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, filed August 25, 2025, have been fully considered.
With regard to the prior art, applicant has argued that claims 6 and 16 are allowable because they have been re-written in independent form (claims 6 and 16 were indicated as containing allowable subject matter in the previous Office Action). However, upon further consideration, examiner has determined that claims 6 and 16 can be rejected under a new interpretation of the Vander Velde reference (see new rejection set forth below). Therefore, this Office Action has not been made Final.
With regard to claim 1, applicant has argued that “the first sleeve, as identified by the Examiner on page 11 of the current Office Action, does not have an outer surface confronting the first ball (also identified by the Examiner) to retain the first ball within the annular channel. Nor is a bore of the identified first sleeve brought into fluidly coupled relation with the annular channel by a plurality of ducts extending radially outwardly from the bore through the outer surface” (Remarks, Page 11). Examiner agrees with applicant’s point, under the previous interpretation of Vander Velde, where element 62 in Fig. 15 is considered the first sleeve. However, under a new interpretation, element 72 can be considered the first sleeve. Element 72 does confront the ball with its outer surface, and also has unlabeled radial bores that fluidly connect to the annular channel. See full rejection set forth below.
With regard to the drawings, applicant has argued that the amended drawings filed August 25, 2025 overcome all of the previous objections. Examiner agrees, and has withdrawn the objections. See explanation below in the “Drawings” section.
With regard to the Specification, applicant has argued that the amended Abstract overcomes the previous objection. Examiner agrees, and has withdrawn the objection.
With regard to the objections to claims 6 and 15, applicant has argued that the claim amendments have overcome the objections. Examiner agrees, and has withdrawn the previous objections.
With regard to the Double Patenting rejections set forth in the previous Office Action, applicant has argued that the Terminal Disclaimers filed on August 25, 2025 overcome the rejections. Examiner respectfully disagrees, as the Terminal Disclaimers are not proper for the reasons discussed below. Thus, the Double Patenting rejections are repeated in this Office Action. Applicant has also argued that a Terminal Disclaimer is no longer needed in connection with US Patent No. 11,255,159. Examiner agrees, and has withdrawn the double patenting rejection related to the ‘159 patent.
Terminal Disclaimer
The terminal disclaimer does not comply with 37 CFR 1.321 because:
The terminal disclaimers filed on August 25, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent Nos. 10,465,480; 11,686,178; and 12,104,464 have been reviewed and are NOT accepted.
This application was filed on or after September 16, 2012. The person who signed the terminal disclaimer is not the applicant, the patentee or an attorney or agent of record. See 37 CFR 1.321(a) and (b).
Drawings
The drawings were received on August 25, 2025. These drawings are acceptable.
Examiner notes that the line quality of the drawings did not improve with the latest submission. However, the file wrapper now contains the originally-submitted file without degraded line quality (available in the USPTO Patent Center, with document code DRW.SUPP and date of 8/25/2025). Thus, the drawing objection has been withdrawn.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – 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 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.
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:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
The term “means for retaining the first ball within the annular channel” is being interpreted under 35 U.S.C. 112(f). The “means for retaining” is interpreted as a cylindrical sleeve (see sleeve 322 in the drawings) or equivalents thereof.
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 6 and 16 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.
Claim 6 recites “the first sleeve having a bore in fluidly coupled relation with the annular channel,” and also, “a pin disposed in the through bore and in the bore.” This limitation is confusing. Fig. 4 of the instant application shows pin 334 disposed in a bore 346, which is not the same as the bore that is fluidly coupled with the annular channel (i.e. the central bore of the sleeve). Appropriate clarification and correction is required.
Claim 16 lacks antecedent basis for “the first sleeve” in line 14. Also, as discussed above, the term “means for retaining” is being interpreted under the framework of 35 U.S.C. 112(f) as referring to a sleeve or equivalent thereof. Thus, the claim essentially recites a sleeve twice, for the “means for retaining” and for “the first sleeve.” It is unclear whether these two elements are different elements or the same element. Claim 16 is being examined as if the “means for retaining” and “the first sleeve” are the same element.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1 and 4-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 7, 9, 10, 11, 13, 14, 15, of U.S. Patent No. 10,465,480. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the instant application are broader than the patented claims, and thus are fully encompassed by the patented claims and obviously directed to the same invention.
Claims 1 and 4-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 7, 9-11, 13, and 14 of U.S. Patent No. 11,686,178. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the instant application are broader than the patented claims, and thus are fully encompassed by the patented claims and obviously directed to the same invention.
Claims 1, 6, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 7, and 16 of U.S. Patent No. 12,104,464. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the instant application are broader than the patented claims, and thus are fully encompassed by the patented claims and obviously directed to the same invention. Claims 1 and 6 of the instant application recite essentially the same language as patented claims 2 and 7. Also, instant claim 16 is essentially the same as patented claim 16, except that patented claim 16 does not use the term “means for retaining.” However, the “means for retaining” is simply a broader way of reciting the “sleeve” that is claimed in patented claim 16.
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) 1, 4, 5, 7, and 12-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vander Velde (US 2018/0169674).
