DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Election/Restrictions
The status of the claims for this application is as follows.
Claims 1-18, 21, and 22 are currently pending.
Claims 21 and 22 are withdrawn.
Claims 19, 20, and 23-40 are cancelled, via applicant.
Note: claims 21 and 22 have the incorrect status identifiers of “Original”. These claims are currently withdrawn. If the status identifiers for claims 21 and 22 are not corrected in applicant’s next response or the response to this Office action, then said response may be held as non-compliant and/or non-responsive.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/20/2026 was considered by the examiner.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102/103 that form the basis for the rejections under, or in the alternative, which forms the basis for all obviousness rejections set forth 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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) 1-11 and 15-18 is/are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Beigneux et al. (US 9605781), (hereinafter, Beigneux) or, in the alternative, claim(s) 1-11 and 15-18 are rejected under 35 U.S.C. 103(a) as obvious over Beigneux et al. (US 9605781), (hereinafter, Beigneux).
Re Clm 1: Beigneux discloses a tubular connection (see Figs. 1-11) comprising:
a first pin (1) with an external male threaded zone (see the zone which contains the threads) having external male threads (see the threads) disposed on a portion of the pin (see Fig. 1); and
a first box (2) with an internal female threaded zone (see the zone which contains the threads) having internal female threads (see the threads) disposed on a portion of the first box (see Fig. 1), the internal female threads configured to engage with the external male threads of the first pin (see Fig. 1);
wherein at least one of the first pin or the first box comprises a first torque shoulder surface comprising a surface roughness greater than or equal to 100 microns (see Fig. 9 and Col. 7, lns. 4-13 and 29-37. As described, Beigneux discloses a roughness value of more than 25 micrometers. As such, the prior art and the claimed invention are considered to be overlapping ranges. In the present case, the disclosure of “more than 25 micrometers” is considered to teach the claimed ranged of “greater than or equal to 100 microns” with sufficient specificity as selecting a roughness value equal to or greater than 100 microns would similarly ensure the disclosed function of Beigneux wherein the pressure between the interior of the tube and the space located axially between the axial abutments and the sealing surfaces is equalized, thus, improving the effectiveness of the sealing surfaces while preserving the function of the axial abutments, see Col. 2, lns. 18-40. It is noted wherein both the prior art and the claimed invention are directed to ranges with unbounded upper limits and are therefore similarly sized ranges. See MPEP 2131.03.).
In the alternative, wherein Beigneux is considered to not disclose the claimed range of “greater than or equal to 100 micros” with sufficient specificity, the following position is advanced.
Re Clm 1: Beigneux discloses a tubular connection (see Figs. 1-11) comprising: a first pin (1) with an external male threaded zone (see the zone which contains the threads) having external male threads (see the threads) disposed on a portion of the pin (see Fig. 1); and
a first box (2) with an internal female threaded zone (see the zone which contains the threads) having internal female threads (see the threads) disposed on a portion of the first box (see Fig. 1), the internal female threads configured to engage with the external male threads of the first pin (see Fig. 1);
wherein at least one of the first pin or the first box comprises a first torque shoulder surface comprising a surface roughness of more than 25 micrometers (see Fig. 9 and Col. 7, lns. 4-13 and 29-37).
Beigneux, lacks, with sufficient specifity, wherein the surface roughness is greater than or equal to 100 microns.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Beigneux to have specified wherein the surface roughness was greater than or equal to 100 microns, with a reasonable expectation of success, as such a surface roughness would have yielded the same predictable result of having the pressure between the interior of the tube and the space located axially between the axial abutments and the sealing surfaces is equalized, thereby improving the effectiveness of the sealing surfaces while preserving the function of the axial abutments (Beigneux, Col. 2, lns. 18-40). In addition thereto, having a surface roughness greater than or equal to 100 microns would potentially allow for a higher flow rate through larger paths made with a rougher surface or to allow for different viscosity of fluids to flow through larger paths made with a rougher surface.
Re Clm 2: Beigneux discloses the first torque shoulder surface comprises a knurled surface profile (see Fig. 11 and Col. 7, lns. 29-37, which resembles applicants 308 in their Fig. 5).
The recitation “knurled” is a process which can be used to make the product claimed. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art was made by a different process”. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 946, 966 (Fed. Cir. 1985).
Re Clm 3: Beigneux discloses wherein the knurled surface profile is continuous along the first torque shoulder surface (see Fig. 11 and Col. 7, lns. 29-37).
