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 .
DETAILED ACTION
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 made in Remarks submitted on 2/03/2026 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
As concerns Applicant’s argument that the cited art does not teach a retaining element, the Examiner respectfully disagrees.
The claimed term ‘seal retaining element’ is anticipated by prior art reference Taylor (US 4,720,124). Below illustrates a highlighted comparison between Taylor and Applicant’s invention, with the mapped portion of Taylor on the left and Applicant’s seal retaining element on the right.
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The term is further noted under the 112(f) section under claim interpretation, as well as rejected under both 112(a) and 112(b) below. Applicant's claims recite: "a seal retaining element disposed at a distal end of the first slidable housing, the seal retaining element operable to retain the at least one seal on the first slidable housing." Applicant’s specification further requires that, in order to perform this function, the seal retaining element be 'tapered at a similar angle to an angle of the distal end of the first slidable housing'. Without further defining features or characteristics, the claimed invention is found to be anticipated by Taylor, element 41.
As concerns Applicant’s argument that the addition of “a seal retaining element” would impermissibly change the principle operation of Kalia, the Examiner respectfully disagrees. Kalia is being referenced to illustrate the common manner in which jumper lines are used in subsea applications to connect between adjacent subsea well equipment. Taylor is merely used to teach the use of slidable flowline connection between subsea flowlines. Furthermore, Taylor teaches the positively-recited seal retaining element, as claimed, without impermissibly changing the principle operation of Kalia – i.e. the function of jumper flow lines between adjacent subsea equipment.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “seal retaining element” in claims 1-7, 9-12 and 14-22.
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 1-7, 9-12 and 14-22 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.
The written description of the claims does not clearly disclose what is required of the ‘seal retaining element’.
The specification, discloses:
" [0039] In some embodiments, the exemplary expansion joint assembly 50 further includes a seal retaining element 68, such as a tapered seal retainer, as shown. The seal retaining element 68 may be disposed at a distal end of the first slidable housing 52 and configured to retain either or both of the first seal 64 and the second seal 66. In some embodiments, the seal retaining element 68 is tapered at a similar angle to an angle of the distal end of the first slidable housing 52, as shown. "
Since the word element is used, one of ordinary skill in the art would need to understand what the ‘element’ itself actually is. As presently described, there is only the need for a ‘tapered end’. Under the broadest reasonable interpretation, such a tapered end could easily be anticipated by a tapered end of the greater housing element itself.
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 1-7, 9-12 and 14-22 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.
Claims 1, 7 and 15 recite “a seal retaining element” which is not clearly defined in the specification sufficiently enough to allow one of ordinary skill to recreate the claimed invention without undue experimentation.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being unpatentable by Taylor (US 4,720,124).
As concerns claim 1, Taylor (US 4,720,124) discloses: an expansion joint for connecting one or more flowline jumper portions of a subsea well system, the expansion joint comprising:
a first slidable housing (Taylor - 32) a second slidable housing (Taylor - 34) slidably coupled to the first slidable housing (Taylor - 32), the first slidable housing (Taylor - 32) operable to translate relative to the second slidable housing (Taylor - 34) to thereby linearly adjust a length of the expansion joint, wherein the first slidable housing (Taylor - 32) and the second slidable housing (Taylor - 34) provide a fluid path (Taylor - 36) between the one or more flowline jumper portions;
at least one seal (Taylor – 48, 42) disposed on the first slidable housing (Taylor - 32), the at least one seal (Taylor – 48, 42) configured to provide a pressure seal within the expansion joint;
a latch device (Taylor – 58) configured to lock the first slidable housing (Taylor - 32) to the second slidable housing (Taylor - 34); and
a seal retaining element (Taylor - 41) disposed at a distal end of the first slidable housing (Taylor - 32), the seal retaining element (Taylor - 41) operable to retain the at least one seal (Taylor – 48, 42) on the first slidable housing (Taylor - 32).