With regard to claim 1, Vander Velde discloses a cleanout tool (especially Fig. 15) comprising:
a first tool body (70, see annotated Fig. provided below) comprising an outside surface and an inside surface extending along a central longitudinal axis from a first end to a second end opposite the first end (ends visible in Fig. below), an annular channel (see Fig. below) extending radially outwardly from the inside surface (see Fig. below), and a plurality of ports (i.e. “downward jetting slots” in Fig. below) extending from the annular channel through the outside surface;
a first ball (see Fig. below) disposed in and configured to move within the annular channel around the central longitudinal axis, under a force of fluid pumped into the cleanout tool, to cause fluid streams exiting the plurality of ports to pulsate (“the exemplary wash nozzle assemblies house in their tip components, one or more unrestrained flow interrupters which continuously cause intermittent asymmetrical blockages of fluid flow in areas of the nozzle assembly thereby producing an egressing fluid flow that is irregularly pulsatile and intermittent,” Paragraph 0030); and
a first sleeve (72, see Fig. below) disposed within the first tool body, the first sleeve having an outer surface and an inner surface defining a bore (see bore at lower end of tool), the outer surface confronting the first ball to retain the first ball within the annular channel (Fig. 15 shows the ball being captured between the sleeve and the first tool body), the bore brought into fluidly coupled relation with the annular channel by a plurality of ducts (see Fig. below) extending radially outwardly from the bore through the outer surface.
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With regard to claim 4, Vander Velde teaches that, other than the plurality of ducts, the first sleeve occludes the annular channel (see Fig. above).
With regard to claim 5, the first sleeve is locked against rotation relative to the first tool body (Paragraph 0044, “the valve stem 72 is sealingly secured in place within the wash nozzle assembly 60 with hex plug 76, O-rings 78, 79, and lock nut 74.” Also, Paragraph 0035 states that “the distal end (furthest from the surface) of the nozzle body component 1 has a threaded connection for demountably engaging the wash nozzle tip component 5,” and the threaded connections are illustrated in the same way throughout the Figures. The distal end of the nozzle in Fig. 15 is illustrated with the same type of connection as the proximal ends in other figures. See annotated Fig. above).
With regard to claim 7, Vander Velde teaches that each port (the “downward jetting slots”) defines a flow channel axis, each flow channel axis is inclined relative to the central longitudinal axis (see Fig. 15).
With regard to claim 12, Vander Velde discloses a bull nose (74) coupled directly to the first tool body.
With regard to claim 13, Vander Velde teaches that the first ball is constrained against movement axially relative to the central longitudinal axis by the annular channel (as seen in Fig. 15, the lower surface of the annular channel restrains the first ball in the downhole direction, and the upper surface of the annular channel restrains the ball in the uphole direction).
With regard to claim 14, Vander Velde teaches that the first ball blocks the flow of the fluid through each of the plurality of ports sequentially, thereby causing the pulsating fluid streams exiting the plurality of ports to apply a rotational force to the cleanout tool (Paragraph 0043, “irrigation fluid or cleaning fluid such as pressurized water, acid or nitrogen is pumped through the coiled tubing and enters the wash nozzle through the nozzle body component 1. The fluid is spun in a counter clockwise rotation as to prevent the wash nozzle tip component 5 from unthreading from the nozzle body component 1. As the flow interrupter components are spun inside the wash nozzle tip component 5 and momentarily block the flow from exiting the wash nozzle tip component 5. The result is a pulsated jet stream with random frequencies which will also aid in the cleaning operation”).
With regard to claim 15, Vander Velde teaches a first joiner (62) coupled to the tool body, the first joiner having a through bore (unlabeled, but clearly visible in Fig. 15) extending along a central axis coaxial with the central longitudinal axis (see Fig. 15), wherein the first sleeve is disposed within the through bore of the first joiner (see annotated Fig. above).
