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 .
Response to Arguments
Applicant’s arguments with respect to the claim(s) 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.
Drawings
Figures 4a-c should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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 § 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)(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.
Claim(s) 19-20 is/are rejected under 35 U.S.C. 102(a)(2) 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) 1-14, and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ford (Pub. No. US 2021/0246992) in view of Coyes et al. (Pub. No. US 2005/0257927).
Regarding claim 1, Ford discloses an assembly (Figs. 1-13) comprising: a plunger (paragraph 4) configured to ascend and descend within an oil well tubing (paragraphs 4-6), the plunger (paragraph 4) defining an internal flow path (18); and at least one valve assembly (100) located and configured to ascent and descend with the plunger (paragraphs 32 and 44), the at least one valve assembly (100) comprising: a restriction element (80); an insert (30) secured to the plunger (paragraph 32), the insert (30) comprising at least three axially extending protrusions (40), each of the at least three axially extending protrusions (40) converge with at least another of the at least three axially extending protrusions (40) at an apex (50) of the insert (30) to define a cage (10) in which the restriction element (80) is configured to move axially; and a seat (82) positioned opposite (Fig. 7) to the apex (50) of the insert (30) to contain the restriction element (80) in the insert (30); wherein: in an open position (paragraph 44), the restriction element (80) is configured to be displaced toward the apex (50) of the insert (30) to enable fluid flow through the internal flow path (18) and through openings (68) defined between the at least three axially extending protrusions (40); and in a closed position (paragraph 41), the restriction element (80) is configured to engage with the seat (82) 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 paragraph 40 that the form or shape of the ribs are capable of being modified 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. 1-13), wherein the at least three axially extending protrusions (40) converge at a concave surface (50, paragraph 35) defining a stop for the restriction element (80).
Regarding claim 3, Ford discloses the assembly (Figs. 1-13), wherein a threaded connection (20) secures the insert (30) to the plunger (paragraph 32).
Regarding claim 4, Ford discloses the assembly (Figs. 1-13), wherein the insert (30) comprises a base ring (42) with the at least three axially extending protrusions (40) extending from the base ring (42), but lacks disclosure wherein the base ring is defining the seat.
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 base ring of the insert to include/define the seat, 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. Howard v. Detroit Stove Works, 150 U.S. 164 (1893).
Regarding claim 5, Ford discloses the assembly (Figs. 1-13), wherein the openings (68) defined between the at least three axially extending protrusions (40) extend substantially to the base ring (42).
Regarding claim 6, Ford discloses the assembly (Figs. 1-13), wherein an outer surface (Fig. 7) of the base ring (42) engages with an inner surface (Fig. 7) of a casing (12).
Regarding claim 7, Ford discloses the assembly (Figs. 1-13), wherein an outer stepped surface (67) of the base ring (42) engages with an inner stepped surface (26) to secure the insert (30) to the plunger (via housing 12, paragraph 32).
Regarding claim 8, Ford discloses the assembly (Figs. 1-13), wherein at least some of the at least three axially extending protrusions (40) exhibit a spiral shape (paragraph 40) as the at least some of the at least three axially extending protrusions (40) extend from a base portion (42) of the insert (30) to the apex (50) of the insert (30).
Regarding claim 9, Ford discloses the assembly (Figs. 1-13), wherein the at least some of the at least three axially extending protrusions (40) exhibit the spiral shape (paragraph 40) that curves along a circumference of the insert (30).
Regarding claim 10, Coyes et al. (modified above) teach wherein at least one protrusion of the at least three axially extending protrusions (5) exhibit a lateral width (Figs. 2-8) extending along a circumference of the insert (1) that tapers (Figs, 2-8, paragraph 33) as the at least one protrusion (5) extends from a base portion (4) of the insert (1) to the apex (16) of the insert (1).
Regarding claim 11, Ford discloses the assembly (Figs. 1-13), wherein the insert (30) is secured to the plunger (with housing 12 as disclosed in paragraph 32) with an interference fit (paragraph 34) to provide fluid sealing.
Regarding claim 12, Ford discloses the assembly (Figs. 1-13), wherein the open position (paragraph 44) of the valve assembly (100) is obtained during descend of the plunger in tubing (paragraphs 4-6).
Regarding claim 13, Ford discloses the assembly (Figs. 1-13), wherein the close position (paragraph 41) of the valve assembly (100) is obtained during ascend of the plunger in tubing (paragraphs 4-6).
Regarding claim 14, Ford discloses the assembly (Figs. 1-13), wherein at least one of the plunger or the insert (30) comprises a 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 (paragraph 59).
Regarding claim 16, Ford discloses an assembly (Figs. 1-13) comprising: a plunger (paragraph 4) configured to move within downhole tubing (paragraphs 4-6); and at least one valve assembly (100) secured to the plunger (paragraph 32), the at least one valve assembly (100) comprising: a restriction element (80) positioned within an internal flow path (18) that extends through the plunger (paragraphs 4-6); and an insert (30) secured to the plunger (paragraph 32), the insert (30) comprising at least two ribs (40), each individually extending from a base portion (42) of the insert (30) to an apex (50) of the insert (30) where each of the at least two ribs (40) converge to define a cage (10) in which the restriction element (80) is configured to move axially through the internal flow path (18) between the apex (50) and a seat (82) axially opposite (Fig. 7) the apex (50); wherein, in an open position (paragraph 44), the restriction element (80) is configured to be displaced toward the apex (50) of the insert to enable fluid flow through the internal flow path (18) of the plunger (paragraphs 4-6) and through openings (68) defined between the at least two ribs (40); and wherein, in a closed position (paragraph 41), the restriction element (80) 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 paragraph 40 that the form or shape of the ribs are capable of being modified 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, Coyes et al. (modified above) teach wherein the at least two ribs (5) exhibit a lateral width (Figs. 2-8) extending along a circumference of the insert (1) that tapers (Figs. 2-8, paragraph 33) as the at least two ribs (5) extend from the base portion (4) of the insert (1) to the apex (16) of the insert (1).
Regarding claim 18, Ford discloses the assembly (Figs. 1-13), wherein an outer stepped surface (67) of insert (30) engages with an inner stepped surface (26) to secure the insert (30) to the plunger (via housing 12, paragraph 32).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ford (Pub. No. US 2021/0246992) 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 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
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 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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