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 .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-18, drawn to an apparatus and method for collecting drilling fluid, classified in E21B 21/01.
II. Claims 19 and 20, drawn to a method for containing and collecting drilling fluid when pipes are disconnected, classified in E21B 19/16.
The inventions are independent or distinct, each from the other because:
Inventions I and II (claims 1 and 19) are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the process as claimed can be practiced with another materially different product, such as a fluid containment apparatus having a sliding seal member for sealing the vertical opening (rather than a hinged door as in claim 1), and being open and the upper and lower ends of the containment device (i.e. lacking the lid and base of claim 1).
Inventions I and II (claims 11 and 19) are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have a materially different design, given that the method of claim 11 requires closing a hinged door and shifting a pipe seal assembly to seal around the pipe and cover the lower keyway slot (and does not mention removing the pipe from the inner chamber), while claim 19 recites removing the pipe from the inner chamber at a specific time, and does not mention a hinged door or a keyway slot. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The unique inventions rely on different features for patentability. This factor renders it difficult to search for both inventions at the same time. Prior art applicable to one invention would likely not be applicable to the other.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Ted Anthony on October 30, 2025 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-18. Affirmation of this election must be made by applicant in replying to this Office action. Claims 19 and 20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Drawings
The drawings are objected to because:
The drawings have poor line quality, and thus do not meet the standards of 37 CFR 1.84(L). See example below. Note that the drawings must be viewed in the USPTO Patent Center in order to see this problem. The drawings likely contain grayscale elements, which cause image degradation in the USPTO electronic filing system. The drawings must be entirely bi-tonal, containing only black or white color values.
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The handwritten numerals are not “plain and legible” as required by 37 CFR 1.84(p)(1). See example below, which shows ambiguous numerals, “B9/89” and “1B/18.”
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Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
Paragraph 0055, lines 5-6, numerals 60 and 80 are used for the same element, the upper pipe seal member.
Paragraph 0077, line 5, “shifting simultaneously shifting” is grammatically incorrect.
Paragraph 0078, line 8, “as well attached” is grammatically incorrect.
Paragraph 0080, line 6, “outlets port(s)” is grammatically incorrect.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities: In line 20, it is suggested that “assembler” be changed to --assembly--. Appropriate correction is required.
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, 4-6, 11-14, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duguid et al. (GB 2264965 A) in view of Anthony (US 10,927,619).
With regard to claim 1, Duguid discloses an apparatus for containing and collecting drilling fluid when adjoining upper and lower pipe sections are separated (“especially adaptable for use on an oil well drilling rig to contain spillage of drilling fluid…from disconnected drill pipes”) comprising:
a) a housing (Fig. 1) comprising:
i) a plurality of interconnected sidewalls (see annotated Fig. provided below) defining an inner chamber (see Fig. below), wherein an elongated vertical opening extends into said inner chamber through at least one of said side walls (see Fig. below);
ii) a base having a lower keyway slot (see Fig. below), wherein said lower keyway slot is aligned with said elongated vertical opening (see Fig. 1);
iii) a lid having an upper keyway slot (see Fig. below), wherein said upper keyway slot is aligned with said elongated vertical opening and said lower keyway slot (see Fig. 1);
iv) at least one fluid outlet (coupled to outlet pipe 50);
c) a pipe seal assembly (20b, 10) configured to selectively alternate between a first open position (Fig. 4) and a second closed position (Fig. 5), wherein said pipe seal assembly is configured to form a fluid pressure seal around the outer surface of a lower pipe section disposed in said lower keyway slot (see Fig. 5) and cover said lower keyway slot, when said pipe seal assembly is in said closed position (Fig. 5 shows that the closed seal assembly 10+20a/b cover the keyway slot to block fluid outflow).
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Duguid fails to teach a door hingedly connected to said housing, wherein said door is configured to alternate between a first open position wherein said elongated vertical opening is substantially unobstructed, and a second closed position wherein said elongated vertical opening is blocked.
Anthony discloses a mud bucket device similar to that of Duguid, where a housing (100) is provided with a hinged door (150) that is configured to alternate between an open and closed position to selectively block an opening (110).
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 Duguid to have the door of Anthony, in order to prevent access to the keyway opening while the mud bucket is in the process of closing around the pipes (Anthony, column 14, lines 22-38).
With regard to claim 4, Duguid, as modified by Anthony, teaches a latch configured to lock said door in said second closed position (as Anthony’s door 150, which has been imported into Duguid, has a latch 152).
With regard to claim 5, Duguid, as modified by Anthony, teaches a pneumatic actuator configured to shift said latch between a first locked position and a second unlocked position (see Anthony, column 9, lines 52-63, “said magnet can be pneumatically activated”).