As concerns claim 4, Taylor discloses the expansion joint of claim 1, further comprising at least one slanted edge disposed on the first slidable housing (Taylor - 32) configured to prevent linear sliding of the first slidable housing (Taylor - 32) beyond a predetermined threshold. (Taylor – Figures 3 and 4 illustrate such a slant that prohibits movement of 58 beyond an allowable threshold)
As concerns claim 5, Taylor discloses the expansion joint of claim 1, wherein the at least one seal (Taylor – 48, 42) comprises a metal-to-metal seal. (Taylor – 42 is a metal-to-metal seal)
As concerns claim 6, Taylor discloses the expansion joint of claim 5, wherein the at least one seal (Taylor - 48) further comprises a non-metallic seal. (Taylor – 48 is an elastomeric seal)
Claim Rejections - 35 USC § 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 of this title, 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 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable by Taylor (US 4,720,124) in view of Molina (US 10,024,143).
As concerns claim 2, Taylor discloses the expansion joint of claim 1, however fails to specify wherein the latch device (Taylor - 58) comprises a spring-loaded latch pin configured to lock in to at least one recessed portion on the first slidable housing (Taylor - 32).
Molina however teaches an expansion joint comprising a spring-loaded latch pin (generic fasteners 142 and 144 of Molina are considered analogous to the claimed spring-loaded latch pin, as both would perform the same function) configured to lock into at least one pin receptacle (Molina – Figures 7A and 7B) disposed on the first slidable housing.
Therefore, it would have been obvious to modify Taylor as taught by Molina to include the spring-loaded latch pins for the expected benefit of providing an effective means for latching and securing the adjacent flow tube elements together, to obtain the invention as specified in the claim.
As concerns claim 3, the combination discloses the expansion joint of claim 2, wherein the first slidable housing (Taylor - 32) comprises a first recessed portion and a second recessed portion disposed in distinct positions on thefirst slidable housing (Taylor - 32), and wherein the first slidable housing (Taylor - 32) is configured to linearly slide between a first position and a second position based on the first recessed portion and the second recessed portion respectively. (Molina – Figures 7A and 7B illustrate such configurations)
Claims 7, 9-12, 14 and 22 are rejected under 35 U.S.C. 103 as being unpatentable by Molina (US 10,024,143) in view of Taylor (US 4,720,124).
As concerns claim 7, Molina discloses a jumper expansion assembly for connecting a subsea well system, the jumper expansion assembly comprising:
a first flowline jumper (Taylor - 11b) portion (Molina - 120a) extending longitudinally from a first subsea well system component of the subsea well system;
a second flowline jumper (Taylor - 11a) portion (Molina - 120b) extending longitudinally from a second subsea well system component of the subsea well system; and
an expansion joint (Molina - 100) configured to join the first flowline jumper (Taylor - 11b) portion (Molina - 120a) and the second flowline jumper (Taylor - 11a) portion (Molina - 120b).
Molina fails to specify particulars about the expansion joint comprising:
a first slidable housing a second slidable housing coupled via a coupling to the first slidable housing,
wherein the coupling provides for the first slidable housing and the second slidable housing to be slidably coupled to, and translate relative to, each other to thereby linearly adjust a length of the expansion joint (Molina - 100), wherein the first slidable housing and the second slidable housing provide a fluid path between the first flowline jumper (Taylor - 11b) portion (Molina - 120a) and the second flowline jumper (Taylor - 11a) portion (Molina - 120b);
at least one seal disposed on the first slidable housing, the at least one seal configured to provide a pressure seal within the expansion joint (Molina - 100); and
a seal retaining element disposed at a distal end of the first slidable housing, the seal retaining element operable to retain the at least one seal on the first slidable housing.
