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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
The “non-rotatable cutting element” and the “reaction member” in claims 1, 11, 17 invoke 112F because, for an example, first, "element" is a generic substitute for “means”; second, the "element" is modified by functional language including “squeezing…to obtain a dented region…”; and third, the " element" is not modified by sufficient structure to perform the recited function because " non-rotatable cutting " preceding element describes the function, not the structure of the element.
Similarly, analysis with other limitation.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 17 of this pending application are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims of U.S. Patent No. 12121985, hereinafter the US patent.
Although the claims language at issue are not identical, they are not patentably distinct from each other because it is clear that all steps of Claim of this pending application are found in Claims of U.S. Patent No. 12121985.
Claim 17, Claims of the Patent teaches: a method for cutting a tubular structure (see claim 1), the method comprising:
positioning a cutting tool in a first position exterior to the tubular structure (see step a of claim 1), wherein the cutting tool comprises:
a tool body forming at least a portion of an enclosure configured to receive the tubular structure (see claim 6 “an enclosure”);
a non-rotatable cutting element positioned on a first side of the enclosure; and a reaction member opposite to the non-rotatable cutting element across the enclosure (see all structures in the 1st paragraph of claim 1 and see claim 6);
reducing a distance between the non-rotatable cutting element and the reaction member, at the first position, the distance between the non-rotatable cutting element and the reaction member to a first distance, thereby squeezing the tubular structure (see steps b, c of claim 1);
increasing the distance between the non-rotatable cutting element and the reaction member after squeezing the tubular structure at the first position, thereby obtaining a dented region in the tubular structure at the first position (see step c of claim 1);
positioning the cutting tool in a second position exterior to the tubular structure, wherein the second position is displaced over a predefined distance compared to the first position (see steps c and d of claim 1); and
reducing a distance between the non-rotatable cutting element and the reaction member, at the second position, until the distance between the non-rotatable cutting element and the reaction member to a cutting distance, thereby cutting through the tubular structure, wherein the cutting distance is less than the first distance (see step c of claim 1).
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.
(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.
Claims 1-5, 11, 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Laky (US 4923005).
Regarding claim 1, Laky shows a cutting tool (Figures 8-15) for cutting a tubular structure (17) at a drill floor of a drilling rig, the cutting tool comprising:
a tool body forming at least a portion of an enclosure (95/96) configured to receive the tubular structure (17, see Figures 8-9);
a non-rotatable cutting element (127, 126, 106, Figure 11) positioned on a first side of the enclosure (an upper side of the section 95, Figures 8-9); and
a reaction member (bottom parts 116a, 127a, 106a) opposite to the non-rotatable cutting element across the enclosure, wherein a distance between the non-rotatable cutting element and the reaction member is adjustable to squeeze the tubular structure as the distance between the non-rotatable cutting element and the reaction member decreases (see Figures 13-14), and carry out a translational cutting movement through the tubular structure when the distance between the non-rotatable cutting element and the reaction member decreases to a cutting distance (Figure 15 shows two blades cut off the tube), and
wherein the cutting tool (as a whole tool as seen in Figures 8-15) is configured to:
perform at a first position along the tubular structure (see Figure 14, the blade 106 and the abutment 117 is a dented position along the tube 17), a partial translational cutting movement of the non-rotatable cutting element in which the distance between the non-rotatable cutting element and the reaction member does not reach the cutting distance to obtain a dented region in the tubular structure at the first position (see Figure 14 that shows the non-rotatable cutting element makes a dent on the tube), and
perform at a second position along the tubular structure (see Figure 15, the blade 106 and the abutment 117 is a cutting position along the tube 17), a full translational cutting movement of the non-rotatable cutting element in which the distance between the non-rotatable cutting element and the reaction member reaches the cutting distance to cut the tubular structure at the second position (see Figure 15 that shows the non-rotatable cutting element makes a cut off the tube).
Please note that as claim 1 is written, it does not require that the first position differs from the second position along the tubular structure.
