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 .
Response to Arguments
Applicant’s response of 6/29/26 has been entered. The amendments have resolved the previously presented claim objections. The examiner notes that applicant has not addressed the double patenting rejection, which is presented again below (stating, “no action is taken at this time”). The examiner notes that the rejection will not be held in abeyance and further requests for abeyance may result in applicant’s filing being deemed non-responsive.
Applicant's arguments filed 6/29/26 have been fully considered but they are not persuasive.
Applicant argues that the amended features are not taught. The examiner respectfully disagrees and notes the indefiniteness of the new recitation. As best understood, Downton does teach the recited limitation, as discussed in the prior art rejection below. The examiner notes for applicant the broad definition of a “deformation”, see e.g. https://www.merriam-webster.com/dictionary/deformation, is “alteration of form or shape”. The feature identified as deformation 224/218, alters the form/shape of the housing 210.
Please note a recitation requiring the housing to be a single-piece unitary structure would preclude the examiner’s broad but reasonable interpretation.
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 1-18 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.
Claim 1, as amended, recites “the tubular housing is deformed radially inward after the stator section is positioned inside the housing”. The claim is directed to “A progressive cavity assembly” and therefore is a product claim. However, the claim appears to be reciting a method of manufacturing step (“the tubular housing is deformed radially inward after the stator section is positioned inside the housing”). It is unclear whether applicant is attempting to require a particular process steps, as its present phrasing suggests. It is noted that MPEP 2173.05(p) that a recitation of a product-by-process is only acceptable when “it is clear that the claim is directed to the product and not the process.” That clarity is not present in the instant claim. For the purpose of examination the examiner understands any structure in which the housing is deformed radially inward to meet the limitation.
Dependent claims 2-18 are rejected for depending from an indefinite claim.
Claim Rejections - 35 USC § 102/103
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.
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) 1-14 and 18 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Downton (US 20090169364 A1).
Regarding claim 1, Downton teaches a progressive cavity assembly, comprising:
a stator (Fig 2, 200) comprising:
a tubular housing (Fig 2, 210 and 224/218); and
at least one stator section (Fig 2, 202) having a helical stator profile formed therein (Fig 2, Abstract, bore 206 is a “profiled helical bore”),
in which a wall of the tubular housing is deformed radially inward after the stator section is positioned inside the housing (Fig 2, deformation 224/218 constituted a portion of the outer wall of the tubular housing in the assembled state as seen. It extends radially inward into the stator section 202, which to fit in the recess, implicitly occurs after its placement. See also MPEP 2113(I) in which “The patentability of a product does not depend on its method of production.”), and the deformation of the housing (Fig 2, deformation 224/218, alters the form/shape of the housing 210) secures the stator section in the housing (Fig 2, 224/218 would secure the components together at least by resisting rotational movement).
Under an alternate interpretation, consistent with MPEP 2113(III), in which the deformation occurs after the stator section is positioned inside the housing is not explicitly taught, the limitation is obvious.
Downton teaches a deformation located within the stator section (Fig 2, deformation 224/218 constituted a portion of the outer wall of the tubular housing in the assembled state as seen. It extends radially inward into the stator section 202).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Downton by having the deformation occurs after the stator section is positioned inside the housing because, although it’s not clear how the deformation could be positioned inside the housing prior to the placement of the deformation, even if it were possible, placement after the after the stator section is positioned inside the housing would be a mere matter of selecting an order of performing the process steps and it has been held the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, see also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) and MPEP 2144.04(IV)(C).
Regarding claim 2, Downton teaches in which each deformation of the housing extends into a recess on the stator section (Fig 2, deformation 224/218 is fit within recess of stator section 202, as seen).
Regarding claim 3, Downton teaches a lining installed in the stator section (Fig 2, lining 208).
Regarding claim 4, Downton teaches in which the lining comprises an elastomeric material (Para 0068, “a sleeve 208, which can be a resilient material (e.g., elastomer)”).
Regarding claim 5, Downton teaches a plurality of the stator sections (Fig 2, sections 202 and 208), and in which relative rotation between adjacent ends of the stator sections is prevented (Fig 2, rotation between the ends of 202 and 208 would be resisted by virtue of its helically fit profile).
Regarding claim 6, Downton teaches a rotor configured to produce fluid flow between the rotor and the stator in response to rotation of the rotor in the stator (Para 0002-0003, rotor is used in a PCP pump).
Regarding claim 7, Downton teaches in which the rotor is configured to contact the stator section as the rotor rotates in the stator (Para 0003).