With regard to claim 6, Duguid, as modified by Anthony, teaches at least one sensor configured to block supply of air to said pneumatic actuator when said door is not in said second closed position (Anthony, column 5, lines 37-49, “said gate can be connected to a switch to prevent the flow of operating power fluid (air or hydraulic oil) to a powered actuator unless said gate is closed”).
With regard to claim 11, Duguid discloses a method for containing and collecting drilling fluid when a threaded pipe connection joining upper and lower pipe sections is separated, comprising:
a) providing a fluid containment apparatus (Fig. 1) comprising:
i) a housing (see annotated Fig. provided above) comprising:
aa) a plurality of interconnected side walls (see Fig. above) defining an inner chamber (see Fig. above), wherein an elongated vertical opening extends into said inner chamber through at least one of said side walls (see Fig. above);
bb) a base (see Fig. above) having a lower keyway slot (see Fig. above), wherein said lower keyway slot is aligned with said elongated vertical opening (Fig. 1);
cc) a lid having an upper keyway slot (see Fig. above), wherein said upper keyway slot is aligned with said elongated vertical opening and said lower keyway slot (Fig. 1);
dd) at least one fluid outlet (50);
iii) a pipe seal assembly (20a, 20b, 10) configured to selectively alternate between a first open position and a second closed position (compare Figs. 4 and 5);
b) positioning said fluid containment apparatus around said threaded pipe connection (threaded pipe connection represented by element 60 in Figs. 4-6);
d) shifting said pipe seal assembly from said first open position to said second closed position (compare Figs. 4-5), wherein said pipe seal assembly forms a fluid pressure seal around an outer surface of said lower pipe section and covers said lower keyway slot in said second closed position (Fig. 5 shows that the seal assembly engages the outer surface of the pipe and covers the keyway slot);
e) separating said upper pipe section from said second pipe section (“the two sections of drill pipe 60 are then disconnected…”); and
f) allowing fluid to drain from said upper pipe section into said inner chamber (“…mud drains into the chamber…”).
Duguid fails to teach a door hingedly connected to said housing, wherein said door is configured to alternate between a first open position wherein said elongated vertical opening is substantially unobstructed, and a second closed position wherein said elongated vertical opening is blocked. Because Duguid fails to teach a door, Duguid also fails to teach the step of closing said door.
Anthony discloses a mud bucket device similar to that of Duguid, where a housing (100) is provided with a hinged door (150) that is configured to alternate between an open and closed position to selectively block an opening (110). Anthony teaches closing that door to block the opening (column 14, lines 22-38).
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 Duguid to have the door of Anthony, in order to prevent access to the keyway opening while the mud bucket is in the process of closing around the pipes (Anthony, column 14, lines 22-38).
With regard to claim 12, Duguid is silent as to the fluid volume capacity of the inner chamber being greater than that of the upper pipe section. However, Duguid does teach that, with respect to the state of the art at the time of Duguid’s disclosure, “the conventional design has the further disadvantage that it is often of insufficient size to contain the volume of fluid from a typical section of 6-5/8” pipe, allowing excess fluid to escape from the aperture in the top bulkhead of the bucket.”
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 Duguid by increasing the volume of the inner chamber to be greater than the capacity of the upper pipe, in order to eliminate the known disadvantage of excess fluid leaking from the top of the mud collection device.
With regard to claim 13, Duguid teaches that said upper pipe section is received in said upper keyway slot, said lower pipe section is received in said lower keyway slot, and said threaded pipe connection is disposed in said inner chamber when said fluid containment apparatus is positioned around said threaded pipe connection (“the drill pipe 60 is raised until a joint between two sections of pipe (not shown) is at a level between the two seals 20a, b”).
With regard to claim 14, Duguid teaches draining fluid from said inner chamber to a mud system of a drilling rig (via hose 50).
With regard to claim 17, Duguid fails to teach pulling said upper pipe member through said upper keyway slot. Instead, Duguid teaches moving the entire mud collection device away from the disconnected pipes (see arrow 3 in Fig. 6).
However, 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 Duguid by pulling the upper pipe member through the upper keyway slot, as the seal member 20a is deformable, and would provide the additional benefit of wiping the pipe surface as the pipe is removed from the inner chamber.
Allowable Subject Matter
Claims 2, 3, 7-10, 15, 16, and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
With regard to claims 2, 7, and 15, Duguid in view of Anthony fails to teach the structures specifically called for in these claims.
With regard to claim 18, Duguid in view of Anthony fails to teach that the upper pipe member is pulled through said upper keyway slot before all fluid has drained from the inner chamber. Instead, Duguid states that “when the mud has drained from the chamber, the valve 30 is closed to deflate the bladders 10 and the apparatus is moved away from the drill pipe 60 in a direction shown by the arrow 3.”
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tara Schimpf can be reached at 571-270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT E FULLER/Primary Examiner, Art Unit 3676