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 08/21/2025 have been fully considered but they are not persuasive. Applicant’s argument that the applied art related to RCDs and is thus not applicable is not persuasive since the lower sealing stripper of an RCD is a stripper. Applicant’s argument that Biffle does not disclose a constant cone angle for a lower portion is not persuasive since portion 52 has a constant cone angle between portion 56 and lower bevel near numeral 50 in fig. 3. Applicant’s argument that one would not look to Karigan to teach the material for the insert since Biffle would not use inflexible rings such as 125 of Karigan is not persuasive since Karigan also teaches flexible reinforcement petals 171 covered in a layer of fabric (col. 4 l. 52-60, col, 5 ll. 35-55) in order to reduce wear and tearing. Applicant’s arguments regarding the restriction are not persuasive since no claims are currently withdrawn as 16-20 have been cancelled and none of the claims are yet specific to one of the unelected species.
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) 1, 2, 5-7, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Biffle (US 4441551 A) in light of Karigan (US 11174698 B1), hereinafter Ka
With respect to claim 1, Biffle discloses a stripper element for use with stripping heads comprising: a one-piece, formed, generally cylindrical elastomer body (combination 52, 54, 56) having a top (upper end, figs. 2, 3), a bottom (50), a central longitudinal through passage (shown in figs. 2, 3) defining an inside surface (48), and an outer surface (shown in figs. 2, 3), the one-piece, formed, generally cylindrical elastomer body comprising an upper cylindrical portion (upper portion extending generally from upper end to location of numeral 54 in fig. 3 ) and a lower truncated cone portion of constant cone angle (portion 52 has a constant cone angle between portion 56 and lower bevel near numeral 50 in fig. 3), the upper cylindrical portion including a cylindrical lip (62 or outer surface of 54) configured to seal against an inside surface (inside upper end of 16, shown in fig. 2) of a stripper head (16); and b) a one-piece, formed, flexible sheet insert (80) positioned within at least a portion of either the upper cylindrical portion the lower truncated cone portion, or both of the one-piece, formed, generally cylindrical elastomer body, the one-piece, formed, flexible sheet insert including a plurality of slots or through holes (82) therein.
However, Biffle fails to disclose the material for insert 80.
Nevertheless, Ka discloses forming a reinforcement for a stripper rubber body from steel (col. 4 ll. 50-60)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have used steel for member 80 of Biffle to reinforce the stripper rubber as taught by Ka (col. 4 ll. 50-60) since this is the application of a known technique in a similar device to improve it in the same way with predictable and obvious results.
With respect to claim 2, Biffle discloses wherein the one-piece, formed, generally cylindrical elastomer body comprises one or more natural elastomers, one or more synthetic elastomers, or combinations and mixtures thereof (rubber is one of a natural and synthetic elastomer, col. 4 ll. 34-36).
With respect to claim 5, Biffle in light of Ka discloses wherein the one-piece, formed, flexible sheet insert comprises a layered combination of sheet metal and fabric (a sheet as shown in fig. 4 of Biffle, layered with fabric as taught by Ka in col. 4 l. 52-60, col, 5 ll. 35-55 in order to reduce wear and tearing, obviously applicable to Biffle).
With respect to claim 6, Biffle discloses wherein the one-piece, formed, flexible sheet insert is molded into or otherwise surrounded by the elastomer forming the body of the stripper element (fig. 3, col. 4 ll. 30-36).
With respect to claim 7, Biffle in light of Ka discloses wherein the one-piece, formed, flexible sheet insert is expanded metal sheet (Biffle discloses vulcanizing the sheet 80 into the rubber which is made from metal as taught by Ka, vulcanizing will heat the metal which will expand it).
With respect to claim 9, Biffle discloses wherein the plurality of slots or through holes in the one-piece, formed, flexible sheet insert are a plurality of round through passages therethrough (82, fig. 4).
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Biffle and Ka as applied to claim 2 above, and further in view of Williams (US 7717168 B2).
With respect to claim 3, Biffle fails to disclose natural rubber for the body.
Nevertheless, Williams discloses forming the stripper body from natural rubber (col. 5 ll. 55-60).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have used natural rubber for the stripper body of Biffle as taught by Williams (col. 5 ll. 55-60) since this is the application of a known technique in a similar device to improve it in the same way with predictable and obvious results.