Taylor teaches a first slidable housing (Taylor - 32) a second slidable housing (Taylor - 34) coupled via a coupling to the first slidable housing (Taylor - 32),
wherein the coupling provides for the first slidable housing (Taylor - 32) and the second slidable housing (Taylor - 34) to be slidably coupled to, and translate relative to, each other to thereby linearly adjust a length of the expansion joint, wherein the first slidable housing (Taylor - 32) and the second slidable housing (Taylor - 34) provide a fluid path (Taylor - 36) between the first flowline jumper (Taylor - 11b) portion and the second flowline jumper (Taylor - 11a) portion;
at least one seal (Taylor – 42, 48) disposed on the first slidable housing (Taylor - 32), the at least one seal (Taylor – 42, 48) configured to provide a pressure seal within the expansion joint; and
a seal retaining element (Taylor - 41) disposed at a distal end of the first slidable housing (Taylor - 32), the seal retaining element (Taylor - 41) operable to retain the at least one seal (Taylor – 42, 48) on the first slidable housing (Taylor - 32).
Therefore, it would have been obvious to modify Molina as taught by Taylor to include the first and second slidable housings, at least one seal and seal retaining element, for the expected benefit of providing an effective sealing connection between adjacent flow line portions, to obtain the invention as specified in the claim.
As concerns claim 9, the combination discloses the jumper expansion assembly of claim 7, wherein the expansion joint (Molina - 100) comprises a gap (Taylor – Figure 7A illustrates a gap in space 70, along the lefthand side where 38 is cited) configured to prevent damage to the at least one seal (Taylor – 42, 48) during linear translation of the first slidable housing.
As concerns claim 10, the combination discloses the jumper expansion assembly of claim 7, wherein the expansion joint (Molina - 100) comprises a predetermined stroke length that is selected based on a combined stroke length for connecting to one or more respective connection ports on the first subsea well system component and the second subsea well system component. (Taylor discloses wherein one object of the invention is to provide a “substantial length adjustment for a flowline spool to be inserted between a flowline leading from an individual Christmas tree to a main gathering system.” This “substantial length adjustment” is understood to anticipate the claimed ‘predetermined stroke length’ as the adjustment amount of need to be known by one of ordinary skill who is implementing the invention of Taylor in order to effectively connect the two elements.)
As concerns claim 11, the combination discloses the jumper expansion assembly of claim 7, wherein the expansion joint (Molina - 100) further comprises:
a seal test port (Taylor – ports 62 and 64 are capable of performing this function) disposed on a portion of the expansion joint (Molina - 100), the seal test port configured to test an integrity of the at least one seal.
As concerns claim 12, the combination discloses the jumper expansion assembly of claim 7, wherein each of the first flowline jumper (Taylor - 11b) portion (Molina - 120a) and the second flowline jumper (Taylor - 11a) portion (Molina - 120b) comprise a flexible pipe. (As “flexible” is a relative term, under the broadest reasonable interpretation, the pipes 120a and 120b of Molina are understood to have some degree of flexibility.)
As concerns claim 14, the combination discloses the jumper expansion assembly of claim 7, wherein an end of the first flowline jumper (Taylor - 11b) portion (Molina - 120a) is removably coupled to the expansion joint (Molina - 100) and an end of the second flowline jumper (Taylor - 11a) portion (Molina - 120b) is removably coupled to the expansion joint (Molina - 100).
As concerns claim 22, the combination discloses the jumper expansion assembly of claim 7, wherein the seal retaining element (Taylor – 41) comprises a tapered seal retainer tapered at a similar angle to an angle of the distal end of the first slidable housing (Taylor – 32). (Figures 3 and 4 illustrate such a tapering of element 41.)
Claims 15-20 are rejected under 35 U.S.C. 103 as being unpatentable by Kalia et al (US 11,346,205) in view of Molina and further in view of Taylor.
As concerns claim 15, Kalia et al discloses a subsea well system comprising:
a manifold (Kalia – 20);
a well tree assembly (Kalia – 22);
and a flowline jumper extending longitudinally from the manifold to the well tree assembly (Figure 1).
Kalia fails to specify particulars about an expansion joint.
