DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/26/2026 has been entered. 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 Amendment
The amendments to claim 19 are respectfully held to be new matter as discussed below. So while the amendments to claim 19 do overcome the prior 103 rejection over US 2016/0168963 ("Roycroft") in view of US 9,689,242 ("Kuykendall"), the examiner presents a 112(a) rejection below, and the allowability of claims 29-32, dependent from claim 19, is respectfully withdrawn.
Prior art rejections are presented below for new independent claim 33 below over Roycroft in view Kuykendall. Kuykendall teaches a tapered end in figs 5, 8, and especially in 14B, as discussed in the 103 rejections below. The examiner also respectfully notes US 2016/0010436 (Boyd) discloses a clutch with clearly beveled exterior circumferential edges on both "sides" / ends of the clutch in figs 5-7 in a manner commensurate with the present case in detail and discussion (see the drawing objections below). While not utilized in a rejection it is noted in the interests of compact prosecution.
Claims 1-11 & 13-15 remain allowable.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the "beveled" ends / sides of the clutch, now recited in claims 33 & 47 must be indicated with element numbers or the feature(s) canceled from the claim(s). No new matter should be entered.
While the examiner acknowledges that fig 14B shows beveled ends, these are incidental disclosures at best (no element number and indicator line), and the specification does not use the word "bevel" or variations thereof. Reliance on incidental drawing disclosures without textual support raise drawing and 112 new matter questions.
While the examiner is not holding the new recitations of "beveled sides" in claims 33 & 47 as new matter under 112 (unlike claim 19 below), the examiner is respectfully requiring Applicant to identify these beveled sides with element numbers and use the word in the specification to support prior art identification & searching in the future. If it is a novel, patentable feature, as Applicant asserts by their independent claim, it is certainly worth identifying with a number and mentioning the feature in the written specification.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). 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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 19-22 & 27-32 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
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Independent claim 19 has been amended to recite "wherein each groove has a first width, and the surface between the at least two grooves has a second width greater than the first width". Applicant' cites support for this "at least in connection with Figures 14A, 14B, and 14C and the corresponding specification descriptions." Figures 14A & 14C are reproduced here:
The examiner respectfully asserts:
(A) there is no textual support for the relative widths of the grooves (not numbered above, but shown) and width of the "surface between the [two] grooves" (132 above); and
(B) for 112(a) support, Applicant is therefore relying on the drawings, and the relative proportions therein, alone.
As established by MPEP 2125, subsection II- "Proportions of features in a drawing are not evidence of actual proportions when drawings are not to scale"
'When the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value. See Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956, 55 USPQ2d 1487, 1491 (Fed. Cir. 2000)… "[I]t is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue."). However, the description of the article pictured can be relied on, in combination with the drawings, for what they would reasonably teach one of ordinary skill in the art. In re Wright, 569 F.2d 1124, 1127-28, 193 USPQ 332, 335-36 (CCPA 1977) ("We disagree with the Solicitor’s conclusion, reached by a comparison of the relative dimensions of appellant’s and Bauer’s [the reference’s] drawing figures, that Bauer ‘clearly points to the use of a chime length of roughly 1/2 to 1 inch for a whiskey barrel.’ This ignores the fact that Bauer does not disclose that his drawings are to scale.'
The examiner is respectfully obliged to note that Applicant does not disclose that the drawings are to scale. As similarly discussed in the drawing objections above, reliance on incidental drawing disclosures without textual support raise 112(a) new matter questions and consideration. Therefore, arguments relying on present figures 14A-14C for the present limitations "are of little value", to quote the MPEP from above.
In the present case's PGPUB (US 2024/0337174), ¶ 58, Applicant discusses this feature: "This embodiment of clutch 130 also includes undulating inside surface/diameter 132. In other embodiments, the inside surface/diameter 132 is not undulating. The purpose of undulating inside surface/diameter 132 is at least so the entire inside surface/diameter of clutch 130 does not contact dart 100."
