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 § 102
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) 17-19 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Schulte 5655603 .
Referring to claim 17, Schulte (see fig. 8) discloses a metal seal element for providing a dynamic metal-to-metal (MtM) seal between an annulus and an annulus access port in a tubing hanger, the metal seal element (63) comprising a base metal material, a silver coating on top of the base metal material, and a Molybdenum disulphide coating on top of the silver coating (see col. 12, lines 46-68).
Referring to claim 18, Schulte discloses the metal seal element (60) defines an extending seal leg for providing sealing contact with a metal component.
Referring to claim 19, Schulte discloses the metal seal element (63) and a metal component (50), wherein the metal seal element is in sealing contact with the metal component and is moveable there along.
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) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schulte 5655603 in view of White 4468309 .
Referring to claim 20, Schulte disclose metal component (30) includes a copper coating ( see col. 12, lines 46-50) thereon that is in contact with the Molybdenum disulphide coating of the metal seal element when sealing contact is made there between. Schulte does not disclose the coating is Molybdenum disulphide. White teaches that Molybdenum disulphide is a coating that can be used between metal to metal surfaces (see col. 2, lines 58-col. 3, line 10). Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date to modify the seal disclosed by Schulte to have the metal component have Molybdenum disulphide coating in view of the teachings of White with a reasonable expectation of success as this is a mere substitution of one type of coating for another type of coating.
Allowable Subject Matter
Claims 1,3-11, 13-16 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art to Kent 20060076130 does not teach or suggest a tubing hanger having an annulus isolation device (AID) disposed within the annulus communication cavity wherein the AID further comprises one or more metal seal elements that form a dynamic metal-to-metal (MtM) seal with the metal sleeve; and wherein the metal seal element makes sealing contact with the metal sleeve when the AID is in the closed position and is taken out of sealing contact with the metal sleeve when the AID is moved to the open position in combination with the other limitations of the claim.
Response to Arguments
Applicant's arguments filed 1-2-26 have been fully considered but they are not persuasive. The applicant argues Schulte 5655603 does not disclose metal-to-metal seal between an annulus and an annulus access port in a tubing hanger. The applicant arguments are more limiting than the claims. Applicant’s arguments rely on language solely recited in preamble recitations in claim(s) “for providing a dynamic metal-to-metal (MtM) seal between an annulus and an annulus access port in a tubing hanger”. When reading the preamble in the context of the entire claim, the recitation “for providing a dynamic metal-to-metal (MtM) seal between an annulus and an annulus access port in a tubing hanger” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Moreover, the limitation of “for providing a dynamic metal-to-metal (MtM) seal between an annulus and an annulus access port in a tubing hanger” is related to the intended use of the metal seal element. MPEP 2111.02 II states “ statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963) … To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). In this instance the intended use of for providing a dynamic metal-to-metal (MtM) seal between an annulus and an annulus access port in a tubing hanger does not result in a structural difference between the claimed invention and the metal seal element disclosed by Schulte and the metal seal element disclosed by Schulte is capable of providing a dynamic metal-to-metal (MtM) seal between an annulus and an annulus access port in a tubing hanger. Therefore, as broadly claimed, Schulte disclosed the claimed invention.
Conclusion
THIS ACTION IS MADE FINAL. 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 GIOVANNA WRIGHT whose telephone number is (571)272-7027. The examiner can normally be reached M-F 8 am- 5 pm.
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/Giovanna Wright/Primary Examiner, Art Unit 3672
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