DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/21/2026 has been entered.
This action is in response to the amendment date 9/21/2026 that has been entered with the submission of the request for continued examination dated 9/21/2026. No claims are currently amended. Claims 8-12 have been canceled. No claims are newly added. Presently, claims 1-7 and 13-19 are pending.
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 9/21/2026 have been fully considered but they are not persuasive.
Applicant argues the rejection of claims 1-7 and 13-19 under 35 U.S.C. 103 as being unpatentable over Dighton (US 4,580,599) in view of Beasley (US 5,269,347) on pages 5-6 of the response dated 9/21/2026.
Applicant argues that the Dighton reference does not disclose or suggest “the housing of the first valve is structurally separate from the housing of the second valve, such that a distance between the throughbore of the first valve and the throughbore of the second valve may be adjusted”.
Applicant argues that both valves (15, 18) are fixedly mounted on the walls of the valve frame (11, 12, 13, 14) and that to adjust the distance between the first and second valves, the system disclosed in Dighton would need to be disassembled, redesigned and reconstructed.
However, it is considered that the housing (made up of the walls 11, 12, 13, 14) would need to be replaced in order to fill the gap between the first valve (15) and the second valve (18) when the first valve and the second valve are spaced either further apart or closer together. It is considered that one of routine skill in the art would understand that the size of the side walls of the housing would need to be adjusted based on the spacing between the first valve (15) and the second valve (18) or that the housing would need to be replaced with a housing that would fit within the desired spacing between the housing of the first valve and the housing of the second valve.
Further, it is considered that the housing of the first valve (15) and the housing of the second valve (18) are structurally separate in as much as the first valve (15) is located on one side of the valve frame (made up of the walls 11, 12, 13, 14) and the second valve (18) is located on an opposite side of the valve frame (see figure 1) and the housing of the first valve (15) is not the same as the housing of the second valve (18). Additionally, it is considered that the housing of the first valve and the housing of the second valve
Therefore, it is considered that the threaded connection between each of the valve stem (33) of the first valve (15) and the valve stem (34) of the second valve (18) and the coupling (31) provides a manner in which to be able to adjust the spacing between the housing of the first valve (15) and the housing of the second valve (18).
Applicant argues that the Dighton reference does not state that the asserted coupling (31) or valve stems (33, 34) are threaded.
When the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979). See MPEP 2125.
Here, the drawings clearly show the threads of the valve stems (33, 34) and the coupling (31) (see figure 1 and figure 3).
The Dighton reference discloses wherein the end of the shaft (27) includes a threaded part (27a). As depicted in figure 1, the threaded part (27a; see col. 3, lines 20-23) of the end of the shaft (27) depicts the threads (see the “threaded shaft end” in the annotated figure 1 below). The Dighton reference also depicts the same symbols used for the threaded shaft end of the shaft (27) as the connections between the valve stems (33, 34) and the coupling (31) (see “threads” in the annotated figure 1 below). Further, the Dighton reference depicts the connection between the valve stems (33, 34) and the coupling (31) as being threads (see “threads” of the coupling 31 in the annotated figure 3 below). Therefore, it is considered that the Dighton reference does disclose that the coupling (31) and the valve stems (33, 34) are threaded.
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Since the grounds of rejection are in response to the amendment filed with the request for continued examination, the instant Office action is made non-final.
Drawings
The drawings were received on 9/18/2024. These drawings are acceptable.
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 non-obviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dighton (US 4580599) in view of Beasley (US 5269347).
