DETAILED ACTION
The amendment filed 4/22/2026 has been entered.
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 .
Terminal Disclaimer
The terminal disclaimer filed on 4/22/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of USP 12385339 has been reviewed and is accepted. The terminal disclaimer has been recorded. The previous non-statutory double patenting rejection has been withdrawn.
Response to Arguments
Applicant's arguments filed 4/22/2026 have been fully considered but they are not persuasive. The previously applied 112 rejections have been reconsidered with the amendment filed 4/22/2026, but all claims remain considered indefinite as it remains unclear how one of ordinary skill would calculate or determine being configured as “symmetrical” as claimed. Further, the amendment filed 4/22/2026 appears to introduce new matter as support is not found in the specification as filed for the limitation “wherein the generally symmetrical configuration is configured to provide resistance to relative movement in opposing axial directions between the tubular and the stroke sleeve such that a difference in resistance in the opposing axial directions is no greater than [20, 10 or 3] percent” as in claims 1-3.
In regard to the rejections under 102, Applicant argues that Johnson does not disclose outer teeth as claimed, as the outer teeth of Johnson are designed to provide one-way movement and therefore do not satisfy the limitation of providing generally equal resistance to relative movement in opposite axial directions. The examiner respectfully disagrees because the claim is directed to “an internal slip” which is “configured” as argued, but this configuration depends on the engagement with a stroke sleeve. In Johnson, the outer teeth themselves, as having the same shape as those instantly disclosed (e.g. as being dome shaped, see fig 12), would necessarily be similarly configured. While the examiner agrees that the engagement with the stroke sleeve as disclosed in Johnson would provide a different result, the claim itself is to the slip only.
Applicant also argues that Clark nor Claycomb disclose that their respective outer teeth are symmetrical within 20 percent or configured to provide generally equal resistance to relative movement. However, considering that it is not clear how one of ordinary skill would calculate being “within 20 percent” symmetrical or determine as being configured to provide generally equal resistance as claimed, the boundaries of such a determination are unclear and Clark and Claycomb remain considered to provide these limitations.
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 1-10 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.
Claim 1 recites “wherein the generally symmetrical configuration is configured to provide resistance to relative movement in opposing axial directions between the tubular and the stroke sleeve such that a difference in resistance in the opposing axial directions is no greater than 20 percent”. However, the examiner does not find support in the specification as filed for this limitation and therefore it is considered new matter.
Claim 2 recites “wherein the substantially symmetrical configuration is configured to provide resistance to relative movement in opposing axial directions between the tubular and the stroke sleeve such that a difference in resistance in the opposing axial directions is no greater than 10 percent”. However, the examiner does not find support in the specification as filed for this limitation and therefore it is considered new matter.
Claim 3 recites “wherein the ideally symmetrical configuration is configured to provide resistance to relative movement in opposing axial directions between the tubular and the stroke sleeve such that a difference in resistance in the opposing axial directions is no greater than 3 percent”. However, the examiner does not find support in the specification as filed for this limitation and therefore it is considered new matter.
Claims 4-10 are also rejected under 112(a) as containing new matter as being dependent on claim 1.
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 1-10 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. Claims 1-3 each lack antecedent basis for “the tooth” in lines 13, 4, and 4, respectively and are therefore indefinite.
Claims 1-3 recite a second set of teeth “wherein one or more of the second set of teeth” are “generally symmetrical” (e.g. as in claim 1), “substantially symmetrical” (e.g. as in claim 2), and/or “ideally symmetrical” (e.g. as in claim 3) “between opposing sides of the tooth about the centerline”. Although these limitations have been interpreted as indicated in the specification to provide for “symmetry” within some percentage (see paragraph 14), it is not clear how one of ordinary skill would calculate such a symmetry percentage and therefore these recitations are indefinite.
Claims 1-3 also recite “wherein the [generally, substantially, or ideally] symmetrical configuration is configured to provide resistance to relative movement in opposing axial directions between the tubular and the stroke sleeve such that a difference in resistance in the opposing axial directions is no greater than [20, 10 or 3] percent”. However, it is not clear how one of ordinary skill would determine or calculate the ”resistance to relative movement […] such that a difference in resistance in the opposing axial directions is no greater than [20, 10 or 3] percent” and therefore these recitations are indefinite.
Claims 4-10 are also indefinite as being dependent on an indefinite claim.
Claim Rejections - 35 USC § 102
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, and 7-9 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Johnson (US 2,887,754).