Regarding claim 2, Laky shows an adapter device (a top cylindrical member 118, Figure 11) that covers a cutting edge of the non-rotatable cutting element during the partial translational cutting movement (see Figure 11, the top cylindrical member is laterally covered the cutting edge), wherein the cutting edge of the non-rotatable cutting element is relatively sharp (see the edges 113a, 112, 113b in Figure 11), and wherein a leading edge of the adapter device is relatively blunt (see abutment surface 117 of the top cylindrical member 118, Figure 11) with respect to the cutting edge of the non-rotatable cutting element.
Regarding claim 3, Laky shows a second cutting element (a bottom blade 106a, Figure 11) mechanically coupled with the reaction member such that a portion of the second cutting element touches a portion of the non-rotatable cutting element during the full translational cutting movement (Figure 15), and does not touch the portion of the non-rotatable cutting element during the partial translational cutting movement (Figure 14).
Regarding claim 4, Laky shows the portion of the second cutting element corresponds to a cutting edge of the second cutting element that is relatively sharp (see the cutting edge 113d of the bottom blade 106a, Figure 11), wherein the cutting tool further comprises: a second adapter device (see the bottom cylindrical member 118a, Figure 11) that covers the cutting edge of the second cutting element during the partial translational cutting movement (see Figure 11, the bottom cylindrical member is laterally covered the cutting edge), wherein a leading edge of the second adapter device is relatively blunt with respect to the cutting edge of the second cutting element (see the abutment surface 117a, not intend to cut).
Regarding claim 5, Laky shows “the portion of the non-rotational cutting element corresponds to a cutting edge of the non-rotational cutting element that is relatively sharp wherein the cutting tool further comprises: an adapter device that covers the cutting edge of the non-rotatable cutting element during the partial translational cutting movement, wherein the cutting edge of the non-rotatable cutting element is relatively sharp, and wherein a leading edge of the adapter device is relatively blunt with respect to the cutting edge” as discussed in claims 2 and 4 above (please note that the top and bottom blade sets are the same or similar as seen in Figure 11).
Regarding claim 11, Laky shows “an assembly for cutting a tubular structure at a drill floor of a drilling rig using a translational cutting movement, the assembly comprising:
a tool body comprising an enclosure configured to receive the tubular structure;
a non-rotatable cutting element coupled to the tool body on a first side of the enclosure; a reaction member coupled to a second cutting element; and
a linear actuator (a piston carry connecting rod 103, Figure 8) coupled to the non-rotatable cutting element, and configured to carry out a translational movement of the non-rotatable cutting element toward a second side of the enclosure,
wherein the assembly is configured to perform a partial translational cutting movement of the non-rotatable cutting element with the reaction member in a closed position (Figure 14), the partial translational cutting movement causes a distance between the non-rotatable cutting element and the second cutting element to decrease to a first distance to obtain a dented region in the tubular structure at a first position along the tubular structure (Figure 14, see the discussion in claim 1 above), wherein the non-rotatable cutting element does not touch the second cutting element at the first distance (Figures 13-14), and perform a full translational cutting movement of the non-rotatable cutting element with the reaction member in the closed position at a second position along the tubular structure (Figure 15, see the discussion in claim 1 above), the full translational cutting movement causes the distance between the non-rotatable cutting element and the second cutting element to decrease to a second distance that is smaller than the first distance to cut through the tubular structure at the second position along the tubular structure (see Figures 14-15, the shear off distance is smaller than the distance of the dent)”. Also, see claim 1 above for the first and second positions along the tubular structure.
Regarding claim 21, Laky shows that no portion of the second cutting element touches any portion of the non-rotatable cutting element during the partial translational cutting movement (see Figure 14, both blades 106, 106a are not touch to each other).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 6, 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Laky in view of Kim (KR 20130131880 A and Translation).
Regarding claim 6, Laky shows all of the limitations as stated above except that the reaction member is pivotably mounted to the tool body such that in a closed position the reaction member forms a second portion of the enclosure, and in an open position the reaction member allows the tubular structure to be inserted in the enclosure.
