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 .
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Interpretation
Claim 1 in line 1 recites “An American Petroleum Institute standard oil extraction pipe joint coupling” which is reasonably interpreted as a coupling having at least one feature known to API standards and not the entire coupling is API standard approved to avoid any ambiguity that the entire coupling is a known API standard coupling.
Claim Objections
Claims 1 and 3 are objected to because of the following informalities:
Claim 1 recites “an internal diameter of the shoulder is approximately equal to an internal diameter of the pipes, eliminating turbulence inside the coupling” and should be “an internal diameter of the shoulder is approximately equal to an internal diameter of the pipesapproximately equal, therefore, the limitation does not appear to need the recitation of “eliminating turbulence” unless applicant intended eliminating turbulence to be defined by further structural features other than the internal diameters of the shoulder and the pipes to be approximately equal. However, any further structural implications must be claimed to avoid ambiguity and confusion.
Claim 3 recites “wherein male-to-female fit” and should be “wherein a male-to-female fit”.
Claim Rejections - 35 USC § 112
Claims 1-3, 7, and 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 recites “the shoulder length” which lacks antecedent basis and unclear if claim 1 intended to initially introduce a shoulder length earlier within the claim or intended to initially introduce a shoulder length similar to an inner shoulder length in previously filed claims. For examination purposes, the limitation will be interpreted as “ a shoulder length” such that it is initially introduced in claim 1 at the same location.
Claim 1 recites “API-recommended tightening torque for the respective pipe diameter” which “the respective pipe diameter” lacks antecedent basis and unclear if the respective pipe diameter refers back to the inner diameters or intended to initially introduce outer diameters of the pipes because API-recommended tightening torque is based on outer diameter and not inner diameter. For examination purposes, the limitation will be interpreted as “API-recommended tightening torque for a respective outer diameter of each pipe
Claim 1 recites “the metal-to-metal contact” which lacks antecedent basis and unclear if this was intended to further define the previously recited “metal-to-metal seal” to be a seal by contact or intended to be a different metal-to-metal interface. For examination purposes, the limitation will be interpreted as “the metal-to-metal seal
All dependent claims of these claims are rejected under 112th second paragraph by virtue of their dependency. Thus, claims 2-3, 7, and 9 are rejected under 112th second paragraph.
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 factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, 7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Sabatier (US 2016/0222740 A1) in view of Cartensen (US 4,988,127) and further in view of Gu (CN 106764119 A).
In regard to claim 1, Sabatier discloses an American Petroleum Institute, API, oil extraction pipe joint coupling (Figs. 6 and 8 shows a coupling 310. Fig. 8 will be relied upon and Fig. 6 will be used for example purposes showing the pipes connected to the coupling. In [0043] and [0072-0073] discloses the invention relates to API standard pipes. In [0084] discloses the invention relates to oil extraction.) comprising:
a. female rounded threads (Fig. 8, female threads at 315 and 317), wherein the coupling is configured to join two pipes (Fig. 6, pipes at 140 and 142) with API standardized characteristics (In [0073] discloses thread pattern can be round of API standard characteristics) threaded from both upper and lower sides of the coupling (Fig. 8, threads at both upper and lower sides of the coupling as shown);
b. a shoulder that protrudes towards an inside of the coupling in an annular shape (Fig. 8, shoulder at 330 protrudes towards an inside of the coupling in annular shape) arranged longitudinally (Fig. 8, 330 extend longitudinally) and coaxially with respect to an axis of the coupling (Fig. 8, 330 extends coaxially with respect to the axis of 310), having straight annular profiles (Fig. 8, the cross-section of the shoulder is straight, therefore, has straight annular profiles similar to the applicant’s invention) and operative upper and lower bases (Fig. 8, operative upper and lower bases near 328 and 329);
wherein the straight profiles of the shoulder collide with edges of the pipes when threaded (Fig. 6 shows the straight profiles of the shoulder collide with edges of the pipes when threaded such that the axial edges of the pipes contact the shoulder); and
wherein an internal diameter of the shoulder approximately equal to an internal diameter of the pipes (Figs. 6 and 8, an internal diameter of the shoulder is approximately equal to the internal diameter of the pipes as shown).
Sabatier does not expressly disclose two annular seals of hydrogenated nitrile elastomer material provided in respective two annular seal accommodation housings at the operative upper and lower bases of the shoulder;
producing hermeticity through a metal-to-metal seal and compression of the elastomeric seals; and
wherein a shoulder length is based on a distance measured between terminals of the pipes, after threaded by applying an API-recommended tightening torque for a respective outer diameter of each pipe, whereby improving the metal-to-metal seal.