The examiner respectfully does not see this broad statement as providing reasonable written support for the specific relative sizing of the features now claimed, especially when contrasted with Applicant's immediately following statement: "Finally, as best illustrated by FIG. 14A, the center point (or origin) of the outside diameter of clutch 130 is not the same as the center point (or origin) of the inside diameter of clutch 130". This clearly notes a proportional feature in the figure now recited in claim 1. But this does not say figs 14A-14C are to scale per se, or mention the relative widths.
The creation of a specific "frictional interface" is discussed in several places presently, but either:
(A) with respect to the prior art and elasticity (PGPUB ¶s 46 & 47), and if the support for the present limitations comes from self described "prior art" this clearly has prior art rejection implications; or
(B) with respect to the diameter of the clutch (PGPUB abstract & ¶s 51, 59, original claim 1).
Hypothetically speaking, if an Examiner were to make a 35 USC 102 rejection of - "the surface between the at least two grooves has a second width greater than the first width [of the grooves]" - in some future application, based off present figures 14A & 14C of the present PGPUB alone, it would be a questionable anticipation rejection in the examiner's opinion. If Applicant received this hypothetical rejection, would they consider citing MPEP 2125, subsection II in an argument against it?
The examiner is respectfully obliged to hold the amendments to claim 19 as new matter under 112(a) for the reasons discussed above. Claims 20-22 & 27-32 depend from claim 19.
The examiner notes that new claim 33 recites "at least the top side or the bottom side of the clutch is beveled", and the word "beveled" or the like is not used in the specification. Beveled end sides are clearly shown in present fig 14B and are not a matter of proportion, unlike the above discussion. Further, they are known in the prior art as shown in the prior art rejections below (see point (A) above). Therefore the examiner views new independent claim 33 as passing the 112(a) requirement, as the beveled ends of the clutch are clearly conveyed in the figures and not a matter of scale or proportions of the figures.
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.
Claims 33-42 are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0168963 (Roycroft) in view of US 9,689,242 (Kuykendall).
Independent claim 19. Rycroft discloses an artificial lift device (title, abstract; ¶ 5), comprising:
a rod ("dart 220" - ¶ 26, figs 1 & 2) having a first position in the device (¶ 27 & fig 8) and a second position in the device (¶ 27 & fig 6), wherein the rod is configured in the device to move between its first and second position (transition between ibid);
a clutch retarding movement of the rod 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 clearly encompassed by the plain language of ¶ 28) having a length, an outside diameter, and an inside diameter, a top side, and a bottom side (all inherent as a matter of geometry, as PHOSITA would immediately appreciate. For the purposes of the eventual; "top side or bottom side … is beveled" limitation, the "top and bottom sides" are drawn to the uphole / up and downhole /down ends as viewed in fig 4), where at least a portion of the inside diameter is sized to create a frictional interface with the rod ("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);
wherein the clutch further includes one gap extending from the outside diameter to the inside diameter along an entirety of the length of the clutch ("c-clip" - ¶ 28. The examiner respectfully asserts this is a reasonable interpretation of both the claims and the prior art, especially given the eventual recitation of a "c-shape" in claims 4 & 22).
Roycroft does not expressly disclose that either end / "side" of the clutch is beveled. However Kuykendall discloses an artificial lift device (col 1:29-35), comprising:
a rod ("valve stem 102" - fig 2) having a first position in the device (fig 2) and a second position in the device (fig 11), wherein the rod is configured in the device to move between its first and second position (transition between ibid);
a clutch retarding movement of the rod between its first and second position ("clutch assembly 70" - fig 5; "clutch assembly 1110" - fig 14B & the last full ¶ of col 13) having a length, an outside diameter, and an inside diameter (all inherent as a matter of geometry, as PHOSITA would immediately appreciate), a top side, and a bottom side (the uphole / up end and the downhole / down end), where at least a portion of the inside diameter is sized to create a frictional interface with the rod ("This enables the inner surface of the bobbin segments 72A, 72B to fully contact the valve stem 102 to provide maximum friction to resist the movement of the valve stem 102 through the clutch assembly 70" - col 9:41-44); and
wherein at least the top side or the bottom side of the clutch is beveled (First, the examiner respectfully asserts that fig 5 of Kuykendall clearly shows a bevel extending from the side / "end" of the clutch assembly in the same manner as the present case. The same bevel is also more clearly shown in fig 14B of Kuykendall on both ends, extending to the internal bore).
