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 .
Election/Restrictions
Claims 5-6, 15 and 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group and specie, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/9/2025.
Claims 1, 9-10, 14 and 19 are also withdrawn as being directed to non-elected group and species. In conclusion withdrawn claims are 1, 5-6, 9-10, 14-15 and 18-19.
This election/restriction is made final.
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 and 16-17 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 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 3 and 13 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 3, “at least one of the rings comprises a metal”, unclear what applicant is trying to claims since claim 2 is directed to one or more rings?
Claim 13, “at least one of the rings”, unclear what applicant is trying to claims since claim 2 is directed to one or more rings?
It is noted that claims are very broad and any ring with a coating can reject the claims (applicant should review all patents and applications of assignee(s)).
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.
Claim(s) 2-4, 7-8, 11-13, 16-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ceng et al (CN209083494U).
Ceng discloses a pressure breaker configured to receive a piston rod, the pressure breaker comprising one or more rings (e.g. ring shown in figure 2) each defining a bore surface (e.g. bore surface having 101) and one or more side surfaces and a non-metallic coating (e.g. 101 is considered to be coating since the radial thickens is less than the radial thickness of 102) disposed on a surface of at least one of the one or more rings (e.g. figure 2).
Regarding claim 3: Wherein at least one of the rings comprises a metal (e.g. material of 102). Regarding claim 4: Wherein the non-metallic coating is disposed on at least a portion of the bore surface of at least one of the one or more rings (e.g. see inner surface of 102 having 101).
Regarding claim 7: Wherein the non-metallic coating comprises a polymer (e.g. material of 101). Regarding claim 8: Wherein the non-metallic coating comprises polyether ether ketone, polytetrafluoroethylene, nylon, or an aromatic thermosetting polyester (e.g. see material of 101).
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 102).
Regarding claim 12: Wherein at least one of the 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 with ends shown in figure 2, at least three segments with ends shown in figure 2).
Regarding claim 13: Wherein the one or more rings comprise two or more rings (e.g. plural rings shown in figure 4).
Regarding claim 16: Ceng 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 of the one or more rings (see rejection of claims above).
Regarding claim 17: Wherein the coating comprises a polymer (e.g. see rejection of claims above).
Conclusion
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.
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/VISHAL A PATEL/Primary Examiner, Art Unit 3675