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 .
Claim Objections
Claim 14 recites the limitation "the clutch" in line 6. There is insufficient antecedent basis for this limitation in the claim. This should be changed to –a clutch--.
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.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over MORRIS (US 2020/0040878 A1) in view of SUMIYOSHI (US 4,565,106).
Regarding claim 19, MORRIS discloses a method of operating a pump gearbox system (Fig. 2; Abstract) to change at least one of a speed and a torque applied to an input of a hydraulic fracing pump (120a, 129b, Fig. 2) without utilization of a torque converter, the method comprising: rotating a primary shaft (128, Fig. 2-3B) of the pump gearbox system, a secondary shaft (132).
MORRIS does not necessarily disclose wherein the primary shaft of the pump gearbox system has a first primary shaft gear attached to the primary shaft, the first primary shaft gear rotated thereby; engaging a first secondary shaft gear of, a secondary shaft (132) with the first primary shaft gear of the primary shaft, wherein the secondary shaft of the pump gearbox system has the first secondary shaft gear attached to the secondary shaft and rotated thereby; driving, by the primary shaft, the secondary shaft in response to the engaging, the secondary shaft providing power to the input of the hydraulic fracing pump; translating a member attached to the secondary shaft, the translating axially shifting the secondary shaft from a first engaged position to a disengaged position; and disengaging the first primary shaft gear from the first secondary shaft gear in response to the translating, whereby the primary shaft no longer drives the secondary shaft to rotate when the secondary shaft is in the disengaged position.
SUMIYOSHI teaches a method of operating a pump gearbox system (Figs. 1-8, abstract, col. 8, lines 3-20) wherein the primary shaft (2, 14) of the pump gearbox system has a first primary shaft gear (47) attached to the primary shaft (2, 14), the first primary shaft gear rotated thereby; engaging a first secondary shaft gear (23) of, a secondary shaft (3) with the first primary shaft gear (47) of the primary shaft (2, 11), wherein the secondary shaft (3) of the pump gearbox system has the first secondary shaft gear (23) attached to the secondary shaft (3) and rotated thereby; driving, by the primary shaft, the secondary shaft in response to the engaging, the secondary shaft providing power to the input of the hydraulic fracing pump; translating a member (26) attached to the secondary shaft (3), the translating axially shifting the secondary shaft (3) from a first engaged position (col. 11, lines 23-30, collar (26) shifted to the right most position) to a disengaged position (middle position); and disengaging the first primary shaft gear (47) from the first secondary shaft gear (25) in response to the translating, whereby the primary shaft (2, 11) no longer drives the secondary shaft (3) to rotate when the secondary shaft is in the disengaged position.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention to add the pump gearbox system of SUMIYOSHI to the hydraulic fracing pump system of MORRIS to selectively choose the gear ratio and the amount of rotational power to be used with the fracing pump. Also, the transmission device and method of operation taught by MORRIS would minimize the torque shock and jerking during shifting (MORRIS col. 2, lines 11-14).
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20, respectively, of U.S. Patent No. 12297728. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant claims is fully anticipated by the claims of the issued patent.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19, respectively of U.S. Patent No. 11852000, where claim 20 is anticipated by claim 19 of the ‘000 patent. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant claims is fully anticipated by the claims of the issued patent.
Claims 9-13 and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-13 and 17-20, respectively, of copending Application No. 18/924774 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant claims is fully anticipated by the claims of the copending application. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/DEREK D KNIGHT/Primary Examiner, Art Unit 3655