In regard to claim 1, Johnson discloses an internal slip, comprising: a tubular (100, as in figs 11-14), the tubular having a tubular inner diameter (as in fig 11 or 13) and a tubular outer diameter (as in fig 11 or 13); a first set of teeth (101) disposed along the tubular inner diameter, the first set of teeth configured to engage with base teeth disposed on a base outer diameter of a base positioned radially inside of the tubular (configured to perform as shown); and a second set of teeth (108 in fig 11-12 or 110 in fig 13-14) disposed along the tubular outer diameter, the second set of teeth configured to engage with stroke sleeve teeth disposed on a stroke sleeve inner diameter of a stroke sleeve positioned radially outside of the tubular (as shown in figs 12 and 14, as engaging with teeth on 103), wherein one or more of the second set of teeth are generally symmetrical about a centerline thereof (col. 7, lines 14-19), wherein generally symmetrical corresponds to a deviation of no more than 20 percent between opposing sides of the tooth about the centerline (as in fig 12, or 14), and wherein the generally symmetrical configuration is configured to provide resistance to relative movement in opposing axial directions between the tubular and the stroke sleeve such that a difference in resistance in the opposing axial directions is no greater than 20 percent (as shown would be “configured” as such, depending on the stroke sleeve, as any non-symmetry in Johnson appears a result of the shape of the stroke sleeve, which does not appear positively recited within the claim).
In regard to claim 2, Johnson discloses wherein the one or more of the second set of teeth are substantially symmetrical about the centerline thereof (col. 7, lines 14-19 as described are considered exactly symmetrical), wherein substantially symmetrical corresponds to a deviation of no more than 10 percent between opposing sides of the tooth about the centerline, and wherein the substantially symmetrical configuration is configured to provide resistance to relative movement in opposing axial directions between the tubular and the stroke sleeve such that a difference in resistance in the opposing axial directions is no greater than 10 percent (as shown would be “configured” as such, depending on the stroke sleeve, as any non-symmetry in Johnson appears a result of the shape of the stroke sleeve, which does not appear positively recited within the claim).
In regard to claim 3, Johnson discloses wherein the one or more of the second set of teeth are ideally symmetrical about the centerline thereof (col. 7, lines 14-19 as described are considered exactly symmetrical), wherein ideally symmetrical corresponds to a deviation of no more than 3 percent between opposing sides of the tooth about the centerline, and wherein the ideally symmetrical configuration is configured to provide resistance to relative movement in opposing axial directions between the tubular and the stroke sleeve such that a difference in resistance in the opposing axial directions is no greater than 3 percent (as shown would be “configured” as such, depending on the stroke sleeve, as any non-symmetry in Johnson appears a result of the shape of the stroke sleeve, which does not appear positively recited within the claim).
In regard to claim 7, Johnson discloses wherein tips of the one or more of the second set of teeth that are generally symmetrical are in a shape of an arc (as in fig 12, 14, col. 7, lines 14-19).
In regard to claim 8, Johnson discloses wherein the first set of teeth (101) are not generally symmetrical about a different centerline thereof (fig 11 or 13 as shown, as distinct from teeth 108 specifically recited as symmetrical).
In regard to claim 9, Johnson discloses wherein the tubular has a first end and a second end, and further wherein the tubular is circumferentially discontinuous proximate the second end (as in fig 8, where slip 61 shown as discontinuous; where slips 100 from fig 11 or 13 in use would be placed as 61 in fig 8).
Claim(s) 1, 4-6, and 8 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Clark, Jr., et al. (US 2,998,073).
In regard to claim 1, Clark Jr., et al. disclose an internal slip, comprising: a tubular (95, as in fig 3, 5), the tubular having a tubular inner diameter (IDt) and a tubular outer diameter (ODt); a first set of teeth (95) disposed along the tubular inner diameter (IDt), the first set of teeth configured to engage with base teeth disposed on a base (10), as in fig 3, 5) outer diameter (ODB) of a base positioned radially inside of the tubular; and a second set of teeth (97) disposed along the tubular outer diameter (ODt), the second set of teeth configured to engage with stroke sleeve teeth disposed on a stroke sleeve inner diameter of a stroke sleeve positioned radially outside of the tubular, wherein one or more of the second set of teeth are generally symmetrical (as shown where it is not clear how “generally symmetrical” may be determined as within 20% of symmetrical, see 112 above and it appears the teeth shown by Clark, Jr. et al. may be considered within 20% of symmetrical) about a centerline thereof, wherein generally symmetrical corresponds to a deviation of no more than 20 percent between opposing sides of the tooth about the centerline (as in fig 5, also see 112 above where it is not clear how this is calculated), and wherein the generally symmetrical configuration is configured to provide resistance to relative movement in opposing axial directions between the tubular and the stroke sleeve such that a difference in resistance in the opposing axial directions is no greater than 20 percent (as shown would be “configured” as such, depending on the stroke sleeve, which does not appear positively recited within the claim).