With regard to claim 16, Vander Velde discloses a cleanout tool (Fig. 15) comprising:
a first tool body (70, see annotated Fig. above) comprising an outside surface and an inside surface extending along a central longitudinal axis from a first end to a second end opposite the first end, an annular channel (see annotated Fig. above) disposed on the inside surface, and a plurality of ports (“downward jetting slots,” Fig. 15) extending from the annular channel through the outside surface;
a first ball (see Fig. above) disposed in and configured to move within the annular channel around the central longitudinal axis, under a force of fluid pumped into the cleanout tool, to cause fluid streams exiting the plurality of ports to pulsate (“the exemplary wash nozzle assemblies house in their tip components, one or more unrestrained flow interrupters which continuously cause intermittent asymmetrical blockages of fluid flow in areas of the nozzle assembly thereby producing an egressing fluid flow that is irregularly pulsatile and intermittent,” Paragraph 0030);
a means (72) for retaining the first ball within the annular channel (Fig. 15 shows the ball captured between 72 and 70);
wherein the first ball blocks the flow of the fluid through each of the plurality of ports sequentially, thereby causing the pulsating fluid streams exiting the plurality of ports to apply a rotational force to the cleanout tool (Paragraph 0043, “irrigation fluid or cleaning fluid such as pressurized water, acid or nitrogen is pumped through the coiled tubing and enters the wash nozzle through the nozzle body component 1. The fluid is spun in a counter clockwise rotation as to prevent the wash nozzle tip component 5 from unthreading from the nozzle body component 1. As the flow interrupter components are spun inside the wash nozzle tip component 5 and momentarily block the flow from exiting the wash nozzle tip component 5. The result is a pulsated jet stream with random frequencies which will also aid in the cleaning operation”);
a first joiner (62, see annotated Fig. above) coupled to the tool body, the first joiner having a through bore extending along a central axis coaxial with the central longitudinal axis (bore is unlabeled, see Fig. 15), wherein the first sleeve is disposed within the through bore of the first joiner (Fig. 15 shows the sleeve 72 being within the bore of joiner 62); and
wherein the first joiner has external pipe threads coupled to internal pipe threads of the first tool body (Fig. 15 shows the threaded connection between the joiner and the tool body—see annotated Fig. above, and also Paragraph 0035: “the distal end (furthest from the surface) of the nozzle body component 1 has a threaded connection for demountably engaging the wash nozzle tip component 5”), wherein the rotational force applied to the cleanout tool by the pulsating fluid streams exiting the plurality of ports causes the external pipe threads and the internal pipe threads to tighten relative to one another (Paragraph 0043, “irrigation fluid or cleaning fluid such as pressurized water, acid or nitrogen is pumped through the coiled tubing and enters the wash nozzle through the nozzle body component 1. The fluid is spun in a counter clockwise rotation as to prevent the wash nozzle tip component 5 from unthreading from the nozzle body component 1. As the flow interrupter components are spun inside the wash nozzle tip component 5 and momentarily block the flow from exiting the wash nozzle tip component 5. The result is a pulsated jet stream with random frequencies which will also aid in the cleaning operation”).
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.
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.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vander Velde in view of Purohit et al. (US 2020/0141206, hereinafter Purohit).
With regard to claim 6, Vander Velde discloses a cleanout tool (Fig. 15) comprising:
a first tool body (70, see annotated Fig. below) comprising an outside surface and an inside surface extending along a central longitudinal axis from a first end to a second end opposite the first end (ends of the tool body are visible in Fig. 15), an annular channel (see Fig. below) disposed on the inside surface, and a plurality of ports (“downward jetting slots”) extending from the annular channel through the outside surface (see Fig. below);
a first ball (see Fig. below) disposed in and configured to move within the annular channel around the central longitudinal axis, under a force of fluid pumped into the cleanout tool, to cause fluid streams exiting the plurality of ports to pulsate (“the exemplary wash nozzle assemblies house in their tip components, one or more unrestrained flow interrupters which continuously cause intermittent asymmetrical blockages of fluid flow in areas of the nozzle assembly thereby producing an egressing fluid flow that is irregularly pulsatile and intermittent,” Paragraph 0030);
a first sleeve (72, see annotated Fig. below) disposed within the first tool body for retaining the first ball within the annular channel (Fig. 15 shows the sleeve 72 being within the first tool body 70, and the ball being retained between the sleeve 72 and the tool body 70), the first sleeve having a bore in fluidly coupled relation with the annular channel (Fig. 15 shows the bore in the lower end of the sleeve 72);
wherein the first sleeve is locked against rotation relative to the first tool body (Paragraph 0044, “the valve stem 72 is sealingly secured in place within the wash nozzle assembly 60 with hex plug 76, O-rings 78, 79, and lock nut 74.” Also, Paragraph 0035 states that “the distal end (furthest from the surface) of the nozzle body component 1 has a threaded connection for demountably engaging the wash nozzle tip component 5,” and the threaded connections are illustrated in the same way throughout the Figures. The distal end of the nozzle in Fig. 15 is illustrated with the same type of connection as the proximal ends in other figures. See annotated Fig. below); and
wherein the first tool body (70) has a through bore (unlabeled) and further including
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Vander Velde fails to disclose a pin in the through bore of the first tool body and in a bore of the sleeve to prevent relative rotation of the two elements.
Purohit discloses a downhole device in which a tool body (104) and a sleeve (102) are threaded together and rotationally locked by a pin (172). The pin is disposed in the through bore of the tool body (104) and within a bore (174) of the sleeve (102).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Vander Velde to have the pin of Purohit between the tool body and sleeve, “to help prevent the…members...from unthreading from each other” (Purohit, paragraph 0034).
Claim(s) 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vander Velde.
With regard to claims 8-11, Vander Velde fails to disclose a second cleanout tool coupled to the first tool body (note that claims 8-11 essentially repeat the same structural elements already recited in the previous claims, and thus claims 8-11 amount to connecting two identical cleanout tools together).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Vander Velde by connecting a second cleanout tool to the cleanout tool of Fig. 15, in order to enlarge the amount of surface area that the tool can clean without having to relocate the tool.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT E FULLER whose telephone number is (571)272-6300. The examiner can normally be reached M-F 8:30AM - 5:30PM.
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/ROBERT E FULLER/ Primary Examiner, Art Unit 3676