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 § 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.
Claim(s) 1-6 and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seegmiller (US 5,228,810) as evidenced by Allen et al. (herein Allen) (US 2020/0095834).Regarding Claim 1:In Figure 16, Seegmiller discloses a tubular member (tubular post 85), comprising: a central axis (not shown but would be axis passing horizontally through the center of 85, henceforth referred to as CA), a first end (left end), a second end (right end) opposite the first end, and an outer surface (outer surface of 85) extending from the first end to the second end (as seen in Figure 16); and a weld overlay (helical bead welds 87) disposed on a portion (bubble portion 86) of the outer surface that is axially spaced from the first end and the second end (as seen in Figure 16), wherein the weld overlay comprises a plurality of weld beads (see column 11, lines 4-12).Seegmiller is silent regarding whether the tubular member is a downhole tubular member such that the weld overlay is configured to be exposed in a borehole and to engage a wall of the borehole.However, in Figures 7A-7B Allen discloses a similar tubular member (300) with a weld overlay (welded hardbanding treatment 400 on tube body 330, see paragraphs [0108]-[0110]). This helical weld overlay (400) on the tubular member (300) provided several advantages as explained by Allen in paragraph [0108] as follows: “a hardbanding treatment in the central region of the body as compared to a tubular member that is absent hardbanding treatment, can result in 1) enhanced durability to the central region of the tubular component, 2) enhanced strength and/or rigidity of the central region of the tubular component to reduce the amount of bending or flexing of the tubular component during the insertion and/or removal of the tubular component into/from a wellbore, and/or 3) improved fluid and debris flow about the central region of the tubular component (e.g., auger effect from the spiral or helical hardbanding treatment can facilitate in moving fluid and/or debris past the central region of the tubular body).” As stated herein, it can be seen that a tubular member with a central helical weld overlay is suitable for use in a wellbore since the weld overlay can engage the wellbore for easier insertion and removal from the wellbore.Hence, based on the evidence provided by Allen, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have utilized Seegmiller’s tubular member in a wellbore (for instance as work string tubing, see Allen’s paragraph [0021]) such that Seegmiller’s weld overlay (87) could be configured to engage the wellbore, since doing so would be obvious to try and would yield a durable tubular member with increased strength and rigidity that could be easily inserted and removed from a wellbore (known advantages of this type of tubular member as discussed above). NOTE: As mentioned in MPEP 2114 II. “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. While an explanation has been provided regarding why it would be obvious to use the Seegmiller’s tubular member in a wellbore (as evidenced by Allen), it would also be obvious that this tubular member could be easily disposed by a user in a wellbore such that it would engage the wellbore since there is no specific limitation in the claim related to how the tubular member is operationally utilized in the wellbore.Regarding Claim 2:In Figure 16, Seegmiller discloses a tubular member (tubular post 85), wherein the weld overlay (87) is positioned substantially axially mid-way between the first end and the second end (as seen in Figure 16).Regarding Claim 3:In Figure 16, Seegmiller discloses a tubular member (tubular post 85), wherein the plurality of weld beads (87) are arranged in a helical pattern around the central axis (see column 11, lines 4-12).Regarding Claim 4:Seegmiller is silent regarding the axial length the helical pattern (87) extends. It would have been an obvious matter of design choice to change the size of the helical pattern (87) such that it extends a length along the central axis (CA) that is from about 5% to about 15% of a total axial length of the tubular member (85), since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).Regarding Claim 5:In Figure 16, Seegmiller discloses a tubular member (tubular post 85), wherein each of the plurality of weld beads (87) circumscribes at least 360-degrees about the central axis (as seen in Figure 16 and evident from being helical).Regarding Claim 6:Seegmiller is silent regarding the outer diameter of the plurality of weld beads. It would have been an obvious matter of design choice to change the size of the weld beads such that pattern (87) such that the plurality of weld beads would extend to an outer diameter that is at least 0.5 inches greater than an outer diameter of the portion of the outer surface, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).Regarding Claim 8:In Figure 16, Seegmiller discloses a tubular member (tubular post 85), wherein the plurality of weld beads (87) do not intersect one another (in order for the weld beads 87 to be helical they must not intersect each other, see column 11, lines 4-12).Regarding Claim 9:In Figure 16, Seegmiller discloses a tubular member (tubular post 85), wherein the plurality of weld beads (87) extend axially relative to the central axis on the portion of the outer surface (in Figure 16, if the horizontal direction is assumed to be the axial direction then the weld beads extend axially relative to the central axis along 86).Regarding Claim 10:In Figure 16, Seegmiller discloses a tubular member (tubular post 85), wherein the plurality of weld beads (87) extend circumferentially relative to the central axis on the portion of the outer surface (as seen in Figure 16).