The recitation “knurled” is a process which can be used to make the product claimed. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art was made by a different process”. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 946, 966 (Fed. Cir. 1985).
Re Clm 4: Beigneux discloses wherein the first torque shoulder surface comprises a laser cut, stamped, machined, or blasted surface profile (note that the first torque shoulder has a surface and it has a profile and in places recesses).
The recitation “a laser cut, stamped, machined, or blasted surface” is a process which can be used to make the product claimed. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art was made by a different process”. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 946, 966 (Fed. Cir. 1985).
Re Clm 5: Beigneux discloses wherein one of the first pin or the first box comprises the first torque shoulder surface, and the other of the first pin or the first box comprises a second torque shoulder surface, the second torque shoulder surface configured to engage the first torque shoulder surface (see Fig. 1, such as the shoulder at end of the pin and the corresponding shoulder of the box that abuts the end of the pin and Col. 4, lns. 37-52).
Re Clm 6: Beigneux discloses wherein the second torque shoulder surface comprises a surface roughness greater than or equal to 100 microns (this is similar to the rejection of claim 1, see claim 1 as to how Beigneux discloses the claim recitation(s) for the second torque shoulder surface.
It is the Examiner's position (see the rejection above) that Beigneux sets forth all the positively recited structural elements of the claim including the surface roughness being greater than or equal to 100 microns, with sufficient specificity.
In the alternative, wherein Beigneux is considered to not disclose the claimed range of “greater than or equal to 100 micros” with sufficient specificity, the following position is advanced.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Beigneux to have specified wherein the surface roughness was greater than or equal to 100 microns, with a reasonable expectation of success, as such a surface roughness would have yielded the same predictable result of having the pressure between the interior of the tube and the space located axially between the axial abutments and the sealing surfaces is equalized, thereby improving the effectiveness of the sealing surfaces while preserving the function of the axial abutments (Beigneux, Col. 2, lns. 18-40). In addition thereto, having a surface roughness greater than or equal to 100 microns would potentially allow for a higher flow rate through larger paths made with a rougher surface or to allow for different viscosity of fluids to flow through larger paths made with a rougher surface.
Re Clm 7: Beigneux discloses the second torque shoulder surface comprises a knurled surface profile (see Fig. 11 and Col. 7, lns. 29-37, which resembles applicants 308 in their Fig. 5).
The recitation “knurled” is a process which can be used to make the product claimed. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art was made by a different process”. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 946, 966 (Fed. Cir. 1985).
Re Clm 8: Beigneux discloses wherein the knurled surface profile is continuous along the second torque shoulder surface (see Fig. 11 and Col. 7, lns. 29-37).
Re Clm 9: Beigneux discloses wherein the second torque shoulder surface comprises a laser cut, stamped, machined, or blasted surface profile (note that the second torque shoulder has a surface and it has a profile and in places recesses).
The recitation “a laser cut, stamped, machined, or blasted surface” is a process which can be used to make the product claimed. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art was made by a different process”. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 946, 966 (Fed. Cir. 1985).
Re Clm 10: Beigneux discloses wherein the first torque shoulder surface and the second torque shoulder surface are at a respective one of a first longitudinal end of the first pin or a second longitudinal end of the first box (see Fig. 1 and Col. 4, lns. 37-52).
Re Clm 11: Beigneux discloses wherein the first longitudinal end of the first pin is a distal longitudinal end of the first pin, and the second longitudinal end of the first box is a proximal longitudinal end of the first box (see Fig. 1 and Col. 4, lns. 37-52).
Re Clm 15: Beigneux discloses a second pin with a second external male threaded zone having second external male threads disposed on a portion of the second pin; and a coupling box connector comprising the first box and a second box, the second box having an internal female threaded zone having internal female threads disposed on a portion of the second box, the internal female threads configured to engage with the external male threads of the second pin; wherein the first pin has the first torque shoulder surface; and the second pin has a second torque shoulder surface, where the second torque shoulder surface is configured to engage the first torque shoulder surface of the first pin (see Fig. 1 and Col. 4, lns. 37-52).
Re Clm 16: Beigneux discloses wherein the second torque shoulder surface comprises a surface roughness greater than or equal to 100 microns (this is similar to the rejection of claim 1, see claim 1 as to how Beigneux discloses the claim recitation(s) for the second torque shoulder surface.
