DETAILED ACTION
The amendment filed 7/16/2026 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 .
Response to Arguments
The amendment filed 7/16/2026 has overcome the previously applied statutory double patenting rejection under USP 11,965,383.
The previously applied non-statutory double patenting rejection under USP 12,428,916 does not appear addressed in the response and is repeated herein.
In regard to the 102 rejection under Nash et al. applicant argues that the rejection should be withdrawn because the discs 320/322 of Nash et al. do not convert rotational movement into axial displacement against a spring system that resists such movement. The examiner respectfully disagrees as the components of Nash et al. act as claimed. Applicant’s argument appears based on the discs 320/322 are not a spring system which actively resists movement of the helix sleeves away from one another. The examiner respectfully disagrees as the discs are described as “compressed” together by the sleeve, which inherently requires some force which would be acted against by the rings, therefore resisting movement of the rings 326/328 away from each other. Applicant further argues that Nash et al. address a different problem and operate in different ways. While this argument may be true, the rejection is based on the invention as claimed, where Nash et al. has been found to meet the claimed limitations.
Applicant also argues that the combination of Nash et al. and Ostertag would not be obvious to one of ordinary skill since such a combination would both render Nash unsatisfactory for its intended purpose and change its principle of operation. This argument as toward claims 14 and 16 is persuasive and the rejection of those claims under Nash et al. in view of Ostertag are withdrawn.
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.
Claim 25 is 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 25 recites “The multi-axis shock absorbing sub…” where no previously recited limitation appears to include any reference to “multi-axis” and therefore this claim is indefinite as it is not clear what “multi-axis” as recited would require.
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) 11-13 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Nash et al. (WO 2019/232006, submitted with IDS on 9/30/2025).
In regard to claim 11, Nash et al. disclose a downhole shock absorbing sub comprising: (a) a tubular main stem (314, fig 12) extending through a sub housing (312); (b) a torsional shock absorbing assembly positioned within the sub housing and comprising: (i) a first helix sleeve (328) configured to rotate with the main stem (paragraph 34), the first helix sleeve having a first helical cam surface (332) formed on an end surface of the sleeve; (ii) a second helix sleeve (326) configured to translate relative to the main stem (paragraphs 36-37), the second helix sleeve having a second helical cam surface (330) formed on an end surface of the sleeve and engaging the first helical cam surface; (iii) a spring system (322) positioned to resist movement of the first and second helix sleeves away from one another; and (c) whereby rotational movement of the main stem causes the first and second helical cam surfaces to move (i) the first and second helix sleeves apart (paragraphs 36-37), and (ii) at least one of the first or second helix sleeves into engagement with the spring system (paragraphs 36-37).
In regard to claim 12, Nash et al. disclose wherein the second helix sleeve engages the spring system (as in fig 12, with 326 engaging 322).
In regard to claim 13, Nash et al. disclose the sub including a series of axially oriented anti-rotation splines preventing rotation of the second helix sleeve relative to the sub housing (as in fig 13, with 334, multiple shown, as engaging between 312 and second helix sleeve, paragraphs 37-38).
Claim(s) 21-22 and 25 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Delatorre (US 5,320,169).
In regard to claim 21, Delatorre discloses a downhole shock absorbing sub comprising: (a) a tubular main stem (34 as in fig 2) extending through a sub housing (23); and (b) a lateral shock absorbing assembly (32a, 32b, 38 etc) positioned within the sub housing and including a biasing system (32a, 32b) configured to resist lateral displacement of the main stem (col. 6, lines 3+).
In regard to claim 22, Delatorre discloses wherein the lateral shock absorbing assembly comprises:(i) an activator ring (38) positioned around the main stem (as in fig 2); (ii) a reaction collar (36/42) positioned on each side of the activator ring (as in fig 2); wherein the biasing system is positioned to resist movement of the reaction collars away from the activator ring (as in fig 8, 12 etc).
In regard to claim 25, Delatorre discloses wherein the biasing system is a bank of spring washers (32a, 32b, col. 5, lines 22-23).
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 Nash et al. in view of Ostertag (US 4,194,582).
