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
Applicant’s arguments, filed on 05/18/2026, with respect to the rejection(s) of claim(s) 1, 9, and 16 over Greci et al. (U.S. 2020/0040676A1), in view of Hammer (U.S. 2009/0283275A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made 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. See the rejection below.
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 1-20 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.
Regarding claims 1, 9, 16: claims 1, 9, and 16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, for lack of written description. The claims have been amended to recite that “an increase in differential pressure across the pressure-responsive variable choke of the flow control tool results in a corresponding increase in flow restriction at the pressure-responsive variable choke”. The originally-filed specification does not reasonably convey to one of ordinary skill in the art that applicant was in possession of this specific relationship between differential pressure across the pressure-responsive variable choke and a corresponding increase in flow restriction at the choke at the tome of filing. While the specification may disclose differential pressure and regulation of flow, the specification flails to describe the newly claimed functional relationship whereby an increase in differential pressure across the choke results in a corresponding increase in flow restriction. Therefore, the amendment introduces subject matter that lacks adequate written descriptive support in the originally-filed disclosure.
Claims 2-8, 10-15, and 17-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as being dependent on rejected claims 1, 9, and 16.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YANICK A AKARAGWE whose telephone number is (469)295-9298. The examiner can normally be reached M-TH 7:30-5:30.
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/YANICK A AKARAGWE/Primary Examiner, Art Unit 3672
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