Regarding claim 1, the Dighton reference discloses a coupled valve assembly comprising:
an actuator (handle 30);
a first valve (15) comprising:
a housing (it is considered that the casing of the first valve 15 constitutes a housing)
a throughbore (it is considered that the passage through the first valve 15 that leads from the pressure relief valve 17 to the discharge line 37 constitutes a throughbore);
a flow barrier (it is considered that the rotatable valve member in the valve 15 constitutes a flow barrier) configured to selectively obstruct the flow of fluid through the throughbore; and
a lower valve stem (33);
a second valve (18) comprising:
a housing (it is considered that the casing of the second valve 18 constitutes a housing);
a throughbore (it is considered that the passage through the second valve 18 that leads from the pressure relief valve 20 to the discharge line 38 constitutes a throughbore);
an upper valve stem (34); and
a flow barrier (it is considered that the rotatable valve member in the valve 18 constitutes a flow barrier) configured to selectively obstruct the flow of fluid through the throughbore; and
a coupling (31) external to both the housing of the first valve and the housing of the second valve (see figure 1), and comprising:
an upper end (it is considered that the portion of the coupling 31 that is secured to the lower valve stem 33 constitutes an upper end of the coupling 31) operatively connected to the lower valve stem of the first valve (see figure 1); and
a lower end (it is considered that the portion of the coupling 31 that is secured to the upper valve stem 34 constitutes an lower end of the coupling 31) operatively connected to the upper valve stem of the second valve (see figure 1);
wherein the assembly is configured such that, in a first position (considered the position in which a fluid flow is able to flow through the second valve while the first valve blocks the fluid flow), the throughbore of the first valve is substantially obstructed and the throughbore of the second valve is substantially unobstructed and, in a second position (considered the position in which a fluid flow is able to flow through the first valve while the second valve blocks the fluid flow), the throughbore of the first valve is substantially unobstructed and the throughbore of the second valve is substantially obstructed (see at least col. 3, line 58 to col. 4, line 23); and
the housing of the first valve (15) is structurally separate from the housing of the second valve (18)(see figure 1), such that a distance between the throughbore of the first valve and the throughbore of the second valve is adjustable (it is considered that threading on the coupling and the threading on the upper stem and the lower stem (see figures 1 and figure 3) would permit the spacing between the first valve and the second valve to be changed so that the distance between the throughbore of the first valve and the throughbore of the second valve would be able to be adjusted).
The Dighton reference does not disclose the first valve having “an upper valve stem operatively connected to the actuator”.
However, the Beasley reference teaches a coupled valve assembly comprising:
an actuator (40 which can include a manual actuator of a hand wheel 41);
a first valve comprising:
a throughbore (24);
an upper valve stem (34) operatively connected to the actuator;
a flow barrier (ball 30) configured to selectively obstruct the flow of fluid through the throughbore; and
a lower valve stem (36b);
a first coupling (36) comprising an upper end (considered the end of the stem 36 proximate the end 36b) and a lower end (considered the end of the stem 36 proximate the end 36a), wherein the upper end is operatively connected to the lower valve stem of the first valve (it is considered that the upper end is operatively connected to the lower stem 36b of the first valve by being integrally formed); and
a second valve comprising:
a throughbore (22);
an upper valve stem (36a) operatively connected to the lower end of the first coupling (it is considered that the lower end of the first coupled is operatively connected to the lower stem 36b of the second valve by being integrally formed); and
a flow barrier (28) configured to selectively obstruct the flow of fluid through the throughbore;
wherein the assembly is configured such that, in a first position (considered the position depicted in figure 1), the throughbore of the first valve is substantially obstructed and the throughbore of the second valve is substantially unobstructed and, in a second position (considered the position in which the first valve and the second valve are each rotated 90 degrees), the throughbore of the first valve is substantially unobstructed and the throughbore of the second valve is substantially obstructed;
wherein the upper valve stem of the first valve permits the connection of the upper valve stem of the first valve to an actuator including a manual operator (hand wheel 41), or a suitable pneumatic, electrical or hydraulic power motor (see at least col. 10, line 50 to col. 11, line 6).
The substitution of one known element (the first valve having an upper valve stem operatively connected to an actuator of either a manual operator, a pneumatic operator, an electrical operator or a hydraulic operator as shown in Beasley) for another (the handle 30 that is directly connected to the coupler 31 as shown in Dighton) would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art since the substitution of the first valve having an upper valve stem operatively connected to an actuator of desired choosing such as manual, pneumatic, electrical or hydraulic shown in Beasley would have yielded predictable results, namely, improved flexibility in the operation and control of the coupled valve assembly of the Dighton reference.
In regards to claim 2, the Dighton reference of the combination of the Dighton reference and the Beasley reference does not disclose wherein the flow barrier of the first valve comprises a ball.
However, the Beasley reference teaches a coupled valve assembly having a first valve and a second valve wherein a first valve (30) is a ball valve (see at least figure 1; see also col. 4, lines 1-20) in order to provide a metal-to-metal fluid seal in the desired outlet.
Further, it is noted that the instant application discloses that the flow barrier is not limited to any particular type of flow barrier such as ball valves, plug valve or butterfly valves (see the disclosure of the instant application in paragraph [0022]).
The substitution of one known element (the flow barrier of the first valve being a ball valve as shown in Beasley) for another (the flow barrier being a disc as shown in Dighton) would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art since the substitution of the flow barrier of the first valve being a ball valve shown in Beasley would have yielded predictable results, namely, a metal-to-metal fluid seal at the first valve with the sealing contact pressure responsive to differential pressures across the closed ball of the Dighton reference.