In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See MPEP 2144.04(IV)(A). In this case, the recitation “wherein a shoulder length is based on a distance measured between terminals of the pipes, after threaded by applying an API-recommended tightening torque for a respective outer diameter of each pipe, whereby improving the metal-to-metal seal” is recitation of relative dimensions which does not differentiate the performance of the claimed shoulder to the shoulder of Sabatier. See Figs. 6 and 8 of Sabatier which shows a free space between terminals of the pipes delimited by the shoulder and as previously mentioned the pipes are API standard. Additionally, see Figs. 9-12 of Sabatier which shows results of torque tests and in [0073] discloses at least the design of the coupling which includes the shoulder since there is contact and is determined by means of torque tests which includes the dimension of the diameters of the pipes. Also, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the shoulder axial length relative to the pipe diameter of Sabatier in order to have at least a reliable pipe coupling and accordance to a known standard such as API. Further, a person of ordinary skill in the art would reasonably understand that the shoulder must at least be designed and constructed to withstand the axial compression force of the pipes during torque tests without failing. Therefore, the axial shoulder length of the shoulder must be at least long enough and/or thick enough to withstand the axial compression from the torque applied by the pipes.
In the related field of threaded pipe couplings and pipes related to API standards, Cartensen teaches a coupling (Fig. 2, coupling at 10 and in the background of the invention describes these types of coupling and the pipes used are metal) having a pair of seals (Fig. 2, seals 36) provided in respective accommodation housings (Fig. 2, annular circular housing at 39), in an upper base and a lower base of a shoulder (Fig. 2, 36 is installed at an upper base and lower base defined at both 22 and a shoulder defined at 20) and coaxially border the upper base and the lower base of the shoulder (Fig. 2, 39 are adjacent the shoulder and 39 coaxially border both the upper base and the lower base of the shoulder 20 since 39 shares the same longitudinal axis), and
wherein when the pair of seals are installed in the seal accommodation housings, the seals are fixed in position within the seal accommodation housings (Fig. 2, 36 are fixed within the respective seal accommodation housings) and provide a hermetic seal by a metal-to-metal seal and compression of the elastomeric seals (Fig. 2, contact at 18 and compression of elastomeric seals 36 at least provides a hermetic seal in the same manner as the applicant’s invention since seals 36 are of elastomeric material and the metal-to-metal contact at 18 provides at least another form of a seal) without permanent deformation of the seals at a pressure of a tightening torque of the pipes to the coupling and the seals (Fig. 2, seals 36 are elastomeric and are designed for repeated make-up and break-out as disclosed in 2:14-28. Therefore, during break-outs, the seals 36 would elastically deform back to their original shape without permanent deformation.) in order to have the advantage of protecting against high internal or external pressures penetrating between the threads that seek to deform the pipes and the coupling (In 5:21-31 discloses the advantages of seals 36 and 38).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the coupling of Sabatier to include two elastomeric seals installed in respective accommodation housings, in an upper base and a lower base of the shoulder with a reasonable expectation of success in order to have the advantage of protecting against high internal or external pressures penetrating between the threads that seek to deform the pipes and the coupling as taught by Cartensen.
In the related field of pipe couplings, Gu teaches a pipe coupling (Fig. 2, coupling at 2) having a seal made of HNBR (Fig. 2, seal 7 and in [0026] of the English translation discloses seal 7 is made of HNBR) in order to have the advantage of at least excellent corrosion resistance, tear resistance, compression deformation resistance, resistance to weather and sunlight (In [0026] of the English translation discloses the advantage of HNBR seals).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the material of the pair of seals of Sabatier in view of Cartensen to be made of HNBR with a reasonable expectation of success in order to have the advantage of at least excellent corrosion resistance, tear resistance, compression deformation resistance, resistance to weather and sunlight as taught by Gu.
Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In this case, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the material of the pair of seals of Sabatier in view of Cartensen and Gu to be made of a known material such as HNBR for at least the advantage of resistance to wear, tear, and compression as disclosed at https://www.wyattseal.com/products/hnbr-orings#:~:text=Benefits%20of%20HNBR%20O%2DRings&text=HNBR%20O%2Drings%20possess%20a,also%20exhibit%20excellent%20weathering%20resistance.
In regard to claim 2, Sabatier, Cartensen, and Gu discloses the coupling according to claim 1, and Sabatier further discloses wherein the female rounded threads of the coupling are manufactured by computerized numerical control technology (See note below.).
Sabatier does not expressly disclose the female rounded threads are manufactured by computerized numerical control technology, however, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself and 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 product was made by a different process. In re Thorpe, 227 USPQ 964. Therefore, as the limitation of “manufactured by computerized numerical control technology” does not impart a physical limitation which differentiates over the prior art, therefore the threading of Sabatier is considered as reading on the limitation " manufactured by computerized numerical control technology".
In regard to claim 3, Sabatier, Cartensen, and Gu discloses the coupling according to claim 1, Sabatier discloses a male-to-female fit between at least one of the pipes (Fig. 6 shows the male-to-female fit between at least one of the pipes) and Cartensen further teaches wherein threads of a lower and an upper section the coupling and the threads of each of the pipes are joined by applying a layer of grease (In 4:30-40 discloses applying a layer of grease such as indium in order to have the advantage of preventing galling and closing any leak path through the threads), and further applying tightening torque to form a hermetic seal (In 4:30-40 discloses making up the connection between the coupling and the pipes which requires applying tightening torque in addition to applying indium in order to prevent any leak paths through the threaded connection, thus, providing a hermetic seal).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the male-to-female fit between at least one of the pipes and the coupling of Sabatier to include a layer of grease such as indium with a reasonable expectation of success in order to have the advantage of preventing galling and closing any leak path through the threads as taught by Cartensen.