Kim shows a device for sealing and cutting a tubular structure (2, Figures 1, 6b), wherein the device comprises a reaction member (240, Figure 6a) is pivotably mounted to a tool body (110, Figure 5) such that in a closed position the reaction member forms a second portion of the enclosure (Figure 1), and in an open position the reaction member allows the tubular structure to be inserted in the enclosure (Figure 5).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the reaction member of Laky to be pivotally mounted on the tool body, as taught by Kim, in order to allow the workpiece to be easily inserted between blades (the non-rotatable cutting element and the reaction member).
Regarding claim 14, the modified assemble of Laky shows that the reaction member is pivotably mounted to the tool body such that in a closed position the reaction member closes the second side of the enclosure, and in an open position the second side of the enclosure is open for allowing receiving of the tubular structure in the enclosure (see the modification in claim 6 above).
Regarding claim 15, the modified assemble of Laky shows that the reaction member is coupled to the tool body via a hinge on a first side of the tool body, and is configured to lock to a second side of the tool body that is opposite the enclosure from the first side using a locking mechanism (see Figure 5 of Kim and see the locking mechanism as a pin 261, holes 115, and a hole in the seat 240).
Regarding claim 16, Laky shows all of the limitation as stated above except that the reaction member is configured to maintain a static position with respect to the tool body during the partial translational cutting movement and during the full translational cutting movement.
Kim also shows a configuration that the reaction member or the seat (240, Figure 6b) is configured to maintain a static position with respect to the tool body during cutting sealing and cutting.
Therefore, it would have been obvious to a person of ordinary skill in the art to try to have the reaction member or the seat configured to maintain a static position with respect to the tool body during cutting sealing and cutting, as taught by Kim. Since there are a finite number of identified, predictable potential options to seal and cut the tubular structure, which provides the exact same results, a person with ordinary skill in the art has good reason to pursue the known potential options for sealing and cutting the tubular structure with a reasonable expectation of success.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Laky in view of Duk (KR 20090025030 A and Translation).
Regarding claim 22 Laky shows all of the limitations as stated above except that the non-rotatable cutting element and the reaction member do not overlap along a direction parallel to a central axis of the tubular structure during any portion of the full translational cutting movement.
Duk shows a cutting device (Figures 3-5) for cutting a hollow object (tube P, Figure 6) comprises a non-rotatable cutting element (70) and a reaction member (fixing member 30 having a cutting tip T, Figure 4) do not overlap along a direction parallel to a central axis of the tubular structure during any portion of the full translational cutting movement (see Figure 3, both cutting edges or tips 70a, 30a are met to each other, not overlapped during cutting).
Therefore, it would have been obvious to a person of ordinary skill in the art to try to have modified the cutting tool of Laky to have a non-rotatable cutting element and a reaction member do not overlap along a direction parallel to a central axis of the tubular structure during any portion of the full translational cutting movement, as taught by Duk, since this is known alternative way for the same purpose for cutting and there are a finite number of identified, predictable potential options to seal and cut the tubular structure, which provides the exact same results, a person with ordinary skill in the art has good reason to pursue the known potential options for sealing and cutting the tubular structure with a reasonable expectation of success.
Allowable Subject Matter
Claims 17-20 are allowed (see the parent application No. 17/442267 for reasoning to be allowance. Examiner notes that the languages of claim 17 of this pending Application may be different, but the scope of the claim or claim invention is the same).
Claims 7, 9-10, 12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is reasons for indicating allowable subject matter: claim 7 is free of the prior art because the prior art does not teach or suggest unique structures of an adapter having a blunt cutting edge and a receiving portion comprising a first receiving site, a second receiving site, and a third receiving site disposed between the first receiving site and the second receiving site, wherein the receiving portion is configured to cover a cutting edge of the non-rotatable cutting element such that the cutting edge of the non-rotatable cutting element contacts the third receiving site of the adapter, an upper surface of the of the non-rotatable cutting element contacts the first receiving site of the adapter, and a lower surface of the of the non-rotatable cutting element contacts the second receiving site of the adapter, and the blunt cutting edge of the adapter faces the tubular structure when the adapter is covering the cutting edge of the non-rotatable cutting element (for allowing switching between the sharp cutting edge and the blunter cutting edge, as discussed in Applicant’s specification), as set forth in claim 7 (claims 8-9 are considered to contain allowable subject matter since they depend on claim 7).
