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 Arguments and Amendments
Applicant's arguments filed 09/25/25 have been fully considered and are persuasive in part and are unpersuasive in part.
In response to applicant's argument that the device cannot be used in pneumatic percussive drilling, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The claims do not positively recite the pneumatic percussive drilling. Claim 51 does though recite the “2000G force” that occurs in pneumatic percussive drilling and as such has been objected to as allowable below.
The argument regarding “various types of drilling” is nonpersuasive because the pneumatic percussive drilling is not positively recited in the claims.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, specifically for the “metal seal technology from wellbore applications”, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, KSR (B) is being used, not KSR (G), therefore a specific statement of teaching, suggestion, or motivation to combine the references is not required. However, the examiner does believe that there is enough overlap in the general fields of pneumatic percussive drilling and general wellbore drilling for it to be obvious to look at wellbore drilling for the general idea of substituting the “U” or “V” cross-sectional shape of the seal of Cain for use in Kuro.
In response to applicant's argument that pneumatic percussive drilling and general wellbore drilling is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both are related generally to drilling.
In response to applicant's argument that Kuro is not compatible with Kuro, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, Cain teaches a shape of a seal, not the entire device of Cain. Therefore, it would be obvious to substitute the shape of the seal of Cain for the original shape of the seal of Kuro.
The 112 (b) rejections have been withdrawn.
Unless otherwise repeated below, all other objections and rejections previously presented have been withdrawn.
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 28-39 and 47 are rejected under 35 U.S.C. 103 as being unpatentable over Kuroiwa et al. (US 2017 /0226845 A1), hereinafter Kuro in view of Cain et al. (US 20210317914 A1), hereinafter Cain.
Regarding claim 28, Kuro discloses a damper apparatus (32, fig. 1 and 2, par. 0018 and 0022) for use in reverse circulation pneumatic percussion drilling (used during various types of drilling, par. 0003-0004, 0014, 017, and 0021; It has been held that 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 satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). see MPEP 2144, Subsection II "Manner of Operating the device does not differentiate apparatus claim from the prior art") comprising:
a body (38, fig. 2, par. 0021) having one or more damper portions (42+46+50, fig. 2, par. 0022 and 0027) supporting a measuring instrument (28, fig. 2, par. 0017 and 0021);
wherein one or more of the damper portions comprise polymer ring dampers (par. 0026 and 0036, wherein polyurethane is an option, albeit less preferred option), and
wherein the or each damper portion dampens shock/vibration from the pneumatic percussion drilling (used during various types of drilling, par. 0003-0004, 0014, 017, and 0021; see intended use above) that would be experienced by the measuring instrument (par. 0027).
However, Kuro fails to explicitly disclose wherein each polymer ring is substantially 'U' or 'V' shaped in cross section. Cain teaches a similar device in the same field of wellbore seals wherein each ring is substantially 'U' or 'V' shaped in cross section (102+104, fig. 3, par. 0019 of Cain). As both Kuro and Cain teach seals, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the seal of Kuro to incorporate the “V” shape of Cain for the predictable result of creating a greater seal as the parts moved together (par. 0019 of Cain).
Regarding claim 29, Kuro in view of Cain further teaches wherein the shock/vibration may comprise independently, or in combination, axial, radial and/or rotational shock/vibration (par. 0004 and 0014 of Kuro).
Regarding claim 30, Kuro in view of Cain further teaches wherein the one or more damper portions comprise at least two resiliently compressible portions having different elasticity (par. 0030 and 0032 of Kuro).
Regarding claim 31, Kuro in view of Cain further teaches the body comprising at least three damper portions (42+46+50, fig. 2, par. 0022 and 0027 of Kuro), each having a different elasticity (par. 0027 and 0029-0032 of Kuro, wherein various materials can be selected for the specific conditions).
Regarding claim 32, Kuro in view of Cain further teaches wherein the or each damper portion comprises a silicone compressible body (par. 0030-0032 of Kuro).