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seegmiller (US 5,228,810) as evidenced by Allen et al. (herein Allen) (US 2020/0095834) and Spangler et al. (herein Spangler) (US 2019/0247084).Regarding Claim 7:Seegmiller is silent regarding the pitch angle of the weld beads. However, in Figures 5-6, Spangler discloses a similar helically arranged weld bead (26) formed on a tubular member (16) that has a pitch angle in the range of 0 to + 90 degrees (see paragraph [0050] indicating that this pitch angle is optimizable for predictable results such as forming a structurally stable weld bead and ensuring sufficient weld material is deposited in the helical weld. Hence, based on common knowledge in the art and the evidence provided by Spangler, it would have been obvious to one having ordinary skill in the art , before the effective filing date of the claimed invention, to have modified the pitch angle of each of Seegmiller’s weld beads to be from about 10° to 40°, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim(s) 11-12 and 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seegmiller (US 5,228,810) as evidenced by Bon et al. (US 7,520,043) and Allen et al. (herein Allen) (US 2020/0095834).Regarding Claim 11:In the specification and Figure 16 Seegmiller discloses a method of manufacturing a tubular member (tubular post 85), wherein the tubular member comprises a central axis (not shown but would be axis passing horizontally through the center of 85, henceforth referred to as CA), a first end (left end), a second end (right end) opposite the first end, and an outer surface (outer surface of 85) extending from the first end to the second end (as seen in Figure 16), the method comprising: (c) forming a weld overlay comprising a plurality of weld beads (87) on a portion (86) of the outer surface that is axially spaced from the first end and the second end (as seen in Figure 16 and mentioned in column 11, lines 4-12).Seegmiller is silent regarding the use of a welding electrode to form the plurality of weld beads.However, it is extremely well known in the art that weld beads are typically formed by using a welding electrode that would require the tube or the welding electrode to be moved to form each weld bead. For instance, in Figure 6, Bon discloses a tubular member (3) to which a weld bead (12) is added using a welding electrode (20’) that is energized positioned adjacent to an outer surface of the tube (as seen in Figure 6) and the welding electrode (20) is moved in a axial direction (Z) parallel to an axis (10) to deposit material to form the weld bead (12) along the outer surface (see column 7, lines 6-29).Hence, based on common knowledge in the art and the evidence provided by Bon, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have utilized a welding electrode controlled in the claimed manner mentioned in steps (a)-(c) (as known in the art and as evidenced by Bon), since doing so would be obvious to try and would yield predictable results such as forming uniform weld beads of consistent dimensions and allowing for easier weld manufacturing. Seegmiller is silent regarding whether the tubular member is a downhole tubular member such that the weld overlay is configured to be exposed in a borehole and to engage a wall of the borehole.However, in Figures 7A-7B Allen discloses a similar tubular member (300) with a weld overlay (welded hardbanding treatment 400 on tube body 330, see paragraphs [0108]-[0110]). This helical weld overlay (400) on the tubular member (300) provided several advantages as explained by Allen in paragraph [0108] as follows: “a hardbanding treatment in the central region of the body as compared to a tubular member that is absent hardbanding treatment, can result in 1) enhanced durability to the central region of the tubular component, 2) enhanced strength and/or rigidity of the central region of the tubular component to reduce the amount of bending or flexing of the tubular component during the insertion and/or removal of the tubular component into/from a wellbore, and/or 3) improved fluid and debris flow about the central region of the tubular component (e.g., auger effect from the spiral or helical hardbanding treatment can facilitate in moving fluid and/or debris past the central region of the tubular body).” As stated herein, it can be seen that a tubular member with a central helical weld overlay is suitable for use in a wellbore since the weld overlay can engage the wellbore for easier insertion and removal from the wellbore.Hence, based on the evidence provided by Allen, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have utilized Seegmiller’s tubular member in a wellbore (for instance as work string tubing, see Allen’s paragraph [0021]) such that Seegmiller’s weld overlay (87) could be configured to engage the wellbore, since doing so would be obvious to try and would yield a durable tubular member with increased strength and rigidity that could be easily inserted and removed from a wellbore (known advantages of this type of tubular member as discussed above). NOTE: The added limitations in claim 11 are not directed to a method of manufacturing but rather a method of using the manufactured device. As such, there is no criticality associated with the type of use of the manufactured product. While an explanation has been provided regarding why it would be obvious to use the manufactured product in a wellbore (as evidenced by Allen), it would