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 .
Claim Rejections - 35 USC § 112
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.
Claims 10, 11 and 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.
Claim 14 has two issues. (1) whether step (a) is before (b) or vise-versa, these two steps recite diverting flow from first vessel to the second vessel. That is, the liquid is already emptied from the first vessel in step a/b before the step b/a is launched, which is a problem since the first vessel is already empty. (2) Apparently to overcome the first issue, applicant appears to have added the limitation of flushing and refilling the first vessel from step (a) to step (b) or vise-versa. This is indefinite, because the claimed invention is about switching a vessel when it is full, but applicant appears to fill the emptied vessel right back up after step a/b simply to carry out the step b/a.
Claims 10 and 11 have the first issue of claim 14, which makes them indefinite.
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.
Claims 7 and 11 are 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.
Claim 1 recites two alternatives: control by weight or by differential pressure. Claim 7 is only by weight. Therefore, the situation where claim 1 is by differential pressure, claim 7 by weight appears not to have support in the original disclosure. That is, the situation wherein the first tank is controlled by one method and the second tank by a different method is not supported in the disclosure. Similarly, claim 11, reciting control by level, does not seem to have support when the first vessel switching is by either by differential pressure or by weight.
Claim Rejections - 35 USC § 102 and 103
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.
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.
Claim(s) 1-6, 8, 9, 12, 13 and 22-26 are rejected under 35 U.S.C. 102a1 as being anticipated by, or in the alternative, under 35 USC 103 as being unpatentable over, Sinker et al (US 2021/0010364).
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Sinker teaches in the “Background of the invention” at [0006-0007] that MPD systems with sand cyclone and sand filter are well-known in the art, and control is using differential pressure (pressure drop.) Once the pre-determined maximum pressure drop (threshold) is reached, the first vessel is switched with a second vessel, and the first vessel is then purged (flushed), and this cycle switching between vessels one and two is repeated. Measuring pressure drop requires pressure sensors – implied. The actuation of the valves are also implied, if not explicitly stated, to switch the between the vessels.
The fluid is from oil well bores – see [0003].
Pressure sensors at inlet and outlet are implied for Sinker to measure the pressures. For the details of purging, see [0010]. Regarding automatic control, see “controls” in [0026]. Automatic control is also implied, or would have been obvious to one of ordinary skill in the art.
"[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968)
In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958) (Appellant argued that claims to a permanent mold casting apparatus for molding trunk pistons were allowable over the prior art because the claimed invention combined "old permanent-mold structures together with a timer and solenoid which automatically actuates the known pressure valve system to release the inner core after a predetermined time has elapsed." The court held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art.).
Claims 4, 8, 9 and 23, programming to have a user notification and approval, with continuing to flush if user fails to approve, into the control system is prima facie obvious unless otherwise shown. This is not inventive, because provision for a manual check for verifying normal operation is common sense.
Claim(s) 1-14 and 21-26 are rejected under 35 U.S.C. 103 as unpatentable over Sinker et al (US 2021/0010364) in view of Malone et al (US 2021/0299595).
Teaching of Sinker is detailed above in rejection 1.
Sinker does not teach controlling the system using weight or level control as alternates to DP control in this set of claims, or using a combination of weight, pressure and level control as claimed in this (like claim 14) set of claims.
Malone teaches controlling based on differential pressure, volume or weight of the sand. [0086.] Malone also teaches that time or level based control is also well-known in the art [0008, 0009]. Malone teaches in [0019] that level, volume of weight based measurements can be used as alternate to differential pressure methods. Particularly, Malone teaches that a combination of DP, volume and weight based control is advantageous to provide data over a wider range of operation conditions, and to have more accuracy in the control system [0086]. The examiner considers the logic behind the combination as: weight and level control as safety redundancies for the primary DP control; and since the material collected is sand and liquid mixture, a weight-limited control may overflow the vessel if sand (sand being denser than liquids) content is less, whereas a level control system may overload the system if sand content is high (too much weight before the full volume of the vessel is reached.) Therefore, it would have been obvious to one of ordinary skill in the art to use the teachings of Malone in the controlling the process of Sinker more effectively. Malone teaches using level sensors [0021], and pressure sensors [0039], [0059] and detect level, volume or weight [0080]. . This covers claims 1-3, 5, 7 and 10-14. Regarding flushing and refilling the empty vessel before taking the full/used vessel off line in claim 14, see claim 6 below.
Claims 4, 8, 9: manual and/or automated activity: Malone [0051] teaches the automated system with PLC.
Claims 6 and 21: this claim only states that the first vessel is isolated only after the second vessel is brought online, which would have been obvious to have a continuous operation, and prevent disruption.
Claim 12: depressurizing the tank before opening the flush valves would be prima facie obvious for safety and prevent spillage or sand/liquid mixture spray. These process steps for dumping sand from the vessel are obvious to one of ordinary skill in the art – common sense.
Response to Arguments
Applicant's arguments filed 4/28/26 have been fully considered but they are not persuasive.
Arguments regarding the 112(b) rejections are unpersuasive for the rejected claims, they are clearly explained in the rejection.
Contrary to the arguments, Sinker teaches differential pressure control as claimed in claims 1 and 13. Arguments regarding the 103 rejections are now moot, the Magnus reference is removed as it is found redundant.
Regarding Malone not teaching the second vessel, Malone is used to show that the different control logics can be implemented to have improved results.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant’s arguments are about what the references do and do not teach.
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 KRISHNAN S MENON whose telephone number is (571)272-1143. The examiner can normally be reached Flexible, but generally Monday-Friday: 8:00AM-4:30PM.
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, Prem C Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISHNAN S MENON/ Primary Examiner, Art Unit 1777
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