9DETAILED 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 and Amendments
Applicant’s arguments, see pages 9-12, filed 08/24/2026, with respect to the rejection(s) of claim(s) 1-24 under § 102 and 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Ellithorp (US 2022/0381129 A1).
Applicant argues that Joshi fails to teach the amendment of “including opposing threaded connectors.” Examiner agrees that these threaded connectors are not taught in Joshi. However, it would be obvious to modify Joshi to include threaded connectors in order to provide connection and disconnection of the separator from the tubing string and other devices such as the vibration producing device and the vibration sensitive device. There is no argument for why this cannot be done with Joshi and Joshi is silent on the means of attachment.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the figures show the threaded connectors, but the specification makes no reference to the threads.
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 nonobviousness.
Claims 1, 5, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Joshi et al. (US 2020/0009583 A1), hereinafter Joshi in view of Ellithorp (US 2022/0381129 A1), hereinafter Elli.
Regarding claim 1, Joshi discloses a vibration-damping sub (see below), comprising:
a tubular damping body (116, fig. 4, par. 0027) having a tubing wall (wall of 116, fig. 4, par. 0027) defining a longitudinal axis (162, fig. 4, par. 0026) and opposing ends for connecting the tubular damping body within a tool string between a vibration source and a vibration-sensitive tool (It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). see MPEP 2114, Subsection II "Manner of Operating the device does not differentiate apparatus claim from the prior art"), the tubing wall having a thickness (t) (difference between 182 and 184, fig. 4-5, par. 0031) defined by an outside diameter (OD) (182, fig. 4-5, par. 0031) and inside diameter (ID) (184, fig. 4-5, par. 0031); and
a plurality of shaped holes extending through the tubing wall (172 and 174, fig. 4-5, par. 0031) and configured to impede propagation of mechanical waves along the tubular damping body (See intended use above), wherein each of the plurality of shaped holes extends through the tubing wall thickness (t) from the outside diameter (OD) to the inside diameter (ID) at an angle (θ) (176 and 178, fig. 4-5, par. 0031) of at least 5 degrees relative to perpendicular to the longitudinal axis of the tubular damping body (fig. 4 and 5) for redirecting the mechanical waves (see intended use above).
However, Joshi fails to explicitly disclose a tubular dampening body having a tubing wall that includes opposing threaded connectors.
Elli teaches a similar device in the same field of downhole equipment wherein a tubular dampening body (10, fig. 1, [0050-0052]) having a tubing wall (20+22, [0052-0053, and 0055, and 0059]) that includes opposing threaded connectors (26, fig. 1, [0053 and 0055]; 28, fig. 1, [0053 and 0059]).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have simply substituted the general connection of Joshi with the threaded connectors of Elli to yield the predictable result of “joining to adjacent components of the housing assembly and or the tubing string” ([0052] of Elli).
Regarding claim 5, Joshi in view of Elli teaches wherein the opposing ends are a vibration source end and a vibration-sensitive tool end (see intended use above), and further wherein the angle (θ) of each of the plurality of shaped holes points toward the vibration source end (fig. 4, wherein the vibration source can be at the bottom end of fig. 4 of Joshi).
Regarding claim 10, Joshi in view of Elli teaches wherein the plurality of shaped holes comprise smooth inner surfaces (fig. 4-5, par. 0031-0032 of Joshi).
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Joshi et al. (US 2020/0009583 A1), hereinafter Joshi in view of Ellithorp (US 2022/0381129 A1), hereinafter Elli in view of Fielder et al. (US 20190024491 A1), hereinafter Fielder.
Regarding claims 2-4, Joshi in view of Elli teaches wherein each of the plurality of shaped holes wall (172 and 174, fig. 4-5, par. 0031 of Joshi) extends through the tubing wall thickness (t) from the outside diameter (OD) to the inside diameter (ID) (176 and 178, fig. 4-5, par. 0031 of Joshi).
However, Joshi in view of Elli fails to explicitly disclose the specific angle relative to perpendicular to the longitudinal axis of the tubular damping body.
Fielder teaches a similar device in the same field of separators wherein the shaped holes are at an angle (θ) of at least 30 degrees / of at least 40 degrees / of 45 degrees ± 2 degrees relative to perpendicular to the longitudinal axis of the tubular damping body (par. 0047).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have simply substituted the general angle of Joshi with the specific angle of Fielder to yield the predictable result of separating the different phases of fluid (par. 0019 of Joshi; par. 0047 of Fielder).
Allowable Subject Matter
Claims 6-7 and 8-9 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.
Claims 11-24 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 11 and 21 both recite “a vibration-sensitive tool” and “a vibration source.” Joshi is considered the closest prior art, but fails to teach a vibration-sensitive tool and a vibration source. It would not be obvious to add in a vibration-sensitive tool and a vibration source without undo hindsight given that the device of Fielder is a separator while taking in the other limitations of these claims. Claims 12-20 are allowed for depending on claim 11.
The following is a statement of reasons for the indication of allowable subject matter: claims 6-7 are allowable for the same reasons cited in the non-final rejection.
Claim 8 would be allowable because there is no obvious reason to modify the device of Josh to include “a plurality of contiguous tubular portions formed of different materials having different mechanical impedances” without undo hindsight given that the device of Fielder is a separator while taking in the other limitations of these claims, neither was a reference found that teaches. Claim 9 would be allowable for depending on claim 8.
Claims 22-24 are allowed for the same reasons as claims 6-8 respectively. These claims are claims 6-8 rewritten in independent form.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Downing (US 20190085676 A1), Cobb (US 20220251937 A1), and Fires (US 20200308950 A1) each also teach a separator with threaded connectors at the top and bottom of the device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Railey whose telephone number is (571)270-7353. The examiner can normally be reached M-F (8-4).
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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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/JENNIFER A RAILEY/Examiner, Art Unit 3676
/Nicole Coy/Supervisory Patent Examiner, Art Unit 3672
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