Regarding claim 8, Downton teaches in which the rotor is configured to contact a lining in the stator section as the rotor rotates in the stator (Fig 2, Para 0003, lining 208 would be contacted as occupying the entire inner bore).
Regarding claim 9, Downton teaches a rotor configured to rotate in the stator in response to fluid flow between the rotor and the stator (Para 0002-0003, rotor is used in a PCP pump).
Regarding claim 10, Downton teaches in which the rotor is configured to contact the stator section as the rotor rotates in the stator (Para 0003, Para 0068, Fig 2, note the sleeve 208 shown is optional and thus 202 would be contacted).
Regarding claim 11, Downton teaches in which the rotor is configured to contact a lining in the stator section as the rotor rotates in the stator (Para 0003, Para 0068, Fig 2, the sleeve 208 would be contacted).
Regarding claim 12, Downton teaches the stator comprises multiple stator sections (Fig 2, sections 202 and 208), and in which the stator sections are secured to each other without any weld (Fig 2, Para 0068, 208 is elastomeric and thus is not welded).
Regarding claim 13, Downton teaches the stator comprises multiple stator sections (Para 0003, Para 0068, Fig 2, note the sleeve 208 shown is optional), and in which the stator sections are secured to the housing without any weld (Fig 2, Para 0068, 208 secured via 202 and thus not welded; 202 is “cast” and thus also not welded).
Regarding claim 14, Downton teaches in which the stator section comprises a single stator section (Fig 2, section 202).
Regarding claim 18, Downton teaches in which a wear resistant treatment is applied to the stator section (Fig 2, wear resistant treatment occurs via sleeve 208).
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) 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Downton (US 20090169364 A1), in view of Riordan (US 4207037 A).
Regarding claim 15, Downton is silent on the stator section is interference fit in the outer housing.
Riordan teaches the stator section is interference fit in the outer housing (Fig 4, Column 3, line 36-43).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Downton by having the stator section is interference fit in the outer housing as disclosed by Riordan because it results in a fluid seal between housing and stator and “It is very important that fluid be prevented from migrating around the outside of the stator sections and flowing between the stator sections and the housing since this will cause rapid erosion of the elastomeric material and greatly shorten their life” (Column 3, line 51-52).
Regarding claim 16, Downton is silent on the stator comprises multiple stator sections, the stator sections having respective different outer diameters, and in which multiple bores having respective different inner diameters are formed in the outer housing.
Riordan teaches a plurality of the stator sections (Fig 1, sections 13-15), the stator sections having respective different outer diameters (Fig 4, different ODs seen), and in which multiple bores having respective different inner diameters are formed in the outer housing (Fig 1, sections have varying IDs, as seen; see also Fig 4, Column 3, line 36-43).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Downton by having the stator comprise multiple stator sections, with the stator sections having respective different outer diameters, and in which multiple bores having respective different inner diameters are formed in the outer housing as disclosed by Riordan because it results in a fluid seal between housing and stator and “It is very important that fluid be prevented from migrating around the outside of the stator sections and flowing between the stator sections and the housing since this will cause rapid erosion of the elastomeric material and greatly shorten their life” (Column 3, line 51-52).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Downton (US 20090169364 A1), in view of Nagel (US 4324299 A).
Regarding claim 17, Downton is silent on in which the stator section comprises a more wear resistant material than the outer housing.
Nagel teaches the stator section comprises a more wear resistant material than the outer housing (Column 4, lines 64-68, stator is made from more wear resistant hard beryllium copper alloy compared to the steel of the housing).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Downton by using the materials disclosed by Nagel for the stator section and its housing because Nagel teaches the use of specific materials used in a downhole stator/housing arrangement which would result in the stator being tightly fitted in the housing during high thermal situations found in-use (Column 4, lines 64-68).
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 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 19386634 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are broader (e.g. require a single stator section as opposed to the multiple stator sections recited in the reference application).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 14-18 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 19386634 in view of Downton (US 20090169364 A1), Riordan (US 4207037 A), and/or Nagel (US 4324299 A). Those reference(s) teach any missing subject matter and incorporation of Riordan (US 4207037 A), and/or Nagel (US 4324299 A) would be obvious for the reason(s) discussed in the prior art rejection above. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention of by having the features as disclosed by Downton because it would allow for the inclusion of useful means in the motor system.
This is a provisional nonstatutory double patenting rejection.
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 THEODORE N YAO whose telephone number is (571)272-8745. The examiner can normally be reached typically 8am-4pm ET.
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, 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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/THEODORE N YAO/Primary Examiner, Art Unit 3676
Prosecution Insights