In regards to claim 3, the Dighton reference of the combination of the Dighton reference and the Beasley reference does not disclose wherein the flow barrier of the second valve comprises a ball.
However, the Beasley reference teaches a coupled valve assembly having a first valve and a second valve wherein a second valve (28) is a ball valve (see at least figure 1; see also col. 4, lines 1-20) in order to provide a metal-to-metal fluid seal in the desired outlet.
Further, it is noted that the instant application discloses that the flow barrier is not limited to any particular type of flow barrier such as ball valves, plug valve or butterfly valves (see the disclosure of the instant application in paragraph [0022]).
The substitution of one known element (the flow barrier of the second valve being a ball valve as shown in Beasley) for another (the flow barrier being a disc as shown in Dighton) would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art since the substitution of the flow barrier of the second valve being a ball valve shown in Beasley would have yielded predictable results, namely, a metal-to-metal fluid seal at the second valve with the sealing contact pressure responsive to differential pressures across the closed ball of the Dighton reference.
In regards to claims 4-7, the combination of the Dighton reference and the Beasley reference discloses wherein the actuator comprises either a manual actuator (Beasley: hand wheel 41), an electric actuator, a hydraulic actuator or a pneumatic actuator (Beasley: see at least col. 10, line 50 to col. 11, line 6).
Claim(s) 13 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Waid et al. (US 5680899) in view of Dighton (US 4580599).
Regarding claim 13, the Waid et al. reference discloses the structure wherein one of ordinary skill in the art would perform the method of making and/or using a system by:
operating a first valve (see “first valve” in the annotated figure 3 below), allowing fluid to flow from a wellhead (well #2), through the first valve, and into a test header (see figure 3); and
operating the first valve to close the flow path, operating a second valve (see “second valve” in the annotated figure 3 below) to open the second valve, allowing fluid to flow from the wellhead (well #2), through the second valve, and into a production header (see at least col. 3, line 65 to col. 4, line 7).
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The Waid et al. reference does not disclose wherein actuating the actuator to close the first valve comprising a housing and a lower valve stem and to open the second valve comprising a housing and an upper valve stem;
wherein actuating the actuator to close the first valve and open the second valve is performed via a coupling external to both the housing of the first valve and the housing of the second valve, and comprising:
an upper end operatively connected to the lower valve stem of the first valve; and
a lower end operatively connected to the upper valve stem of the second valve; and
the housing of the first valve is structurally separate from the housing of the second valve, such that a distance between the throughbore of the first valve and the throughbore of the second valve is adjustable.
However, the Dighton reference discloses a coupled valve assembly comprising:
an actuator (handle 30);
a first valve (15) comprising:
a housing (it is considered that the casing of the first valve 15 constitutes a housing)
a throughbore (it is considered that the passage through the first valve 15 that leads from the pressure relief valve 17 to the discharge line 37 constitutes a throughbore);
a flow barrier (it is considered that the rotatable valve member in the valve 15 constitutes a flow barrier) configured to selectively obstruct the flow of fluid through the throughbore; and
a lower valve stem (33);
a second valve (18) comprising:
a housing (it is considered that the casing of the second valve 18 constitutes a housing);
a throughbore (it is considered that the passage through the second valve 18 that leads from the pressure relief valve 20 to the discharge line 38 constitutes a throughbore);
an upper valve stem (34); and
a flow barrier (it is considered that the rotatable valve member in the valve 18 constitutes a flow barrier) configured to selectively obstruct the flow of fluid through the throughbore; and
a coupling (31) external to both the housing of the first valve and the housing of the second valve (see figure 1), and comprising:
an upper end (it is considered that the portion of the coupling 31 that is secured to the lower valve stem 33 constitutes an upper end of the coupling 31) operatively connected to the lower valve stem of the first valve (see figure 1); and
a lower end (it is considered that the portion of the coupling 31 that is secured to the upper valve stem 34 constitutes an lower end of the coupling 31) operatively connected to the upper valve stem of the second valve (see figure 1);
wherein the assembly is configured such that, in a first position (considered the position in which a fluid flow is able to flow through the second valve while the first valve blocks the fluid flow), the throughbore of the first valve is substantially obstructed and the throughbore of the second valve is substantially unobstructed and, in a second position (considered the position in which a fluid flow is able to flow through the first valve while the second valve blocks the fluid flow), the throughbore of the first valve is substantially unobstructed and the throughbore of the second valve is substantially obstructed (see at least col. 3, line 58 to col. 4, line 23); and
the housing of the first valve is structurally separate from the housing of the second valve (see figure 1), such that a distance between the throughbore of the first valve and the throughbore of the second valve is adjustable (it is considered that threading on the coupling and the threading on the upper stem and the lower stem (see figure 1 and figure 3) would permit the spacing between the first valve and the second valve to be changed so that the distance between the throughbore of the first valve and the throughbore of the second valve would be able to be adjusted).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to design and operate the first valve and the second valve of the Waid et al. reference with the first valve having a housing and a lower valve stem and the second valve having a housing and an upper valve stem and wherein actuating an actuator on a coupling external to both the housing of the first valve and the housing of the second valve actuates the first valve and the second valve and wherein the housing of the first valve is structurally separate from the housing of the second valve, such that a distance between the throughbore of the first valve and the throughbore of the second valve is adjustable as taught by the Dighton reference so that operating the first valve to close the first valve would automatically open the second valve in order to ensure continuous fluid flow.
