DETAILED ACTION
This communication is a first office action on the merits. All currently pending claims have been considered below. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
Figure 2, as a "cross-sectional view of an assembled view of FIG. 1" should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g).
Similarly, figures 3-5C are all expressly taught as being views of the "prior art dart plunger" of figure 1.
Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Applicant is advised that should claim 5 be found allowable, claim 17 will be objected to under 37 CFR 1.75 as being a duplicate thereof. When two claims in an application are duplicates it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Claim 17 is identical to claim 5, in both wording and dependency.
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 12-15 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 12 recites "a center point of the outside diameter of the clutch is not the same as a center point of the inside diameter of the clutch". This is discussed in ¶ 58 of the pre-grant publication with respect to present figure 14A. However, without improperly importing "radial center point" from the specification into the claim (Applicant themselves disclaim such importation in ¶ 39 of the pre-grant publication), the "center point" limitation has no definite meaning / geometric reference, and could be drawn to the longitudinal center point, for example. In other words, the "outside" and "inside diameter of the clutch" have multiple "center points".
The examiner respectfully asserts that reciting "a radial center point" adds meaningful clarity to the claim without having to improperly import such a recitation from the specification. Claims 13-15 depend from claim 12.
Claim 13. "The" is needed as the feature is already recited in parent claim 12, and "radial" is suggested as discussed for claim 12 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.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2016/0010436 (Boyd). Overlapping rejections are respectfully presented as several references read on the independent claims at their current level of broadness.
Independent claim 1. Boyd discloses a dart plunger (title, abstract), comprising:
a dart (push rod 14" - ¶ 42, figs 2 & 3) having a first position in the dart plunger (fig 2) and a second position in the dart plunger (fig 3), wherein the dart is configured in the dart plunger to move between its first and second position (transition between ibid);
a clutch retarding movement of the dart between its first and second position ("collet 60" - fig 5; "In the description of the clutch herein, the same reference number that identifies the collet 60 also identifies the clutch because the clutch (functional name) and the collet (objective name) are the same component" - ¶ 49), wherein the clutch is a one-piece unit ("The clutch itself is formed as a single component—the collet 60 having a short cylindrical body, an outside diameter, and a bore with an inside diameter" - ¶ 50) having a length, an outside diameter, and an inside diameter (inherent, fig 5), where at least a portion of the inside diameter is sized to create a frictional interface with the dart ("In operation of the clutch, the collet 60, because of the flexibility provided by its alternating kerf structure, is permitted to stretch slightly to provide the necessary tension around the first end stem 30. The resulting friction that enables the grip of the collet 60 on the first end stem 30…" - ¶ 51); and
wherein the clutch further includes a gap extending from the outside diameter to the inside diameter along the entire length of the clutch ("The kerfs 66 extend more than half the distance from one end of the collet 60 to the other end. Further, the kerfs 66 are cut from the opposite ends of the collet 60 in an alternating sequence as shown in FIGS. 5 and 6" - ¶ 5. In other words, there is no point "along the entire length of the clutch" where there is not a "kerf 66").
2. The dart plunger of claim 1 wherein the first position of the dart is an open position ([0020] FIG. 2 illustrates… an open configuration…).
3. The dart plunger of claim 2 wherein the second position of the dart is a closed position ([0021] FIG. 3 illustrates… a closed configuration…).
Claim(s) 1-4 & 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2016/0168963 (Roycroft). Overlapping rejections are respectfully presented as several references read on the independent claims at their current level of broadness.
Independent claim 1. Roycroft discloses a dart plunger (title, abstract), comprising:
a dart ("dart 220" - ¶ 26, figs 1 &2) having a first position in the dart plunger (¶ 27, also fig 8) and a second position in the dart plunger (¶ 27, also fig 6), wherein the dart is configured in the dart plunger to move between its first and second position (transition between ibid);
a clutch retarding movement of the dart between its first and second position ("As further depicted by FIG. 2, cage 210 employs clutch 230 to retard movement of dart 220 between its open and closed position" - ¶ 28), wherein the clutch is a one-piece unit ("Clutch 230 can be… either one or more c-clips and/or one or more o-rings" - ¶ 28. In other words, a single c-clip, as is encompassed by the plain language of ¶ 28) having a length, an outside diameter, and an inside diameter (all inherent as PHOSITA would recognize), where at least a portion of the inside diameter is sized to create a frictional interface with the dart ("the friction imparted by clutch 230 on the outside surface(s) of dart 220 keeps dart 220 from freely sliding between its open and closed position" - ¶28); and
wherein the clutch further includes a gap extending from the outside diameter to the inside diameter along the entire length of the clutch ("c-clip" - ¶ 28. The examiner respectfully asserts this is a reasonable interpretation under 102 of both the claims and the prior art, especially given the eventually "c-shape" limitation of dependent claim 4).