Claim 10 is free of the prior art because the prior art does not teach or suggest unique structures of a second cutting element mechanically coupled to the reaction member such that a portion of the second cutting element touches a portion of the non-rotatable cutting element during the full translational cutting movement, and does not touch the portion of the non-rotatable cutting element during the partial translational cutting movement; and a second adapter having a second blunt cutting edge and a second receiving portion comprising a first receiving site, a second receiving site, and a third receiving site disposed between the first receiving site and the second receiving site, wherein the second receiving portion is configured to cover a cutting edge of the second cutting element such that the cutting edge of the second cutting element contacts the third receiving site of the second adapter, an upper surface of the of the second cutting element contacts the first receiving site of the second adapter, and a lower surface of the of the second cutting element contacts the second receiving site of the second adapter, and the second blunt cutting edge faces the tubular structure when the second adapter is covering the cutting edge of the second cutting element, as set forth in claim 10.
Claim 12 is free of the prior art because the prior art does not teach or suggest unique structures of a first adapter configured to cover a cutting edge of the non-rotatable cutting element during the partial translational cutting movement, the first adapter having a leading edge and a receiving portion configured to receive the non-rotatable cutting element, wherein a cutting edge of the non-rotatable cutting element has a first surface area and the leading edge of the first adapter has a second surface area that is greater than the first surface area such that the leading edge of the first adapter is blunt relative to the cutting edge of the non-rotatable cutting element; and a second adapter configured to cover a cutting edge of the second cutting element during the partial translational cutting movement, the second adapter having a leading edge and a receiving portion configured to receive the second cutting element, wherein a cutting edge of the second cutting element has a third surface area and the leading edge of the second adapter has a fourth surface area that is greater than the third surface area such that the leading edge of the second adapter is blunt relative to the cutting edge of the second cutting element, as set forth in claim 12.
Response to Arguments
Applicant's arguments filed 07/14/2026 have been fully considered but they are not persuasive for the reasons below.
The double patenting rejections remain the same because the claims of US No. 12121985 shows all of the limitations as stated in claim 17 (see claim 1 and claim 6, lines 2-3 of the US No. 12121985 states “…an enclosure…” .
With regards to “Laky does not disclose a cutting tool configured to perform a partial translational cutting movement and a full translational cutting movement at different positions along the tubular structure” (emphasis added), Examiner agreed this argument, however, this limitation or argument is not in the claim.
With regards to “…overlapped”, see the new rejection by a new art above.
With regards to “…Laky does not disclose a cutting tool for cutting a tubular structure at a drill floor of a drilling rig” in page 6 of the remarks, Examiner disagrees the argument because as at least claim 1 is written, it is directly to a cutting tool (a structural claim), the tubular structure at a drill floor of a drilling rig is intended use and considered (see MPEP 2111.02 and 2111.02 (II) and it is given weight inasmuch as it infers structure in the device. Also see MPEP 2112.01, under the heading "Product and Apparatus Claims - When the Structure Recited in the Reference is Substantially Identical to that of the Claims, Claimed Properties or Functions are Presumed to be Inherent".
What structures of the cutting tool that Applicant is seeking protection? Are structures of Laky’s cutting tool being the same of structures of Applicant’s cutting device? If they are not, provide the difference in the claims.
Please note that there is nothing new that a cutting device can be used to cut and/or dent any desired locations of a workpiece. See Krivec (US 5245755) can be read on the claimed invention because Krivec’s cutting device is a manual operation and can be cut, crimped (dent)…etc., (see the abstract).
If Applicant still believes that the claimed invention’s apparatus/method different from the prior art’s apparatus/method or needs to discuss the rejections above or suggestion amendments that can be overcome the current rejections, Applicant should feel free to call the Examiner to schedule an interview.
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 NHAT CHIEU Q DO whose telephone number is (571)270-1522. The examiner can normally be reached 8AM-5PM EST.
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/NHAT CHIEU Q DO/ Primary Examiner, Art Unit 3724 9/10/2026
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