Although, Cartensen does not expressly disclose API grease, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the grease of Sabatier in view of Cartensen and Gu for a known API standard grease with a reasonable expectation of success in order to have the advantage of a known reliable and commercially available grease. See MPEP 2143(I)(B) with regard to simple substitution of one known element for another to obtain predictable results.
In regard to claim 7, Sabatier, Cartensen, and Gu discloses the coupling according to claim 1, and Sabatier further discloses wherein both an upper end and a lower end of an outer part of the coupling are beveled (See image below, both bevels are located on an outer part of the coupling and respectively at a lower end and an upper end).
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In regard to claim 9, Sabatier, Cartensen, and Gu discloses the coupling according to claim 1, and Sabatier further discloses characterized in that the coupling is constructed of materials that are highly resistant to corrosion, high pressures and capable of withstanding variable temperatures (In [0073] discloses the coupling is made of steel and according to API standard. Therefore, the coupling is of materials with high resistance to corrosion, high pressures and variable temperatures present in the oil extraction process. This interpretation is similar to the applicant’s invention as disclosed in the specification on page 10, first paragraph, that discloses the coupling material is made of steel and established for API standards).
Claims 1-3, 7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Cartensen (US 4,878,285 hereinafter “Cartensen ‘285”) in view of Gu (CN 106764119 A).
In regard to claim 1, Cartensen ‘285 discloses an American Petroleum Institute, API, oil extraction pipe joint coupling (Fig. 7 shows a pipe joint coupling at 60 and in 1:10-27 discloses the invention relates to oil extraction and in 3:64-68 discloses the invention meets API standard) comprising:
a. female rounded threads (Fig. 7, female threads of 60 and in 9:1-19 discloses round threaded pipes according to API can be used) configured to join two pipes (Fig. 7, pipes 80 and 82) with API standardized characteristics (Fig. 7 and in 2:34-53 and in 9:1-19 discloses round threaded pipes according to API can be used) threaded from both upper and lower sides of the coupling (Fig. 7, both upper and lower sides of the couple have the female threads);
b. a shoulder that protrudes towards an inside of the coupling in an annular shape (Fig. 7, shoulder at 62a and 62b protrudes towards an inside of the coupling in annular shape similar to the applicant’s invention) arranged longitudinally (Fig. 7, the shoulder is arranged longitudinally) and coaxially with respect to an axis of the coupling (Fig. 7, the shoulder is coaxial with respect to a longitudinal axis of 62), having straight annular profiles (Fig. 7, the cross-section of the shoulder as shown have straight annular profiles similar to the applicant’s invention) and operative upper and lower bases (Fig. 7, upper and lower bases at 67 and 68); and
c. a plurality of seal housings consisting of: two annular seal accommodation housings (Fig. 7, grooves 67 and 68 are at least a plurality of seal housings consisting of two annular seal accommodation housings) at the operative upper and lower bases of the shoulder (Fig. 7 shows the housings are at the operative upper and lower bases of the shoulder); and
d. a plurality of seals consisting of: two elastomeric seals, each installed in one of the annular seal accommodation housings (Fig. 7, seals 64 and 65 define a plurality of seals consisting of two elastomeric seals which each are installed within 67 and 68 respectively);
wherein the straight profiles of the shoulder collide with edges of the pipes when threaded (Fig. 7 shows the straight profiles of the shoulder collide with the edges at the axial open ends of the pipes when the pipes are threaded to the coupling), producing hermeticity through a metal-to-metal seal (Fig. 7, metal-to-metal seal by the contact at 62a and 62b) and compression of the elastomeric seals (Fig. 7, compression of seals 64 and 65 as shown); and
wherein an internal diameter of the shoulder is approximately equal to an internal diameter of the pipes (Fig. 7, the shoulder has at least one internal diameter that is approximately equal to an internal diameter of pipes as shown).
Cartensen ‘285 does not expressly disclose a pair of seals are made of hydrogenated nitrile elastomer material, and wherein a shoulder length is based on a distance measured between terminals of the pipes, after threaded by applying an API-recommended tightening torque for a respective outer diameter of each pipe, whereby improving the metal-to-metal seal.