It is the Examiner' s position (see the rejection above) that Beigneux sets forth all the positively recited structural elements of the claim including the surface roughness being greater than or equal to 100 microns.
In the alternative, wherein Beigneux is considered to not disclose the claimed range of “greater than or equal to 100 micros” with sufficient specificity, the following position is advanced.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Beigneux to have specified wherein the surface roughness was greater than or equal to 100 microns, with a reasonable expectation of success, as such a surface roughness would have yielded the same predictable result of having the pressure between the interior of the tube and the space located axially between the axial abutments and the sealing surfaces is equalized, thereby improving the effectiveness of the sealing surfaces while preserving the function of the axial abutments (Beigneux, Col. 2, lns. 18-40). In addition thereto, having a surface roughness greater than or equal to 100 microns would potentially allow for a higher flow rate through larger paths made with a rougher surface or to allow for different viscosity of fluids to flow through larger paths made with a rougher surface.
Re Clm 17: Beigneux discloses the second torque shoulder surface comprises a knurled surface profile (see Fig. 11 and Col. 7, lns. 29-37, which resembles applicants 308 in their Fig. 5).
The recitation “knurled” is a process which can be used to make the product claimed. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art was made by a different process”. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 946, 966 (Fed. Cir. 1985).
Re Clm 18: Beigneux discloses wherein the knurled surface profile is continuous along the second torque shoulder surface (see Fig. 11 and Col. 7, lns. 29-37).
Claim(s) 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beigneux et al. (US 9605781), (hereinafter, Beigneux) as applied to claim 10 above, in view of Hamamoto et al. (US 7823931), (hereinafter, Hamamoto).
Re Clm 12: Beigneux fails to disclose that the disclosed first pin comprises a third torque shoulder surface proximate to a third longitudinal end of the disclosed first pin opposite the disclosed first longitudinal end, the disclosed first box comprises a fourth torque shoulder surface proximate to a fourth longitudinal end of the disclosed first box opposite the disclosed second longitudinal end, and at least one of the third torque shoulder surface or the fourth torque shoulder surface comprises a surface roughness greater than or equal to 100 microns, the fourth torque shoulder surface configured to engage the third torque shoulder surface.
However, Hamamoto discloses the connection between a pin and a box, similar to that of Beigneux. Hamamoto also teaches an additional pair of mating shoulder surfaces at the end of a threaded section (see Fig. 10 at 33 or Fig. 11 at 34). Where such would aid in the sealing surfaces mating while preserving the function of the abutments and/or aid in preventing large debris from entering the joint. Accordingly, Hamamoto teaches that the disclosed first pin comprises a third torque shoulder surface proximate to a third longitudinal end of the disclosed first pin opposite the disclosed first longitudinal end, the disclosed first box comprises a fourth torque shoulder surface proximate to a fourth longitudinal end of the disclosed first box opposite the disclosed second longitudinal end, and at least one of the third torque shoulder surface or the fourth torque shoulder surface comprises a surface roughness, the fourth torque shoulder surface configured to engage the third torque shoulder surface, for the purpose of providing an alternative means in connecting two mating threaded members together where such an argument could aid in the sealing surfaces mating while preserving the function of the abutments and/or aid in preventing large debris from entering the joint.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to have modified the device of Beigneux to have had the disclosed first pin comprises a third torque shoulder surface proximate to a third longitudinal end of the disclosed first pin opposite the disclosed first longitudinal end, the disclosed first box comprises a fourth torque shoulder surface proximate to a fourth longitudinal end of the disclosed first box opposite the disclosed second longitudinal end, and at least one of the third torque shoulder surface or the fourth torque shoulder surface comprises a surface roughness, the fourth torque shoulder surface configured to engage the third torque shoulder surface, as taught by Hamamoto, with a reasonable expectation of success because one merely replacing a known threaded connection configuration with another threaded connection configuration, for the purpose of providing an alternative means in connecting two mating threaded members together where such an argument could aid in the sealing surfaces mating while preserving the function of the abutments and/or aid in preventing large debris from entering the joint.
Additionally, it is the Examiner' s position that Beigneux discloses wherein it is known to provide a surface roughness of greater than or equal to 100 microns on the torque shoulder (see, for example, the discussion with regards to claim 1 above).
