft sealing) and D1 (directed to a progressive cavity pump rotor seal) and arrived at a seal including a removable portion, removably coupled to the mounted portion, configured to apply a compression force to a seal within the seal assembly. One of ordinary skill in the art would have been motivated to make such a combination because all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods (e.g. selecting a removable portion including a seal [0016]) with a reasonable expectation of success and with no change in their respective functions and one of ordinary skill in the art would have recognized that the results of the combination were predictable (e.g. improved sealing between the fixed and removable portions [0016]).
As to claim 19.
D1 discloses a first radial alignment feature (hole for fastener, shown but not numbered) on the mounted portion (18a); and a second radial alignment feature (a corresponding hole for fastener) on the removable portion (18b), wherein the first radial alignment feature (hole for fastener, shown but not numbered) corresponds to the second radial alignment feature (fig. 3), wherein the radial alignment features are configured to (note the phrase “configured to” is typically used to connect structure to a function, similar to the word “for.” “Configured to” (for) usually means the structure can perform the function with no additional modification therefore this recitation is interpreted as a functional recitation. While features of an apparatus may be recited either structurally or functionally; apparatus claims cover what a device is, not what a device does. MPEP 2114; all functional implications have been carefully considered but are deemed not to impose any patentably distinguishing structure over that disclosed by the prior art reference. The function of providing radial alignment is an inherent characteristic of the prior art arrangement because alignment of the holes, i.e. radial alignment, is necessary for fastener installation) radially align the removable portion (18b) with the mounted portion (18a).
As to claim 20.
D1 discloses direct contact between the mounted portion (18a) and the removable portion (18b) controls the compression of the sealing element (as in fig. 2 where an assembled state is shown).
Allowable Subject Matter
Claims 13-16 allowed.
Conclusion
The prior art made of record on the attached PTOL-892 and not relied upon is considered pertinent to applicant's disclosure as each further discloses a state of the art.
The examiner has pointed out particular references contained in the prior art of record in the body of this action for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. Applicant should consider the entire prior art as applicable as to the limitations of the claims. It is respectfully requested from the applicant, in preparing the response, to consider fully the entire reference as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or pointed out by the examiner.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to J. T. Newton, Esq. whose telephone number is (313)446-4899. The examiner can normally be reached 0700-1500 M-F.
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, Justin Mikowski can be reached on (571) 272-8525. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J. T. Newton/Primary Examiner, Art Unit 3673 12/30/2025
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