In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See MPEP 2144.04(IV)(A). In this case, the recitation “wherein a shoulder length is based on a distance measured between terminals of the pipes, after threaded by applying an API-recommended tightening torque for a respective outer diameter of each pipe, whereby improving the metal-to-metal seal” is recitation of relative dimensions which does not differentiate the performance of the claimed shoulder to the shoulder of Cartensen ‘285. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified an inner shoulder length corresponds to a free space between terminals of the pipes dependent on an API diameter and a value of a corresponding tightening torque recommended by the API standard of Cartensen ‘285 in order to have at least a reliable pipe coupling meeting a known standard such as API. Further, a person of ordinary skill in the art would reasonably understand that the shoulder must at least be designed and constructed to withstand the axial compression force of the pipes during torque tests without failing. Therefore, the axial shoulder length must be at least long enough or thick enough to withstand the axial compression from the torque applied by the pipes. Further, in 1:38-68 discloses the importance of instrumentation to measure torque and ensuring a proper connection. Therefore, the dimensions of the pipes including the shoulder must be capable of at least withstanding pressures applied by torque.
In the related field of pipe couplings, Gu teaches a pipe coupling (Fig. 2, coupling at 2) having a seal made of HNBR (Fig. 2, seal 7 and in [0026] of the English translation discloses seal 7 is made of HNBR) in order to have the advantage of at least excellent corrosion resistance, tear resistance, compression deformation resistance, resistance to weather and sunlight (In [0026] of the English translation discloses the advantage of HNBR seals).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the material of the pair of seals of Cartensen ‘285 to be made of HNBR with a reasonable expectation of success in order to have the advantage of at least excellent corrosion resistance, tear resistance, compression deformation resistance, resistance to weather and sunlight as taught by Gu.
Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In this case, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the material of the pair of seals of Cartensen ‘285 in view of Gu to be made of a known material such as HNBR for at least the advantage of resistance to wear, tear, and compression as disclosed at https://www.wyattseal.com/products/hnbr-orings#:~:text=Benefits%20of%20HNBR%20O%2DRings&text=HNBR%20O%2Drings%20possess%20a,also%20exhibit%20excellent%20weathering%20resistance.
In regard to claim 2, Cartensen ‘285 and Gu discloses the coupling according to claim 1, and Cartensen ‘285 further discloses wherein the female rounded threads of the coupling are manufactured by computerized numerical control technology (See note below.).
Cartensen ‘285 does not expressly disclose the threading are manufactured by computerized numerical control technology, however, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself and 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 product was made by a different process. In re Thorpe, 227 USPQ 964. Therefore, as the limitation of “manufactured by computerized numerical control technology” does not impart a physical limitation which differentiates over the prior art, therefore the threading of Cartensen ‘285 is considered as reading on the limitation " manufactured by computerized numerical control technology".
In regard to claim 3, Cartensen ‘285 and Gu discloses the coupling according to claim 1, and Cartensen ‘285 further teaches wherein a male-to-female fit between at least one of the pipes and the coupling comprises a grease (In 7:36-49 discloses applying a lubricant which is at least a grease in the threaded system).
Cartensen ‘285 and Gu do not expressly disclose the grease is an API grease.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the grease of Cartensen ‘285 and Gu for a known API standard grease with a reasonable expectation of success in order to have the advantage of a known reliable and commercially available grease. See MPEP 2143(I)(B) with regard to simple substitution of one known element for another to obtain predictable results.
In regard to claim 7, Cartensen ‘285 and Gu discloses the coupling according to claim 1, and Cartensen ‘285 further discloses wherein both an upper end and a lower end of an outer part of the coupling are beveled (Fig. 7, exterior surface of 62 define an outer part which at both axial ends define an upper end and a lower end both include a bevel as shown).
In regard to claim 9, Cartensen ‘285 and Gu discloses the coupling according to claim 1, and Cartensen ‘285 further discloses characterized in that the coupling is constructed of materials that are highly resistant to corrosion, high pressures and capable of withstanding variable temperatures (Fig. 7 and in 3:46-68 to 4:1-23 discloses the coupling meets API standards and relates to extraction of oil, therefore, the coupling is at least constructed of materials that are highly resistant to corrosion, high pressures and capable of withstanding variable temperatures).
Claims 1-3, 7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Winslow (US 2,187,217) in view of Cartensen ‘285 (US 4,878,285) and further in view of Gu (CN 106764119 A).
