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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/29/2026 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-18 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.
Applicant's arguments filed 3/30/2026 with regards to claims 19-20 have been fully considered but they are not persuasive.
In regards to applicant’s argument that prior art reference Ford does not illustrate the claims “quartic lima bean-shaped openings”, Examiner respectfully disagrees. Applicant states that the openings appear to taper to relatively sharp corners unlike applicant’s Figures 10B-C, which is because the prior art is illustrating the top and bottom view of the insert that has “angled” or “spiral” projections/ribs that block a portion of the corner and make it appear to be a sharp corner from that view, but as is illustrated in the side view of the insert each corner of the claimed bean shape is rounded not sharp. Examiner notes that applicant’s Figures of the top or bottom view of the lima bean-shaped openings do not illustrate spiral projections or ribs that would block a portion of the rounded corner similar to the prior art.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the base ring defining the seat as recited in claim 4 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because Figures 3A-8C all fail to adequately indicate the section portions of the drawing by using hatching/shading. MPEP 608.02 § V. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because the shading of Figures 9A-E have poor quality, see 37CFR 1.84. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
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 4-7 and 8-10 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.
Regarding claim 4, the phrase “the base ring defines the seat” is unclear what the applicant is referring to since the applicant lacks any disclosure in the specification or drawings of the base ring defining the seat.
Regarding claim 8, the limitation “a base portion of the insert” is unclear if applicant is referring to the previously introduced “base ring of the insert” or is referring to new and separate limitation.
Regarding claim 10, the limitation “a base portion of the insert” is unclear if applicant is referring to the previously introduced “base ring of the insert” or is referring to new and separate limitation.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ford (Pub. No. US 2021/0246992).
Regarding claim 19, Ford discloses a method of forming a valve assembly (Figs. 1-13) for a plunger (paragraph 4), the method comprising: positioning a restriction element (80) between (Fig. 7) an insert (30) and a seat (82), positioning the restriction element (80), the insert (30), and the seat (82) in an internal flow path (18) extending through the plunger (upper portion 14 connected to a plunger in the same manner as applicant’s invention as disclosed in paragraph 32); defining openings (68) in the internal flow path (18) with at least three protrusions (40) of the insert (30) that extend through the internal flow path (18) and converge with at least another of the at least three protrusions at an apex (50) of the insert (30) to define a cage (10) in which the restriction element (80) is configured to move axially through the internal flow path (18); in an open position (paragraph 44), enabling the restriction element to be displaced toward the apex (50) of the insert (30) to enable fluid flow through the internal flow path (19) and through quartic lima bean-shaped openings (68, as illustrated in Figures 3-4) defined between the at least three protrusions (40); and in a closed position (paragraph 41), enabling the restriction element (80) to engage with the seat (82) to restrict fluid flow through the internal flow path (18).
Regarding claim 20, Ford discloses the method, further comprising forming the at least three protrusions (40) to exhibit a spiral shape (paragraph 39) as the at least three protrusions (40) extend to the apex (50) of the insert (30).
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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) 1-3, 8-13, and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ford (U.S. Patent No. 8,453,673) in view of Coyes et al. (Pub. No. US 2005/0257927).
Regarding claim 1, Ford discloses an assembly (Figs. 1-19) comprising: a plunger (Column 4 lines 3-25) configured to ascend and descend within an oil well tubing (Column 1 line 48-Column 2 line 2), the plunger defining an internal flow path (18); and at least one valve assembly (10) located and configured to ascend descent with the plunger (Column 4 lines 3-25), the at least one valve assembly (10) comprising: a restriction element (46); an insert (30) secured (Fig. 8) to the plunger, the insert (30) comprising at least three axially extending protrusions (38) and a base ring (40), each of the at least three axially extending protrusions (38) converging with at least another of the at least three axially extending protrusions (38) at an apex (36) of the insert (30) to define a cage (Fig. 12) in which the restriction element (46) is configured to move axially, and wherein each of the at least three axially extending protrusions (38) extend individually between the base ring (40) and the apex (36) without being otherwise connected to any of the other at least three axially extending protrusions (38) or any other structure except at the base ring (40) and the apex (36); and a seat (48) positioned opposite to the apex (36) of the insert (30) to contain the restriction element (46) in the insert (30); wherein: in an open position (Column 4 line 64-Column 5 line 18), the restriction element (46) is configured to be displaced toward the apex (36) of the insert (30) to enable fluid flow through the internal flow path (18) and through openings (50) defined between the at least three axially extending protrusions (38); and in a closed position (Fig. 11), the restriction element (46) is configured to engage with the seat (48) to restrict fluid flow through the internal flow path (18), but lacks disclosure wherein each of the at least three axially extending protrusions have a lateral width at a radially outer surface that gradually reduces along substantially an entire length as the at least three axially protrusions converge.
