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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
No claims are allowable in view of the rejection below.
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 2-4, 7-8, 11-13, 16-17 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-23 of copending Application No. 19/084428 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claim 1 in application ‘428 states in short one or more seal rings comprising two or more regions, at least one of the regions comprising a different material than at least one of the other regions (this reads on claims 2 and 16 of current application), the claim 4 of application ‘428 (this reads on claim 3 of current application), the claim 13 of application ‘428 (this reads on claim 4), the claim 12 of application ‘428 (this reads on claims 7-8 and 17), the claim 2 of application ‘428 (this reads on claim 11), the claim 7 of application ‘428 (this reads on claim 12-13). Applicant should compare all elected claims to claim of application ‘428. It is further noted examiner has provided example of claims that are similar and other claims in application ‘428 may also read on the claims elected in this applicaiton.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 2-4, 7-8, 11-13, 16-17 and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 2, “smooth surface”, it is unclear where this is provided in original disclosure and it is noted that figures do not state “smooth surface”.
Claim 16, “a continuous cylindrical surface”, it is unclear where this is provided in original disclosure and it is noted that figures do not state “continuous cylindrical surface”.
It is also noted that figures are not to scale and nowhere in the specification it is stated “smooth surface” and “continuous cylindrical surface”.
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 2-4, 7-8, 11-13, 16-17 and 20 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 2, “smooth surface”, unclear what applicant is trying to claim in view of the specification?
Claim 16, “continuous cylindrical surface”, unclear what applicant is trying to claim in view of the specification
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 2-4, 7-8, 11-13, 16-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhou et al (US.20220074400A1).
Zhou discloses a pressure breaker configured to receive a piston rod, the pressure breaker comprising one or more rings (e.g. rings shown in figure 1) each defining a bore surface (e.g. bore surface receiving a shaft 102) and one or more side surfaces (e.g. side surfaces perpendicular to the bore surface) and a non-metallic coating (e.g. 802) disposed on a smooth surface of at least one ring of the one or more rings (e.g. figure 8A). Regarding claim 3: Wherein at least one ring of the one or more rings comprises a metal (e.g. material of 804). Regarding claim 4: Wherein the non-metallic coating is disposed on at least a portion of the bore surface of at least one ring of the one or more rings (e.g. see bore surface with 802). Regarding claim 7: Wherein the non-metallic coating comprises a polymer (e.g. material of 802). Regarding claim 8: Wherein the non-metallic coating comprises polyether ether ketone, polytetrafluoroethylene, nylon, or an aromatic thermosetting polyester (e.g. see material of 802). Regarding claim 11: Wherein at least one of the one or more rings comprises cast iron, bronze, aluminum, an aluminum alloy, or steel (e.g. see material of 804). Regarding claim 12: Wherein at least one ring of the one or more rings comprises two or more segments each comprising a pair of opposing ends, the ends of each pair of the adjacent segments defining a joint between the segments (e.g. segments of the rings shown in figure 1 that are biased by garter springs, see figure 1). Regarding claim 13: Wherein the one or more rings comprise two or more rings (e.g. plural rings shown in figures 1). Regarding claim 16: Zhou discloses a pressure breaker configured to receive a piston rod, the pressure breaker comprising one or more rings each defining a bore surface and one or more side surfaces and a coating disposed on the bore surface of at least one ring of the one or more rings, wherein the bore surface of the at least one ring defines a continuous cylindrical surface (see rejection of claims above and ring in figure 8A). Regarding claim 17: Wherein the coating comprises a polymer (e.g. see rejection of claims above). Regarding claim 20: Wherein the smooth surface is a cylindrical surface.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL A PATEL whose telephone number is (571)272-7060. The examiner can normally be reached 7:00 am to 4:00pm.
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, Christine Mills can be reached at 571-272-8322. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VISHAL A PATEL/Primary Examiner, Art Unit 3675
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