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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/23/2026 has been entered.
This action is in response to the amendment date 3/23/2026 that was entered through the submission of the request for continued examination dated 3/23/2026. Claims 1 and 13 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, see pages 5-6 of the response filed 3/23/2026, with respect to the rejection(s) of claim(s) 1-7 under 35 U.S.C. 102(a)(1) as being anticipated by Beasley (US 5269347) and the rejection(s) of claims 13-19 under 35 U.S.C. 103 as being unpatentable over Waid et al. (US 5680899) in view of Beasley (US 5269347) have been fully considered and are persuasive. It is considered that the amendment to the claims to recite “a coupling external to both the housing of the first valve and the housing of the second valve” overcomes the Beasley reference as applied in the Office action dated 1/15/2026. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the newly applied reference to Lew et al. (US 4512372).
It is considered that the Lew et al. reference addresses applicant’s concerns and claim language relating to a coupled valve assembly having:
a coupling (43) external to both the housing (2) of the first valve and the housing (3) of the second valve (see figure 3), and comprising:
an upper end (it is considered that the portion of the coupling 43 that is secured to the lower valve stem 40 constitutes an upper end of the coupling 43) operatively connected to the lower valve stem of the first valve (see figure 3); and
a lower end (it is considered that the portion of the coupling 43 that is secured to the upper valve stem 41 constitutes an lower end of the coupling 43) operatively connected to the upper valve stem of the second valve (see figure 3).
Since new grounds of rejection have been necessitated by applicant’s amendment that was entered with the submission of the request for continued examination, the instant Office action is made non-final.
Information Disclosure Statement
The information disclosure statement filed 3/17/2026 is acknowledged and has been considered by the examiner.
Drawings
The drawings were received on 9/18/2024. These drawings are acceptable.
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 16-19 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 16 recites the limitation “method of claim 10” in line 1. However, claim 10 has been canceled. Therefore, it is unclear as to the metes and bounds of the limitations of claim 16. Claim 16 will be treated as if claim 16 depends from claim 13.
Claim 17 recites the limitation “method of claim 10” in line 1. However, claim 10 has been canceled. Therefore, it is unclear as to the metes and bounds of the limitations of claim 17. Claim 17 will be treated as if claim 17 depends from claim 13.
Claim 18 recites the limitation “method of claim 10” in line 1. However, claim 10 has been canceled. Therefore, it is unclear as to the metes and bounds of the limitations of claim 18. Claim 18 will be treated as if claim 18 depends from claim 13.
Claim 19 recites the limitation “method of claim 10” in line 1. However, claim 10 has been canceled. Therefore, it is unclear as to the metes and bounds of the limitations of claim 19. Claim 19 will be treated as if claim 19 depends from claim 13.
Clarification and appropriate correction is requested.
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 Lew et al. (US 4512372) in view of Beasley (US 5269347).
Regarding claim 1, the Lew et al. reference discloses a coupled valve assembly comprising:
an actuator (handle 45);
a first valve comprising:
a housing (2)
a throughbore (it is considered that the passage from the end 5 to the end 7 constitutes a throughbore);
a flow barrier (disc 9; as noted in the instant application paragraph [0022], the flow barrier is not limited to any particular type of flow barrier such as ball valves, plug valve or butterfly valves) configured to selectively obstruct the flow of fluid through the throughbore; and
a lower valve stem (40);
a second valve comprising:
a housing (3);
a throughbore (it is considered that the passage from the end 6 to the end 7 constitutes a throughbore);
an upper valve stem (41); and
a flow barrier (disc 18) configured to selectively obstruct the flow of fluid through the throughbore; and
a coupling (43) external to both the housing of the first valve and the housing of the second valve (see figure 3), and comprising:
an upper end (it is considered that the portion of the coupling 43 that is secured to the lower valve stem 40 constitutes an upper end of the coupling 43) operatively connected to the lower valve stem of the first valve (see figure 3); and
a lower end (it is considered that the portion of the coupling 43 that is secured to the upper valve stem 41 constitutes an lower end of the coupling 43) operatively connected to the upper valve stem of the second valve (see figure 3);
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. 5, lines 44-49).
The Lew et al. 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 45 that is directly connected to the coupler 43 as shown in Lew et al.) 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 Lew et al. reference.
In regards to claim 2, the Lew et al. reference of the combination of the Lew et al. 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 Lew et al.) 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 Lew et al. reference.
In regards to claim 3, the Lew et al. reference of the combination of the Lew et al. 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 Lew et al.) 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 Lew et al. reference.
In regards to claims 4-7, the combination of the Lew et al. 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 Lew et al. (US 4512372).
Claim(s) 16 will be treated as best understood in view of the rejections under 35 U.S.C. 112(b) above.
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.
However, the Lew et al. reference teaches
a coupled valve assembly comprising:
an actuator (handle 45);
a first valve comprising:
a housing (2); and
a lower valve stem (40);
a second valve comprising:
a housing (3); and
an upper valve stem (41); and
a coupling (43) external to both the housing of the first valve and the housing of the second valve (see figure 3), and comprising:
an upper end (it is considered that the portion of the coupling 43 that is secured to the lower valve stem 40 constitutes an upper end of the coupling 43) operatively connected to the lower valve stem of the first valve (see figure 3); and
a lower end (it is considered that the portion of the coupling 43 that is secured to the upper valve stem 41 constitutes an lower end of the coupling 43) operatively connected to the upper valve stem of the second valve (see figure 3);
wherein the assembly is configured such that, when the first valve is opened, the second valve is closed and wherein, when the first valve is closed, the second valve is opened (see at least col. 5, lines 44-49).
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 as taught by the Lew et al. 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 Lew et al. reference of the combination of the Waid et al. reference and the Lew et al. reference discloses wherein the actuator comprises a manual actuator (Lew et al.: handle 45).
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 Lew et al. (US 4512372) as applied to claim 13 above, and further in view of Beasley (US 5269347).
Claim(s) 17-19 will be treated as best understood in view of the rejections under 35 U.S.C. 112(b) above.
In regards to claim 14, the combination of the Waid et al. reference and the Lew et al. 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 Lew et al.) 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 Lew et al. reference.
In regards to claim 15, the Lew et al. reference of the combination of the Lew et al. 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 Lew et al.) 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 Lew et al. reference.
In regards to claims 17-19, the combination of the Waid et al. reference and the Lew et al. 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 Lew et al.) 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 Lew et al. reference.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Asokan (US 9222597), Pas et al. (US 6668860), Pas et al. (US 6415819), Smith (US 3679060) and Sauer (US 2864410) disclose various coupled valve assemblies having a first valve and a second valve that are coupled together by a coupling external to a housing of the first valve and a housing of the second valve.
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