Coyes et al. teach a valve assembly (Figs. 2-8) comprising an insert (1) having three axially extending protrusions (5) that each have a lateral width (Fig. 2) at a radially outer surface (Figs 2-8) that gradually reduces along substantially an entire length (Figs. 2-8) as the at least three axially extending protrusions (5) converge at an apex (16).
It would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ribs of the insert of Ford with a gradually reducing lateral width for each rib as is taught by Coyes et al. since such a modification would have involved a mere change in the form or shape of a component. Ford discloses in Column 5 lines 19-43 that the form or shape of the ribs are capable of deviating as desired. A change in form or shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 149 USPQ 47 (CCPA 1976).
Regarding claim 2, Ford discloses the assembly (Figs. 1-19) wherein the at least three axially extending protrusions (38) converge at a concave surface (Fig. 10) defining a stop for the restriction element (46).
Regarding claim 3, Ford discloses the assembly (Figs. 1-19) wherein a threaded connection (Column 4 lines 3-25) secures the insert (30) in the plunger.
Regarding claim 8, Ford discloses the assembly (Figs. 1-19) wherein at least some of the at least three axially extending protrusions (38) exhibit a spiral shape (Figs. 8-10) as the at least some of the at least three axially extending protrusions (38) extend from a base portion (40) of the insert (30) to the apex (36) of the insert (30).
Regarding claim 9, Ford discloses the assembly (Figs. 1-19) wherein the at least some of the at least three axially extending protrusions (38) exhibit the spiral shape (Figs. 8-10) that curves along a circumference of the insert (30).
Regarding claim 10, Ford discloses the assembly (Figs. 1-19) wherein at least one protrusion of the at least three axially extending protrusions (38) exhibit a lateral width (Figs. 4-5) extending along a circumference of the insert (30) that tapers (Column 5 line 65-Column 6 line 16) as the at least one protrusion (38) extends from a base portion (40) of the insert to the apex (36) of the insert (30).
Regarding claim 11, Ford discloses the assembly (Figs. 1-19) wherein the insert (30) is secured to the plunger with an interference fit (Column 4 lines 52-63) to provide fluid sealing.
Regarding claim 12, Ford discloses the assembly (Figs. 1-19) wherein the open position (Fig. 12) of the valve assembly (10) is obtained during descend of the plunger in tubing (Column 1 lines 59-61).
Regarding claim 13, Ford discloses the assembly (Figs. 1-19) wherein the close position (Fig. 11) of the valve assembly (10) is obtained during ascend of the plunger in tubing (Column 1 lines 52-58).
Regarding claim 16, Ford discloses an assembly (Figs. 1-19) comprising: a plunger (Column 4 lines 3-25) configured to move within downhole tubing (Column 1 line 48-Column 2 line 2); and at least one valve assembly (10) secured to the plunger (Column 4 lines 3-25), the at least one valve assembly (10) comprising: a restriction element (46) positioned within an internal flow path (18) that extends through the plunger; and an insert (30) secured to the plunger, the insert (30) comprising at least two ribs (38), each individually extending from a base portion (40) of the insert (30) to an apex (36) of the insert where each of the at least two ribs (38) converge to define a cage (Fig. 12) in which the restriction element (46) is configured to move axially through the internal flow path (18) between the apex (36) and a seat (48) axially opposite the apex (36), and wherein each of the at least two ribs (38) extend individually between the base portion (40) and the apex (36) without being otherwise connected to any of the other at least two ribs (38) or any other structure except at the base portion (40) and at the apex (36); wherein, in an open position (Fig. 12), the restriction element (46) is configured to be displaced toward the apex (36) of the insert to enable fluid flow through the internal flow path (18) of the plunger (12) and through openings (50) defined between the at least two ribs (38); and wherein, in a closed position (Fig. 11), the restriction element (46) is configured to restrict fluid flow through the internal flow path (18), but lacks disclosure wherein each of the at least two axially extending ribs have a lateral width at a radially outer surface that gradually reduces along substantially an entire length as the at least two ribs converge.