With respect to claim 4, Williams also discloses wherein the one-piece, formed, generally cylindrical elastomer body comprises a synthetic rubber selected from nitrile rubber (otherwise known as NBR rubber and Buna- N), ethylene propylene diene monomer (EPDM) rubber, and combinations, mixtures, and layered versions thereof (col. 5 ll. 55-60), obviously applicable to Biffle).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Biffle and Ka as applied to claim 1 above, and further in view of Hyuga (US 20120227251 A1).
With respect to claim 8, Biffle fails to disclose the material used for member 80, but Ka discloses steel as discussed previously, though not type 304 steel.
Nevertheless, Hyuga teaches reinforcing a rubber seal with 304 steel (pgph. 47, 60).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have used 304 steel for the member 80 of Biffle in order to provide a high-workability material as taught by Hyuga (pgph. 60), pgph. 15 of the instant specification teaches that type 304 steel has these properties.
Claim(s) 10-13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Biffle and Ka as applied to claim 1 above, and further in view of Williams (US 4949796 A), hereinafter Will.
With respect to claim 10, Biffle discloses a stripper head insert (combination 26, 34) and the stripper element of claim 1 inserted into a stripper head body (combination 16, 12), the stripping assembly further comprising a hinged clamp (20, hinge shown in fig. 1) configured to clamp the stripper head insert and stripper element body into the stripper head body (shown in fig. 2), whereby a mating cylindrical lip (lip of 12 in groove of 20, fig. 2) fits into a main clamp groove (groove of 20 shown in ID of 20 in fig. 2), and a bolt fits into a clamp (shown in fig. 1).
However, Biffle fails to disclose the bolt being a swing bolt in a clamp groove.
Nevertheless, Will discloses this (swing bolt 31 fits into clamp groove on opposite side of gap from 31 shown in fig. 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have used a swing bolt for clamp securement in Biffle as taught by Will (fig. 2) instead of the bolt taught by Biffle since this is the simple substitution of one prior art clamping bolt device for another with predictable results and a reasonable expectation for success.
With respect to claim 11, Biffle discloses wherein the stripper head body is configured to connect to a drillpipe or other tubular or tool through a chevron seal (combination 16/12 has several continuous flat surfaces capable of being sealed to using a chevron seal of another tool or tubular).
With respect to claim 12, Biffle discloses wherein the stripper head further comprises an NPT outlet (42 or 72).
With respect to claim 13, Biffle further discloses the stripper head body configured to connect to a drillpipe by a premium threaded connection (in the same way as in the instant application, via contact with the stripper which is configured to seal around threaded connections of drill pipe, which can be premium threaded connections)
With respect to claim 15, Ka discloses wherein the stripper head body further comprises a combination of metallurgy and structural reinforcement such as to prevent failure of the stripping head upon exposure to inner pressure up 4,000 psi, such as may be experienced during frac plug drilling operations (col. 3 ll. 35-45, Ka).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Biffle, Ka, and Will as applied to claim 10 above, and further in view of Williams (US 20070125548 A1), hereinafter Wi
With respect to claim 14, Biffle fails to disclose the diameter of the central passage.
Nevertheless, Wi discloses wherein the central longitudinal through passage of the one-piece, formed, generally cylindrical elastomer body has an initial diameter that is from about 0.56 to about 0.59 times an external diameter of a tubing selected from 2 3/8 inch, 2 5/8 inch, 2 7/8 inch, and 3 1/2 inch (pgph. 4, 1 inch less than 2.375 inches is 1.375 inches which is .578 times 2.375 inches which falls in the claimed range, a 2.375 inch tubular being obvious to use).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have used a stripper rubber which was 1 inch less than the smallest diameter of tubing to be used in Biffle as taught by Wi (pgph. 4) since this is the application of a known technique in a similar device to improve it in the same way with predictable and obvious results, a 2.375 inch tubing being obvious to use.
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 KIPP CHARLES WALLACE whose telephone number is (571)270-1162. The examiner can normally be reached Monday - Friday 12:00 PM - 8:00 PM.
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/KIPP C WALLACE/Primary Examiner, Art Unit 3674 11/20/2025