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 Amendment
This Action is in response to Applicant’s Reply of September 18, 2026.
Claims 3, 6, 8-12, 15, 17-20, and 22-26 have been cancelled.
Claims 27-35 have been added.
Applicant’s amendments to claims 1, 11, and 21 and the cancellation of claim 17 overcome the previously presented objection to the drawings.
Applicant’s amendment to claim 2 and the cancellation of claims 9, 11, and 24 overcome the previously presented 35 USC 112(a) rejection thereof.
Applicant’s amendment to claim 2 and the cancellation of claims 12, 18, and 24 overcome the previously presented 35 USC 112(b) rejection thereof.
Applicant’s amendment to claim 1 overcomes the previously presented 35 USC 102(a)(1) rejections thereof.
Applicant’s amendment to claim 21 overcomes the previously presented 35 USC 103 rejections thereof.
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 21 and 27-35 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.
Regarding claim 21: Claim 21 has been amended to require “a third floating hub at least partially surrounding the first coiled spring” wherein the “first coiled spring [is] mounted around the sleeve between the first floating hub and a first end surface of the sleeve”. There is no disclosure in the originally filed application of the third floating hub, even partially surrounding the first coiled spring. The left side of Figure 4 shows the first floating hub 21 and first coiled spring 25 located between the first floating hub and the first end surface of the sleeve 20; a second floating hub and corresponding spring are located on the opposite end of the sleeve. A third floating hub 22 is shown surrounding the sleeve, of an outer diameter that is smaller than that of the first floating hub and first coiled spring, and spaced from the first floating hub and the first coiled spring. The third floating hub is connected to a third coiled spring 26 but is not located in the immediate vicinity of the first coiled spring nor is there any description of the third floating hub at least partially surrounding the first coiled spring. As such, it cannot be said that Applicant was in possession of this limitation at the time of filing.
It is noted that “surrounding” and --surrounded by-- do not have the same meaning as “surrounding” implies being positioned around the outer surface of the element in question and --surrounded by-- implies being positioned within the element in question.
Regarding claim 28: Claim 28 requires that the third floating hub longitudinally slide along the first coil spring. There is no disclosure or depiction of the third floating hub moving along the first coil spring. The third floating hub is smaller than the first coiled spring and thus could not move along it as this phrase implies passage along the outer surface. As such, it cannot be said that Applicant was in possession of this limitation at the time of filing.
It is noted that “sliding along” is not the same as --slidable within--. The phrase “sliding along” implies moving along the outer surface of an element and the phrase --slidable within-- implies moving along the inner surface of an element.
Regarding claim 29: Claim 29 requires “a third coil spring at least partially surrounding the first coil spring”. As shown in Figure 4, the first coil spring at least partially surrounds the third coil spring 26 and not visa versa. There is no depiction or description of the third coil spring at least partially surrounding the first coil spring. As such, it cannot be said that Applicant was in possession of this limitation at the time of filing.
It is noted that “surrounding” and --surrounded by-- do not have the same meaning as “surrounding” implies being positioned around the outer surface of the element in question and --surrounded by-- implies being positioned within the element in question.
Regarding claims 27 and 30-35: These claims are rejected due to their dependence on at least one of the above claims.
Claims 21 and 27-35 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding claim 21: Claim 21 has been amended to require “a third floating hub at least partially surrounding the first coiled spring” wherein the “first coiled spring [is] mounted around the sleeve between the first floating hub and a first end surface of the sleeve”. The left side of Figure 4 shows the first floating hub 21 and first coiled spring 25 located between the first floating hub and the first end surface of the sleeve 20; a second floating hub and corresponding spring are located on the opposite end of the sleeve. A third floating hub 22 is shown surrounding the sleeve, of an outer diameter that is smaller than that of the first floating hub and first coiled spring, and spaced from the first floating hub and the first coiled spring. The third floating hub is connected to a third coiled spring 26 but is not located in the immediate vicinity of the first coiled spring.
Claim 21 requires that the third floating hub be positioned so that it is “at last partially surrounding the first coiled spring”. Even when the centralizer is fully compressed, it is not possible for the third floating hub to even partially surround the first coiled spring. The third floating hub is smaller than the first coiled spring and would not physically fit around the first coiled spring in order to surround it. One of ordinary skill in the art would not have been able to determine how to make an element that is smaller than a second element surround the second element.
It is noted that “surrounding” and --surrounded by-- do not have the same meaning as “surrounding” implies being positioned around the outer surface of the element in question and --surrounded by-- implies being positioned within the element in question.
Regarding claim 28: Claim 28 requires that the third floating hub longitudinally slide along the first coil spring. As shown in Figure 4, the third floating hub is smaller in diameter than the first coil spring and located radially inward thereof with respect to the sleeve. It would not be possible for the third floating hub to move along the first coil spring at any point during the assembly or use of the centralizer. One of ordinary skill in the art would not be able to determine how an element that is smaller than a second element could slide along the second element.
It is noted that “sliding along” is not the same as --slidable within--. The phrase “sliding along” implies moving along the outer surface of an element and the phrase --slidable within-- implies moving along the inner surface of an element.
Regarding claim 29: Claim 29 requires “a third coil spring at least partially surrounding the first coil spring”. As shown in Figure 4, the third coil spring is smaller in diameter than the first coil spring. It would not be possible for the third coil spring to even partially surround the first coil spring at any point during the assembly or use of the centralizer as the third coil spring would not fit around the first coil spring. One of ordinary skill in the art would not have been able to determine how to make an element that is smaller than a second element surround the second element.
It is noted that “surrounding” and --surrounded by-- do not have the same meaning as “surrounding” implies being positioned around the outer surface of the element in question and --surrounded by-- implies being positioned within the element in question.
Regarding claims 27 and 30-35: These claims are rejected due to their dependence on at least one of the above claims.
Claim Rejections – Art Rejection
While the prior art of record fails to disclose or suggest the subject matter of claim 21, amended, due to the 35 USC 112(a) rejection thereof the allowability of the claim cannot be determined at this time.
Allowable Subject Matter
Claims 1, 2, 4, 5, 7, 13, 14, and 16 are allowed.
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 JENNIFER H GAY whose telephone number is (571)272-7029. The examiner can normally be reached Monday through Thursday, 6-3:30 and every other Friday 6-11.
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/JENNIFER H GAY/Primary Examiner, Art Unit 3619
JHG
9/29/2026