DETAILED ACTION
Claims 1-20 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 .
Claim Objections
Claims 1, 18, and 20 are objected to (wherein claims 2-17 and 19 inherit their objections due to their dependencies) because of the following informalities:
In claim 1, line 12, “comprising intensifier” should be changed to --comprising an intensifier--.
In claim 1, line 13, “second comprising” should be changed to --second end comprising--.
In claim 1, lines 13-14, “intensifier-piston second-end surface area” should be changed to --intensifier-piston-second-end surface area-- to be in the same style used for reciting the majority of the other hyphenated structures.
In claim 1, lines 14, “intensifier-piston-second end surface area” should be changed to --intensifier-piston-second-end surface area-- to be in the same style used for reciting the majority of the other hyphenated structures.
In claim 1, line 14, “area larger” should be changed to --area is larger--.
In claim 1, last line, “the ram” should be changed to --the ram block--.
In claim 18, line 7, “comprises a intensifier” should be changed --comprises an intensifier--.
In claim 18, lines 7-8, “that of the intensifier-piston-first end surface area” should be changed to --an intensifier-piston-first-end surface area-- because the structure lacks an antecedent basis, and to maintain consistency in the use of hyphens.
In claim 20, line 13, “the-intensifier piston-first end surface area” should be changed to --the intensifier-piston-first-end surface area-- to be in the same style used for reciting the majority of the other hyphenated structures.
Appropriate correction is required.
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 2, 9-11, and 19 are rejected (wherein claim 11 inherits its rejection due to their dependency) 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.
The term “substantially” in claim 2 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, it is unclear what is positively encompassed by “substantially in vertical alignment.”
The term “substantially” in claim 9 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, it is unclear what is positively encompassed by “substantially in vertical alignment.”
The term “generally” in claim 10 is a relative term which renders the claim indefinite. The term “generally” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, it is unclear what is positively encompassed by “generally circular horizontal cross-sectional shape.”
The term “generally” in claim 19 is a relative term which renders the claim indefinite. The term “generally” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, it is unclear what is positively encompassed by “generally circular horizontal cross-sectional shape.”
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 9,551,200 (hereinafter ‘200) in view of Coppedge et al. (US 2013/0220627).
Regarding claims 1-16, ‘200 claims in claims 1-15 a ram block actuated by a ram piston, which is actuated by an intensifier, but lacks teaching that the housing surrounds a well bore. Coppedge teaches in Figs. 1-8 a blowout preventer apparatus comprising a housing 1010 surrounding a well bore because the apparatus is a blowout preventer used on a well to close off well strings/pipes in the event of a blowout. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the housing claimed by ‘200 surround a well bore so that the ram piston effectively closes of the well string/pipe in the event of a blowout, as Coppedge teaches.
Regarding claim 17, ‘200 claims in claims 1 and 15 movement of the intensifier piston in a first direction in response to the application of force applied by the primary fluid source and in an opposite, second direction in the absence of said force, but lacks teaching that the directions are respectively upward and downward responsive to gravity. Coppedge teaches in Figs. 1-8 an intensifier piston (comprising one of the bottom pistons 1028) that moves upward in response to the application of force from the primary fluid source (via passage 132) and downward, inherently due to gravity, when pressure from the primary fluid is removed. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the apparatus claimed by ‘200 oriented such that the intensifier piston moves upward in response to force applied by the primary fluid source and downward with gravity in response to the absence of said force from the primary fluid source, as Coppedge teaches, because having the piston being oriented to move vertically reduces the footprint of the overall apparatus/blowout preventer. Furthermore, gravity provides a biasing force that reduces the requirement of fluid, or amount of fluid, to move the intensifier piston in the second, opening direction.
Regarding claims 18-19, ‘200 claims in claim 5 the housing having a circular cross-section, but lacks teaching that the housing surrounds a well bore. Coppedge teaches in Figs. 1-8 a blowout preventer apparatus comprising a housing 1010 surrounding a well bore because the apparatus is a blowout preventer used on a well to close off well strings/pipes in the event of a blowout. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the housing claimed by ‘200 surround a well bore so that the ram piston effectively closes of the well string/pipe in the event of a blowout, as Coppedge teaches.
Regarding claim 20, ‘200 claims in claim 15 the housing having a clearance space wherein compressible clearance fluid is located and compressed by movement of the intensifier piston in a first direction, and the intensifier piston moves in a second direction opposite to the first direction in the absence of force applied by the primary fluid source, which releases pressure from the ram fluid chamber to permit movement of the ram piston away from the closed position, but lacks teaching that the housing encompasses a well bore. Coppedge teaches in Figs. 1-8 a blowout preventer apparatus comprising a housing 1010 surrounding a well bore because the apparatus is a blowout preventer used on a well to close off well strings/pipes in the event of a blowout. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the housing claimed by ‘200 surround a well bore so that the ram piston effectively closes of the well string/pipe in the event of a blowout, as Coppedge teaches.
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.
Claims 1-3, 6, 10-14, and 17-19 (as understood: 2, 10-11, and 19) are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Coppedge et al. (US 2013/0220627).