In regard to claim 1, Winslow discloses an oil extraction pipe joint coupling (Fig. 1 shows a pipe joint coupling at 8 capable of oil extraction. See note below.) comprising:
a. female threads (Fig. 1, female threads at 7) configured to join two pipes (Fig. 1, pipes 5 and 6) threaded from both upper and lower sides of the coupling (Fig. 1, both upper and lower sides of the couple have the female threads and both pipes 5 and 6 are threaded from the upper and lower sides of the coupling similar to applicant’s invention);
b. a shoulder that protrudes towards an inside of the coupling in an annular shape (Fig. 1, shoulder at 12 protrudes towards an inside of the coupling in annular shape similar to the applicant’s invention) arranged longitudinally (Fig. 1, the shoulder is arranged longitudinally) and coaxially with respect to an axis of the coupling (Fig. 1, the shoulder is coaxial with respect to a longitudinal axis of 8), having straight annular profiles (Fig. 1, the cross-section of the shoulder as shown have straight annular profiles similar to the applicant’s invention) and operative upper and lower bases (Fig. 1, upper and lower bases of the shoulder at 11); and
c. a plurality of seal housings consisting of: two annular seal accommodation housings (Fig. 1, grooves for gaskets 20 define at least a plurality of seal housings) at the operative upper and lower bases of the shoulder (Fig. 1 shows the housings are at the operative upper and lower bases of the shoulder); and
d. a plurality of seals consisting of: two elastomeric seals, each installed in one of the annular seal accommodation housings (Fig. 1, seals 20 define two elastomeric seals and define a plurality of seals consisting of two elastomeric seals which each are installed within the housings respectively);
wherein the straight profiles of the shoulder collide with edges of the pipes when threaded (Fig. 1 shows the straight profiles of the shoulder collide with the edges at the axial open ends of the pipes when the pipes are threaded to the coupling), producing hermeticity through a metal-to-metal seal (Fig. 1, metal-to-metal seal by the contact at each 11 similar to applicant’s invention and in 2:20-38 discloses metal-to-metal contact seal) and compression of the elastomeric seals (Fig. 1, compression of both seals 20 as shown); and
wherein an internal diameter of the shoulder is approximately equal to an internal diameter of the pipes (Fig. 1, the shoulder has at least one internal diameter that is approximately equal to an internal diameter of the pipes as shown to define a uniform fluid flow path).
It is noted that a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP § 2114. The recitation “oil extraction” is a nominal recitation of the intended manner of operation of the system, and does not add any further structure than the “pipe joint coupling". Therefore, little patentable weight is given to "oil extraction".
Winslow does not expressly disclose the female threads are rounded threads, the pipes are standard API pipes, a pair of seals are made of hydrogenated nitrile elastomer material, and wherein a shoulder length is based on a distance measured between terminals of the pipes, after threaded by applying an API-recommended tightening torque for a respective outer diameter of each pipe, whereby improving the metal-to-metal seal.
In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See MPEP 2144.04(IV)(A). In this case, the recitation “wherein a shoulder length is based on a distance measured between terminals of the pipes, after threaded by applying an API-recommended tightening torque for a respective outer diameter of each pipe, whereby improving the metal-to-metal seal” is recitation of relative dimensions which does not differentiate the performance of the claimed shoulder to the shoulder of Winslow. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified an inner shoulder length corresponds to a free space between terminals of the pipes dependent on an API diameter and a value of a corresponding tightening torque recommended by the API standard of Winslow in order to have at least a reliable pipe coupling meeting a known standard such as API. Further, a person of ordinary skill in the art would reasonably understand that the shoulder must at least be designed and constructed to withstand the axial compression force of the pipes during torque tests without failing. Therefore, the axial shoulder length must be at least long enough or thick enough to withstand the axial compression from the torque applied by the pipes. Further, in 1:38-68 discloses the importance of instrumentation to measure torque and ensuring a proper connection. Therefore, the dimensions of the pipes including the shoulder must be capable of at least withstanding pressures applied by torque.
In the related field of threaded pipe couplings, Cartensen ‘285 teaches female threads can be rounded threads according to API standards and the pipes are standard API pipes which are known and reliable types of threads and pipes according to the standard of API (Fig. 7 and in 1:30-50 and 2:34-53 discloses rounded threads and pipes can be API standard pipes and threads).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the female threads and the pipes of Winslow to include rounded female threads having API standards and pipes of API standards with a reasonable expectation of success in order to have the advantage of known and reliable threads and pipes according to API standards as taught by Cartensen ‘285.
In the related field of pipe couplings, Gu teaches a pipe coupling (Fig. 2, coupling at 2) having a seal made of HNBR (Fig. 2, seal 7 and in [0026] of the English translation discloses seal 7 is made of HNBR) in order to have the advantage of at least excellent corrosion resistance, tear resistance, compression deformation resistance, resistance to weather and sunlight (In [0026] of the English translation discloses the advantage of HNBR seals).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the material of the pair of seals of Winslow to be made of HNBR with a reasonable expectation of success in order to have the advantage of at least excellent corrosion resistance, tear resistance, compression deformation resistance, resistance to weather and sunlight as taught by Gu.
Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In this case, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the material of the pair of seals of Winslow in view of Gu to be made of a known material such as HNBR for at least the advantage of resistance to wear, tear, and compression as disclosed at https://www.wyattseal.com/products/hnbr-orings#:~:text=Benefits%20of%20HNBR%20O%2DRings&text=HNBR%20O%2Drings%20possess%20a,also%20exhibit%20excellent%20weathering%20resistance.
In regard to claim 2, Winslow, Cartensen ‘285 and Gu discloses the coupling according to claim 1, and Cartensen ‘285 further discloses wherein the female rounded threads of the coupling are manufactured by computerized numerical control technology (See note below.).
