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 and Amendments
Applicant’s arguments, see pages 1-6, filed 09/30/2025, with respect to the rejection(s) of claim(s) 1-5, 7-16, and 18-21 under 35 U.S.C. 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 Therefore, the rejection has been withdrawn.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 Joshi et al. (US 2020/0009583 A1).
Claims 11 and 21 now recite “the tubing wall having a thickness (t) defined by an outside diameter (OD) and inside diameter (ID) “and “the tubing wall thickness (t) from the outside diameter (OD) to the inside diameter (ID).” This overcomes the previous prior art Fripp et al. (US 2004/0168805 A1) when taken with the other limitations of the claims.
The 112 (b) rejections have been withdrawn because upon reconsideration the claim is clear in view of the specification.
The double patenting rejection is withdrawn in view of the terminal disclaimer.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 5, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Joshi et al. (US 2020/0009583 A1), hereinafter Joshi.
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 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).
Regarding claim 5, Joshi discloses 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).
Regarding claim 10, Joshi discloses wherein the plurality of shaped holes comprise smooth inner surfaces (fig. 4-5, par. 0031-0032).
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 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 Fielder et al. (US 20190024491 A1), hereinafter Fielder.
Regarding claims 2-4, Joshi discloses 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)
However, Joshi 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 11-21 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.
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.
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.
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 Jennifer A Railey whose telephone number is (571)270-7353. The examiner can normally be reached M-F (8-4).
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/JENNIFER A RAILEY/Examiner, Art Unit 3676
/Nicole Coy/Supervisory Patent Examiner, Art Unit 3672