In regard to claim 15, Nash et al. discloses all the limitations of this claim, as applied to claim 11 above, except for an axial shock absorbing assembly as claimed. Ostertag discloses a shock absorbing sub comprising an axial shock absorbing assembly including: (d) a load collar (57) fixed axially on a main stem (as on 17); (e) a spring system (52) configured to resist axial movement of the load collar relative to a sub housing (29); and (f) first and second seal collars (20, as in fig 1 and 70 as in fig 1d) positioned to bracket the load collar and spring system between the seal collars, and control the flow of a fluid in which the load collar and spring system are immersed (col. 4, lines 21-31). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the axial shock absorbing assembly of Ostertag with the system of Nash et al. in order to provide additional axial shock absorption since combining prior art elements according to known methods to yield predictable results is considered obvious to one of ordinary skill.
In regard to claim 16, Ostertag discloses wherein the spring system resisting the load collar is a bank of spring washers (col. 3, lines 19-21).
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dinica et al. (US 2015/0376959) in view of Eaton et al. (US 2,212,153).
In regard to claim 26, Dinica et al. disclose a downhole shock absorbing sub comprising:(a) a tubular main stem (12 as in fig 4) extending through a sub housing (18); (c) a torsional shock absorbing assembly (18/24, as in paragraph 51) positioned within the sub housing and configured to dampen rotational movement of the main stem relative to the sub housing (paragraph 51); and (d) an axial shock absorbing assembly (22 as in paragraphs 61+) positioned within the sub housing and configured to dampen axial movement of the main stem relative to the sub housing. Dinica et al. do not disclose a lateral shock absorbing assembly.
Eaton et al. disclose a downhole shock absorbing sub comprising: a lateral shock absorbing assembly (11/3 etc) positioned within a sub housing (as in fig 2) and configured to dampen lateral movement of the main stem relative to the sub housing (as would perform as shown in figs 1-2). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the sub of Dinica et al. with the lateral shock absorbing assembly as taught by Eaton et al. since combining prior art elements according to known techniques to yield predictable results is considered obvious to one of ordinary skill.
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 11-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12,428,916. Although the claims at issue are not identical, they are not patentably distinct from each other because the examined 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). Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 11 is generic to all that is recited in claim 1 of U.S. Patent No. 12,428,916. In other words, claim 1 of ‘916 fully encompasses the subject matter of claim 11 and therefore anticipates claim 11. Since claim 11 is anticipated by claim 1 of the patent, it is not patentably distinct from claim 11. Thus the invention of claim 1 of the patent is in effect a “species” of the “generic” invention of claim 11. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 11 is anticipated (fully encompassed) by claim 1 of the patent, claim 11 is not patentably distinct from claim 1, regardless of any additional subject matter present in claim 1. Instant claims 12-16 are similarly encompassed by claims 2-5 of ‘916.
Claims 21-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,965,383. Although the claims at issue are not identical, they are not patentably distinct from each other because the examined 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). Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 21 is generic to all that is recited in claim 1 of U.S. Patent No. 11,965,383 since the “biasing system” of claim 21 appears as the “spring system” of claim 1 of ‘383. In other words, claim 1 of ‘383 fully encompasses the subject matter of claim 21 and therefore anticipates claim 21. Since claim 21 is anticipated by claim 1 of the patent, it is not patentably distinct from claim 21. Thus the invention of claim 1 of the patent is in effect a “species” of the “generic” invention of claim 21. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 21 is anticipated (fully encompassed) by claim 1 of the patent, claim 21 is not patentably distinct from claim 1, regardless of any additional subject matter present in claim 1. Instant claims 21-25 are similarly encompassed by claims 2-7 of ‘383.
Claims 26-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,966,383 in view of Dinica et al. Claims 1-17 of ‘383 recites all the limitations of instant claims 26-33 except for the combination of lateral, axial and torsional shock absorbing assemblies in one claim. Dinica et al. teach an axial shock absorbing assembly (22, as in paragraphs 61+). It would have been obvious to one of ordinary skill before the time of effective filing to provide the assembly of the claims of ‘383 with an axial shock absorbing assembly, as taught by Dinica et al. since combining prior art elements according to known techniques to yield 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.
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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.
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/D. ANDREWS/Primary Examiner, Art Unit 3672
9/22/2026
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