DETAILED ACTION
This is in response to communication received on 4/28/25.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
As for claim 20, it depends from claim 14 which specifically reads as coating the interior of a deflector shoe with a dry lubricant. Claim 20 is an attempt to further restrict this claim language, but the specification provides no other option for application of the dry lubricant. The only other options for applying are in reference to the wet lubricant (paragraph 37). As such, when read in view of the specification coating the interior of a deflector shoe with a dry lubricant is limited to a process of spraying as it is the only means of application discussed in reference to the dry lubricant, and therefore claim 20 provides no further limitation.
For clarity of record, the specification provides no support for any other method of applying the dry lubricant (i.e. roller, bar coating, CVD or PVD or PECVD, etc.) so any reference of the applying of dry lubricant is limited to spraying. To read ‘applying’ as a reference more than ‘spraying’ would require reading in subject matter not supported by the specification. For this reason, claim 20 is not further limiting.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Statutory Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 7, 14 and 20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1-6 of prior U.S. Patent No. US 12,196,113. This is a statutory double patenting rejection.
As for claim 1, it is identical to claim 1 and 2 of US 12,196,133 ( 1. A method for reducing friction in a radial drilling application, the method comprising: coating the interior of a deflector shoe with a dry lubricant by spraying the dry lubricant on the interior of the deflector shoe, 2. The method of claim 1, further comprising: applying a wet lubricant to the interior of the deflector shoe).
As the dependent claim 2 contains all the limitations of the independent claim 1, the scope of claim 2 of the art and claim 1 is identical.
As for claim 7, claim 1 and 2 of US 12,196,133 (1. A method for reducing friction in a radial drilling application, the method comprising: coating the interior of a deflector shoe with a dry lubricant by spraying the dry lubricant on the interior of the deflector shoe, 2. The method of claim 1, further comprising: applying a wet lubricant to the interior of the deflector shoe) are identical in subject matter if not in language.
Specifically, claim 7 appears to be an attempt to claim a broader invention by omitting the language of ‘by spraying’. However, this language, when read in the view of the specification, is not as broad as it appears. Specifically the specification only discusses spraying as the method of applying. There is no discussion or suggestion of a different method of coating (such as roller, bar coating, PVD, etc.) and as such the language of “coating the interior of a deflector shoe with a dry lubricant” is limited by the specification to only include spraying. For this reason claim 7 and claims 1 and 2 of US 12,196,133 are coextensive in scope.
As for claim 14, claim 1 and 2 of US 12,196,133 (1. A method for reducing friction in a radial drilling application, the method comprising: coating the interior of a deflector shoe with a dry lubricant by spraying the dry lubricant on the interior of the deflector shoe, 2. The method of claim 1, further comprising: applying a wet lubricant to the interior of the deflector shoe) are identical in subject matter if not in language.
Specifically claim 14 includes the language of “wherein the wet lubricant is applied onsite or in the field where radial drilling is taking place”. However, Examiner notes that the prior art claim language includes in a radial drilling application, meaning that the method if applied within an application of radial drilling, or, in other words, onsite or during operation of the radial drilling. As such, claim 14 and claims 1 and 2 of US 12, 196,133 are coextensive in scope.
As for claim 20, claim 1 of US 12,196,133 includes “spraying the dry lubricant on the interior of the deflector shoe” which is coextensive in scope with claim 20.
Non- Statutory 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 2-6, 8-13, and 15-16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. U.S. Patent No. US 12,196,113. Although the claims at issue are not identical, they are not patentably distinct from each other because they share scope, in particular they appear to be rearrangements of previous dependent claims.
Examiner draws attention to the Statutory Rejection of claims 1, 7, and 14 above to establish that US12,196,113 does have an identical scope to the claims. Examiner notes that the claims of the specification are written to be rearrangements of dependent claim limitations recited in the prior art reference of US12,196,113. Thus the claims are not coextensive in scope, however US 12, 196,113 clearly lays out how these are obvious variants of each other (see below for how each claim was addressed).
As for claim 2, it is identical to claim 3 of US 12,196,133 3. The method of claim 1, further comprising: coating a hose; and passing the hose through the coated interior of the deflector shoe.).
As for claim 3, it is identical to claim 4 of US 12,196,133 (4. The method of claim 1, further comprising: coating a jet nozzle; and passing jet nozzle through the coated interior of the deflector shoe.).
As for claim 4, it is identical to claim 5 of US 12,196,133 (5. The method of claim 1, further comprising: coating components of a milling cutter; and passing the components of the milling cutter through the coated interior of the deflector shoe).
As for claim 5, claim 6 of US 12,196,133 recites “the lubricant being selected from a group consisting of: tire shine, flouropolymer coating and tungsten disulfide coating” which includes the options of the dry lubricant being selected from a group consisting of: fluoropolymer coating and tungsten disulfide coating.
As for claim 6, claim 6 of US 12,196,133 recites “the lubricant being selected from a group consisting of: tire shine, flouropolymer coating and tungsten disulfide coating” which the wet lubricant being tire shine.
As for claim 8, it is identical to claim 3 of US 12,196,133 3. The method of claim 1, further comprising: coating a hose; and passing the hose through the coated interior of the deflector shoe.).
As for claim 9, it is identical to claim 4 of US 12,196,133 (4. The method of claim 1, further comprising: coating a jet nozzle; and passing jet nozzle through the coated interior of the deflector shoe.).
As for claim 10, it is identical to claim 5 of US 12,196,133 (5. The method of claim 1, further comprising: coating components of a milling cutter; and passing the components of the milling cutter through the coated interior of the deflector shoe).
As for claim 11, claim 6 of US 12,196,133 recites “the lubricant being selected from a group consisting of: tire shine, flouropolymer coating and tungsten disulfide coating” which includes the options of the dry lubricant being selected from a group consisting of: fluoropolymer coating and tungsten disulfide coating.
As for claim 12, claim 6 of US 12,196,133 recites “the lubricant being selected from a group consisting of: tire shine, flouropolymer coating and tungsten disulfide coating” which the wet lubricant being tire shine.
As for claim 15, it is identical to claim 3 of US 12,196,133 3. The method of claim 1, further comprising: coating a hose; and passing the hose through the coated interior of the deflector shoe.).
As for claim 16, it is identical to claim 4 of US 12,196,133 (4. The method of claim 1, further comprising: coating a jet nozzle; and passing jet nozzle through the coated interior of the deflector shoe.).
As for claim 17, it is identical to claim 5 of US 12,196,133 (5. The method of claim 1, further comprising: coating components of a milling cutter; and passing the components of the milling cutter through the coated interior of the deflector shoe).
As for claim 18, claim 6 of US 12,196,133 recites “the lubricant being selected from a group consisting of: tire shine, flouropolymer coating and tungsten disulfide coating” which includes the options of the dry lubricant being selected from a group consisting of: fluoropolymer coating and tungsten disulfide coating.
As for claim 19, claim 6 of US 12,196,133 recites “the lubricant being selected from a group consisting of: tire shine, flouropolymer coating and tungsten disulfide coating” which the wet lubricant being tire shine.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTEN A DAGENAIS whose telephone number is (571)270-1114. The examiner can normally be reached 8-12 and 1-5.
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/KRISTEN A DAGENAIS/Examiner, Art Unit 1717
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