DETAILED ACTION
Claims 2-7, 10-12, 14-16, 21-25, and 27 remain pending. Claims 1, 8-9, 13, 17-20, 26, and 28 have been canceled.
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 .
Response to Arguments
Applicant's arguments filed 29 April 2026 have been fully considered but they are not persuasive for the following reasons in view of the previously applied prior art Hawa (GB 2584205 A).
The applicant argues with respect to claims 14, 16, 24, 25, and 27 on pg. 12 of the Response that the prior art lacks “at least a first insert releasably connecting with the upper bonnet and at least a second insert releasably connecting with the lower bonnet” because “Hawa does not disclose or teach its cavity filler 26 releasably connecting with either of the valve bonnets 12a, 12b.” However, the fitting of each cavity filler/insert 26 into cavities of the upper bonnet or lower bonnet facilitates releasable connections of the inserts 26 with the upper or lower bonnets. As the applicant notes on pgs. 12-13 of the Response, “Applicant submits that the terms ‘engage’, ‘connect’ and coupling’ are used interchangeably in the present patent application to mean connect,” and “if a first device couples to second device, that connection may be through a direct connection, or through an indirect connection via other devices and/or connections.”
The applicant argues with respect to claims 14, 16, 24, 25, and 27 on pgs. 13-14 that Hawa lacks the inserts “having no protrusions extending outwardly therefrom” because Hawa shows in Figs. 2A and 2C “cavity fillers 26 having small projections (aka protrusions) extending outwardly therefrom to engage the valve seats 20.” The applicant argues that “Hawa provides that ‘[the cavity filler portions may be shaped to engage the valve seat 20, such as to seal thereto’” per pg. 9, lines 2-3, and Figs. 2A and 2C, and the applicant argues that “the cavity fillers 26 of Hawa may have other protrusions, stating ‘each cavity filler portions may be provided with surfaces or projections to interlock with each other’, (Hawa, Page 9, lines 14-15), and ‘the cavity filler 26 may comprise projections to seal with the valve element 18’, (Hawa, Page 9, lines 19-20).” However, first, Figs. 2B doesn’t show any protrusions on the cavity fillers/inserts 26. Second, in the recitations cited by the applicant, Hawa doesn’t definitely disclose that the inserts 26 have the projections argued by the applicant – projections to interlock with each other or engaging/sealing with the valve seat 20 – and instead uses indefinite language, such as “may have…” Third, the alleged projections argued by the applicant, with regard to Figs. 2A and 2C in Hawa, aren’t seen as being any more like projections than the similar structures of the applicant’s inserts as shown below in the annotations of Figs. 6-7 and 10 of the applicant’s disclosure.
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The applicant argues with respect to claims 24, 25, and 27 on pgs. 14-15 of the Response that Hawa lacks “at least one insert being spaced away from the various internal components of the valve” because Hawa states “[t]he cavity filler portions may be shaped to engage the valve seats 20, such as to seal thereto” per pg. 9, lines 2-3 and Figs. 2A and 2C. However, first, the claims do not require the inserts to be spaced away from all internal components in the internal cavity of the equipment item/valve. The claim only positively recites one internal component, and as indicated in the previous office action(s), the at least one internal component comprises the valve element/gate 18, with which the inserts 26 are spaced, as disclosed in pg. 9, lines 31-34. Furthermore, the citation recited by the applicant uses indefinite language – “may be shaped…” – rather than definitively reciting that the cavity fillers/inserts 26 engage/seal with the valve seats 20.
