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 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 16-17 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. It is unclear what “threshold” is being referred to and where the support for such “threshold” can be found.
Claim 18 us rejected for depending on rejected claim 16.
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 1-20 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.
Regarding 1 and 20, it is unclear what is the scope of “toward each other.” Par. 0049 of the instant specification notes that stop ring (190) is in a static position during tension on the tool, which means that the springs move in the same direction (toward ring (190)), which is not “toward each other” but does mean one end gets closer to the other end. Par. 050 notes that rib (172) is in a static position during compression of the tool, which means that the springs move in the same direction (toward rib (172)), which is not “toward each other” but does mean one end gets closer to the other end. For the purposes of examination, “toward each other” is taken to mean that “mean one end gets closer to the other end.”
Regarding claim 14, it is unclear what level of compression or tension the spring stack is in when the percentage of the second spring is being considered, in reference to the entire spring stack. For the purposes of examination, it is assumed that this state is when the spring is in equilibrium.
Regarding claims 16 and 17 it is unclear what threshold is being referred to. It is unclear if the parameter the threshold is referring to is in relation to force, force with respect to time, or force in conjunction with another parameter.
Claims 2-13, 15, and 18-19 are rejected for depending on a rejected indefinite claim.
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.
(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.
Claims 1-5, 7, 11-13, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Swietlik et al. (US 2011/0198126 A1), hereinafter Swietlik.
Regarding claim 1, Swietlik discloses a vibration mitigation tool (20, fig. 1, par. 0145), comprising:
a mandrel portion (21, fig. 2, par. 0140);
a sleeve portion (25, fig. 2, par. 0140) arranged about the mandrel portion (fig. 2 and 3) and configured to move longitudinally and rotationally relative to the mandrel portion (par. 0140-0142 and 0150);
a spring stack (27+28, fig. 2, par. 0141) comprising a first spring (27) and a second spring (28), the second spring distal of the first spring (27 vs 28 in fig. 2), the spring stack configured to control compression on the vibration mitigation tool through compression of both the first spring and the second spring toward one another (par. 0142-0143, wherein towards one another is taken to mean that at least one spring will move towards the other spring), wherein a proximal end of the first spring moves closer to a distal end of the second spring (fig. 2, par. 0142-0143, wherein the springs compress and expand as needed which would result in one spring moving closer to the other spring), and to control tension on the vibration mitigation tool through compression of the first spring and the second spring toward one another (par. 0142-0143, wherein towards one another is taken to mean that at least one spring will move towards the other), wherein the proximal end of the first spring moves closer to the distal end of the second spring (fig. 2, par. 0142-0143, wherein the springs compress and expand as needed which would result in one spring moving closer to the other spring); and
a helical engagement (36+37) between the mandrel portion and the sleeve portion (par. 0140 and 0146).
Regarding claim 2, Swietlik further discloses wherein relative rotation of the sleeve portion and the mandrel portion compresses the spring stack (par. 0140-0143).
Regarding claim 3, Swietlik further discloses wherein the helical engagement (36+37) comprises a helical groove (37) that is engaged by isolated spline segments (24, fig. 3, par. 0149-0150).
Regarding claim 4, Swietlik further discloses wherein the helical groove has a rectangular cross-sectional profile (37, fig. 3, par. 0149-0150).
Regarding claim 7, Swietlik further discloses wherein the mandrel portion (21) comprises a lead screw (area of 21 that rises slightly to meet 25 and 36 and 37, fig. 3) and the helical engagement (36+37) comprises a helical groove (37) on an outside surface of the lead screw (fig. 2 and 3, par. 0144).
Regarding claim 11, Swietlik further discloses further comprising a bearing sleeve (32, fig. 2) for regulating a degree of axial compression of a portion of the spring stack (par. 0143).
Regarding claim 12, Swietlik further discloses wherein a length of the bearing sleeve or a rib location on the bearing sleeve is selected based on a suitable degree of axial compression for the portion of the spring stack (par. 0143).
Regarding claim 13, Swietlik further discloses further comprising a stop ring (29, fig. 2, par. 0143) configured to prevent motion of an end of the spring stack when the vibration mitigation tool is placed in tension and to slide along a spring tube when the vibration mitigation tool is in compression (29, fig. 2, par. 0143).
Regarding claim 19, Swietlik discloses a vibration mitigation tool (20, fig. 1, par. 0145), comprising:
a mandrel portion (21, fig. 2, par. 0140);
a sleeve portion (25, fig. 2, par. 0140) arranged about the mandrel portion (fig. 2 and 3) and configured to move longitudinally and rotationally relative to the mandrel portion (par. 0140-0142 and 0150);
a spring stack (27+28, fig. 2, par. 0141) comprising a first spring (27) and a second spring (28), the spring stack configured to control compression on the vibration mitigation tool through compression of both the first spring and the second spring (par. 0142-0143), wherein an opposite end of the first spring moves closer to an opposite end of the second spring (fig. 2, par. 0142-0143, wherein the springs compress and expand as needed which would result in one spring moving closer to the other spring), and to control tension on the vibration mitigation tool through compression of the first spring and the second spring (par. 0142-0143) , wherein the opposite end of the first spring moves closer to the opposite end of the second spring (fig. 2, par. 0142-0143, wherein the springs compress and expand as needed which would result in one spring moving closer to the other spring); and
a helical engagement (36+37) between the mandrel portion and the sleeve portion (par. 0140 and 0146).
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.
Claims 5 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Swietlik et al. (US 2011/0198126 A1), hereinafter Swietlik.
