DETAILED CORRESPONDENCE
This Action is in response to the applicant's reply of 10/27/2025. In view of the applicant's amendments, the previously presented objections to the drawings, claims and specification, as well as all previously presented 35 USC 112(a) and 35 USC 112(b) rejections, have been withdrawn, unless restated herein.
Claims 1-11 are pending.
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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed applications, Application No. 17/324,549 and 16/909,974, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Claims 1-11 all require a gas charged accumulator and such an accumulator is not disclosed in either of the foregoing applications.
Specification
The disclosure is objected to because published application paragraphs [0059] and [0063] include “FIG. 4B represents channel 400B into which check valve 400A is fitted” and “In one example, check valve CV4 and orifice 614 are threaded into position and secured with thread locker”, respectively, thus indicating the check valve being positioned with either “channel” 400B or orifice 614 or both if 400B and 614 are the same structure. However, Fig. 5 depicts the separate positioning of 400A and 400B and Fig. 6 depicts the separate positioning of CV4 and orifice 614, thus the specification’s description conflicts with the drawings. The specification should be amended to clearly indicate the relative positioning of these structures in a manner consistent with the drawings. Note: this issue was discussed in the 2/2/2026 interview wherein it was agreed that the applicant’s specification would be revised to clarify these issues and, as a result, the examiner anticipates that this rejection will be overcome by such revisions, as will be determined when reviewed as part of the applicant’s reply in an RCE.
Correction is required. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 112
Note: Amendments in response to the following Section 112(a) and Section 112(b) rejections must be supported in the specification, with such support being specifically identified in the applicant’s remarks.
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 1-11 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 9 These claims require the gas charged accumulator to be part of the manifold, because of the preamble’s use of “A manifold”, however the only gas charged accumulator 622 in the specification and drawings is shown in Fig. 6 as separate from the manifold, i.e., merely providing fluid to the manifold. It is suggested that changing the preamble’s “A manifold” to “A manifold system” would overcome this rejection. Claims 2-8 depend from claim 1 and claims 10 and 11 depend from claim 9.
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 1-11 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 pre-AIA the applicant regards as the invention.
Claims 1 and 9 Each of these claims recites an orifice. The only numbered references to an orifice in the specification are “fixed orifice (in the form of channel 306)” in published application paragraph [0058], “channel 400B may be a fixed orifice or a variable orifice” in published application paragraph [0059], channel 400B may be a fixed orifice in published application paragraph [0061], “flow control valve 624 includes check valve and an orifice with a screen in published application paragraph [0063], “channel/orifice 306” in published application paragraph [0063], and “orifice 614” in published application paragraph [0063]. An orifice is an opening and a channel has a length along which fluids flow. It is unclear (see “Note” below) whether it is the applicant’s intent to have the recited “orifice” be a mere opening or a channel with the length. Note: these issues were discussed in the 2/2/2026 interview wherein it was agreed that the applicant’s specification would be revised to clarify these issues and, as a result, the examiner anticipates that this rejection will be overcome by such revisions, as will be determined when reviewed as part of the applicant’s reply in an RCE. Claims 2-8 depend from claim 1 and claims 10 and 11 depend from claim 9.
Claims 1 and 9 This claim recites “hydraulic fluid” and then recites “uncontrolled fluid” and “drilling fluid”, making it unclear whether it is the hydraulic or drilling fluid or neither that becomes “uncontrolled”. Claims 2-8 depend from claim 1 and claims 10 and 11 depend from claim 9.
Claims 1 and 9 This claim is rendered indefinite by the conditional limitation on the type of uncontrolled fluid that is prevented, i.e., such fluid that causes equipment damage and such fluid that does not cause equipment damage, the multiple types making the prevention conditional. It is suggested the “that … damage” be deleted and text be added to make clear the relationship/interaction between the uncontrolled fluid and the manifold. Claims 2-8 depend from claim 1 and claims 10 and 11 depend from claim 9.
Claims 1 and 9 Use of pronouns, e.g. “it,” “its,” etc. render the claim indefinite in that it is unclear to which noun or other term the pronoun refers. Claims 2-8 depend from claim 1 and claims 10 and 11 depend from claim 9.
Claims 1 and 9 There is insufficient antecedent basis in the claim for either occurrence of “equipment”. Claims 2-8 depend from claim 1 and claims 10 and 11 depend from claim 9.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following references disclose top drive systems utilizing at least a manifold and an accumulator: Belcher et al. (US20080060846), Feasey et al. (US20130192841), Feasey et al. (US20140202767), McDowell et al. (US20150000982), Reitsma et al. (US20150083429), and Zouhair et al. (US20170067320).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE STERLING GRAY whose telephone number is (313)446-4820. The examiner can normally be reached 7-4 Eastern - M-F.
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/GEORGE S GRAY/ Primary Examiner, Art Unit 3676