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 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, 3 and 6-9 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, the limitation “dimensioned to meet pipe thickness requirements” is considered
to be vague and indefinite, because it is unclear what “thickness requirements” are being referred to and exactly what and how those thickness requirements would be met, as there are many factors which would determine the necessary thickness of a pipe, such as material, pipe diameter, operating pressures, etc. Therefore clarification is needed.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 6-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CA 2,298,901.
In regard to claim 1, CA ‘901 discloses a connection comprising:
a first tubular member having a pin end 4 comprising:
a first portion 4 having a first inner diameter; and
a second portion 6 having a pin face 8 dimensioned to meet pipe thickness requirements (see page 8, lines 4-9, where the pin end is made thick enough to satisfy the requirement of creating a metal to metal seal to guarantee the complete sealing of the joint under any operating condition) and disposed at an outermost end of the pin end of the first tubular member; and
a second tubular member having a box end 1 comprising:
a first portion 1 having a first outer diameter; and
a second portion having a box face 11 at an outermost end of the box end of the second tubular member,
wherein the first tubular member and the second tubular member are configured to connect when a threading of the pin end-engages with a threading of the box end; and wherein a thickness of the pin face 8 is substantially identical to a thickness of the box face 11 (see page 8, last two lines where it states that the shoulders 13 and 15 are 2mm in height and see figs. 4A and 4C where the end surfaces of 11 and 8 taper down to an end surface that matches the shoulder heights of 13 and 15).
In regard to claim 3, wherein the outer diameter of the box end is larger than the outer diameter of the pin end (element 11 tapers outward from the end surface at 3 in fig. 4A to have a larger diameter than 5).
In regard to claim 6, wherein the pin end of the first tubular member comprises a seal element 7, and wherein the box end of the second tubular member comprises a seal element 7.
In regard to claim 7, wherein the seal element of the pin end of the first tubular member is a center seal element 7, and wherein the seal element of the box end of the second tubular member is a center seal element 7.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over CA 2,298,901 in view of Hellmund et al. 4,153,283.
In regard to claims 6 and 7, CA ‘901 discloses a seal elements where 8 and 10 contact
and where 11 and 9 contact, where surfaces 9 and 10 are linear surfaces and surfaces 8 and 11 are flares, but it is unclear if the flared surfaces are curvilinear. Hellmund et al. teaches that providing metal to metal seals in pin and box connections with mating curvilinear 13, 14 and linear surfaces 11, 12 is common and well known in the art. Therefore it would have been obvious to one of ordinary skill in the art to make the flares surfaces of CA ‘901 curvilinear, as taught by Hellmund.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 3 and 6-9 have been considered but are unpersuasive.
Applicant argues that a pin face “dimensioned to meet pipe thickness requirements”
inherently requires that the pin face extends to the inner diameter surface of the pin and that Cerruti fails to disclose this structure. However, Applicant has failed to provide any support as to why the limitation “dimensioned to meet pipe thickness requirements” requires that the pin face extend to the inner diameter surface of the pipe.
It is the Examiner’s position that the limitation “dimensioned to meet pipe thickness requirements” is extremely broad and does not require that the pin face extend to the inner diameter surface of the pin in order to anticipate this limitation in the claim.
Cerruti discloses making the pin end surface 8 sufficiently thick enough to satisfy the requirement of creating a metal to metal seal to guarantee the complete sealing of the joint under any operating condition (see page 8, lines 4-9), which is considered by the Examiner to be a dimension “to meet pipe thickness requirements). Therefore the Cerruti rejection has been maintained.
Applicant argues that Cerruti fails to disclose the thickness of any portion of elements 8
or element 11, specifically that they have substantially the same thickness.
The Examiner disagrees, as the last two lines of page 8 of the specification discloses that the height of the shoulders, 13 and 15 are about 2mm. Additionally, figs. 4A and 4C depict the end surfaces of 11 and 8 as having the exact same thicknesses as that of shoulders 13 and 15, respectively.
Applicant argues that that the only disclosures relating to the dimensions of these elements ties their thickness to the depth of the annular slots 12 and 14 and includes various annotated figures relating to the thickness of the slots and end faces. It is unclear why the Applicant is referring to annular slots 12 and 14, when the limitation of claim 1 in question is “wherein a thickness of the pin face is substantially identical to a thickness of the box face”. The specification of Cerruti clearly states that “the hight of the shoulders are about 2mm, for the internal and external shoulders”. Cerruti clearly states that shoulders 8, 11, 13 and 15 have the same thickness and therefore the rejection has been maintained.
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 DAVID E. BOCHNA whose telephone number is (571)272-7078. The examiner can normally be reached Monday-Friday 8:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Troutman can be reached on (571) 270-3654. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID BOCHNA/Primary Examiner, Art Unit 3679