2. The dart plunger of claim 1 wherein the first position of the dart is an open position (¶ 27 & fig 8, fluid may flow through cage 210 to above the plunger).
3. The dart plunger of claim 2 wherein the second position of the dart is a closed position (¶ 27 & fig 6).
4. The dart plunger of claim 3 wherein the gap extending from the outside diameter to the inside diameter along the entire length of the clutch gives the clutch a c-shape ("c-clip" - ¶ 28).
16. The dart plunger of claim 4 wherein the inside diameter of the clutch is a variable inside diameter (the clutch elastically / resiliently expands and retracts across the diameter of the plunger, as discussed in ¶s 29, 32, 33. The strain / wear-and-tear on the clutch discussed therein is moot for the present purposes under 102. If Applicant intends claim 16 to be directed to the undulation surfaces, this is not exclusively encompassed by the broadness of the limitation).
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) 5-10, 17, & 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0168963 (Roycroft) in view of US 2016/0010436 (Boyd).
Claims 5 & 17. Roycroft discloses all the limitations of the parent claims but discuses the clutch at a high level of generality and does not discuss the inside diameter shape / surface in detail.
Boyd teaches an analogous tool (as cited above), and further discloses the inside diameter of the clutch ("collet / clutch 60") is shaped so the entire inside diameter does not create the same frictional interface with the dart ("The resulting friction that enables the grip of the collet 60 on the first end stem 30 may be enhanced by a surface finish 80 applied to the first end stem 30 and the inside bore 68 of the collet 60. The surface finish of the inside bore 68 may be provided by circumferential grooves, knurling, etching, or threads as is well understood in the art. A preferred surface is the same as described for FIG. 813 [sic] herein" - ¶ 51. Figs 5 & 6 clearly show said "grooves, knurling, etching, or threads as is well understood in the art").
Therefore it would have been obvious to PHOSITA at the time of filing to use the "grooves, knurling, etching, or threads as is well understood in the art" on "the inside bore 68" taught by Boyd (¶ 51) on the inside bore of the "c-clip" clutch taught by Roycroft (¶ 28). Beyond the above emphasized language, which the examiner respectfully asserts reasonably shows obviousness ("…as is well understood in the art"), this allows the operator to fine tune, so-to-speak, the frictional engagement of the clutch (¶ 28). While this is Applicant's motivation as well, it is not impermissible hindsight when the motivation is found in the prior art. Finally, the examiner respectfully notes that while Boyd does not specifically say this "is shaped so the entire inside diameter does not create the same frictional interference", this is a functional recitation of a the result of the taught structure, as best evidenced by dependent claims 6+ below.
6. The dart plunger of claim 5 wherein the inside diameter of the clutch includes an undulating surface (Boyd: "The surface finish of the inside bore 68 may be provided by circumferential grooves, knurling, etching, or threads as is well understood in the art" - ¶ 51) so the entire inside diameter does not create the same frictional interface with the dart (as discussed for claim 5 above).
7 & 8. The dart plunger of claim 6 wherein the inside diameter of the clutch includes at least one groove (claim 7) / at least two grooves (claim 8; Boyd: "The surface finish of the inside bore 68 may be provided by circumferential grooves, knurling, etching, or threads as is well understood in the art" - ¶ 51; many plurality clearly shown in figs 5 & 6).
9. The dart plunger of claim 8 wherein the inside diameter of the clutch includes a surface between the at least two grooves for creating at least a portion of the frictional interface with the dart (ibid; the entire inside surface is "for" this at the level of broadness currently recited).
