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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 25, 2025 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The newly added limitation of “one magnetic bar of variable length” requires a magnetic bar whose physical length is changeable, e.g., through telescoping structure, modular segments, or other mechanisms permitting the actual variation of the bar’s longitudinal dimension. However, the original disclosure consistently describes the magnetic bar as a fixed-length pole piece onto which magnets are affixed. For example, in paragraph {0023] describes that “two or more magnets affixed to a mild steel pole piece” and discusses variations in magnet coverage length and spacing between magnets along the pole piece. This paragraph further explains that “the length may vary” in reference to the magnet array (covering 24 inches with 1-inch magnets and 1-inch spacers), but nowhere indicates that the pole piece itself is structurally adjustable in length. The specification does not disclose, teach or suggest a telescoping bar, a modular bar assembled from interchangeable segments, or any structure enabling the magnetic bar itself to vary in physical length.
Because the only variations disclosed relate to magnet spacing or coverage along a fixed pole, and not to a magnetic bar whose overall longitudinal dimension can vary, the original application does not provide sufficient written description support for a “magnetic bar of variable length” and a person of ordinary skill in the art would not recognize the amended limitation as being part of the originally described invention.
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.
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 and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Pallin (US-10807101-B2) in view of Branch (US9227198).
Regarding claim 1, Pallin discloses a magnetic tool comprising:
one magnetic bar (Pallin "magnet rods" #11 col. 8);
end plates (Pallin "upper and lower ends" #13a and 13b col. 7 and Fig. 1b) permanently affixed to each end of the one magnetic bar (screws shown in Pallin Fig. 1b are threaded through the outside of each end to affix the handle to the assembly, not connecting the ends to the magnet rods), the one magnetic bar and the end plates forming a ditch magnet (Pallin does not refer to these components directly as forming a ditch magnet but does consider the invention in the field of ditch magnets and referring to magnetized bars as “ditch magnets” [col. 1 lines 22-23], so indirectly confirming these components comprising a magnetized bar form a ditch magnet), the end plates allowing captured ferrous metal to pass without releasing the end plates from the one magnetic bar (Pallin col. 7 lines 6-11 "captured magnetic material can easily be removed by moving the wiper assembly between the upper magnet handle device and lower magnet guider" and no mention of disassembly being required for removal of captured magnet material to be performed); and
a single composite, multi-component wiper that urges captured ferrous metal from one end of the ditch magnet to the opposite end (Pallin "wiper assembly" (20) last par. col 4 and claim 11 of Pallin), wherein the wiper is capable of being taken apart (Pallin Fig. 1b shows fasteners for wipers joining parts 21, 22 (upper and lower scraper bodies) and 23 (non-magnetic metal wipers) of wiper assembly 20 allowing the wiper assembly to be taken apart col. 8 par. 2) without removal of one or both of the end plates (please see Pallin Fig. 1b reproduced below with explanations), and wherein the single composite, multicomponent wiper is used regardless the length of the one magnetic bar (Pallin Fig. 1b illustrates that the single composite, multi-component wiper “wiper assembly” can move freely along any length that the magnetic rod might be).
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Pallin does not explicitly label the upper and lower ends as “end plates”, however these end structures define the terminal boundaries of the rods, are non-magnetic components, provide structural retention and provide a surface over which the wiper assembly must pass to clean metal debris of the magnetic rods. Pallin also discloses multiple magnetic bars (“magnet rods”) however, each rod is a stand-alone elongated magnetic element, thus a person of ordinary skill in the art would understand that Pallin discloses “end plates” as well as two instances of the claimed one magnetic bar, not zero, and choosing the number of elements in a known structure is an obvious matter of design choice. (MPEP 2144.04(VI))
Further, Pallin does not require two rods as a matter of operability; instead, Pallin merely discloses rod sets configured to operate in a grid. Each rod is itself an elongated magnetic bar. Choosing to use one rod rather than two is a well-known design choice that yields predictable results and does not change the underlying magnetic collection function.
Pallin does not describe the end plates as having open architecture capable of allowing captured ferrous metal to pass through without releasing the end plates.