also be obvious that Seegmiller’s tubular member could be easily disposed by a user in a wellbore such that it would engage the wellbore since there is no specific limitation in the claim related to how the tubular member is operationally utilized in the wellbore. Regarding Claim 12:Seegmiller as modified discloses the method of manufacturing the tubular member (85) wherein (c) further comprises forming the plurality of weld beads (87) in a helical pattern on the portion of the outer surface (helical pattern of 87 mentioned in column 11, lines 4-12).Regarding Claim 14:Seegmiller as modified discloses the method of manufacturing the tubular member (85) further comprises forming each of the plurality of weld beads to circumscribe at least 360-degrees about the central axis (as seen in Figure 16 and based on forming a helical pattern that would extend along the entire circumference of the tubular member).Regarding Claims 15-16:Seegmiller as modified discloses the method of manufacturing the tubular member (85) but does not explicitly described the steps (b1) and (b2) as separately claimed in claims 15 and 16.However, it is extremely well known that the steps (b1) and (b2) mentioned in either claim 15 or claim 16 would be the logical approach to forming the helical weld beads (87) disclosed by Seegmiller. For instance, one of ordinary skill would realize that the tubular member would have to be rotated about the central axis while translating the weld electrode in a direction that is parallel to the central axis (per claim 15). Alternately, the tubular member could be held in a fixed position while moving the weld electrode over a portion of the outer surface (per claim 16).
This method of moving the weld electrode (along a z direction) parallel to an axis is disclosed by Bon (see column 7, lines 6-29). Bon also discloses rotating the weld electrode along a rotational direction (16’) to form the weld bead (12). One of ordinary skill would realize that this can also be accomplished by rotating the tube. Hence, based on common knowledge in the art and the evidence provided by Bon, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have utilized a welding electrode controlled in the claimed manner mentioned in steps (b1) and (b2) of either claims 15 or 16 (as known in the art and as evidenced by Bon) to form the weld beads on the tube, since doing so would be obvious to try and would yield predictable results such as forming uniform weld beads of consistent dimensions and allowing for easier weld manufacturing.Regarding Claim 17:Seegmiller as modified is silent regarding the outer diameter of the plurality of weld beads. It would have been an obvious matter of design choice to change the size of the weld beads such that pattern (87) such that the plurality of weld beads would extend to an outer diameter that is at least 0.5 inches greater than an outer diameter of the portion of the outer surface, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955)Regarding Claim 18:Seegmiller as modified discloses the method of manufacturing the tubular member (85) further comprises forming the weld overlay substantially axially mid-way between the first end and the second end (as seen in Figure 16).Regarding Claim 19:Seegmiller as modified discloses the method of manufacturing the tubular member (85) wherein the plurality of weld beads (87) extend axially relative to the central axis (CA) on the portion (86) of the outer surface (in Figure 16, if the horizontal direction is assumed to be the axial direction then the weld beads extend axially relative to the central axis along 86).Regarding Claim 20:Seegmiller as modified discloses the method of manufacturing the tubular member (85) wherein the plurality of weld beads (87) extend circumferentially relative to the central axis (CA) on the portion of the outer surface (as seen in Figure 16 and based on forming a helical pattern that would extend along the entire circumference of the tubular member, column 11, lines 4-12).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seegmiller (US 5,228,810) as evidenced by Bon et al. (US 7,520,043) and as evidenced by Allen et al. (herein Allen) (US 2020/0095834) and Spangler et al. (herein Spangler) (US 2019/0247084).Regarding Claim 13:Seegmiller is silent regarding the pitch angle of the weld beads. However, in Figures 5-6, Spangler discloses a similar helically arranged weld bead (26) formed on a tubular member (16) that has a pitch angle in the range of 0 to + 90 degrees (see paragraph [0050] indicating that this pitch angle is optimizable for predictable results such as forming a structurally stable weld bead and ensuring sufficient weld material is deposited in the helical weld. Hence, based on common knowledge in the art and the evidence provided by Spangler, it would have been obvious to one having ordinary skill in the art , before the effective filing date of the claimed invention, to have modified the pitch angle of each of Seegmiller’s weld beads to be from about 10° to 40°, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Response to Arguments
Applicant's arguments with respect to the pending claims have been considered but are moot because the arguments do not apply to any of the new grounds of rejection being used in the current office action.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINICK L PLAKKOOTTAM whose telephone number is (571)270-7571. The examiner can normally be reached Monday - Friday 12 pm -8 pm ET.
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/DOMINICK L PLAKKOOTTAM/Primary Examiner, Art Unit 3746
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