Election/Restrictions
Applicant’s election without traverse of a force coupling assembly (Group I) in the reply filed on September 5, 2026 is acknowledged.
Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on September 5, 2026.
Priority
The status of the nonprovisional parent application (whether patented or abandoned) needs to be included in the cross reference to related applications at the start of the specification. If a parent application has become a patent, the expression “now Patent No. _____” should follow the filing date of the parent application. If a parent application has become abandoned, the expression “now abandoned” should follow the filing date of the parent application.
Claim Objections
Examiner notes that the claims fail to comply with 37 CFR 1.75(g) because the least restrictive claim, claim 12, is not presented as claim number 1. However, in accordance with 37 CFR 1.126, claim numbering must be preserved during prosecution. Therefore, correction will be held in abeyance.
Claim 14 is objected to because line 4 includes the text, “(Original) The”.
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 1-14 are rejected on the grounds of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of Patent No. 12,188,526. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-14 are generic to all that is recited in claims 1-20 of Patent No. 12,188,526. In other words, claims 1-20 of Patent No. 12,188,526 fully encompass the subject matter of claims 1-14 and therefore anticipate claims 1-14.
Claim Rejections - 35 USC § 112
Claims 1-11 & 14 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.
The term “superhard” in claims 1-11 & 14 is a relative term which renders the claim indefinite. The term “superhard” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
It is unclear how claim 6 further limits the claim from which it depends.
Claim Rejections - 35 USC § 102
Claim(s) 12-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thomas, US 2,109,035. Figs. 1-2 and pages 1-2 disclose a force coupling assembly, comprising:
a first assembly (1) comprising:
a first support structure (5, 5) positioned circumferentially around a first structure axis; and one or more contact elements (15) coupled to the first support structure, the one or more contact elements each having a contact surface (18); and
a second assembly (17) comprising: a second support structure (17) positioned circumferentially around a second structure axis; and one or more contact elements (16) coupled to the second support structure, the one or more contact elements each having a contact surface (16), the contact surface of each of the one or more contact elements coupled to the second support structure opposing a respective one of the one or more contact elements coupled to the first support structure, wherein the contact surface of at least one of the one or more contact elements coupled to the second support structure is configured to, after rotating
less than 180 degrees, remain engaged (see “contact” at page 1, col. 2, line 35) with a respective one or more contact elements coupled to the first support structure when a force is applied between the first assembly and the second assembly (page 1, col. 1, lines 1-6 and col. 2, lines 45-50).
Claim Rejections - 35 USC § 103
Claim(s) 1-11 & 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thomas. Figs. 1-2 and pages 1-2 disclose a rotary motion system, comprising:
a shaft (3);
a rotational energy device (see “power” at page 1, col. 1, line 3) configured to apply torque to the shaft in order to rotate the shaft; and
at least one force coupling assembly (1-2) operably coupled to the shaft and another component (4), the system configured to transfer at least some of the torque applied to the shaft by the rotational energy device to the another component of the system via the at least one force coupling assembly.
Thomas does not expressly disclose the contact elements (15, 16) comprise at least one of polycrystalline diamond, a carbide material, a silicon carbide material, a nitride material, or a silicon nitride material. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the contact elements comprise at least one of polycrystalline diamond, a carbide material, a silicon carbide material, a nitride material, or a silicon nitride material, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). See MPEP 2144.07.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Greg Binda whose telephone number is (571)272-7077. The examiner can normally be reached 9:30-5:30 et.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Troutman can be reached at 571-270-3654. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Greg Binda/Primary Examiner, Art Unit 3679
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