The applicant argues with respect to claim 24 on pg. 15 of the Response that Hawa lacks “the inserts to be interchangeable so that any of the inserts can be used in any of the different portions of the cavity” because the “specification of Hawa is silent as to whether the cavity fillers 26 are interchangeable and the drawings show different-sized cavity filler 26” and “Figure 2A…for example, is described as ‘a gate valve 10 incorporating the present disclosure’ (Hawa at Page 7, line 19) and shows the uppermost cavity fillers 26 being clearly longer than the lowermost cavity fillers 26.” However, as mentioned in previous office action(s), the cavity fillers/inserts 26 are interchangeable, “as one having ordinary skill in the art would recognize by the drawings and the lack of disclosure of features that would limit the positioning of each insert 26.” Regarding the proportions shown in the drawings of Hawa appearing to show that the cavity for the upper inserts 26 has a larger height than the cavity for the lower inserts 26, drawings are not intended to be interpreted as showing accurate dimensions or proportions, and there’s no disclosure of such proportions.
Specification
The amendments to the abstract filed 29 April 2026 have been entered.
Claim Objections
Claims 24-25 and 27 are objected to because of the following informalities:
In claim 24, last line, “the at least one other insert” should be changed to --at least one other insert-- (i.e. delete “the”).
In claim 25, fourth-to-last line, “the at least one other insert” should be changed to --at least one other insert-- (i.e. delete “the”).
In claim 27, line 15, “the at least one other insert” should be changed to --at least one other insert-- (i.e. delete “the”).
Appropriate correction is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 24, 14, 16, 25, and 27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hawa (GB 2584205 A).
Regarding claim 24, Hawa discloses in Figs. 1-2 (specifically the embodiment of the inserts in Figs. 2A-2C) a method of reducing the volume of lubricant provided in an internal cavity of an equipment item 12 having one or more internal components 18 at least partially disposed within the cavity, at least one internal component 18 being movable in the cavity during use of the equipment item, the cavity being at least partially cylindrical (pg. 7, lines 27-30), surrounded by at least one cavity wall and having an upper base at one end (on the top bonnet portion of the overall housing shown in Fig. 2A) and a lower base (on the lower bonnet portion of the overall housing shown in Fig. 2A) at another end, the equipment item including a removable upper bonnet (comprising the top portion of the overall housing, shown in Figs. 2A pinned to the central portion of the housing possessing the flow path) adjacent to, or at least partially forming, the upper base of the cavity and a removable lower bonnet (comprising the lower portion of the overall housing, shown in Fig. 2A pinned to the central portion of the housing possessing the flow path) adjacent to, or at least partially forming, the lower base of the cavity, the method comprising:
arranging at least four removable inserts 26 (pg. 9, lines 1-2 in reference to Fig. 2B) in the cavity to occupy different respective portions of the cavity and be spaced away from the at least one cavity wall and any internal components (such as the movable internal component 18, as disclosed in pg. 9, lines 31-34), the inserts 26 being interchangeable so that any of the inserts can be used in any of the different portions of the cavity (as one having ordinary skill in the art would recognize by the drawings and the lack of disclosure of features that would limit the positioning of each insert 26), each insert being unitary and having no protrusions extending outwardly therefrom (as one having ordinary skill would recognize by the drawings and the lack of disclosure of any protrusions);
the inserts 26 allowing movement in the cavity of any movable internal components 18 of the equipment item during use thereof without impeding such movement;
at least a first insert 26 releasably connecting with the upper bonnet (because at least one insert 26 fits into a recess in the top bonnet);
at least a second insert 26 releasably connecting with the lower bonnet (because at least one insert 26 fits into a recess in the bottom bonnet);
each insert 26 forming a plurality of lubricant flow paths around the insert 26 (pg. 9, lines 23 – pg. 10, line 6); and
each insert 26 allowing lubricant to pass around at least part of the insert 26 in the cavity 14, whereby lubricant can pass between the insert 26 and the at least one cavity wall, the at least one internal component (such as the movable internal component 18) and the at least one other insert 26 (pg. 9, line 31 – pg. 10, line 6).
Regarding claim 14, Hawa discloses in Figs. 2A-2C that the cavity has respective upper and lower portions, further including positioning a first pair of inserts 26 to face each other in the upper portion of the cavity (pg. 9, lines 1-2, in reference to Fig. 2B), and positioning a second pair of inserts 26 to face each other in the lower portion of the cavity (pg. 9, lines 1-2, in reference to Fig. 2B).
