3DETAILED CORRESPONDENCE
This Action is in response to the applicant's reply of 1/30/2026. In view of the applicant's amendments, the previously presented objections to the drawings, claims and specification, as well as all previously presented 35 USC 112(b) rejections, have been withdrawn. In view of the terminal disclaimer approval, all non-statutory double patenting rejections have been withdrawn.
Claims 1 and 3-23 are pending. Claim 2 is canceled
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 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.
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. Such claim limitation(s) is/are: “artificial lift device” in claim 15. The only corresponding structure described in the specification as performing the claimed function, and equivalents thereof, is the dart plunger(s) depicted in Figs. 1-10, i.e., a dart plunger having a clutch that tends to keep the dart in its open or closed position, as discussed at application paragraph [0043].
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.
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.
Specification
The disclosure is objected to because there is a lack of antecedent basis in the specification for an artificial lift device, a non-tapered upper section, a tapered mid-section, and a tapered lower section. To overcome this objection, it is suggested that claim 15 be included in the detailed description in paragraph form. Correction is required. See MPEP § 608.01(b).
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 15-23 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.
Claim 15 This claim is incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: the structure interfacing with the inside diameter. The examiner has assumed the interface is between a dart and the inside diameter. Claims 16-23 depend from claim 15.
Allowable Subject Matter
Claims 1 and 3-14 are allowed.
Subject to the foregoing objections and rejections, claims 15-23 are allowable.
The following is a statement of reasons for the indication of allowable subject matter: The limitations of claims 1 and 15 were not located in one reference, or a reasonable combination of references, particularly with regard to the slotted bottom-surface requirement, the Boyd kerfs extending first through the lower portion and then into the upper portion (claim 1), and the requirement for a clutch having a non-tapered upper section, a tapered mid-section, and a slotted tapered lower section, the clutch inside diameter creating a frictional interface. Claims 3-14 depend from claim 1 and claims 16-23 depend claim 15.
Also, Roycroft et al. (US20160215600) discloses a c-clip clutch 430 for a dart plunger [Fig. 4; para. 0009] that does not have a slot-free top surface, Boyd et al. (US20160245417) discloses a bypass plunger clutch 98 that is not one-piece [Fig. 12], Boyd et al. (US9869401) discloses a bypass plunger clutch 40 that is not one-piece [Figs. 4-7], Boyd et al. (US20170058652) discloses a bypass plunger clutch 40 that is not one-piece [Figs. 2-4], Williams et al. (US20160238002) discloses a bypass plunger clutch 40 that is not one-piece [Figs. 5-8], and Jeffries et al. (US20140116714) discloses a bypass plunger clutch 70,130 that is not one-piece [Figs. 5-9], none of these references having the required surfaces of claim 1, nor the required sections of claim 15.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE STERLING GRAY whose telephone number is (313)446-4820. The examiner can normally be reached 7-4 Eastern - M-F.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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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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/GEORGE S GRAY/ Primary Examiner, Art Unit 3676