Coyes et al. teach a valve assembly (Figs. 2-8) comprising an insert (1) having three axially extending ribs (5) that each have a lateral width (Fig. 2) at a radially outer surface (Figs 2-8) that gradually reduces along substantially an entire length (Figs. 2-8) as the at least three axially extending ribs (5) converge at an apex (16).
It would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ribs of the insert of Ford with a gradually reducing lateral width for each rib as is taught by Coyes et al. since such a modification would have involved a mere change in the form or shape of a component. Ford discloses in Column 5 lines 19-43 that the form or shape of the ribs are capable of deviating as desired. A change in form or shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 149 USPQ 47 (CCPA 1976).
Regarding claim 17, Ford discloses the assembly (Figs. 1-19) wherein the at least two ribs (38) exhibit a lateral width (Figs. 4-5) extending along a circumference of the insert (30) that tapers (Column 5 line 65-Column 6 line 16) as the at least two ribs (38) extend from the base portion (40) of the insert to the apex (36) of the insert (30).
Regarding claim 18, Ford discloses the assembly (Figs. 1-19) wherein an outer stepped surface (44) of insert (30) engages with an inner stepped surface (Column 5 lines 44-64) to secure the insert (30) to the plunger.
Claim(s) 4-7 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ford (U.S. Patent No. 8,453,673) in view of Coyes et al. (Pub. No. US 2005/0257927), and further in view of Valenzuela et al. (Pub. No. US 2021/0131423).
Regarding claim 4, Ford modified above disclose the essential features of the claimed invention but lack disclosure of the base ring defines the seat.
Valenzuela et al. teach a valve assembly (Figs. 1-4) comprising a casing (100) having protrusions (110) that converge with one another to from an apex (108), and a seat (106), wherein the protrusions (110), the apex (108), and the seat (106) are formed as a monolithic, single piece structure (paragraphs 19-20).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed to modify the insert of Ford with a monolithic or single piece structure as taught by Valenzuela et al., since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art, and for the advantage of increasing the flow area through the valve and/or allow for a more effective or efficient flow path (paragraph 23). Howard v. Detroit Stove Works, 150 U.S. 164 (1893).
Regarding claim 5, Ford discloses the assembly (Figs. 1-19) wherein the openings (50) defined between the at least three axially extending protrusions (38) extend substantially to the base ring (40).
Regarding claim 6, Ford discloses the assembly (Figs. 1-19) wherein an outer surface (44) of the base ring (40) engages with an inner surface (Fig. 8) of a casing (12).
Regarding claim 7, Ford discloses the assembly (Figs. 1-19) wherein an outer stepped surface (44) of the base ring (40) engages with an inner stepped surface (Fig. 8) to secure the insert (30) in the plunger.
Regarding claim 14, Ford discloses the assembly (Figs. 1-19) wherein at least one of the plunger or the insert (30) comprises a material including hardened material, an alloy or some other suitable material (Column 3 line 60-Column line 2), but lacks disclosure of the material including a low alloy steel, a brass alloy, a stainless steel alloy, a duplex stainless steel, a nickel base alloy, a nickel alloy, or a super alloy.
Valenzuela et al. teach a valve assembly (Figs. 1-4) comprising a casing (100) formed of one or more of an alloy steel, stainless steel, or Monel (paragraph 8).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the material of the insert of Ford with a material as taught by Valenzuela et al., since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 15, Ford discloses the essential features of the claimed invention but lacks disclosure wherein at least one of the plunger or the insert comprises a material including a surface treatment including at least one of electroplating, an electroless plating, a chemical vapor deposition, a physical vapor deposition, a plasma coating, a spray-metal coating, a solid-state diffusion treatment, or a surface heat-treat process.
Valenzuela et al. teach a valve assembly (Figs. 1-4) having at least of a housing or insert comprising a material including a surface treatment (paragraph 8).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the material of the housing or insert of Ford with a material as taught by Valenzuela et al. since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Klatt (U.S. D947,328) clearly illustrate quartic lima bean-shaped openings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Reinaldo Sanchez-Medina, telephone number 571-270-5168, fax number 571-270-6168. The examiner can normally be reached on Monday-Friday (7:30AM-4:00PM EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors can be reached by phone. Craig Schneider can be reached at 571-272-3607 or Kenneth Rinehart can be reached at 571-272-4881. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REINALDO SANCHEZ-MEDINA/Primary Examiner, Art Unit 3753
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