Regarding claim 16, Hawa discloses in Figs. 2A-2C that each insert 26 has upper and lower ends, further including at least one fluid passageway extending through each insert 26 from the upper end to the lower end thereof, and at least one fluid passageway fluidly coupling at least one portion of the cavity above and at least one portion of the cavity below the insert 26 when the insert 26 is disposed in the cavity (because “a flushing fluid flow path is defined from the flushing fluid inlet 22, through the one or more flushing pathways 28 and out via the flushing fluid outlet 24” pg. 9, lines 25-27).
Regarding claim 25, Hawa discloses in Figs. 1-2 (specifically Figs. 2A-2C with regard to the inserts 26) a system for reducing the volume of high-pressure lubricant injected into a through-conduit valve during use of the valve (pg. 6, lines 16-18) in oilfield related operations (wherein “in oilfield related operations” is an intended use that isn’t seen as defining over the prior art (MPEP 2111.02)(II)), the valve having an internal cavity at least partially surrounded by at least one cavity wall (of the of the overall housing 12) and at least one internal component (comprising the reciprocating gate/valve member) disposed at least partially in the cavity, at least one such internal component 18 being movable in the cavity during use of the valve, the cavity being at least partially cylindrical (pg. 7, lines 27-30) and including an upper base (formed by the upper bonnet) at one end and a lower base (formed by the lower bonnet) at another end and the valve having a removable upper bonnet adjacent to, or at least partially forming, the upper base of the cavity and a removable lower bonnet adjacent to, or at least partially forming, the lower base of the cavity, the system comprising:
at least four removable inserts 26 (pg. 9, lines 1-2 in reference to Fig. 2B), each insert 26 being unitary, having no protrusions extending outwardly therefrom (as one having ordinary skill would recognize by the drawings and the lack of disclosure of any protrusions) and configured to occupy a different respective portion of the cavity without impeding movement of the at least one movable internal component 18 during use of the valve, wherein each insert 26, when disposed in the cavity, is configured to be spaced away from and allow lubricant to pass between itself and the at least one cavity wall, the at least one internal component (comprising the reciprocating gate/valve member) and the at least one other insert 26, further wherein at least a first insert 26 is releasably connectable with the upper bonnet (because the upper insert(s) 26 are fitted into the recess of the upper bonnet, and/or because the upper bonnet is shown touching the top of the top insert(s) 26, and/or because the top insert(s) 26 are free to move within the cavity such that they can selectively touch the upper bonnet given that the disclosure doesn’t mention fixedly securing the insert(s) in their respective locations) and at least a second insert 26 is releasably connectable with the lower bonnet (because the lower insert(s) 26 are fitted into the recess of the lower bonnet, and/or because the bottom bonnet is shown touching the bottom of the bottom insert(s) 26, and/or because the bottom insert(s) 26 are free to move within the cavity such that they can selectively touch the bottom bonnet given that the disclosure doesn’t mention fixedly securing the insert(s) in their respective locations), whereby the inserts 26 are configured to be added to the valve to retrofit the valve (pg. 15, lines 9-15).
