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 .
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.
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Claim 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12736138 in view of Washida (JP59-231268A). Suzuki patent 12736138 teaches all the limitation of claims (e.g. in short having a sliding component having 1st pressure grooves with different lengths in circumferential direction, see claims and figures) except for a second sliding component having plurality of second positive pressure generation grooves. Washida discloses first and second sliding components (e.g. 4 and 7), the first sliding component having first positive pressure generation grooves (13), the second sliding component having second positive pressure generation grooves (e.g. 12) and the second pressure generation grooves are in equal circumferential length. It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have the second sliding component of Suzuki to have 2nd pressure generation grooves as taught by Washida with reasonable expectation of success to provide viscous pump action to improve sealing effect (e.g. see constitution of section in the reference of Washida).
Claim 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent application No. 19140328 in view of Washida (JP59-231268A). Yamaguchi et al teaches all the limitation of claims (e.g. in short having a sliding component having 1st pressure grooves with different lengths in circumferential direction, see claims and figures) except for a second sliding component having plurality of second positive pressure generation grooves. Washida discloses first and second sliding components (e.g. 4 and 7), the first sliding component having first positive pressure generation grooves (13), the second sliding component having second positive pressure generation grooves (e.g. 12) and the second pressure generation grooves are in equal circumferential length. It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have the second sliding component of Suzuki to have 2nd pressure generation grooves as taught by Washida with reasonable expectation of success to provide viscous pump action to improve sealing effect (e.g. see constitution of section in the reference of Washida).
Claim 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent application No. 18685139. Although the claims at issue are not identical, they are not patentably distinct from each other because Yamaguchi teaches in short first and second sliding components, plurality of first pressure generation grooves on the first component, plurality of second pressure generation grooves on the second component, at least one of the plurality of first pressure generation grooves is of different circumferential length (see claim 1), volume of each of the plurality of first pressure generation grooves is different or more than volume of each of the plurality of second pressure generation grooves (e.g. see claims 4 or 6 or 7). Applicant should review claims of all patents and patents applications.
Claim 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent application No. 17920009 in view of Kimura (US20190376558A1). Application 17920009 teaches all the limitation of claims (e.g. in short having a first sliding component having plurality of first pressure generation grooves with lengths in circumferential direction, a second sliding component having plurality of second pressure generation grooves, circumferential length of each of the grooves being equal (figure 12 and claims) except for at least one of the first pressure generation groove being of different length than other of the first pressure generation grooves. Kimura discloses a sliding component having plurality of first pressure generation grooves and at least one of the plurality of first pressure generation grooves having different length than other of the plurality of first pressure generation grooves (figure 6, groove 14 and grooves 15 and paragraph 0093). It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have the plurality of first pressure generation grooves of application 17920009 to have different lengths as taught Kimura with reasonable expectation of success to provide low friction between the sliding components (see paragraph 0097). It is further noted that having equal lengths and differing lengths is considered to be art equivalent (e.g. see figure 3 of Kimura and figure 6 of Kimura).
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) 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Washida (JP59231269A) in view of Kimura (US.20190376558) and further in view of Hosoe et al (US.20140197600).
Washida discloses sliding components which are a first sliding component (e.g. 7) and a second sliding component (e.g. 4) disposed at a relative rotational location of a rotating machine, and of which sliding surfaces are directly brought into contact with and slide relative to each other (e.g. see figure 1), wherein the sliding surface of the first sliding component is provided with a plurality of first positive pressure generation grooves (e.g. 15 or 19) having an opening portion which is opened to a space on a leakage side (e.g. see figures), extending in a relative rotation direction of the second sliding component with an inclination toward a radial direction (e.g. figures 2-3), and including terminating end portions on a sealed fluid side (e.g. ends of groove 15 or 19), the sliding surface of the second sliding component is provided with a plurality of second positive pressure generation grooves (e.g. 17 or 21) communicating with the space on the leakage side, extending in a relative rotation direction of the first sliding component with the inclination toward the radial direction (e.g. figures), and including terminating end portions on the sealed fluid side (e.g. see figure 3), the sliding surface of the first sliding component and the sliding surface of the second sliding component slide against each other in an intersecting manner such that the first positive pressure generation grooves and the second positive pressure generation grooves at least partially overlap each other (e.g. overlap of 15 and 17 or overlap of 19 and 21) and each of the others of the first positive pressure generation grooves and each of the second positive pressure generation grooves are equal in a radial position of the terminating end portion to each other (e.g. see figure 3).
Washida discloses the invention as claimed above but fails to disclose at least one of the first positive pressure generation grooves differs in a radial position of the terminating end portion from others of the first positive pressure generation grooves and the terminating end portion of the one of the first positive pressure generation grooves is located on the sealed fluid side with respect to the terminating end portions of the others of the first positive pressure generation grooves. Kimura discloses a first sliding element and a second sliding element (see abstract), the first sliding element having plurality of first pressure generation grooves (e.g. 14 and 15, figure 6), at least one of the plurality of first pressure generation grooves differs in radial position of a terminating end portion (e.g. 14b) from others of the plurality of first pressure generation grooves (e.g. terminating end portion 15b) and the terminating end portion (e.g. 14b) of the one of the plurality of first pressure generation grooves is located on the sealed fluid side with respect to the terminating ends (e.g. each of 15b) of the others of the plurality of first pressure generation grooves. It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have the plurality of first pressure generation grooves of Washida to have different lengths as taught Kimura with reasonable expectation of success to provide low friction between the sliding components (see paragraph 0097). It is further noted that having equal lengths and differing lengths is considered to be art equivalent (e.g. see figure 3 of Kimura and figure 6 of Kimura).
Washida discloses the invention as claimed above but fails to disclose each of the others of the first positive pressure generation grooves and each of the second positive pressure generation grooves differs in volume from each other. Hosoe discloses a first and second components, the first component having plurality of first pressure generation grooves (20), the second component having plurality of second pressure generation grooves (e.g. 10), each of the plurality of first pressure generation grooves having a first volume (e.g. volume of each 20) which is different than a second volume (e.g. volume of each 10) of each of the plurality of second pressure generation grooves (e.g. see figures 4a-4b or 7a-7b). It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have the plurality of first pressure generation grooves and the plurality of second pressure generation grooves of Wahida to have different volumes with reasonable expectation of success to provide sufficient film thickness (see paragraph 0080 and entire document of Hosoe).
Regarding claim 2: The combination of Washida and Kimura teach the first positive pressure generation grooves are classified into at least a long length group including at least longest one among the first positive pressure generation grooves, and a short length group including the first positive pressure generation grooves which are shorter than the first positive pressure generation grooves of the long length group (e.g. grooves 15 and 14 taught by Kimura applied to Washida, see rejection of claim 1 above).
Washida discloses the invention as claimed above but fails to disclose at least part of the second positive pressure generation grooves are longer than the first positive pressure generation grooves of the short length group. Hosoe discloses at least part of the second positive pressure generation grooves (e.g. 10) are longer than a first positive pressure generation grooves of a short length group (20a). It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to configure the lengths of grooves of Washida to have plurality second pressure generation grooves be longer than plurality of first pressure generation grooves as taught by Hosoe with reasonable expectation of success to provide sufficient film thickness (see paragraph 0080, description of figures 7a-7b and entire document of Hosoe).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant and Assignee should review all documents such as prior patents, patent applications and other documents to what is considered to be old and well-known teaching for pressure generation grooves. No claims are allowable in view of the rejections above.
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/VISHAL A PATEL/Primary Examiner, Art Unit 3675
