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 Interpretation
Claims 1-10 include limitations “generally symmetrical about a centerline” (e.g. as in claim 1), “substantially symmetrical” (e.g. as in claim 2) and “ideally symmetrical” (e.g. as in claim 3) have been interpreted as indicated in the specification (paragraph 14) to provide for symmetry within 20 percent, 10 percent and 3 percent, respectively.
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 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 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). 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.
Further, claim 1 recites the second set of teeth “configured to engage with stroke sleeve teeth disposed on a stroke sleeve outer diameter (ODss)”. However, this recitation is indefinite as the specification does not appear to otherwise describe any teeth on an outer diameter of the stroke sleeve (other than the repeated text of claim 1, as in paragraph 36). It appears this recitation should refer to the teeth on the stroke sleeve inner diameter (IDss), and for further examination purposes will be assumed to recite such.
The remaining claims are indefinite as being dependent upon 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 (See 112 rejection above) 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).
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).
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).
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 (see 112 above) 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.
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 outer diameter (ODss) 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 and it appears the teeth shown by Claycomb may be considered within 20% of symmetrical).
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.
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark, Jr. et al. (US 2,998,073) alone.
In regard to claim 2, Clark et al. do not explicitly disclose that the one or more of the second set of teeth are substantially symmetrical (within 10%) about the centerline thereof. However, 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 “substantially symmetrical” (as within 10% of symmetrical see 112 above) since any degree of asymmetry would appear to provide the conditions necessary as taught by Clark, Jr. (as providing a ratcheting surface).
In regard to claim 3, Clark et al. do not explicitly disclose that the one or more of the second set of teeth are ideally symmetrical (within 3%) about the centerline thereof. However, 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 “ideally symmetrical” (as within 3% of symmetrical see 112 above) since any degree of asymmetry would appear to provide the conditions necessary as taught by Clark, Jr. (as providing a ratcheting surface).
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Claycomb (US 3,344,861) alone.
In regard to claim 2, Claycomb do not explicitly disclose that the one or more of the second set of teeth are substantially symmetrical (within 10%) about the centerline thereof. However, 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 “substantially symmetrical” (as within 10% of symmetrical see 112 above) 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 3, Claycomb do not explicitly disclose that the one or more of the second set of teeth are ideally symmetrical (within 3%) about the centerline thereof. However, 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 “ideally symmetrical” (as within 3% of symmetrical see 112 above) since any degree of asymmetry would appear to provide the conditions necessary as taught by Clark, Jr. (as providing a ratcheting surface).
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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,385,339. Although the claims at issue are not identical, they are not patentably distinct from each other because, for example, the examined claims are 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). Although the conflicting claims are not identical, they are not patentably distinct from each other because, for example, claim 1 is generic to all that is recited in claim 1 of U.S. Patent No. 12,385,339. In other words, claim 1 of ‘339 fully encompasses the subject matter of instant claim 1 and therefore anticipates instant claim 1. Since instant claim 1 is anticipated by claim 1 of the patent, it is not patentably distinct from instant claim 1. Thus the invention of claim 1 of the patent is in effect a “species” of the “generic” invention of instant claim 1. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since instant claim 1 is anticipated (fully encompassed) by claim 1 of the patent, instant claim 1 is not patentably distinct from claim 1 of ‘339, regardless of any additional subject matter present in claim 1 of ‘339. Instant claims 2-10 are similarly encompassed by claims 2-10 of ‘339.
Conclusion
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/D. ANDREWS/ Primary Examiner, Art Unit 3672
1/20/2026