Cartensen ‘285 does not expressly disclose the threading are manufactured by computerized numerical control technology, however, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself and 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 product was made by a different process. In re Thorpe, 227 USPQ 964. Therefore, as the limitation of “manufactured by computerized numerical control technology” does not impart a physical limitation which differentiates over the prior art, therefore the threading of Cartensen ‘285 is considered as reading on the limitation " manufactured by computerized numerical control technology". See claim 1 above for the same reasons to combine Winslow, Cartensen ‘285, and Gu.
In regard to claim 3, Winslow, Cartensen ‘285, and Gu discloses the coupling according to claim 1, and Cartensen ‘285 further teaches wherein a male-to-female fit between at least one of the pipes and the coupling comprises a grease (In 7:36-49 discloses applying a lubricant which is at least a grease in the threaded system. See claim 1 above for the same reasons to combine Winslow, Cartensen ‘285, and Gu.).
Winslow, Cartensen ‘285, and Gu do not expressly disclose the grease is an API grease.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the grease of Winslow in view of Cartensen ‘285 and Gu for a known API standard grease with a reasonable expectation of success in order to have the advantage of a known reliable and commercially available grease. See MPEP 2143(I)(B) with regard to simple substitution of one known element for another to obtain predictable results.
In regard to claim 7, Winslow, Cartensen ‘285, and Gu discloses the coupling according to claim 1, and Cartensen ‘285 further discloses wherein both an upper end and a lower end of an outer part of the coupling are beveled (Fig. 7, exterior surface of 62 define an outer part which at both axial ends define an upper end and a lower end both include a bevel as shown) in order to provide at least the advantage of reduced sharp corners which enhances safety.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified both an upper end and a lower end of an outer part of the coupling of Winslow to include bevels with a reasonable expectation of success in order to have the advantage of reduced sharp corners which enhances safety as taught by Cartensen ‘285. See MPEP 2143(I)(G) with regard to a motivation to combine references may be implicit and when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. In this case, the bevels of Cartensen ‘285 would reasonably suggest to a person of ordinary skill in the art that beveled edges provide at least enhanced safety by reducing sharp corners.
In regard to claim 9, Winslow, Cartensen ‘285, and Gu discloses the coupling according to claim 1, and Cartensen ‘285 further teaches the coupling is constructed of materials that are highly resistant to corrosion, high pressures and capable of withstanding variable temperatures (Fig. 7 and in 3:46-68 to 4:1-23 discloses the coupling meets API standards and relates to extraction of oil, therefore, the coupling is at least constructed of materials that are highly resistant to corrosion, high pressures and capable of withstanding variable temperatures).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the materials of the coupling of Winslow to include materials that are highly resistant to corrosion, high pressures and capable of withstanding variable temperatures with a reasonable expectation of success in order to have the advantage of a strong and reliable coupling taught by Cartensen ‘285.
Response to Arguments
Applicant's arguments filed on 12/09/2025 with respect to Sabatier in view of Cartensen and Gu have been fully considered but they are not persuasive.
In response to applicant’s arguments that Sabatier does not disclose claim 1 because Sabatier has two problems of reduce risk of thread damage and higher torques beyond API’s recommendation, however, the Examiner respectfully disagree because applicant failed to provide facts and evidence from claim 1 that distinguishes over Sabatier and the rejection of the Non-Final Rejection filed on 09/10/2025. Furthermore, applicant argued that Sabatier is tightened to higher torque values than standard API connectors, however, such reasoning would result in meeting API-recommended torque values and more. Claim 1 recites “applying an API-recommended tightening torque”, therefore, having a higher value would result in meeting more than just API-recommended torque values. Therefore, applicant’s arguments are unpersuasive and lacks facts and evidence from claim 1 that distinguishes over Sabatier in view of Cartensen and Gu.
In response to applicant’s arguments that Sabatier does not provide any teachings related to hermeticity or corrosion, however, the Examiner respectfully disagree because claim 1 does not recite the term “corrosion”, and the term “hermeticity” in claim 1 is defined by the metal-to-metal seal and compression of the elastomeric seals which the metal-to-metal seal is met by Sabatier and Sabatier in view of Cartensen discloses compression of elastomeric seals. Therefore, applicant’s arguments are unpersuasive.
In response to applicant’s arguments with regard to the shoulder and shoulder length as claimed in claim 1 that Sabatier does not disclose, however, the Examiner respectfully disagree because claim 1 recites a “shoulder length is based on a distance measured between terminals of the pipes, after threaded by applying an API-recommended tightening torque” which Sabatier discloses a shoulder which has an axial shoulder length that is at least based on tightening torque because one of ordinary skill in the art would reasonably consider the axial shoulder length in relation to the tightening torque of the pipes such that the shoulder does not fail when being axially compressed. According to applicant’s arguments that Sabatier is tightened more than API-recommended values, which such reasoning would result in a shoulder axial length that withstands API-recommended torque values. Additionally, the internal diameter of the shoulder of Sabatier is also equal to an internal diameter of the pipes which one of ordinary skill in the art would reasonably understand the benefits of uniform diameter for fluid flow which reduces turbulence as compared to unequal diameters. Accordingly, the Examiner disagrees with the applicant’s arguments that the shoulder of Sabatier is simply a random block of metal and instead one of ordinary skill in the art would consider at least the factors of tightening torque and uniform internal diameters as mentioned above. Applicant’s arguments include the following that does not distinguish the claimed shoulder to the shoulder of Sabatier:
The length of the shoulder (2J) is designed to be exactly equal to the gap that remains between the two pipe ends after the full recommended torque, however, claim 1 does not provide features that the length is limited to the API-recommended torque values. Claim 1 only requires that the shoulder length is “based on” a API tightening torque which can be reasonably interpreted as values that can meet API values or more.