Regarding claim 5, Swietlik further discloses wherein there is a helical groove (37, fig. 3, par. 0149-0150), the mandrel portion (21, fig. 3, par. 0149-0150), the isolated spline segments (24, fig. 3, par. 0140), and the sleeve portion (25, fig. 3, par. 0140).
However, Swietlik fails to explicitly disclose wherein the helical groove is arranged on the mandrel portion and the isolated spline segments are arranged on the sleeve portion.
Sweitlik instead teaches the opposite arrangement of the helical groove on the sleeve and the isolated spline segments on the sleeve.
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have rearranged the parts of Sweitlik to that of wherein the helical groove is arranged on the mandrel portion and the isolated spline segments are arranged on the sleeve portion to yield the predictable result of engagement between the sleev and the mandrel, because it has been held that rearrangement of parts is an obvious design choice when it does not change the operation of the device (In re Japikse, 181 F.2d 1019, 86 USPQ 70; MPEP 2144.04 (VI)(C))
Regarding claim 14, as best understood, Swietlik discloses a spring stack (27+28, fig. 2, par. 0141) that contains a second spring (28, fig. 2). However, Swietlik does not expressly disclose wherein the second spring comprises between 75 and 90 percent of an entire length of the spring stack. It does however teach that the second spring can be approximately 50% of the length of the stack (fig. 2). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Swietlik to have wherein the second spring comprises between 75 and 90 percent of an entire length of the spring stack, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984).
Claim 15 -17 are rejected under 35 U.S.C. 103 as being unpatentable over Swietlik et al. (US 2011/0198126 A1), hereinafter Swietlik in view of Zabcik (4,246,765), hereinafter Zabick.
Regarding claim 15, Swietlik further discloses a first and second spring (27+28, fig. 2, par. 0141) but fails to explicitly disclose wherein the second spring has a higher spring constant than the first spring.
Zabick teaches a similar device in the same field of shock absorbers wherein one spring set can have a higher spring constant than the other set or that the spring constants can be substantially the same (col. 2 line 63 to col. 3 line 3 of Zabick).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Swietlik to incorporate that the second spring set having a higher spring constant than the first spring constant of Zabick in order to allow a diversity of shock absorption under different conditions (col. 6 line 47 to col. 7 line 35 of Zabick).
Regarding claim 16, as best understood, Swietlik further discloses wherein: both the first spring and the second spring (27+28, fig. 2, par. 0141), but fails to disclose wherein: both the first spring and the second spring are active when a tension or compression force on the vibration mitigation tool is below a specified threshold; and only the second spring is active and the first spring is at a maximum compression when the tension or compression force on the vibration mitigation tool is above the specified threshold.
Zabick teaches a similar device in the same field of shock absorbers wherein both the first spring and the second spring (111 and 112, col. 6 line 47 to col. 7 line 35 of Zabick) are active when a tension or compression force on the vibration mitigation tool is below a specified threshold (col. 6 line 47 to col. 7 line 35 of Zabick); and only the second spring is active and the first spring is at a maximum compression when the tension or compression force on the vibration mitigation tool is above the specified threshold (col. 6 line 47 to col. 7 line 35 of Zabick).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Swietlik to incorporate that both the first spring and the second spring are active when a tension or compression force on the vibration mitigation tool is below a specified threshold; and only the second spring is active and the first spring is at a maximum compression when the tension or compression force on the vibration mitigation tool is above the specified threshold of Zabick in order to allow a diversity of shock absorption under different conditions (col. 6 line 47 to col. 7 line 35 of Zabick).
With respect to claim 17, Zabick in view Swietlik disclose wherein the specified threshold is selected to prevent damage to the first spring due to over-compression (wherein the second spring is preventing the first spring from being over-compressed, see column 7 lines 9-35).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Swietlik et al. (US 2011/0198126 A1), hereinafter Swietlik in view of Young (US 3871193 A), hereinafter Young.
Regarding claim 18, Swietlik further discloses a spring stack (27+28, fig. 2, par. 0141), but fails to explicitly to disclose a progressive spring rate.
Young teaches a similar device in the same field of shock absorbers wherein the spring stack provides a progressive spring rate (col. 4 lines 51-67 of Young).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the spring stack of Sweitlik to incorporate the progressive spring rate of Young in order to allow the vibration mitigation tool to “operate effectively during drilling near the surface and continue to operate effectively as the hole penetrates deeper into the earth” (col. 4 lines 51-67 of Young).
Allowable Subject Matter
Claims 6 and 8-10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Regarding claim 6, there is no clear spline block or obvious modification.
Regarding claims 8-10, there is no clear spline body or obvious modification.
Regarding claim 20, Swietlik fails to teach fluid flowing continuously within all three portions of the lubrication chamber. Neither would it be possible to modify the chambers to be fluidly connected only within the device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Reimers (US 20170342781 A1) – fig. 2 shows a spring stack that two springs which appears to be approximately in a percentage of 25% to 75% so that the one spring is 75 of the total spring stack.
Wassell et al. (US 20140224537 A1) – dampener with two springs with one spring that has a higher spring constant than the other spring (par. 0138 and 0158-0159).
Garret (US 4434863 A) – Dampener with a variable spring rate.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Railey whose telephone number is (571)270-7353. The examiner can normally be reached M-F (8-4).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tara Schimpf can be reached at (571) 270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A RAILEY/Examiner, Art Unit 3676
/Nicole Coy/Supervisory Patent Examiner, Art Unit 3672