DETAILED ACTION
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 .
Specification
The disclosure is objected to because of the following informalities:
The patent number of the related application should be included in the “Related Applications” section of the specification.
Appropriate correction is required.
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 21, 23 and 24 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.
Claim 21 recites the limitation "the complete portion" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 21 should probably depend from claim 17.
Claim 23 recites the limitation "the complete portion" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 21 should probably depend from claim 18.
Claim 24 recites the limitation "the incomplete portion" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 21 should probably depend from claim 18.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 15-16, 19-20, 22, 25-26 and 28-29 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rueda 2018/0223606.
In regard to claim 15, Rueda discloses (fig. 5) a tubular threaded joint comprising: a first tubular member comprising a pin 5, and a second tubular member having comprising a box 10, wherein:
the pin 5 is an end portion of the first tubular member comprising a radially outward-facing surface, and the radially outward-facing surface comprises a male threaded zone comprising a tapered male thread;
the box is an end portion 10 of the second tubular member comprising a radially inward-facing surface, and the radially inward-facing surface comprises a female threaded zone comprising a tapered female thread;
the male thread and female thread are configured to engage with each other when the joint is in a made-up state;
the male thread and female thread are each trapezoidal and comprise a crest, a root, a load flank, and a stabbing flank (see paragraph 46, where the thread is a dovetail shape);
on each both of the male thread and the female thread at least one of the load flank and the stabbing flank is negatively inclined (see paragraph 46, where the thread is a dovetail shape);
a first portion of the male thread extending from an end thereof comprises a first taper relative to a longitudinal axis of the first tubular member (see taper of 5 in fig. 5);
a first portion of the female thread extending from an end thereof comprises a second taper (taper of 46 in fig. 5) relative to a longitudinal axis of the second tubular member, the first portion of the male thread and the first portion of the female thread are configured to engage with each other when the joint is in the made-up state; and
the second taper (taper of 46) is different from the first taper (taper of 5) such that the threads converge toward an end of the threads in the made-up state (see paragraph 95),
wherein the male thread varies in axial width along its length such that it narrows towards a terminal end of the pin; and
the female thread varies in axial width along its length such that it narrows towards the terminal end of the box (see the thread profile of the pin and box in fig. 1).
In regard to claim 16, wherein the first portion of the male thread is nearer to a terminal end of the pin than the rest of the male thread (the taper of threaded surface 5 is the same along the entire length).
In regard to claim 19, wherein the radially outward-facing surface of the pin comprises a male sealing zone comprising a male sealing surface 12;
the radially inward-facing surface of the box comprises a female sealing zone comprising a female sealing surface 7;
the male and female sealing surfaces are arranged to radially interfere with each other in the made-up state; and the second taper 46 is different from the first taper 5 such that the threads converge towards the sealing zone in the made-up state.
In regard to claim 20, the male sealing zone 12 is positioned between the male thread and a terminal end 4 of the pin (see fig. 6).
In regard to claim 22, the female sealing zone 7 is positioned between the female thread and a terminal end 4 of the box (see fig. 6).
In regard to claim 25, wherein one of the male sealing surface and the female sealing surface is a rounded surface; and the other of the male sealing surface and the female sealing surface is a conical surface (see fig. 6 where 12 is rounded and 7 is conical).
In regard to claim 26, wherein each of the male thread and the female thread, the load flank and the stabbing flank are each negatively inclined (see paragraph 46 where it states that the threads have a dovetail profile, which would include load and stab flanks being a negative angles in order to create the dovetail shape).
In regard to claim 28, wherein a portion of the male thread extending to the first portion of the male thread is a second portion of the male thread (the taper of threaded surface 5 is the same along the entire length);
a portion 45 of the female thread corresponding to the second portion 5 of the male thread is a second portion of the female thread; and
the second portion of the male thread comprises the same taper as the second portion of the female thread (5 and 45 have the same taper, also see claim 15).
In regard to claim 29, wherein the first portion of the male thread comprises the same taper as the second portion of the male thread (the taper of threaded surface 5 is the same along the entire length).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rueda 2018/0223606.
Rueda discloses a box member as described above, but does not disclose the exact outer
diameter of the box member. However, it would have been obvious to one of ordinary skill in the art to modify the box to be at least 18 inches because a change in the size of a prior art device is a design consideration within the skill of the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955).
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 15-16, 19-20 and 25-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 10, 13-15, 22-23 and 25 of U.S. Patent No. 12,264,758. Although the claims at issue are not identical, they are not patentably distinct from each other because they are claiming similar subject matter, specifically
Claim 15 of the present invention claims the subject matter of claims 1 and 10 of Patent No. 12,264,758.
Claim 16 of the present invention claims the subject matter of claims 1 and 2 of Patent No. 12,264,758.
Claim 19 of the present invention claims the subject matter of claims 1 and 3 of Patent No. 12,264,758.
Claim 20 of the present invention claims the subject matter of claims 1, 3 and 4 of Patent No. 12,264,758.
Claim 25 of the present invention claims the subject matter of claims 1 and 14 of Patent No. 12,264,758.
Claim 26 of the present invention claims the subject matter of claims 15 and 22 of Patent No. 12,264,758.
Claim 27 of the present invention claims the subject matter of claims 15 and 23 of Patent No. 12,264,758.
Claim 28 of the present invention claims the subject matter of claims 1 and 13 of Patent No. 12,264,758.
Claim 29 of the present invention claims the subject matter of claims 15 and 25 of Patent No. 12,264,758.
Allowable Subject Matter
Claims 17-18 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.
Claims 21 and 23-24 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID E. BOCHNA whose telephone number is (571)272-7078. The examiner can normally be reached Monday-Friday 8:00-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID BOCHNA/Primary Examiner, Art Unit 3679