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 .
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.
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Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12338857 to Gonzalez et al. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 1 is anticipated by patent claim 1.
Patent claim 1 of Gonzalez recites a bearing assembly (col. 14, l. 34), comprising: a first bearing member comprising a first superhard surface (col. 14, ll. 35 – 36: “a first bearing ring comprising a first plurality of superhard bearing elements”); a second bearing member comprising a second superhard surface (col. 14, ll. 37 – 38: “a second bearing ring comprising a second plurality of superhard bearing elements“), the second superhard surface positioned adjacent to the first superhard surface to provide a bearing interface between the first bearing member and the second bearing member (col. 14, ll. 38 – 43: “the second plurality of superhard bearing elements positioned to contact the first plurality of superhard bearing elements of the first bearing ring and provide a bearing interface to facilitate rotation of the first bearing ring relative to the second bearing ring”); and a coupler coupled to one of the first bearing member or the second bearing member (col. 14, ll. 44 – 48: “the coupler configured to slide in an axial direction relative to the one of the first bearing member or the second bearing member”).
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12338857 to Gonzalez et al. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 2 is anticipated by patent claim 1.
Patent claim 1 of Gonzalez recites the coupler is inhibited from rotating relative to the one of the first bearing member or the second bearing member (col. 14, ll. 44 – 48).
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12338857 to Gonzalez et al. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 3 is anticipated by patent claim 1.
Patent claim 1 of Gonzalez recites at least one of the first superhard surface or the second superhard surface is comprised of a plurality of superhard bearing elements (col. 14, ll. 35 – 36 and col. 14, ll. 37 – 38).
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12338857 to Gonzalez et al. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 4 is anticipated by patent claim 8.
Patent claim 1 of Gonzalez recites the plurality of superhard bearing elements comprises polycrystalline diamond compacts (col. 15, ll. 3 – 6: “the first plurality of superhard bearing elements and the second plurality of superhard bearing elements comprise polycrystalline diamond compacts”).
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12338857 to Gonzalez et al. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 5 is anticipated by patent claim 1.
Patent claim 1 of Gonzalez recites first bearing member is configured to rotate relative to the second bearing member (col. 14, ll. 38 – 43).
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 of U.S. Patent No. 12338857 to Gonzalez et al. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 6 is not patentably distinct from patent claim 21.
Patent claim 21 to Gonzalez depends from reference claim 19 and therefore includes a bearing assembly comprising a first bearing ring comprising a first row of superhard bearing elements arranged around an axis of rotation providing a first bearing surface, a second bearing ring comprising a second row of superhard bearing elements arranged around an axis of rotation providing a second bearing surface positioned adjacent the first bearing surface of the first bearing ring, the second bearing ring configured for rotation relative to the first bearing ring about the axis of rotation, and a coupler configured to rotate with the second bearing ring and move in an axial direction relative to the second bearing ring, wherein the second bearing ring is secured to the first bearing ring in order to substantially prevent axial movement and lateral movement between the first bearing ring and the second bearing ring.
Application claim 6 depends from application claims 1 and 5 and further recites that the first bearing member is configured to remain substantially fixed in an axial direction relative to the second bearing member.
Patent claim 21 to Gonzalez expressly teaches substantially preventing axial movement between the first bearing ring and the second bearing ring while permitting relative rotation. The limitation of application claim 6 requiring the first bearing member to remain substantially fixed in an axial direction relative to the second bearing member corresponds to the substantially prevented axial movement relationship recited in patent claim 21 to Gonzalez.
Accordingly, application claim 6 merely recites an obvious variation of the axial retention arrangement already claimed in patent claim 21 to Gonzalez and does not render the claimed subject matter patentably distinct therefrom.
Therefore, application claim 6 merely constitutes an obvious variation of the invention claimed in patent claim 21 to Gonzalez and is not patentably distinct therefrom.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12338857 to Gonzalez et al. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 7 is anticipated by patent claim 1.
Patent claim 1 of Gonzalez recites the first bearing member comprises a first bearing ring (col. 14, ll. 35 – 36).
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12338857 to Gonzalez et al. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 8 is anticipated by patent claim 1.
Patent claim 1 of Gonzalez recites the second bearing member comprises a second bearing ring (col. 14, ll. 37 – 38).
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12338857 to Gonzalez et al. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 9 is anticipated by patent claim 4.
Patent claim 4 of Gonzalez recites the coupler comprises an axially extending interface between the coupler and the one of the first bearing member or the second bearing member having a polygonal-shaped lateral cross-section (col. 14, ll. 59 – 62: “the mating feature comprises an axially extending interface between the coupler and the second bearing ring having a polygonal-shaped lateral cross section”).
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12338857 to Gonzalez et al. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 10 is anticipated by patent claim 6.
Patent claim 6 of Gonzalez recites the coupler comprises a protrusion located in an axially extending channel (col. 14, ll. 65 – 67: “the mating feature comprises a protrusion located in an axially extending channel”).
