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
Upon further consideration, applicant’s amendments and arguments concerning the use of “wherein the shock/vibration that would be damped is at least 2000G force” is not persuasive. While this limitation was not found explicitly in the art, it is believed that the case law of Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984) would cover this variation of forces when combined with the teaches of Pratt as noted in claim 49. The use of “wherein the shock/vibration that would be damped is at least 2000G force” in the other independent claims 28 and 37 are considered intended use.
Claim Objections
Claim 49 is objected to because of the following informalities: claim 49 is believed to be a misnumbering and the claim is intended to be claim 48. Appropriate correction is required.
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.
Claim 49 is rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. (4,819,746), hereinafter Brown in view of Pratt et al. (US 2017/0328142A1), hereinafter Pratt.
Regarding claim 49, Brown discloses a method of measuring while pneumatic percussion drilling (col. 7 lines 34-38, col. 1 lines 12-36, and col. 5 lines 32-34), a body of a drill string (101, fig. 4, col. 7 lines 34-38) and damping shock/vibration from pneumatic percussion drilling with the drill string (171, fig. 4, col. 7 lines 34-46).
Brown teaches the above, but fails to explicitly disclose a body supporting a measuring instrument.
Pratt teaches a similar device in the same field of downhole tools wherein a body (22, fig. 1, par. 0134) supporting a measuring instrument (20, fig. 1, par. 0135).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Brown to incorporate the measuring instrument of Pratt in order to provide information about downhole conditions (par. 0003 and 0120 of Pratt).
Further regarding claim 49, Brown in view of Pratt teaches a measuring instrument (20, fig. 1, par. 0135 of Pratt) within a body of a drill string (101, fig. 4, col. 7 lines 34-38 of Brown) that is using pneumatic percussion drilling (col. 7 lines 34-46 of Brown) and damping shock/vibration from pneumatic percussion drilling felt by the drill string (171, fig. 4, col. 7 lines 34-46 of Brown).
Brown in view of Pratt teaches the above, but fails to explicitly disclose wherein the shock/vibration that is damped is at least 2000G force. However, Brown in View Pratt teaches various amounts of forces are known to be dampened. This includes the use of new technologies which generate higher forces (par. 0111 of Pratt). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include the shock/vibration that is damped is at least 2000G force , since it has been 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” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Brown would not act any differently because it is known to increase dampening structure with an increase in shock/ vibration (par. 0111 of Pratt).
Claims 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. (4,819,746), hereinafter Brown in view of Kupchinsky (WO 2008/030205 A1), hereinafter Kup in view of Pratt et al. (US 2017/0328142A1), hereinafter Pratt.
Regarding claim 28, Brown discloses a damper apparatus (see below) for use in reverse circulation pneumatic percussion drilling (col. 7 lines 34-38, col. 1 lines 12-36, and col. 5 lines 32-34) comprising:
a body (101, fig. 4, col. 7 lines 34-38) having one or more damper portions (171, fig. 4, col. 7 lines 34-46);
wherein each polymer ring is substantially 'U' or 'V' shaped in cross section (as shown in the view of fig. 4 they are sideways ‘u’ or ‘v’ shape),
wherein the or each damper portion dampens shock/vibration from the pneumatic percussion drilling that would be experienced by the measuring instrument (col. 7 lines 34-46), and
wherein the shock/vibration that would be damped is at least 2000G force (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 2114, Subsection II "Manner of Operating the device does not differentiate apparatus claim from the prior art"). Because Brown teaches a pneumatic percussive drilling bit with a damper, in order to have utility, the damper would necessarily need to withstand the forces that are commonly experienced, as admitted by Applicant, when percussive pneumatically drilling.
Brown teaches the above, but fails to explicitly disclose wherein one or more of the damper portions comprise polymer ring dampers. However, it is noted that the crosshatching in fig. 4 of 171 appears to show that a polymer is used.
Kup teaches a similar device in the same field of downhole tools wherein the ring damper is a comprised of a polymer (rubber is a known material for a disk spring at par. 0002 and 0003 under the “state of the art” section).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have simply substituted the general disc spring of Brown to explicitly be a polymer ring of Kup to yield the predictable result of [teachings] of [Y] in order to provide shock absorption (col. 7 lines 45-46 of Brown).
Brown in view of Kup teaches the above, but fails to explicitly disclose a body supporting a measuring instrument.
Pratt teaches a similar device in the same field of downhole tools wherein a body (22, fig. 1, par. 0134) supporting a measuring instrument (20, fig. 1, par. 0135).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Brown in view of Kup to incorporate the measuring instrument of Pratt in order to provide information about downhole conditions (par. 0003 and 0120 of Pratt)
Regarding claim 29, Brown in view of Kup and Pratt further teaches
wherein the shock/vibration may comprise independently, or in combination, axial, radial and/or rotational shock/vibration (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 2114, Subsection II "Manner of Operating the device does not differentiate apparatus claim from the prior art").
Claims are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. (4,819,746), hereinafter Brown in view of Kupchinsky (WO 2008/030205 A1), hereinafter Kup in view of Pratt et al. (US 2017/0328142A1), hereinafter Pratt further in view of Klein (US 20200408082 A1), hereinafter Klein.
Regarding claim 32, Brown in view of Kup and Pratt discloses one or more damper portions (171, fig. 4, col. 7 lines 34-46 of brown) wherein one or more of the damper portions comprise polymer ring dampers (see cross hatching in fig. 4 of 171 which appears to show a polymer is used).
However, Brown in view of Kup and Pratt fails to explicitly teach wherein the or each damper portion comprises a silicone compressible body.
Klein teaches a similar device in the same field of wellbore tools wherein the or each damper portion comprises a silicone compressible body (par. 0014).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have simply substituted the generic polymer of Brown in view of Kup and Pratt with the specific polymer of Silicone of Klein to yield the predictable result of providing an elastic material for use in dampening downhole (par. 0006 and 0014).
Allowable Subject Matter
Claims 37-39 are allowed.
Claims 30-31 and 33-36 are 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:
Claim 30 recites the limitations “wherein the one or more damper portions comprise at least two resiliently compressible portions having different elasticity.” Claims 31 and 37 recite similar limitations. While the previous rejections used the prior art Kuro (US 2017/0226845 A1) to teach “at least two resiliently compressible portions having different elasticity,” it has been decided that Kuro no longer functions as a primary reference given the required 103 combination and the use of pneumatic percussion drilling in general. Given the current primary reference of Brown it is not obvious to modify the dampener portion 171 (a spring) to have at least two resiliently compressible portions having different elasticity without undo hindsight reasoning given the other limitations of the claims.
Claims 33-36 and 38-39 are allowable for depending on allowable claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Railey whose telephone number is (571)270-7353. The examiner can normally be reached M-F (8-4).
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/JENNIFER A RAILEY/Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676
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