Claim Objections
Examiner notes that the claims fail to comply with 37 CFR 1.75(g) because the least restrictive claim, claim 25, is not presented with the lowest claim number. However, in accordance with 37 CFR 1.126, claim numbering must be preserved during prosecution. Therefore, correction will be held in abeyance.
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.
Specification
The abstract of the disclosure is objected to because it does not pertain to the U-joint covered by the claims. The abstract describes a U-joint that includes a central ball joint which is not the U-joint recited in the claims. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 21-28 are rejected on the grounds of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-4 of Patent No. 11,808,310. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 21-28 are generic to all that is recited in claims 1-4 of Patent No. 11,808,310. In other words, claims 1-4 of Patent No. 11,808,310fully encompass the subject matter of claims 21-28 and therefore anticipate claims 21-28.
Claim Rejections - 35 USC § 102
Claim(s) 21-22, 24-26 & 28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Belden, US 2,744,449. Belden shows a transmission assembly for transmitting torque across an
angular connection between a torsional drive component/flexible shaft/mud motor (1) and a torsionally driven component/mud motor output shaft (2), the transmission assembly comprising:
a female U-joint (17) forming a cavity (see Figs. 1 & 3) and having a groove (18) extending radially outward from an inner diameter thereof and bounded by three planar drive
surfaces (68, 69, see also Figs. 3-5 & 11);
a male U-joint member (5) including a drive end, and a longitudinal
rectangular extension (12) protruding radially outward from a periphery (11) of the drive
end, and the male U-joint member positioned within the groove of the cavity;
a longitudinal rectangular insert (12) formed by the drive end, the longitudinal
regular insert having a portion (12) forming the longitudinal rectangular extension
positioned within the groove and retained within the drive end, and the longitudinal rectangular extension including (1) opposing longitudinal sides (see Fig. 6), each forming a side crest (62, 65) disposed between a pair of angular side surfaces (60, 61 & 63, 64) that extend axially from the side crest inward toward a center of the extension, and (2) a top side (see Fig. 5) forming a top crest disposed between a pair of angular top surfaces (94, 95) that extend axially from the top crest downward toward the center of the extension,
wherein Figs. 3 & 10-11 show the pairs of the angular side surfaces and the pair of the angular top surfaces each oppose an adjacent one of the planar drive surfaces of the rectangular groove of the female U-joint member such that when an eccentric radial movement of the torsional drive component causes an articulation of the drive end within the cavity relative to the longitudinal axis, the angular side surfaces and the angular top
surfaces contact the adjacent ones of the planar drive surfaces to transmit the
torsional force from the angular side surfaces and the angular top surfaces to the
adjacent ones of the planar drive surfaces.
Claims 21-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Marek, US 4,704,096. Marek shows a transmission assembly for transmitting torque across an
angular connection between a torsional drive component/flexible shaft/mud motor (11) and a torsionally driven component/mud motor output shaft (49), the transmission assembly comprising:
a female U-joint (17) forming a cavity (see Fig. 1) and having a groove (45) extending radially outward from an inner diameter thereof and bounded by three planar drive
surfaces (see “straight splines” at col. 4, line 1 and Fig. 5);
a male U-joint member (41) including a drive end, and a longitudinal
rectangular extension (43) protruding radially outward from a periphery of the drive
end, and the male U-joint member positioned within the groove of the cavity;
a longitudinal rectangular insert (43) formed by the drive end, the longitudinal
regular insert having a portion (43) forming the longitudinal rectangular extension
positioned within the groove and retained within the drive end, and the longitudinal rectangular extension including (1) opposing longitudinal sides (see Figs. 3 & 5), each forming a side crest disposed between a pair of angular side surfaces that extend axially from the side crest inward toward a center of the extension, and a top side (see Figs. 2-3) forming a top crest disposed between a pair of angular top surfaces that extend axially from the top crest downward toward the center of the extension,
wherein Figs. 1 & 5 show the pairs of the angular side surfaces and the pair of the angular top surfaces each oppose an adjacent one of the planar drive surfaces of the rectangular groove of the female U-joint member such that when an eccentric radial movement of the torsional drive component causes an articulation of the drive end within the cavity relative to the longitudinal axis, the angular side surfaces and the angular top
surfaces contact the adjacent ones of the planar drive surfaces to transmit the
torsional force from the angular side surfaces and the angular top surfaces to the
adjacent ones of the planar drive surfaces,
wherein Marek discloses at col. 8, lines 15-16 that the angular side surfaces are angled (A) inward relative to the side crest between 1.5 and 5 degrees; and the angular top surfaces are angled (H) downward relative to the top crest between 1.5 and 5 degrees.
Claim Rejections - 35 USC § 103
Claim(s) 23 & 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Belden. At col. 7, lines 31-32, Belden discloses the angular side surfaces (60, 61 & 63, 64) are angled inward relative to the side crest (62, 65) at 3 degrees. At Figs. 5 & 11, Belden shows the angular top surfaces (94, 95) are angled downward relative to the top crest but does not expressly disclose the angle is between 1.5 and 5 degrees. However, it would have been obvious to one having ordinary skill in the art to have the angle between 1.5 and 5 degrees, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990).
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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/Greg Binda/Primary Examiner, Art Unit 3679
