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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered claims 3-20 have been renumbered as claims 5-22.
Claim 14 is objected to because of the following informalities: in line 1 “a motor operatively” should be “the motor is operatively”. 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 7 and 10-18 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.
Each of claims 7 and 16 are confusing because they set forth that “the rotor is driven by fluid flowing from the inlet to the outlet”, this is confusing because such a device would be operating as a fluid motor. While both a fluid pump (see for example Fig. 1) and a fluid motor (see for example Fig. 6) are disclosed the claims are all directed to a fluid displacement pump, see the preambles of claims 1, 7, 10 and 16. Claims 7 and 16 will be interpreted as that “the rotor drives fluid to flow from the inlet to the outlet”, i.e., the device is a pump.
Claim 10 is vague and indefinite because it sets forth that the ESPCP system includes a motor and an ESPCP coupled to the motor. This is confusing because in an ESPCP the motor is the electrical element of such a system so separately claiming a motor and ESPCP it is unclear what the electrical component would be for the ESPCP or if a second motor is being claimed. The claim will be examined as an electric motor coupled to a submersible PCP.
Claim 19 is vague and indefinite because in line 3 it is unclear if the reference to “using another one of the materials” is a reference to the two of more materials of line 2 or to one of the two materials at the beginning of line 3 and therefore it is unclear what the tie layer material is formed of. In lines 4 and 5 it is unclear which material of the two materials of line 3, the 2 or more materials of line 2 and the tie layer material is intended to represent the stator material. Further it is unclear if the tie layer alone is intended to be the stator material or if the tie material and another material together are the stator material.
Claims not specifically mentioned are indefinite since they depend from one of the above claims.
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) 1-3, 5-12, and 14-22 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Hondred et al (WO 2022-040522, cited by the applicant, for the purpose of the rejection references to the paragraphs and reference numerals set forth below are made relative to related application USPAP 2023/0313794).
With regards to claims 1, 10 and 19, Hondred et al disclose an electric submersible progressive cavity pump system for use with a well (see Fig. 1) comprising: an electric motor (30); and a SPCP (34) coupled to the motor and comprising: a rotor (36); and a stator (38), wherein the stator comprises two materials (58, 64) bonded by a tie layer (76). With regards to claim 19 the materials and the elements have been provided for fabrication and the two materials (58, 64) are connected together by bonding (layer 76 is described as a middle bonding layer.
With regards to claims 2, 11 and 20 the first material 58 is noted as being a thermoset resin (see [0020]) and the second material 64 is an elastomer (see [0021]).
With regards to claims 3, 12 and 21 the tie layer is disclosed as a compatabilizing elastomer based adhesion promotor (note: paragraph [0043] of the instant application notes that RICON TM 154 90% vinyl polybutadiene is an example of such a material and paragraph [0034] of Hondred et al disclose the tie layer 76 may be made of such an elastomer based adhesion promotor).
With regards to claims 5 and 14, Hondred et al discloses a motor (30) operatively coupled to the rotor (36).
With regards to claims 6 and 15 the pump includes an inlet (the lower end of the pump 34) and a fluid outlet (the top end of the pump 34).
With regards to claims 7 and 16 it is inherent that during operation the rotor will drive the fluid to flow from the inlet to the outlet.
With regards to claims 8, 9, 17, 18 and 22, there is a housing (56) having a bore with the stator (58, 64, 76) disposed within the bore.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 4 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hondred et al.
As set forth above Hondred et al disclose the invention substantially as claimed but do not disclose that tie layer comprises multiple layers of material. As disclosed the tie layer is a bonding layer. At the time of the effective filing date of the instant application it would have been obvious to one of ordinary skill in the art to make the layer 76 of multiple layers in order to create greater bonding between the thermoset resin layer and the elastomeric layer, since it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. St Regis Paper Co. v. Bemis Co., 193 USPQ 8. Please note that in the instant application the applicant has not disclosed any criticality for the claimed limitation.
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hooper and Pushkarev et al disclose progressive cavity pump having multi-layered stator components.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES G FREAY whose telephone number is (571)272-4827. The examiner can normally be reached Mon - Fri: 8:00 - 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Essama Omgba can be reached at (469)295-9278. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARLES G FREAY/ Primary Examiner, Art Unit 3746
CGF
September 18, 2026
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