Claim 11 us rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12338857 to Gonzalez et al. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 11 is not patentably distinct from patent claim 1 to Gonzalez.
Application claim 11 is not patentably distinct from patent claim 1 to Gonzalez because the only additional limitation is “unsealed and exposed to an environment surrounding the bearing assembly.” Patent claim 1 to Gonzalez does not require the bearing interface to be sealed and therefore reasonably encompasses both sealed and unsealed bearing configurations.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12338857 to Gonzalez et al. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 12 is anticipated by patent claim 5.
Patent claim 5 of Gonzalez recites the coupler further comprising a mating surface comprised of a hardened material (col. 14, ll. 59 – 65: “the mating feature comprises an axially extending interface between the coupler and the second bearing ring having a polygonal-shaped lateral cross section (patent claim 4), wherein hardened surfaces define the axially extending interface”).
Claim 13 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. U.S. Patent No. 12338857 to Gonzalez et al. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 13 is not patentably distinct from patent claim 1 to Gonzalez.
Application claim 13 depends from claim 1 and further recites a mixer comprising a mixing blade drive shaft coupled to the bearing assembly. Reference claim 1 teaches the bearing assembly structure recited in the application claim 13 through its dependency from claim 1. The additionally recited mixer and mixing blade drive shaft limitations merely identify an intended use or operating environment for the bearing assembly. One of ordinary skill in the art would have recognized that the bearing assembly of reference claim 1 is suitable for use in rotation equipment, including mixers employing mixing blade drive shafts. Accordingly, the additional limitation including the mixer and the mixing blade drive shaft does not render application claim 13 patentably distinct from reference claim 1.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12338857 to Gonzalez et al. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 14 is anticipated by patent claim 19.
Patent claim 19 of Gonzalez recites a bearing assembly (col. 16, l. 25), comprising: a first bearing ring comprising a first superhard surface (col. 16, ll. 26 – 27: “a first bearing ring comprising a first row of superhard bearing elements”); a second bearing ring comprising a second superhard surface, the second superhard surface positioned adjacent to the first superhard surface to provide a bearing interface between the first bearing ring and the second bearing ring (col. 16, ll. 29 – 33: “a second bearing ring comprising a second row of superhard bearing elements arranged around an axis of rotation providing a second bearing surface positioned adjacent the first bearing surface of the first bearing ring”); and a coupler configured to rotate with the first bearing ring and to slide in an axial direction relative to the first bearing ring (col. 16, ll. 36 – 38: “a coupler configured to rotate with the second bearing ring and move in an axial direction relative to the second bearing ring”).
Claims 15 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12338857 to Gonzalez et al. Although the claims at issue are not identical, they are not patentably distinct from each other because application claims 15 and 16 are not patentably distinct from patent claim 14 to Gonzalez.
Patent claim 14 to Gonzalez recites a method of accommodating axial movement between members of a system in relative rotation, the method comprising fixably connecting a first member of the system to a first bearing ring comprising a first plurality of superhard bearing elements, fixably connecting a second member of the system to a coupler coupled to a second bearing ring comprising a second plurality of superhard bearing elements, rotating the second member relative to the first member, and sliding the coupler axially relative to the second bearing ring to accommodate axial movement between the first member and the second member while maintaining axial alignment of the superhard bearing elements.
Examined claim 15 depends from claim 14 and further recites that the coupler is configured to rotationally couple the first bearing ring to a drive shaft. Examined claim 16 depends from claim 15 and further recites that the coupler is configured to facilitate axial movement of the drive shaft relative to the first bearing ring.
Patent claim 14 to Gonzalez expressly teaches coupling a rotating system member to the coupler and accommodating axial movement between rotating members through axial sliding of the coupler relative to the bearing ring. One of ordinary skill in the art would have recognized that the rotating system member coupled to the coupler may be a drive shaft and that the coupler would rotationally couple the bearing ring to the drive shaft while permitting axial movement therebetween.
Accordingly, the additionally recited drive shaft coupling and axial movement limitations merely constitute obvious variations of the rotational coupling and axial accommodation arrangement already claimed in reference claim 14 and do not render examined claims 15 and 16 patentably distinct therefrom.
Therefore, examined claims 15 and 16 merely constitute obvious variations of the invention claimed in reference claim 14 and are not patentably distinct therefrom.
Claims 17 and 18 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 2 and 3 of U.S. Patent No. 12338857 to Gonzalez et al. Although the claims at issue are not identical, they are not patentably distinct from each other because application claims 17 and 18 are not patentably distinct from patent claim 2 and 3.
Patent claim 2 to Gonzalez depends from patent claim 1 to Gonzalez and therefore includes a bearing assembly comprising a first bearing ring comprising a first plurality of superhard bearing elements, a second bearing ring comprising a second plurality of superhard bearing elements positioned to contact the first plurality of superhard bearing elements to provide a bearing interface facilitating rotation of the first bearing ring relative to the second bearing ring, and a coupler coupled to the second bearing ring with a mating feature configured to at least partially prevent the coupler from rotating relative to the second bearing ring and to enable the coupler to translate in an axial direction relative to the second bearing ring, wherein the first bearing ring is positioned radially inside the coupler and the second bearing ring.
