DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA . 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 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.
Response to Remarks
The remarks filed 20 May 2026 have been fully considered.
The replacement sheets and amendments to the claims are sufficient to overcome the objections to the drawings and claims set forth in the previous Office Action.
The amendments to the claims are sufficient to overcome the rejections under § 112 set forth in the previous Office Action.
The amendments to claim 1 are sufficient to overcome the rejection under § 102 set forth in the previous Office Action.
The applicant argues with regards to previously-cited Hazelip (US 2012/0222868) that:
“The Hazelip publication describes an expansion cone assembly for setting a liner hanger in a well bore casing. This is not a device for expanding the diameter of the tubular as in the nature of the present invention.”
The argument is not persuasive. The specification states that, “The present invention relates to the field of tubulars for oil and gas wells.” See ¶¶ 1-2. Even if Hazelip did not teach a device for expanding the diameter of the tubular as in the nature of the present invention, the applicant’s claimed invention does not require any particular nature of pipe expanding. The applicant is reminded that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues with regards to independent claims 1, 8, and 15 (as currently amended) that:
“… the prior art references fail to show the actuator as extending through the interior passageway of the flexible cone and the rigid cone. The prior art references, individually or in combination, fail to show the respective tapered surfaces on the actuator and the flexible cone so as to selectively increase the diameter of the flexible cone or decrease the diameter of the flexible cone.”
The argument is not persuasive. Hazelip discloses an actuator 202 extending through an interior passageway of a flexible cone 204 and a rigid cone 206 (fig. 3-4), and respective tapered surfaces (at 220) on the actuator 202 and the flexible cone 204 so as to selectively increase or decrease a diameter of the flexible cone 204 (compare fig. 3-4). Hazelip further discloses the actuator 202 moved from a retracted position (fig. 4) to an expanded position (fig. 3) so that the flexible cone 204 expands in diameter so that a diameter of a tubular can be expanded (see fig. 2E, note that the cone assemblies of fig. 2E and fig. 3-4 are structurally identical).
Therefore, all pending claims stand rejected as being unpatentable over Hazelip, in view of previously-cited Geyer (US 2,459,808). See the current rejections below.
Claim Objections
Claims 1 and 8 are objected to because of the following informalities.
In re claim 1:
“rigigity” in line 7 should be --rigidity–;
“to move the” in lines 14-15 should be –to move to the–;
“the reduced diameter flexible cone” in the last line should be –the flexible cone–;
“at the end to the pipe” in the last line should be –at the end of the pipe–.
In re claim 8:
“the one end of said pipe” in line 6 should be –the end of said pipe–;
“the diameter” in the sixth to last line should be –the inner diameter–;
“a maximum outer” in the fourth to last line should be –a maximum outer diameter–;
“of said pipe of the end of said pipe” in the third to last line should be –of said pipe at the end of said pipe–.
Appropriate correction for the above list of issues is required.
Claim Rejections - 35 U.S.C. § 103
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.
Claims 1-2, 4-5, 8-9, 13, 15 and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Hazelip (US 2012/0222868), in view of Geyer (US 2,459,808).
In re claim 1: Hazelip discloses a cone assembly (fig. 2E, 3-5; note that the cone assemblies in fig. 2E and 3-5 are structurally identical even though different reference numbers are assigned) for use in expanding the diameter of a pipe, the cone assembly comprising:
a rigid cone 206 capable of being positioned adjacent to an end of the pipe 106 (fig. 3, 2E);
a flexible cone 204 positioned adjacent an end of said rigid cone 206, said flexible cone movable between an expanded diameter and a reduced diameter (compare fig. 3-4), said flexible cone having an internal taper (which cooperates with conical surface 220), the flexible cone comprising a ring with a continuous wall having multiple slots therethrough (fig. 5), said rigid cone 206 having a rigidity greater than a rigidity of said flexible cone 204 (fig. 5); and
an actuator 202 having a surface in slidable relation with the internal taper of said flexible cone (fig. 3-4, the portion of 202 in direct contact with flexible cone 204), said actuator 202 extending through and slidable with respect to an interior of said rigid cone (compare fig. 3, 4), said actuator being movable between an extended position and a retracted position (compare fig. 3, 4), the extended position moving said rigid cone and said flexible cone along the pipe 106 so as to move the flexible cone to the expanded diameter and to expand the diameter of the pipe 106 (see fig. 2E and ¶ 34), the retracted position of said actuator 202 removing or releasing a force applied to said flexible cone so as to cause said flexible cone to
Hazelip does not explicitly disclose the flexible cone has a single slot therethrough. However, Hazelip does further disclose that even though flexible cone 204 is depicted as having sixteen radially shiftable segments 238 (fig. 5), it should be understood by those skilled in the art that flexible cones of the present invention could have other numbers of radially shiftable segments both greater than and less than sixteen without departing from the principle of the present invention (¶ 44).
Geyer is in the same field of endeavor and teaches a flexible ring 19 comprising an internal taper (which cooperates with conical surface 15) and a continuous wall having a single slot 20 therethrough (fig. 1-2), and the flexible ring is the functional equivalent of the flexible cone of Hazelip. Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to modify Hazelip such that the flexible cone has a single slot therethrough, as taught by Geyer, thereby reducing the complexity of the flexible cone of Hazelip and, in turn, reducing the associated manufacturing costs; and because it has been held that applying known techniques to yield predictable results requires only routine skill in the art (KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)).