10. The dart plunger of claim 9 wherein the surface between the at least two grooves of the clutch has a radial curvature substantially equal to a radius of the dart (fig 5; it is intended to flexibly / resiliently engage the dart; ¶ 51).
Claim 18 is a combination of claims 5 & 6, which would have been obvious in view of Boyd as discussed above, respectfully not repeated again here.
Claim(s) 5-11, 17, & 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0168963 (Roycroft) in view of US 9,689,242 (Kuykendall).
Claims 5 & 17. Roycroft discloses all the limitations of the parent claims but discuses the clutch at a high level of generality and does not discuss the inside diameter shape / surface in detail.
Kuykendall teaches a dart plunger (title, abstract) with a clutch ("clutch assembly 70" - fig 5 & the last full ¶ of col 9; see also fig 14B) the inside diameter of the clutch is shaped so the entire inside diameter does not create the same frictional interface with the dart (via "the series of grooves 80 formed on the inner surfaces of the split bobbin 72" - fig 5 & the last full ¶ of col 9; see also fig 14B).
Therefore it would have been obvious to PHOSITA at the time of filing to use the "series of grooves" taught by Kuykendall (last full ¶ of col 9) on the inside bore of the "c-clip" clutch taught by Roycroft (¶ 28). These "provide passages for fluids to flush particles of sand away from the contact area of the bobbin 72 with the outer surface of the valve stem 102" (last full ¶ of col 9). The examiner also respectfully notes that while Kuykendall does not specifically say this "is shaped so the entire inside diameter does not create the same frictional interference", this is a functional recitation of a the result of the taught structure, as best evidenced by dependent claims 6+ below.
6. The dart plunger of claim 5 wherein the inside diameter of the clutch includes an undulating surface (Kuykendall: formed by "grooves 80") so the entire inside diameter does not create the same frictional interface with the dart (as discussed for claim 5 above).
7 & 8. The dart plunger of claim 6 wherein the inside diameter of the clutch includes at least one groove (claim 7) / at least two grooves (claim 8; Kuykendall: "In the illustrated example, four such grooves 80 are formed in each bobbin segment 72A, 72B, although the number may be varied, generally between two and six grooves 80 in each segment 72A, 72B may be practical" - last full ¶ of col 9).
9. The dart plunger of claim 8 wherein the inside diameter of the clutch includes a surface between the at least two grooves for creating at least a portion of the frictional interface with the dart (ibid; the entire inside surface is "for" this at the level of broadness currently recited).
10. The dart plunger of claim 9 wherein the surface between the at least two grooves of the clutch has a radial curvature substantially equal to a radius of the dart (Kuykendall fig 2; it is intended to flexibly / resiliently engage the dart).
11. The dart plunger of claim 10 wherein at least one of the grooves of the clutch ("the series of grooves 80 formed on the inner surfaces of the split bobbin 72" - ibid), extends along the entire length of the clutch (fig 14B).
Claim 18 is a combination of claims 5 & 6, which would have been obvious in view of Boyd as discussed above, respectfully not repeated again here.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, & 5 of U.S. Patent No. 12,091,939. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are only broader than the issued claims. In other words, every feature of the present claims is found in the issued claims.
Present claim 1 is only broader than issued claim 5, which depends from issued claims 1-3. While the phrasing and order is different, each feature of claim 1 is found in one of claims 1-3 & 5. Under the same logic that a narrower species will always anticipate the broader genus (MPEP §2131.02, subsection I), claims which are only narrower (the issued claims) can not be held patentably distinct from claims which are only broader (the present claims).
Allowable Subject Matter
Claims 12-15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The examiner respectfully notes the objection to claim 12 above, and the suggested amendments thereto. The prior art does not teach nor suggest a dart plunger clutch with "a [radial] center point of the outside diameter of the clutch is not the same as a [radial] center point of the inside diameter of the clutch" (i.e. clutch 130 has one sidewall is thicker than the other, as shown in present figures 10, 13, and 14A, & ¶ 58 of the pre-grant publication).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blake Michener whose telephone number is (571)270-5736. The examiner can normally be reached Approximately 9:00am to 6:00pm CT.
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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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/BLAKE MICHENER/
Primary Examiner, Art Unit 3676