Patent claim 3 to Gonzalez depends from patent claim 1 to Gonzalez and therefore includes a bearing assembly wherein the second bearing ring is positioned radially inside the first bearing ring and wherein the coupler is positioned within the second bearing ring.
Application claim 17 depends from application claim 14 and further recites that at least a portion of the first bearing ring and the second bearing ring are located radially within the coupler. Patent claim 18 to Gonzalez depends from patent claim 14 to Gonnzalez and further recites that at least a portion of the coupler is located radially within the first bearing ring and the second bearing ring.
Patent claim claims 2 and 3 to Gonzalez expressly teach concentric radial arrangements between the bearing rings and the coupler, including configurations in which the bearing rings are positioned radially inside the coupler and configurations in which the coupler is positioned within a bearing ring. One of ordinary skill in the art would have recognized that the relative radial positioning of the coupler and bearing rings represents a predictable geometric arrangement of concentric bearing components and that varying whether portions of the bearing rings are radially within the coupler, or whether portions of the coupler are radially within the bearing rings, would have been an obvious matter of design choice depending upon packaging constraints, load distribution, assembly requirements, or desired dimensional configuration.
Accordingly, the additionally recited radial positioning limitations of application claims 17 and 18 merely constitute obvious variations of the concentric bearing arrangements already claimed in patent claims 2 and 3 to Gonzalez and do not render the claimed subject matter patentably distinct therefrom.
Therefore, application claims 17 and 18 merely constitute obvious variations of the inventions claimed in patent claims 2 and 3 and are not patentably distinct therefrom.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12338857 to Gonzalez et al. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 19 is anticipated by patent claim 14.
Patent claim 14 of Gonzalez recites a method of providing a bearing assembly, the method comprising: positioning a first superhard surface of a first bearing member adjacent to a second superhard surface of a second bearing member to provide a bearing interface between the first bearing member and the second bearing member; and coupling a coupler to the first bearing member with a feature that enables the coupler to slide in an axial direction relative to the first bearing member and the second bearing member (col. 15, ll. 36 – 50 to col. 16, ll. 1 – 4: “a method of accommodating axial movement between members of a system in relative rotation, the method comprising: fixably connecting a first member of the system to a first bearing ring comprising a first plurality of superhard bearing elements; fixably connecting a second member of the system to a coupler coupled to a second bearing ring, the second bearing ring comprising a second plurality of superhard bearing elements; rotating the second member of the system relative to the first member of the system; and maintaining axial alignment of the first plurality of superhard bearing elements of the first bearing ring with the second plurality of superhard bearing elements of the second bearing ring while sliding the coupler axially relative to the second bearing ring to accommodate axial movement between the first member of the system and the second member of the system”).
Claim 20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 14 of U.S. Patent No. 12338857 to Gonzalez et al. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 20 is not patentably distinct from patent claims 1 and 14.
Patent claim 14 to Gonzalez recites a method of accommodating axial movement between members of a system in relative rotation, the method comprising fixably connecting a first member of the system to a first bearing ring comprising a first plurality of superhard bearing elements, fixably connecting a second member of the system to a coupler coupled to a second bearing ring comprising a second plurality of superhard bearing elements, rotating the second member relative to the first member, and sliding the coupler axially relative to the second bearing ring to accommodate axial movement between the first member and the second member while maintaining axial alignment of the superhard bearing elements.
Patent claim 1 to Gonzalez recites a coupler coupled to the second bearing ring with a mating feature configured to at least partially prevent the coupler from rotating relative to the second bearing ring and to enable the coupler to translate in an axial direction relative to the second bearing ring.
Application claim 20 depends from claim 19 and further recites inhibiting the coupler from rotating relative to the first bearing member.
Patent claim 14 to Gonzalez teaches the claimed method of accommodating axial movement through axial sliding of the coupler relative to the bearing ring, while reference claim 1 expressly teaches inhibiting rotation of the coupler relative to the bearing ring by use of a mating feature. One of ordinary skill in the art would have recognized that the rotational inhibition feature of patent claim 1 to Gonzalez would be used in the axial sliding method of patent claim 14 to Gonzalez to maintain rotational coupling while permitting axial translation.
Accordingly, the additionally recited step of inhibiting rotation of the coupler merely constitutes an obvious variation of the method already claimed in the reference application and does not render application claim 20 patentably distinct from the invention claimed in patent claims 1 and 14 to Gonzalez.
Therefore, Application claim 20 merely constitutes an obvious variation of the invention claimed in patent claims 1 and 14 to Gonzalez and is not patentably distinct therefrom.
Conclusion
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/PHILLIP A JOHNSON/Primary Examiner, Art Unit 3617
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