Branch discloses a ditch magnet comprising a single magnetic bar with end plates affixed to each end of the bar (Branch “plate” 21 and 27). Branch teaches a wiper plate that is assembled around the bar and slid along its length to urge captured ferrous metal toward an end plate (Branch illustrated in Fig. 7). Branch’s figures depict the end plates as possessing open architecture with the “openings” 23 and 24 (Branch col. 3 line 64 and Fig. 3).
It would have been obvious to one of ordinary skill in the art at the time of filing to permanently affix Branch’s enlarged end-plate geometry into Pallin’s magnetic rod assembly to provide a predictable mechanical stop for the wiper while allowing the wiper to extend past the non-magnetic end portions to clear magnetic debris. This would have improved operator control during wiping, enhancing the discharge of accumulated ferrous material by providing a plate suitable for gripping and lifting as described by Branch while also allowing magnetic debris to pass through unhindered, improving user safety while ensuring the wiper could not be accidentally disengaged. Incorporating Branch’s plate geometry including open architecture capable of allowing captured ferrous metal to pass through, into the existing end terminators in Pallin represents the use of a known ditch magnet improvement in a structurally compatible magnetic bar assembly yielding predictable results.
Regarding claim 5, Pallin in view of Branch discloses the magnetic tool of claim 1, wherein the wiper removes the captured ferrous metal from the one magnetic bar (Described in 1st par. col. 7).
Regarding claim 6, Pallin in view of Branch discloses the magnetic tool of claim 1, wherein the wiper is applied to each of the one magnetic bar (Described in 1st par. col. 7, also in col. 8, 2nd par. "one for each magnet rod").
Regarding claim 7, Pallin in view of Branch discloses the magnetic tool of claim 1, wherein the wiper comprises two or more components that are capable of being installed, removed, and replaced without removing the end plates when they are permanently affixed to the one magnetic bar (can be seen in Fig. 1b that all pieces of the wiper assembly may be removed in this manner, please see rejection of claim 1 for more detailed explanation).
Regarding claim 8, Pallin in view of Branch discloses the magnetic tool of claim 1, wherein the ditch magnet is used in an oilfield drilling fluid mud stream (col. 10 last par. lines 63-64).
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Pallin (US-10807101-B2).
Regarding claim 18, Pallin discloses a method for using a magnetic tool comprising: collecting ferrous metal on one magnetic bar (Pallin "magnet rods" #11 col. 8) having a first end plate (Pallin "upper and lower ends" #13a and 13b col. 7 and Fig. 1b) permanently affixed on a first end and a second end plate permanently affixed on a second end (screws shown in Pallin Fig. 1b are threaded through the outside of each end to affix the handle to the assembly, not connecting the ends to the magnet rods) with a single take-apart wiper secured beneath the first end plate (Pallin "wiper assembly" (20) last par. col 4 and claim 11 of Pallin), wherein the single takeapart wiper (Pallin Fig. 1b shows fasteners for wipers joining parts 21, 22 (upper and lower scraper bodies) and 23 (non-magnetic metal wipers) of wiper assembly 20 allowing the wiper assembly to be taken apart col. 8 par. 2) is capable of being installed, removed, and replaced without removing either the first end plate or the second end plate when they are affixed to the one magnetic bar (can be seen in Pallin Fig. 1b that all pieces of the wiper assembly may be removed in this manner) and wherein the single take-apart wiper is used regardless the length of the one magnetic bar (Pallin Fig. 1b illustrates that the single composite, multi-component wiper “wiper assembly” can move freely along any length that the magnetic rod might be), the collecting step comprising: turning the one magnetic bar in a vertical direction (col. 7 describes "when there is a need for cleaning, the separate magnet assembly can easily be removed from the frame assembly"); and moving the single take-apart wiper from its position beneath the first end plate down toward the second end plate (Col. 7 continues "the captured magnetic material can easily be re moved by moving the wiper assembly between the upper magnet handle device and lower magnet guider"), wherein ferrous metal releases from the one magnetic bar moving through the second end plate to form piles of captured ferrous metal (Pallin col. 7 lines 9-11 "As the magnet rods at the lower end are free of magnets, total removal of the magnetic material is achieved in an easy way").