In the alternative, wherein Beigneux is considered to not disclose the claimed range of “greater than or equal to 100 micros” with sufficient specificity, the following position is advanced.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the combination to have specified wherein the surface roughness was greater than or equal to 100 microns, with a reasonable expectation of success, as such a surface roughness would have yielded the same predictable result of having the pressure between the interior of the tube and the space located axially between the axial abutments and the sealing surfaces is equalized, thereby improving the effectiveness of the sealing surfaces while preserving the function of the axial abutments (Beigneux, Col. 2, lns. 18-40). In addition thereto, having a surface roughness greater than or equal to 100 microns would potentially allow for a higher flow rate through larger paths made with a rougher surface or to allow for different viscosity of fluids to flow through larger paths made with a rougher surface.
Note also that it has been held that mere duplication of essential working parts of a device involve only routine skill in the art. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) and/or In re Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Re Clm 13: Beigneux as modified by Hamamoto above discloses wherein the at least one of (see Fig. 11 and Col. 7, lns. 29-37) the third torque shoulder surface or the fourth torque shoulder surface comprises a knurled surface profile (see Fig. 11 and Col. 7, lns. 29-37, which resembles applicants 308 in their Fig. 5).
The recitation “knurled” is a process which can be used to make the product claimed. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art was made by a different process”. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 946, 966 (Fed. Cir. 1985).
Re Clm 14: Beigneux as modified by Hamamoto above discloses wherein the knurled surface profile is continuous along the at least one of (see Fig. 11 and Col. 7, lns. 29-37) the third torque shoulder surface or the fourth torque shoulder surface (see Fig. 11).
The recitation “knurled” is a process which can be used to make the product claimed. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art was made by a different process”. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 946, 966 (Fed. Cir. 1985).
Response to Arguments
Applicant's arguments filed 01/20/2026 have been fully considered but they are not persuasive.
Applicant argues, on page 7 in lines 1 through page 9 line 21, that there are structural differences that would cause plastic deformations, yielding, stress concentrations, scratches, adhesion, material would fold in to close off channels presenting pressure release. Beigneux does not support a surface roughness of greater than 25 microns and such a modification, that is having a surface roughness as claimed, is not obvious.
This is not persuasive.
Applicant’s arguments with regards to the structural differences that would cause plastic deformations, yielding, stress concentrations, scratches, adhesion, material would fold in to close off channels presenting pressure release are not commensurate with the scope of the claim.
Beigneux discloses or makes obvious the claim limitations as Beigneux discloses a roughness value of more than 25 micrometers (see Fig. 9 and Col. 7, lns. 4-13 and 29-37). As such, the prior art and the claimed invention are considered to be overlapping ranges. In the present case, the disclosure of “more than 25 micrometers” is considered to teach the claimed ranged of “greater than or equal to 100 microns” with sufficient specificity as selecting a roughness value equal to or greater than 100 microns would similarly ensure the disclosed function of Beigneux wherein the pressure between the interior of the tube and the space located axially between the axial abutments and the sealing surfaces is equalized, thus, improving the effectiveness of the sealing surfaces while preserving the function of the axial abutments, see Col. 2, lns. 18-40. It is noted wherein both the prior art and the claimed invention are directed to ranges with unbounded upper limits and are therefore similarly sized ranges. See MPEP 2131.03. Alternatively, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Beigneux to have specified wherein the surface roughness was greater than or equal to 100 microns, with a reasonable expectation of success, as such a surface roughness would have yielded the same predictable result of having the pressure between the interior of the tube and the space located axially between the axial abutments and the sealing surfaces is equalized, thereby improving the effectiveness of the sealing surfaces while preserving the function of the axial abutments (Beigneux, Col. 2, lns. 18-40). In addition thereto, having a surface roughness greater than or equal to 100 microns would potentially allow for a higher flow rate through larger paths made with a rougher surface or to allow for different viscosity of fluids to flow through larger paths made with a rougher surface.
Accordingly, Beigneux supports a surface roughness of greater than 25 microns (and as claimed) and any modification to Beigneux would have been obvious.
Conclusion
THIS ACTION IS MADE FINAL. 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 JAMES A LINFORD whose telephone number is (571)270-3066. The examiner can normally be reached Monday thru Friday: 8:00 am to 5:00 pm Eastern Time.
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JAMES ALBERT LINFORD
Examiner
Art Unit 3679
02/03/2026
/Matthew Troutman/Supervisory Patent Examiner, Art Unit 3679