In re claim 2, which depends on claim 1: modified Hazelip teaches the slot 20 of the flexible cone 204 extending longitudinally through the wall of said flexible cone 204, the slot 20 widening in the expanded diameter of said flexible cone 204, the slot 20 narrowing in the reduced diameter of said flexible cone 204 (fig. 1-2 and col. 2, ln. 6-24 of Geyer).
In re claim 4, which depends on claim 1: modified Hazelip teaches said slot 20 positioned at an angle with respect to a center axis of the flexible cone 204 (fig. 1 of Geyer).
In re claim 5, which depends on claim 1: Hazelip discloses the end of said actuator (the portion of 202 in direct contact with flexible cone 204) having a tapered outer diameter 220 that corresponds to the internal taper of said flexible cone (see fig. 3-4).
In re claims 8 and 15: Hazelip discloses an assembly and method for expanding the diameter of a pipe (fig. 2E, 3-5; note that the cone assemblies in fig. 2E and 3-5 are structurally identical even though different reference numbers are assigned) comprising:
a pipe 106 having an end (the left, threaded end) and an inner diameter (fig. 2E);
a rigid cone 206 positioned adjacent the end of the pipe (before being inserted into the pipe it is adjacent the end), said rigid cone having a tapered outer diameter that reduces from one end (left end) of the rigid cone 206 toward an opposite end of said rigid cone 206 (fig. 1-2), the opposite end of said rigid cone 206 having an outer diameter less than the inner diameter of the end of said pipe (fig. 2E), the one end (left end) of said rigid cone 206 having an outer diameter greater than the inner diameter of the end of said pipe 106 (fig. 2E, before the pipe is expanded);
a flexible cone 204 comprising a ring with a continuous wall having multiple slots therethrough (fig. 3, 5), the flexible cone 204 having an end (right end) at the one end of said rigid cone 206 and an opposite end, said flexible cone 204 having a tapered inner diameter (cooperating with 220), said flexible cone 204 (fig. 3) and a reduced diameter (fig. 4), said rigid cone 206 having a rigidity greater than a rigidity of said flexible cone 204 (fig. 5, at least due to the slots); and
an actuator 202 slidably extending through an interior of said rigid cone 206 and an interior of said flexible cone 204, said actuator 202 having a tapered surface 220 bearing against the tapered inner diameter of said flexible cone 204 (fig. 3), said actuator 202 movable between an extended position (fig. 3) and a retracted position (fig. 4), the extended position causing the flexible cone 204 to have the expanded diameter and to move said flexible cone 204 and said rigid cone 206 to slide along the inner diameter of said pipe 106 so as to expand the diameter of said pipe (fig. 2E and ¶ 34), the retracted position causing the tapered surface 220 of said actuator 202 to slide along the tapered inner diameter of said flexible cone 204 so as to cause said flexible cone to have the reduced diameter (fig. 4), the reduced diameter of said flexible cone 204 and a maximum outer diameter of said rigid 206 cone being less than the inner diameter of said pipe 106 at the end (the left, threaded end) of said pipe (at least after expansion of the pipe, as shown in fig. 2E), the retracted position (fig. 4) allowing said flexible cone 204 and said rigid cone 206 to be removed from the inner diameter at the end (left end) of said pipe 106 (fig. 4, 2E and ¶ 46; after the expansion process, the cone assembly can be retracted/removed from the end of the pipe 106).
Hazelip does not explicitly disclose the flexible cone has a single slot therethrough. However, Hazelip does further disclose that even though flexible cone 204 is depicted as having sixteen radially shiftable segments 238 (fig. 5), it should be understood by those skilled in the art that flexible cones of the present invention could have other numbers of radially shiftable segments both greater than and less than sixteen without departing from the principle of the present invention (¶ 44).
Geyer is in the same field of endeavor and teaches a flexible ring 19 comprising an internal taper (which cooperates with conical surface 15) and a continuous wall having a single slot 20 therethrough (fig. 1-2), and the flexible ring is the functional equivalent of the flexible cone of Hazelip. Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to modify Hazelip such that the flexible cone has a single slot therethrough, as taught by Geyer, thereby reducing the complexity of the flexible cone of Hazelip and, in turn, reducing the associated manufacturing costs; and because it has been held that applying known techniques to yield predictable results requires only routine skill in the art (KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)).
In re claim 9, which depends on claim 8: modified Hazelip teaches the single slot 20 (fig. 1 of Geyer) of said flexible cone 19 extends axially through the wall of said flexible cone from the end of said flexible cone to the opposite end of said flexible cone (see fig. 1-2 of Geyer).
In re claim 13, which depends on claim 8: modified Hazelip teaches said slot 20 is positioned at an angle with respect to a center axis of the flexible cone 19 (fig. 1-2 of Geyer).
In re claim 20, which depends on claim 15: Hazelip discloses the step of removing comprises: retracting the actuator so as to pull the rigid cone and the flexible cone from the end of the pipe; and retrieving the flexible cone and the rigid cone to a remote location (¶ 46; after the expansion process, the cone assembly can be retracted/removed from the end of the pipe 106).
Conclusion
Applicant’s amendment necessitated any 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jared O. Brown whose telephone number is 303-297-4445. The examiner can normally be reached on Monday - Friday: 8:00 - 5:00 (Mountain Time).
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/JARED O BROWN/Primary Examiner, Art Unit 3725
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