Nothing in Sabatier teaches that the inner shoulder length should be a fixed value for each specific pipe diameter, however, claim 1 does not recite anything related to particular values of pipe diameters and the shoulder length.
When that torque is applied, the shoulder occupies that space that would have been empty, eliminating turbulence, preventing corrosion, creating a robust metal-to-metal seal at the shoulder and compressing elastomeric seals for a perfect secondary seal which none of these features are taught by Sabatier, however, Sabatier discloses a shoulder and not an empty space and has an internal diameter equal to an internal diameter of the pipes which eliminates turbulence in the same manner as applicant’s invention and Sabatier in view of Cartensen discloses compressing elastomeric seals. Furthermore, claim 1 does not recite what claimed structure prevents corrosion.
Applicant’s arguments provide the methodology and a graph of pin advance versus pin tolerance, however, claim 1 lack any of this information to distinguish over Sabatier in view of Cartensen and Gu. Claim 1 only requires the shoulder length to be generally based on a known standard of API torque values which as mentioned in the Non-Final rejection filed on 09/10/2025 and prior Office Actions that one of ordinary skill in the art would at least reasonably consider a well known standard such as API to design the shoulder such that it would at least not fail under such torque values. If applicant intended a specific methodology and values of the shoulder and torque values to have a non-obvious and unpredictable shoulder length that distinguishes over known shoulders such as Sabatier, then it must be claimed.
Accordingly, applicant’s arguments with regard to the shoulder length are unpersuasive.
In response to applicant’s arguments that Sabatier in view of Cartensen and Gu do not disclose the features of the seal accommodation housings and seals of claim 1, however, the Examiner respectfully disagree because Sabatier in view of Cartensen and Gu reasonably discloses those features. Applicant argued that claim 1 has been amended to have only two housings and only two seals installed in the housings, however, the Examiner respectfully disagree because claim 1 recites “a plurality of seal housings consisting of: two annular seal accommodation housings…a plurality of seals consisting of: two elastomeric seals” which does not require the entire coupling to have only two housings and only two seals. The two seals and two housings near the shoulder of Cartensen can reasonably be interpreted as recites “a plurality of seal housings consisting of: two annular seal accommodation housings…a plurality of seals consisting of: two elastomeric seals”. If applicant intended claim 1 to have the entire coupling to only have two seals and two housings, then it must be properly claimed. Therefore, applicant’s arguments are unpersuasive.
In response to applicant’s arguments that there is no motivation to combine Sabatier and Cartensen 127, however, the Examiner respectfully disagree because on of ordinary skill in the art would reasonably consider the seals of Cartensen because both Sabatier and Cartensen are in the same field of endeavor which is threaded pipe couplings and Sabatier lacks the use of gaskets, however, one of ordinary skill in the art would reasonably see the difference of Sabatier and Cartensen is the use of gaskets which at least provides more than just a metal-to-metal seal and is at least in addition to a metal-to-metal seal. Applicant’s arguments appear to overcomplicate the combination of Sabatier and Cartensen rather than reasonably consider what Sabatier in view of Cartensen would reasonably teach to one of ordinary skill in the art of threaded pipe couplings. Therefore, applicant’s arguments are unpersuasive.
In response to applicant’s arguments that there is no reasons to combine Gu with Sabatier and Cartensen, however, the Examiner respectfully disagree because the use of Gu in the Non-Final rejection filed on 09/10/2025 was not intended to bodily incorporate the seal of Gu to Sabatier in view of Cartensen but rather show that HNBR is a known type of material for the use of a seal. Additionally, applicant’s arugments failed to reasonable consider it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In this case, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the material of the pair of seals of Sabatier in view of Cartensen and Gu to be made of a known material such as HNBR for at least the advantage of resistance to wear, tear, and compression as disclosed at https://www.wyattseal.com/products/hnbr-orings#:~:text=Benefits%20of%20HNBR%20O%2DRings&text=HNBR%20O%2Drings%20possess%20a,also%20exhibit%20excellent%20weathering%20resistance. Accordingly, applicant’s arguments overcomplicate the use of the prior art Gu and attempts to bodily incorporate the seal of Gu into Sabatier in view of Cartensen to overcome the rejection. Therefore, applicant’s arguments are unpersuasive.
Applicant's arguments filed 12/09/2025 with respect to Cartensen ‘285 in view of Gu have been fully considered but they are not persuasive.