Pallin does not explicitly label the upper and lower ends as “end plates”, however these end structures define the terminal boundaries of the rods, are non-magnetic components, provide structural retention and provide a surface over which the wiper assembly must pass to clean metal debris of the magnetic rods. Pallin also discloses multiple magnetic bars (“magnet rods”) however, each rod is a stand-alone elongated magnetic element, thus a person of ordinary skill in the art would understand that Pallin discloses “end plates” as well as two instances of the claimed one magnetic bar, not zero, and choosing the number of elements in a known structure is an obvious matter of design choice. (MPEP 2144.04(VI))
Regarding claim 19, Pallin discloses the method for using a magnetic tool of claim 18, wherein the magnetic tool is placed in an oilfield drilling fluid mud recycling stream having ferrous metal from the well bore to attract and retain the ferrous metal to prevent the ferrous metal from being reintroduced into the well bore (Described in the last paragraph of col. 10).
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Pallin (US-10807101-B2) in view of Ruttley '46 (US-7665546-B2).
Regarding claim 9, Pallin discloses a magnetic tool comprising: one magnetic bar ("magnet rods" #11 col. 8); end plates permanently affixed to each end of the one magnetic bar ("upper and lower ends" #13a and 13b col. 7 and Fig. 1b), the one magnetic bar and the end plates forming a ditch magnet (Pallin does not refer to these components directly as forming a ditch magnet but does consider the invention in the field of ditch magnets and referring to magnetized bars as “ditch magnets” [col. 1 lines 22-23], so indirectly confirming these components comprising a magnetized bar form a ditch magnet); and a single take-apart wiper comprising two or more components that are capable of being installed, removed, and replaced without removing the end plates when they are affixed to the one magnetic bar (can be seen in Pallin Fig. 1b that all pieces of the wiper assembly may be removed in this manner, please see rejection of claim 1 for more detailed explanation), wherein the single take-apart wiper urges captured ferrous metal through from one end of the ditch magnet to an opposite end (Described in Pallin 1st par. col. 7), and wherein the single composite, multicomponent wiper is used regardless the length of the magnetic bar (Pallin Fig. 1b illustrates there is nothing preventing the single composite, multicomponent wiper from being used for any length of magnetic bar).
Pallin does not disclose wherein the end plates have an outside diameter that is greater than the single take-apart wiper interior diameter.
Ruttley '46 discloses a magnetic tool comprising: at least one magnetic bar ("magnet insert, or core" Ruttley '46 col. 3 lines 34-35); end plates affixed to each end of the one magnetic bar (Ruttley '46 col. 3 lines 46 and 47 "ring-shaped collar" #64 and "sleeve" #52 form the end plates while the magnet core is installed), the one magnetic bar and the end plates forming a ditch magnet; and a take-apart wiper (the sleeves #52 and #66 act as a wiper when the magnet core is removed) comprising two or more components wherein the end plates have an outside diameter that is greater than the take-apart wiper interior diameter (as the take-apart wiper contributes to form the end plates the outside diameter must be greater than its inside diameter.)
It would have been obvious to one of ordinary skill in the art at the time of filing to combine the end plates (which include the endcap and sleeves) of Ruttley '46 with the magnetic tool of Pallin. In this manner the magnets could be removed to release the debris while the end plates serve to protect the magnetic bar. It would have been a more efficient arrangement and taken less time for cleaning as the magnet could be reinstalled quickly without any further need for cleaning.
Regarding claim 10, Pallin in view of Ruttley ’46 discloses the magnetic tool of claim 9, wherein the take-apart wiper is formed of a non-ferrous material (Pallin "non-magnetic material" 2nd par. col. 8 line 15).
Regarding claim 11, Pallin in view of Ruttley ’46 discloses the magnetic tool of claim 9, where the take-apart wiper further includes one or more fasteners (fasteners of take-apart wiper "wiper assembly" illustrated in Pallin Fig. 1b).