Regarding claim 33, Kuro in view of Cain further teaches wherein the three damper portions (42+46+50, fig. 2, par. 0022 and 0027 of Kuro) comprises a first damper portion (46, fig. 2, par. 0024 of Kuro) of a first material (par. 0030 and 0032 of Kuro), wherein the first damper portion (46, fig. 2, par. 0024 of Kuro) is configured to elastically resist deformation by the first material being in compression (par. 0030 and 0032, fig. 2 of Kuro).
Regarding claim 34, Kuro further discloses wherein the three damper portions (42+46+50, fig. 2, par. 0022 and 0027 of Kuro) comprises a second damper portion (50, fig. 2, par. 0025 of Kuro) of a second material (par. 0030 and 0032 of Kuro), wherein the second damper portion portion (50, fig. 2, par. 0025 of Kuro) is configured to elastically resist deformation by bending or flexing of a first thickness of a second material (par. 0026 of Kuro).
Regarding claim 35 Kuro in view of Cain further teaches wherein the second damper portion (50, fig. 2, par. 0025 of Kuro) is configured to elastically resist deformation by a second thickness of the second material being in compression (par. 0026 of Kuro).
Regarding claim 36, Kuro in view of Cain further teaches wherein each resiliently compressible portion comprises a silicone compressible body (par. 0030-0032 of Kuro).
Regarding claim 37, Kuro discloses a damper apparatus (32, fig. 1 and 2, par. 0018 and 0022) for use in pneumatic percussion drilling (used during various types of drilling, par. 0003-0004, 0014, 017, and 0021; It has been held that 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 satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). see MPEP 2144, Subsection II "Manner of Operating the device does not differentiate apparatus claim from the prior art") comprising:
a body (38, fig. 2, par. 0021) having at least two resiliently compressible portions (42+46+50, fig. 2, par. 0022 and 0027) supporting a measuring instrument (28, fig. 2, par. 0017 and 0021);
at least two of the resiliently compressible portions having different elasticity (42+46+50, fig. 2, par. 0030 and 0032);
wherein one or more of the at least two resiliently compressible portions (42+50, fig. 2) comprise polymer ring dampers (par. 0026 and 0036, wherein polyurethane is an option, albeit less preferred option), and wherein the resiliently compressible portions dampen shock/vibration from the pneumatic percussion drilling (used during various types of drilling, par. 0003-0004, 0014, 017, and 0021; see intended use above) that would be experienced by the measuring instrument (par. 0027).
However, Kuro fails to explicitly disclose wherein each polymer ring is substantially 'U' or 'V' shaped in cross section. Cain teaches a similar device in the same field of wellbore seals wherein each ring is substantially 'U' or 'V' shaped in cross section (102+104, fig. 3, par. 0019 of Cain). As both Kuro and Cain teach seals, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the seal of Kuro to incorporate the “V” shape of Cain for the predictable result of creating a greater seal as the parts moved together (par. 0019 of Cain).
Regarding claim 38, Kuro as modified by Cain further teaches wherein the polymer ring dampers are comprised of polyurethane (par. 0026 and 0036 of Kuro, wherein polyurethane is an option, albeit less preferred option).
Regarding claim 39, Kuro as modified by Cain further teaches wherein the polymer ring dampers dampen by elastically resisting deformation urging legs of the U or V shape together until they meet and then dampen by elastically resisting deformation of the legs being compressed further together (par. 0019 of Cain).
Allowable Subject Matter
Claim 51 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Kuro in view of Cain is considered the closest prior art, but fails to explicitly teach the use of “the shock/vibration that would be damped is at least 2000G force” that would occur from pneumatic percussion drilling. It would not be obvious to modify Kuro in view of Cain for use in pneumatic percussive drilling given the difference in forces to be dampened.
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.
/JENNIFER A RAILEY/Examiner, Art Unit 3676
/Nicole Coy/Supervisory Patent Examiner, Art Unit 3672