Taylor teaches wherein
a first flowline jumper (Taylor - 11b) portion extending longitudinally from the manifold;
a second flowline jumper (Taylor - 11a) portion extending longitudinally from the well tree assembly; and
an expansion joint (Taylor - 12) configured to join the first flowline jumper (Taylor - 11b) portion and the second flowline jumper (Taylor - 11a) portion, the expansion joint (Taylor - 12) comprising:
a linearly slidable connector (Taylor - 32, 34) configured to linearly adjust a length of the expansion joint (Taylor - 12),
wherein the linearly slidable connector (Taylor - 32, 34) provides a fluid path (Taylor - 36) between the first flowline jumper (Taylor - 11b) portion and the second flowline jumper (Taylor - 11a) portion;
at least one seal (Taylor - 48) disposed on the linearly slidable connector (Taylor - 32, 34), the at least one seal (Taylor - 48) configured to provide a pressure seal within the expansion joint (Taylor - 12); and
a seal retaining element (Taylor - 41) disposed at a distal end of the linearly slidable connector (Taylor - 32, 34), the seal retaining element (Taylor - 41) operable to retain the at least one seal (Taylor - 48) on the linearly slidable connector (Taylor - 32, 34).
Therefore, it would have been obvious to modify Kalia as taught by Taylor to include the expansion joint as claimed for the expected benefit of effectively sealing and connecting between two adjacent flowline jumpers in a subsea environment, to obtain the invention as specified in the claim.
As concerns claim 16, the combination discloses the subsea well system of claim 15, wherein the first flowline jumper (Taylor - 11b) portion, the second flowline jumper (Taylor - 11a) portion, and the expansion joint (Taylor - 12) are suspended over a sea floor environment between the manifold and the well tree assembly. (Kalia – Figure 1 shows such a suspended jumper)
As concerns claim 17, the combination discloses the subsea well system of claim 15, wherein an overall length of the first flowline jumper (Taylor - 11b) portion, the second flowline jumper (Taylor - 11a) portion, and the expansion joint (Taylor - 12) is between about 50 feet to about 150 feet. (Kalia – Column 3, Line 37-54 discusses the length of such jumpers being up to or greater than 150 feet)
As concerns claim 18, the combination discloses the subsea well system of claim 15, wherein the first flowline jumper (Taylor - 11b) portion is joined to the manifold at a horizontal connection port. (Taylor – Figure 1 shows such a capability with the flowline jumper 12 being joined to other components, such as swivel 14, in a horizontal fashion)
As concerns claim 19, the combination discloses the subsea well system of claim 15, wherein the first flowline jumper (Taylor - 11b) portion, the second flowline jumper (Taylor - 11a) portion, and the expansion joint (Taylor - 12) extend along a single plane (Taylor Figure 3 illustrates such a configuration).
As concerns claim 20, the combination discloses the subsea well system of claim 15, wherein a stroke length of the expansion joint (Taylor - 12) is selected based on at least one of a first stroke length for connecting to a first horizontal port of the manifold and a second stroke length for connecting to a second horizontal port of the well tree assembly. (Taylor illustrates this capability; such a determination of stroke length would be required to adequately install and utilize such a telescoping joint and is considered to be well within the level of skill of one of ordinary skill in the art.)
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable by Molina (US 10,024,143) in view of Taylor (US 4,720,124) and further in view of Lower (US 7,661,479)
As concerns claim 21, the combination discloses the jumper expansion assembly of claim 7, further comprising:
a first slidable housing (Taylor – 32);
a second slidable housing (Taylor – 34).
The combination fails to disclose a thermally insulating cover.
Lower, however, teaches such a cover (Lower – 16) disposed external to both a first and second connector of a joint.
Therefore, it would have been obvious to modify the combination as taught by Lower to include the thermal insulating cover for the expected benefit of decreasing the rate at which the internal fluid is cooled by the outer ambient temperature, to obtain the invention as specified in the claim.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON L LEMBO whose telephone number is (571)270-3065. The examiner can normally be reached Monday-Friday, 7am-4pm.
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, Nicole Coy can be reached on (571) 272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AARON L LEMBO/
Primary Examiner
Art Unit 3679
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