In regards to claim 16, the Dighton reference of the combination of the Waid et al. reference and the Dighton reference discloses wherein the actuator comprises a manual actuator (Dighton: handle 30).
Claim(s) 14, 15 and 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Waid et al. (US 5680899) in view of Dighton (US 4580599) as applied to claim 13 above, and further in view of Beasley (US 5269347).
In regards to claim 14, the combination of the Waid et al. reference and the Dighton reference does not disclose wherein the first valve comprises a ball.
However, the Beasley reference teaches a coupled valve assembly having a first valve and a second valve wherein a first valve (30) is a ball valve (see at least figure 1; see also col. 4, lines 1-20) in order to provide a metal-to-metal fluid seal in the desired outlet.
Further, it is noted that the instant application discloses that the flow barrier is not limited to any particular type of flow barrier such as ball valves, plug valve or butterfly valves (see the disclosure of the instant application in paragraph [0022]).
The substitution of one known element (the first valve comprises a ball valve as shown in Beasley) for another (the first valve shown in the combination of Waid et al. and Dighton) would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art since the substitution of the first valve being a ball valve shown in Beasley would have yielded predictable results, namely, a metal-to-metal fluid seal at the first valve with the sealing contact pressure responsive to differential pressures across the closed ball of the combination of the Waid et al. reference and the Dighton reference.
In regards to claim 15, the Dighton reference of the combination of the Dighton reference and the Beasley reference does not disclose wherein the second valve comprises a ball.
However, the Beasley reference teaches a coupled valve assembly having a first valve and a second valve wherein a second valve (28) is a ball valve (see at least figure 1; see also col. 4, lines 1-20) in order to provide a metal-to-metal fluid seal in the desired outlet.
Further, it is noted that the instant application discloses that the flow barrier is not limited to any particular type of flow barrier such as ball valves, plug valve or butterfly valves (see the disclosure of the instant application in paragraph [0022]).
The substitution of one known element (the second valve comprises a ball valve as shown in Beasley) for another (the second valve shown in the combination of Waid et al. and Dighton) would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art since the substitution of the second valve being a ball valve shown in Beasley would have yielded predictable results, namely, a metal-to-metal fluid seal at the second valve with the sealing contact pressure responsive to differential pressures across the closed ball of the Dighton reference.
In regards to claims 17-19, the combination of the Waid et al. reference and the Dighton reference does not disclose wherein the actuator comprises an electric actuator, a hydraulic actuator or a pneumatic actuator.
However, the Beasley reference teaches a coupled valve assembly having a first valve and a second valve that are both operated by an actuator wherein the actuator comprises an electric actuator, a hydraulic actuator or a pneumatic actuator for remote control operation (Beasley: see col. 11, lines 3-6).
The substitution of one known element (the actuator being an electric actuator, a hydraulic actuator or a pneumatic actuator as shown in Beasley) for another (the actuator as shown in the combination of Waid et al. and Dighton) would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art since the substitution of actuator being an electric actuator, a hydraulic actuator or a pneumatic actuator shown in Beasley would have yielded predictable results, namely, an actuator that can be remotely controlled for remote control operation of the control system that directs fluid from a wellhead to a manifold of the combination of the Waid et al. reference and the Dighton reference.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andrew J. Rost whose telephone number is (571) 272-2711. The examiner can normally be reached on Monday-Friday from 8:00 am to 4:30 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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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/ANDREW J ROST/Examiner, Art Unit 3753
/MICHAEL R REID/Primary Examiner, Art Unit 3753
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