Alternatively, if the second set of teeth of Clark, Jr. et al. are not considered as generally symmetrical, it is considered obvious to one of ordinary skill in the art at the time of effective filing to provide the second set of teeth of Clark, Jr. as “generally symmetrical” (as within 20% of symmetrical) since any degree of asymmetry would appear to provide the conditions necessary as taught by Clark, Jr. (as providing a ratcheting angle).
In regard to claim 4, Clark et al. disclose wherein tips of the one or more of the second set of teeth that are generally symmetrical are in a shape of a polygon (as being triangular, fig 5).
In regard to claim 5, Clark, Jr. et al. disclose wherein sidewalls of the tips of the one or more of the second set of teeth that are generally symmetrical are angled relative to the centerline (as in fig 5).
In regard to claim 6, Clark Jr. et al. disclose wherein tips of the one or more of the second set of teeth that are generally symmetrical are in a shape of a triangle (as in fig 5).
In regard to claim 8, Clark Jr. et al. disclose wherein the first set of teeth are not generally symmetrical about a different centerline thereof (fig 5).
Claim(s) 1, 4-5, and 8-10 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Claycomb (US 3,344,861).
In regard to claim 1, Claycomb discloses an internal slip, comprising: a tubular (91, as in fig 4a), the tubular having a tubular inner diameter (IDt) and a tubular outer diameter (ODt); a first set of teeth (98) disposed along the tubular inner diameter (IDt), the first set of teeth configured to engage with base teeth disposed on a base (81) outer diameter (ODB) of a base positioned radially inside of the tubular (as in fig 4A); and a second set of teeth (95) disposed along the tubular outer diameter (ODt), the second set of teeth configured to engage with stroke sleeve teeth disposed on a stroke sleeve inner diameter (IDss) of a stroke sleeve positioned radially outside of the tubular (as engaging 12), wherein one or more of the second set of teeth are generally symmetrical about a centerline thereof (as shown where it is not clear how “generally symmetrical” may be determined as within 20% of symmertrical, see 112 above), wherein generally symmetrical corresponds to a deviation of no more than 20 percent between opposing sides of the tooth about the centerline (as in tooth 94 in fig 4a, where it appears tooth is generally symmetrical, also see 112 above where it is not clear how this is calculated), and wherein the generally symmetrical configuration is configured to provide resistance to relative movement in opposing axial directions between the tubular and the stroke sleeve such that a difference in resistance in the opposing axial directions is no greater than 20 percent (as shown would be “configured” as such, depending on the stroke sleeve, which does not appear positively recited within the claim).
Alternatively, if the second set of teeth of Claycomb are not considered as generally symmetrical, it is considered obvious to one of ordinary skill in the art at the time of effective filing to provide the second set of teeth of Claycomb as “generally symmetrical” (as within 20% of symmetrical) since any degree of asymmetry would appear to provide the conditions necessary as taught by Claycomb (as providing an engaging surface).
In regard to claim 4, Claycomb discloses wherein tips of the one or more of the second set of teeth that are generally symmetrical are in a shape of a polygon (as in fig 4A).
In regard to claim 5, Claycomb discloses wherein sidewalls of the tips of the one or more of the second set of teeth that are generally symmetrical are angled relative to the centerline (as in fig 4A).
In regard to claim 8, Claycomb discloses wherein the first set of teeth are not generally symmetrical about a different centerline thereof (where centerline may be arbitrarily defined as being a “different” centerline, fig 4A).
In regard to claim 9, Claycomb discloses wherein the tubular has a first end and a second end, and further wherein the tubular is circumferentially discontinuous proximate the second end (at bottom end of 90 as in fig 4A).
In regard to claim 10, Claycomb discloses wherein the tubular is circumferentially continuous proximate the first end (at top of 90 at 91 as shown in fig 4A), and further including four or more slots in the second end of the tubular forming the circumferentially discontinuous second end (at lower end of 90 as shown in fig 4A), the four or more slots configured to reduce a radial stiffness of the tubular (as would perform).
Claim Rejections - 35 USC § 103
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) 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Claycomb in view of Douglas et al. (US 2019/0072215).
Claycomb discloses all the limitations of these claims, as applied to claim 1 above, except for the tips of the one or more second set of teeth in a shape of a triangle or arc.
In regard to claims 6 and 7, Douglas et al. disclose that threads may have a tip in a shape of a triangle or arc (paragraphs 21-22, also for example as shown in figs 2B which may be considered both triangular and arc shaped). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the second set of teeth of Claycomb with tips in either a triangle or arc, as taught by Douglas et al., since simple substitution of one known element for another (thread tip shape) to obtain predictable results is considered obvious to one of ordinary skill.
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 D Andrews whose telephone number is (571)272-6558. The examiner can normally be reached M-F, 7-3.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at 571-272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/D. ANDREWS/Primary Examiner, Art Unit 3672
6/8/2026
Prosecution Insights