Claims 9-11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Pallin (US-10807101-B2) in view of Branch (US9227198).
Regarding claim 9, Pallin discloses a magnetic tool comprising: one magnetic bar ("magnet rods" #11 col. 8); end plates permanently affixed to each end of the one magnetic bar ("upper and lower ends" #13a and 13b col. 7 and Fig. 1b), the one magnetic bar and the end plates forming a ditch magnet (Pallin does not refer to these components directly as forming a ditch magnet but does consider the invention in the field of ditch magnets and referring to magnetized bars as “ditch magnets” [col. 1 lines 22-23], so indirectly confirming these components comprising a magnetized bar form a ditch magnet); and a single take-apart wiper comprising two or more components that are capable of being installed, removed, and replaced without removing the end plates when they are affixed to the one magnetic bar (can be seen in Pallin Fig. 1b that all pieces of the wiper assembly may be removed in this manner, please see rejection of claim 1 for more detailed explanation), wherein the single take-apart wiper urges captured ferrous metal through from one end of the ditch magnet to an opposite end (Described in Pallin 1st par. col. 7), and wherein the single composite, multicomponent wiper is used regardless the length of the magnetic bar (Pallin Fig. 1b illustrates there is nothing preventing the single composite, multicomponent wiper from being used for any length of magnetic bar).
Pallin does not disclose wherein the end plates have an outside diameter that is greater than the single take-apart wiper interior diameter.
Branch discloses a ditch magnet comprising a single magnetic bar with end plates affixed to each end of the bar (Branch “plate” 21 and 27). Branch teaches a wiper plate that is assembled around the bar and slid along its length to urge captured ferrous metal toward an end plate (Branch illustrated in Fig. 7). Branch’s figures depict the end plates extending radially outward from the bar to a diameter that is significantly larger than the bar’s outer diameter and even sized in a way to make them easily grasped by a user for handling and transport (Branch Fig. 1-7 and col. 4 par. 2), while the wiper interior diameter is sized to closely fit around the bar.
It would have been obvious to one of ordinary skill in the art at the time of filing to permanently affix Branch’s enlarged end-plate geometry into Pallin’s magnetic rod assembly to provide a predictable mechanical stop for the wiper while allowing the wiper to extend past the non-magnetic end portions to clear magnetic debris. This would have improved operator control during wiping, enhancing the discharge of accumulated ferrous material by providing a plate suitable for gripping and lifting as described by Branch, improving user safety while ensuring the wiper could not be accidentally disengaged. Incorporating Branch’s plate geometry into the existing end terminators in Pallin represents the use of a known ditch magnet improvement in a structurally compatible magnetic bar assembly yielding predictable results.
Regarding claim 10, Pallin in view of Branch discloses the magnetic tool of claim 9, wherein the take-apart wiper is formed of a non-ferrous material (Pallin "non-magnetic material" 2nd par. col. 8 line 15).
Regarding claim 11, Pallin in view of Branch discloses the magnetic tool of claim 9, where the take-apart wiper further includes one or more fasteners (fasteners of take-apart wiper "wiper assembly" illustrated in Pallin Fig. 1b).
Regarding claim 14, Pallin in view of Branch discloses the magnetic tool of claim 9, the end plates having an open architecture capable of allowing the captured ferrous metal to pass through without releasing the end plates from the at least one magnetic bar (described in Pallin 1st par. of col. 7 “captured magnetic material can easily be removed by moving the wiper assembly between the upper magnet handle device and lower magnet guider” while Branch col. 3 line 64 “plate 21 can provide spaced apart openings”).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Pallin (US-10807101-B2) in view of Branch (US9227198) as applied to claim 11 above in further view of Boyer (US-20190277329-A1) and further supported by Nutsandbolts.com ("Nylon Lock Nuts: Applications, Advantages, and Compatibility with Bolts.")
Regarding claim 12, Pallin in view of Branch discloses the magnetic tool of claim 11.
Pallin in view of Branch does not disclose that the one or more fasteners comprising: nylon-insert flange locknuts that firmly grip threads to resist loosening and distribute load.