Regarding claim 27, Hawa discloses in Figs. 1-2 (specifically Figs. 2A-2C with regard to the inserts 26) a system for reducing the volume of high-pressure lubricant injected into a through-conduit valve during use of the valve (pg. 6, lines 16-18) in oilfield related operations (wherein “in oilfield related operations” is an intended use that isn’t seen as defining over the prior art (MPEP 2111.02)(II)), the valve having an internal cavity at least partially surrounded by at least one cavity wall (of the overall housing 12) and at least one internal component (comprising the reciprocating gate/valve member) disposed at least partially in the cavity, at least one such internal component 18 being movable in the cavity during use of the valve, the cavity being at least partially cylindrical (pg. 7, lines 27-30) and including an upper base (formed by the upper bonnet) at one end and a lower base (formed by lower bonnet) at another end and the valve having a removable upper bonnet adjacent to, or at least partially forming, the upper base of the cavity and a removable lower bonnet adjacent to, or at least partially forming, the lower base of the cavity, the system comprising:
at least four removable inserts 26 (pg. 9, lines 1-2 in reference to Fig. 2B), each insert 26 being unitary, having no protrusions extending outwardly therefrom (as one having ordinary skill would recognize by the drawings and the lack of disclosure of any protrusions) and configured to occupy a different respective portion of the cavity without impeding movement of the at least one movable internal component 18 during use of the valve, wherein each insert 26, when disposed in the cavity, is configured to be spaced away from and allow lubricant to pass between itself and the at least one cavity wall, at least one internal component (comprising the reciprocating gate/valve member) and the at least one other insert, further wherein at least a first insert 26 is releasably connectable with the upper bonnet (because the upper insert(s) 26 are fitted into the recess of the upper bonnet) and configured to be secured in the valve only by engagement with the upper bonnet (because the lower bonnet closes off the end of the cavity where the top inserts 26 are located, similar to the applicant’s device, whose inserts are similarly secured by the bonnets being assembled to the rest of the housing regardless of the connectors used to fasten the inserts to the bonnets) and at least a second insert is releasably connectable with the lower bonnet (because the lower insert(s) 26 are fitted into the recess of the lower bonnet) and configured to be secured in the valve only by engagement with the lower bonnet (because the lower bonnet closes off the end of the cavity where the bottom inserts 26 are located, similar to the applicant’s device, whose inserts are similarly secured by the bonnets being assembled to the rest of the housing regardless of the connectors used to fasten the inserts to the bonnets), the first and second inserts 26 being removable from the valve independent of one another merely by disconnecting the upper and lower bonnets from the valve, respectively, whereby the inserts 26 are configured to be added to the valve to retrofit the valve (pg. 15, lines 9-15).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 15 is rejected under 35 U.S.C. 103 as being unpatentable over Hawa in view of Baugh (US 3,768,774).
Regarding claim 15, Hawa discloses in Figs. 2A-2C each insert 26 allowing the flow of fluid around the entire periphery of the insert 26 when the insert 26 is disposed in the cavity (as shown in the drawing) except where at least one connector engages the insert 26.
Hawa lacks teaching releasably coupling at least one insert to at least one among the group consisting of the equipment item, at least one internal component and at least one other insert with one or more connectors engaged therebetween.
Baugh teaches in Figs. 1-6 releasably coupling at least one insert 18 to at least one among the group consisting of the equipment item 35, at least one internal component and at least one other insert (specifically an equipment item 35 in the form of bonnet 35) with one or more connectors 37 engaged therebetween.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the system disclosed by Hawa to releasably couple at least one insert to an equipment item comprising a bonnet via one or more connectors to secure the at least one insert in the proper orientation in the cavity, as Baugh teaches (col. 2, lines 33-37).
Allowable Subject Matter
Claims 2-7, 10-12, and 21-23 are allowed.
The following is an examiner’s statement of reasons for allowance. The prior art fails to disclose or render obvious, in combination with the other limitations in claim 21, wherein at least one insert includes first and second spaced-apart connector passages extending at least partially between the upper and lower ends thereof, the at least one insert being configured so that a first and a second connector are insertable into the respective first and second connector passages from the lower end toward the upper end of the at least one insert and thereafter engageable with the equipment item when the at least one insert is disposed in the cavity so that the at least one insert is secured in a desired location in the cavity and not rotatable relative to the equipment item.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 Examiner Jonathan Waddy, whose telephone number is 571-270-3146. The examiner can normally be reached on Monday-Friday (10:00AM-6:00PM EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors can be reached by phone. Kenneth Rinehart can be reached at 571-272-4881 or Craig Schneider can be reached at 571-272-3607. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J. W./
Examiner, Art Unit 3753
/KENNETH RINEHART/Supervisory Patent Examiner, Art Unit 3753
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