Therefore it would have been obvious to PHOSITA at the time of filing to use the beveled ends / sides of the clutch as taught by Kuykendall. First, beveling would provide a smoother fluid path transition for the particles of sand that Kuykendall discusses in some detail (Kuykendall: last full ¶ of col 9). Second, it would aid in assembly by avoiding the potential crimping or damaging of a square edge when inserting and operating the tool. A tight square interior lip would likely fray and fail faster than a beveled / conical entry with repeated use of the reciprocating rod / valve member.
The present limitation does not specify the "exterior circumferential edges" are beveled. But, as discussed in the Response To Amendment section above, this more specific configuration is also disclosed in US 2016/0010436, figs 5-7 in a manner commensurate with the present case in detail and discussion.
34. The dart plunger of claim 33, wherein the first position of the rod (Roycroft: ¶ 27 & fig 8. Fluid may flow through cage 210 to above the plunger. Kuykendall: fig 2) is an open position (ibid).
35. The artificial lift device of claim 35, wherein the second position of the rod (Roycroft: ¶ 27 & fig 6. Kuykendall: fig 11) is a closed position (ibid).
36. The artificial lift device of claim 36, wherein the gap extending from the outside diameter to the inside diameter along the entirety of the length of the clutch gives the clutch a c-shape (Roycroft: "c-clip" - ¶ 28).
37. The combination discloses all the limitations above, but as modified above, the combination does not disclose those of the present. However Kuykendall further discloses that the inside diameter of the clutch is shaped so the entire inside diameter does not create the same frictional interface with the rod ("series of grooves 80 formed on the inner surfaces" - col 9:47-48 & fig 5).
Therefore it would have been obvious to PHOSITA at the time of filing to use the groove on the inside diameter of the clutch as taught by Kuykendall. These grooves provide passages for fluids to flush particles of sand away from the contact area of the bobbin with the outer surface of the valve stem (Kuykendall: last full ¶ of col 9).
38. The artificial lift device of claim 37, wherein the inside diameter of the clutch includes an undulating surface so the entire inside diameter does not create the same frictional interface with the rod (as modified by Kuykendall above to have the "series of grooves 80 formed on the inner surfaces" - col 9:47-48 & fig 5).
39. The artificial lift device of claim 38, wherein the bore through the clutch includes at least two grooves only on the inside diameter of the one-piece unit (as modified by Kuykendall above to have the "series of grooves 80 formed on the inner surfaces" - col 9:47-48 & fig 5).
40. The artificial lift device of claim 39, wherein the bore through the clutch includes a surface between the at least two grooves for creating at least a portion of the frictional interface with the rod (clearly shown in fig 5 of Kuykendall between "grooves 80").
41. The artificial lift device of claim 40, wherein the surface between the at least two grooves has a radial curvature substantially equal to a radius of the rod (Fig 2; "This enables the inner surface of the bobbin segments 72A, 72B to fully contact the valve stem 102 to provide maximum friction to resist the movement of the valve stem 102 through the clutch assembly 70" - col 9:41-44).
42. The artificial lift device of claim 41, wherein at least one of the grooves extends along the entirety of the length of the clutch (fig 14B).
Allowable Subject Matter
Claims 1-11 & 13-15 are allowed. Claims 43-47 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. Reasons were given for claim 1 (and now claim 43) in the non-final rejection mailed 1/5/2026.
Claims 29-32 were previously objected to as being allowable dependent claims. However independent claim 19 is now rejected under 112(a) as discussed above, and therefore the allowability of dependent claims 29-32 is respectfully withdrawn.
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
Prosecution Insights