DETAILED ACTION
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 Amendment
The Preliminary Amendment filed June 23, 203 has been entered and considered with the Office Action below.
Claims 1-9 have been cancelled.
Claims 10-18 have been added.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Application Data Sheet
The Application Data Sheet filed June 23, 2023 lists Joanna Binning and Stefano Zanetti as inventors but does not include anyone listed in the “Applicant Information” section of the document. However, Joanna Binning and Stefano Zanetti, as well as Fernando Antonio Blanco Mogollon, are listed as applicants on the filing receipt mailed April 9, 2025. There is no indication in the documents provided, beyond those provided by WIPO, that Joanna Binning and Stefano Zanetti are both inventors and applicants. Further, only the documents provided by WIPO list Fernando Antonio Blanco Mogollon as being associated with this application. A new ADS must be filed that includes Joanna Binning and Stefano Zanetti as both inventors and applicants and includes Fernando Antonio Blanco Mogollon as an applicant.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “15” has been used to designate two distinct elements in Figure 3. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because of the following informalities:
The grey scale of Figures 1-6 makes it difficult to discern the various features shown therein. See 37 CFR 1.84(m).
Figure 2 appears to be a cross-sectional view or at least a cross-section in part but contains no cross-hatching. Cross-sectional views are required to include cross-hatching per 37 CFR 1.84(h)(3).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 26 and 27. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 1.1, 7.1, 11.1, 24,25, F, β, ϕ1, and ϕ2. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: the specification fails to include the sections and headings suggested by 37 CFR 1.77(b).
Appropriate correction is required.
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
The abstract of the disclosure is objected to because it has been constructed as multiple paragraphs instead of the required single paragraph. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Objections
Claims 1-14 are objected to because of the following informalities:
Claims 1-9 have been cancelled however the text of the claims was included in the most recent claim listing. A cancelled claim should not include text of the claim and should only be listed as the claim number with the claim identifier “Cancelled”. For example, claim 1 should be listed as --1 (Cancelled)--.
The claims contain reference numbers. While this is not prohibited, the inclusion of reference numbers in the claims often leads to confusion as to which features are being referred to in the claims as amendments are made. It is suggested that the claims be amended to remove all reference numbers.
The recitation of “the said” in at least lines 19 and 30 of claim 1 should be changed to --the-- or --said--. The remainder of the claims should be reviewed for similar wording and all necessary corrections made.
Appropriate correction is required.
Claims 15-18 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only and cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). Accordingly, the claims 15-18 have not been further treated on the merits.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” and are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Such claim limitation(s) is/are: “present mean for fastening” and “respective retaining means” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 10-14 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 10: Claim elements “present means for fastening” in line 12 and “respective retaining means” in lines 19 and 20 is a means (or step) plus function limitation that invokes 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for the claimed function.
Applicant is required to:
(a) Amend the claim so that the claim limitation will no longer be a means (or step) plus function limitation under 35 U.S.C. 112, sixth paragraph; or
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant is required to clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claims 11-14: These claims are rejected due to their dependence on claim 10.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10-14 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.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. The following is a list of some of those errors as well as issues of indefiniteness. This list must not be considered all inclusive. The claims must be thoroughly reviewed for similar as well as additional errors and all required corrections made.
Regarding claim 10: Claim 10 is considered indefinite for at least the following reasons:
Claim 10 is directed to “A pressure regulator for polymer injection” however the body of the claim requires “a wellhead”, “a casing”, and “an injection tubing”. These features would not be part of the regulator but rather components of the system in which the regulator is used. It is suggested that claim 10 should be directed to a system for polymer injection that includes the pressure regulator.
It is unclear as to what “the same” in line 6 is referring. Elements and features in a claim must be referred to by their name and not pronouns or other identifiers.
It is unclear what feature or combination of features is being referred to as “defining an inlet” in line 6.
It is unclear as to what feature or combination of features is being referred to as “further including at least one fluid outlet” in lines 7 and 8.
There is insufficient antecedent basis for:
“said drag fluid” in line 9 and 10;
“the interior” in line 13;
“the upper end and the lower end of the said rod-shaped piece” in lines 18 and 19;
“the corresponding closed ends” in line 10;
“the back” and “said series” in line 11;
“the tubular inner surface” in line 22.
“the upper end of the housing” in lines 24 and 25;
“the outside” in line 26;
“the inside of the said annular gap” in lines 26 and 27;
“the lower end” in line 27;
“the height” in line 31;
“the bottom of the annular recess” in line 35;
“the backside of each rib” in line 37;
“the flow velocity” in line 39”;
“the polymeric solution” in line 40;
“the backside of each annular projection” in lines 40 and 41;
“the underlying annular recess” in lines 42 and 43.
It is unclear what is “characterized in that it comprises a tubular piece” in line 10.
Line 10 includes the pronoun “it”. The use of pronouns in a claim render that claim indefinite as it is unclear as to which element or step is being further limited. As such the meets and bounds of the claim cannot be determined. Structural limitations and steps must always be referred to by name.
Line 17 recites “axis of rod-shaped piece” with the recitation of “rod-shaped piece” being considered a positive recitation of the element. As such, it is unclear if this rod-shaped piece is part of the rod-shaped piece recited in claim 15 or a different element.
It is unclear as to what feature or combination of features is “communicating from the outside…” in line 26.
It is unclear which “inlets and outlets” are being referred to in line 29.
Line 36 requires “each annular rib” but fails to indicate what element or feature these ribs are located on. Are the “annular rib[s]” the same as the “annular projections”.
Regarding claim 11: Claim 11 requires that the “tubular piece” define “a housing” with “a cylindrical interior”. Claim 10 previously required that the tubular piece define a housing in lines 10 and 11 and required “inside the housing” in line 14. As such, it is unclear if the housing of claim 11 is the same as that of claim 10 and if the cylindrical interior is part of the “inside” of the housing recited in claim 10.
Regarding claim 12: There is insufficient antecedent basis for “the upper one” and “the lower portion”.
Regarding claim 14: Claim 14 is considered to be indefinite for at least the following reasons:
Line 2 includes the pronoun “its”. The use of pronouns in a claim render that claim indefinite as it is unclear as to which element or step is being further limited. As such the meets and bounds of the claim cannot be determined. Structural limitations and steps must always be referred to by name.
There is insufficient antecedent basis for “the separation”, “the annular profiles”, and “the adjacent walls”.
Claim Rejections – Art Rejection
While the prior art of record fails to disclose or suggest the invention of claim 10, due to the 35 USC 112(a) rejection above, the allowability of the claims cannot be determined at this time.
It is noted that the prior art of record fails to disclose or suggest a pressure regulator for polymer injection to a geological formation containing hydrocarbons, wherein the pressure regulator includes a pocket mandrel with a housing in which is located a rod-shaped piece with a plurality of annular projections to establish a substantially laminar flow regime during the passage of the polymer over each annular projection followed by a deceleration of the polymer into a substantially swirling flow as the flow penetrates an underlying annular recess as recited in the claimed combination.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER H GAY whose telephone number is (571)272-7029. The examiner can normally be reached Monday through Thursday, 6-3:30 and every other Friday 6-11.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Y Coupe can be reached at (571)270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER H GAY/Primary Examiner, Art Unit 3619
JHG
11/10/2025