Boyer discloses that nylon lock nuts are a type of prevailing torque nut (Boyer abstract) designed to provide secure and reliable fastening in various applications. These nuts are known for their unique internal nylon insert, which creates resistance against loosening due to vibrations, temperature changes, and other external factors (Nutsandbolts.com p. 1 par. 1).
It would have been obvious to one of ordinary skill in the art at the time of filing to combine the teaching of nutsandbolts.com with the magnetic tool of Pallin in view of Branch. The metal wipers (23a and b Fig. 1b) are held between the metal scrapers (21a and 22b and 22a and 22b) and in the event that they require replacement due to repeated contact with sharpened metal debris the only way to do so would be the loosening of the fasteners which connect the metal scrapers. Nylon insert flanged locknuts would provide a fastener which could be loosened repeatably and still maintain their prevailing torque while in use and this would have been motivation to do so as disclosed by Nutsandbolts.com "their ability to withstand vibrations makes them suitable for heavy-duty machinery" and there would be a high probability of success given that "Nylon lock nuts are compatible with a wide range of bolts, screws, and threaded fasteners" (Nutsandbolts.com p. 3 par. 2).
Claims 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Pallin (US-10807101-B2) in view of Branch (US9227198) as applied to claim 9 above, and further in view of Ruttley '90 (US-20060042790-A1).
Regarding claim 15, Pallin in view of Branch discloses the magnetic tool of claim 9.
Pallin in view of Branch does not disclose the one magnetic bar comprising: the one magnetic bar comprising: two or more magnets affixed to a low-carbon steel pole, wherein the two or more magnets affixed to the pole are installed in a stainless-steel tube.
Ruttley '90 discloses a magnetic tool for retrieval of metal debris from a well bore where the tool has at least one magnetic bar comprising: two or more magnets (Ruttley ’90 abstract) affixed to a low-carbon steel pole (Ruttley par. [0026] encased in a metal sleeve "formed from a non-corrosive structurally stable material, such as for instance stainless steel"), wherein the two or more magnets affixed to the pole are installed in a stainless-steel tube.
It would have been obvious to one of ordinary skill in the art at the time of filing to combine the disclosure of Ruttley with the magnetic tool of Pallin in view of Branch as stainless steel is well known in the art and provides a non-brittle support which will not inhibit the magnetic function of the tool to collect debris in an environment where weaker material may be likely to suffer breakage.
Regarding claim 16, Pallin in view of Branch and further in view of Ruttley '90 discloses the magnetic tool of claim 15, the at least one magnetic bar further comprising: spacers (Ruttley #46 and #48 par. [0025] Fig. 6) positioned between the two or more magnets when affixed to the pole.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Pallin as applied to claim 19 above, and further in view of Branch (US9227198B2).
Regarding claim 20, Pallin discloses the method for using a magnetic tool of claim 19.
While Pallin does not disclose that the magnetic tool cannot be removed from the oilfield drilling fluid it does not disclose the method further comprising: removing the magnetic tool from the oilfield drilling fluid mud recycling stream for cleaning; and removing the captured ferrous metal from the one magnetic bar.
Branch discloses a method for using a magnetic tool further comprising: removing the magnetic tool from the oilfield drilling fluid mud recycling stream for cleaning; and removing the captured ferrous metal from the one magnetic bar (This is described in Branch col. 4 lines 42- 65).
It would have been obvious to one of ordinary skill in the art at the time of filing to combine the disclosure of Branch with the method for using a magnetic tool of Pallin as this would facilitate an examination of the cuttings and as disclosed by Pallin "Cuttings that have been retrieved from a ditch magnet can provide information that is beneficial to oil and gas well operators. These collected cuttings may indicate casing wear during ordinary drilling operations, pipe wear, or any other factor which could be used for economic or maintenance considerations."(Pallin Col. 1 lines 31-36)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM ADDISON GEISBERT whose telephone number is (703)756-5497. The examiner can normally be reached Mon-Fri 7:30-5:00 EDT.
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/W.A.G./Examiner, Art Unit 1779
/Bobby Ramdhanie/Supervisory Patent Examiner, Art Unit 1779