In response to applicant’s arguments that Cartensen ‘285 discloses the internal seal 20 which is different than applicant’s invention, however, the applicant’s arguments failed to reasonably consider the Non-Final rejection filed on 09/10/2025 such that the embodiment relied upon is Fig. 7 of Cartensen ‘285 and not Fig. 2 which has a seal 20. Fig. 7 of Cartensen ‘285 has an integrally formed shouldered formed a single part with the coupling similar to applicant’s invention. Therefore, applicant’s arguments are unpersuasive.
In response to applicant’s arguments that the differences between Cartensen ‘285 and the claimed invention are not merely relative dimensions, but result in differences in performances, however, the Examiner respectfully disagree because claim 1 does not recite structurally distinguishing features over Cartensen ‘285 and the requirement of claim 1 is a shoulder length “based on” a tightening torque which Cartensen ‘285 has a shoulder length and requires a tightening torque in order to form the joint by the coupling and threaded pipes. Therefore, a reasonable interpretation of claim 1 is that applicant is trying to claim a relative dimension between the shoulder length and the torque, however, failed to provide features in the claim and arguments to support a distinction between claim 1 and the rejection by Cartensen ‘285 in view of Gu. Therefore, applicant’s arguments are unpersuasive.
In response to applicant’s arguments with regard to Gu, see the same reasons above for Sabatier in view of Cartensen and Gu. Therefore, applicant’s arguments are unpersuasive.
In response to applicant’s arguments that the Office Action incorrectly assumes that any shoulder in a pipe connector serves the same purpose and would be dimensioned using the same criteria, however, the Examiner respectfully disagree because it is not a matter of serving the same criteria as applicant’s invention but rather serve the purpose of what is known to the shoulder which in threaded couplings serves to at least withstand axial compression without failing by the torqued pipes. Therefore, the shoulder would at least be dimensioned at least axially and radially to withstand the expected pressure it intends to experience which includes at least the axial torque from the pipes, the pressure of the flow fluid, and temperature. Accordingly, applicant’s arguments are unpersuasive.
In response to applicant’s arguments that the instant invention requires dimensioning the shoulder for volumetric displacement of the specific free space defined by API standards and the dimensional relationship creates unexpected synergy, however, the Examiner respectfully disagree because applicant failed to claim such feature that would distinguish over obvious dimensional considerations of having a shoulder such as mechanical strength. Claim 1 only requires a shoulder length being based on an API-recommended torque value which does not distinguish over obvious dimensional consideration of a shoulder such as mechanical strength. Therefore, applicant’s arguments are unpersuasive.
In response to applicant’s arguments that the Examiner’s analysis improperly reduces all shoulder-like structures to serve the same function and applicant’s claimed shoulder represents a non-obvious integration of multiple functions (structural, sealing, and flow management), however, the Examiner respectfully disagree because the claims failed to distinguish over the prior arts in terms of structural, sealing, and flow management. Sabatier and Cartensen disclose the same structural features of a threaded pipe coupling with seals and a shoulder having an internal diameter equal to an internal diameter of the pipes to allow uniform fluid flow. Therefore, applicant’s arguments are unpersuasive and failed to provide sufficient facts and evidence the claims distinguish over the prior art in terms of structure, sealing, and flow management.
In response to applicant’s arguments that Cartensen ‘127 teaches more seals and housings than is required by claim 1, however, the Examiner respectfully disagree for the same reasons above with regard to Sabatier in view of Cartensen and Gu. Therefore, applicant’s arguments are unpersuasive.
In response to applicant’s arguments that the Examiner’s characterization of applicant’s arguments as “overly complex” inadvertently highlights why applicant’s invention is non-obvious, however, the Examiner respectfully disagree because the Examiner’s characterization of applicant’s arguments as overly complex is more directed to being unreasonable to one of ordinary skill in the art when considering the prior arts Sabatier, Cartensen, Cartensen ‘285, and Gu. Applicant’s arguments further argues that the complexity of combining these teachings to achieve the new result of eliminating turbulence and providing a multi-barrier seal in a standard API coupling, however, the Examiner respectfully disagree because the only feature that may be consider as reducing turbulence is the shoulder having an internal diameter equal to an internal diameter of the pipes which is a common feature as shown by Sabatier, Cartensen, and Cartensen ‘285. With regard to a multi-barrier seal both Cartensen and Cartensen ‘285 discloses a multi-barrier seal defined by a metal-to-metal contact between the shoulder and the pipes and gaskets. Therefore, applicant’s arguments are unpersuasive and failed to provide sufficient facts and evidence of claim 1 disclosing non-obvious and new features that overcome the prior arts.
Applicant’s arguments with respect to claims 1-3, 7, and 9 are also moot because the new ground of rejection includes the prior art Winslow that was not applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 William S. Choi whose telephone number is (571)272-8223. The examiner can normally be reached Mon - Fri 9:30-5:30.
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/WILLIAM S. CHOI/Primary Examiner, Art Unit 3679