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 .
Drawings
The drawings are objected to because they are grey scale and of poor line quality. Every line, number, and letter must be durable, clean, black, sufficiently dense and dark, and uniformly thick and well-defined. See MPEP 608.02 and 37 CFR 1.84.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 2-4 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 11-12 of prior U.S. Patent No. 12,429,049. This is a statutory double patenting rejection. Note: Applicant has moved limitations / alternative limitations from the independent claims in the patent to the new dependent claims in the present application.
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, 5-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 10-13 of U.S. Patent No. 12,429,049. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are only broader/narrower than the patented claims. Under the same logic that a narrower species will always anticipate the broader genus (MPEP §2131.02, subsection 1), and that a generic disclosure will anticipate a claimed species covered by that disclosure even when the reference describes the limitations but does not expressly spell out the limitations (MPEP §2131.02, subsection III), claims which are only narrower cannot be held patentably distinct from claims which are only broader.
Present claims 1, 5-7 is/are only broader/narrower than patented claims 1-4, 10-13 through their alternative shifting of independent/dependent limitations (e.g. claim 1 of the present application is broader than patented claim 1 by generically reciting “mounting component” where patent claim 1 recites a flange or flow block; etc…) and overlapping alternative limitations and/or nomenclature (e.g. flange / flow block; portion having a wall thickness greater than the lubricator body wall thickness / widest and lowest portion of the lubricator; etc…).
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) 1-5, 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Casey (US 20170044882).
Regarding claim 1, Casey teaches: A plunger lubricator comprising:
(a) a lubricator body (Casey comprising at least one of near 11, 50, 22, 60 [0044, 0046-0089]) defining an internal longitudinal bore (Casey 54) and having a wall thickness (Casey near 50);
(b) an upper lubricator assembly (Casey comprising 52) capping an upper end of the lubricator body;
(c) a mounting component (Casey near one of 22/98/58/26) for mounting the lubricator body to a wellhead component; and
(d) a plunger catcher (Casey 26) positioned below the lubricator body in a portion of the lubricator having a wall thickness greater (Casey see increase in thickness near 26 in Fig. 4-6; near 22 Fig. 7) than the lubricator body wall thickness.
Regarding claim 2, Casey teaches: The plunger lubricator of claim 1 wherein the mounting component is a lower flange (Casey near one of 22/98/58/26).
Regarding claim 3, Casey teaches: The plunger lubricator of claim 1 wherein the mounting component is a flow block (Casey near one of 22/98/58/26).
Regarding claim 4, Casey teaches: The plunger lubricator of claim 1 wherein the plunger catcher is positioned (Casey near 22/58) in the widest and/or lowest portion of the lubricator.
Regarding claim 5, Casey teaches: The plunger lubricator of claim 1 comprising a one-piece integral (Casey Figs. 5-6 / Figs. 7-9) lubricator body comprising an upper cylindrical portion (Casey near 50) and the mounting component (Casey near 58/22), and the plunger lubricator is positioned in the mounting component.
Regarding claim 7, Casey teaches: The plunger lubricator of claim 5 wherein the mounting component is a flow block (Casey Fig. 5-6).
Prior Art
The following prior art made of record and not relied upon is considered pertinent to Applicant's disclosure.
Ricker (US 1836874) teaches a lubricator comprising a plunger catch in the widest body portion of the lubricator.
Fletcher (US 2030436) teaches a lubricator comprising a plunger catch installed in the widest and lowest body portion of the lubricator.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David Carroll whose telephone number is (571)272-4808. The examiner can normally be reached M-F 2:00-10:00 PM EDT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at (571) 272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/David Carroll/ Primary Examiner, Art Unit 3674