Regarding claim 1, Coppedge discloses in Figs. 1-8 (particularly Figs. 5-8) an apparatus for containing pressure associated with a well (comprising the well bore 40 in the apparatus or the tube 38 passing through the well bore 40 of the apparatus), the apparatus comprising:
a housing 1010, said housing 1010 encompassing a well bore 40;
a ram fluid chamber 1038 within the housing 1010;
a ram piston 1018 within the housing 1010, wherein the ram piston 1018 comprises a ram-piston first end engaged with a ram block 1016 and a ram-piston second end in communication with the ram fluid chamber 1038, and wherein the ram piston 1018 is movable between an open position and a closed position;
an intensifier piston 1028, 1030 within the housing 1010, wherein the intensifier piston 1028, 1030 comprises a intensifier-piston first end in communication with the ram fluid chamber 1038 and an intensifier-piston second end in communication with a primary fluid source 50, the intensifier-piston first end comprising intensifier-piston-first-end surface area, the intensifier-piston second comprising an intensifier-piston second-end surface area, the intensifier-piston-second end surface area larger than the intensifier-piston-first-end surface area,
wherein, at a first pressure, a first fluid from the primary fluid source 50 applies a primary fluid force to the intensifier-piston second end to move the intensifier piston 1028, 1030, wherein movement of the intensifier piston 1028, 1030 applies a second pressure to ram fluid in the ram fluid chamber 1038, wherein the second pressure is greater than the first pressure (in the same manner as the applicant’s apparatus, given that the applicant’s only justification for the relative increase in pressure is the relative reduction of surface area on the ends/sides of the intensifier piston), and wherein the second pressure applies a ram-piston force to the ram piston 1018 to urge the ram toward the closed position.
Regarding claim 2, Coppedge discloses in Figs. 1-8 (particularly Figs. 5-8) that the ram piston 1016 and the intensifier piston 1028, 1030 are substantially in vertical alignment.
Regarding claim 3, Coppedge discloses in Figs. 1-8 (particularly Figs. 5-8) that the ram piston 1016 is adapted for movement along a first axis and the intensifier piston 1028, 1030 is adapted for movement along a second axis, and wherein the second axis is perpendicular to the first axis.
Regarding claim 6, Coppedge discloses in Figs. 1-8 (particularly Figs. 5-8) that the intensifier piston 1028, 1030 comprises an L-shaped half cross-sectional shape (wherein the intensifier piston 1028, 1030 is overall shaped as an “I” or “H,” and therefore comprises “L” shaped portions, particularly if the overall piston 1028, 1030 is dissected twice by two cross sections through the two perpendicular axes of symmetry).
Regarding claim 10, Coppedge discloses in Figs. 1-8 (particularly Figs. 5-8) that the housing 1010 comprises a generally circular horizontal cross-sectional shape (wherein the cross section is taken at any one of the intensifier cylinders 1026 or the flanges of the bore 40).
Regarding claim 11, Coppedge discloses in Figs. 1-8 (particularly Figs. 5-8), that the housing 1010 comprises a first portion containing the ram piston 1018, wherein the first portion is adapted to contain the second pressure (in ram fluid chamber 1038), and a second portion positioned adjacent the first portion (such as any of intensifier cylinders 1026).
Regarding claim 12, Coppedge discloses in Figs. 1-8 (particularly Figs. 5-8) that there is an insertable retaining member (comprising the housing portion through which fluid from valve 1040 passes into the ram fluid chamber 1038) for retaining the ram piston 1018 within the housing 1010 (in the same manner as the applicant’s ram module 16 retains the ram piston within the housing via removable retaining member 12 holding the ram module 16 in its assembled position, as discussed in paragraph 50), wherein the insertable retaining member is outwardly movable in a lateral direction relative to a ram-piston longitudinal axis (because the retaining member is seen as being able to be moved in such a direction).
Regarding claim 13, Coppedge discloses in Figs. 1-8 (particularly Figs. 5-8) that the ram piston 1018 is outwardly removeable along the ram piston longitudinal axis for accommodating repair, replacement, or maintenance thereof (because the ram piston 1018 is seen as being able to be removed in such a direction).
Regarding claim 14, Coppedge discloses in Figs. 1-8 (particularly Figs. 5-8) that there is a mechanical indicator (comprising the unlabeled rod extending from the ram block 1016 outward from the housing 1010 in parallel with the conduit with valve 1040) engaged with the ram piston 1018 (via the intermediately located ram block 1016) for verifying a position of the ram piston 1018 relative to the housing 1010.
Regarding claim 17, Coppedge discloses in Figs. 1-8 (particularly Figs. 5-8) that the intensifier piston 1028, 1030 (specifically one of the intensifier pistons 1028, 1030 located below the axis/plane passing between the two ram blocks 1016) is adapted to move in an upward direction responsive to the force applied to the second end thereof 1028, 1030 by fluid from the primary fluid source 50, and wherein the intensifier piston 1028, 1030 is adapted to move in a downward direction responsive to gravity in the absence of the force applied by the fluid from the primary fluid source 50 (inherently given that the chambers of the intensifier cylinder 1026, in which the intensifier piston 1028, 1030 reciprocates, are aligned with the direction of gravity, as one having ordinary skill would recognize from the illustration of the sea floor 20 and well tube 38 in Figs. 1-2).
Regarding claim 18, Coppedge discloses in Figs. 1-8 (particularly Figs. 5-8) an apparatus for containing pressure associated with a well (comprising the well bore 40 in the apparatus or the tube 38 passing through the well bore 40 of the apparatus), the apparatus comprising:
a ram piston 1018 comprising an end in communication with a fluid chamber 1038;
an intensifier piston 1028, 1030 comprising an intensifier piston first end in communication with the fluid chamber 1038 and an intensifier-piston second end in communication with an actuator 50 (and/or 1034), wherein the intensifier-piston second end comprises a intensifier-piston-second-end surface area greater than that of the intensifier-piston-first end surface area; and
a housing 1010, said housing 1010 encompassing a well bore 40, said housing 1010 containing the ram piston 1018, the fluid chamber 1038, and the intensifier piston 1028, 1030,
wherein actuation of the actuator 50 (and/or 1034) applies a first pressure to the intensifier-piston second end of the intensifier piston 1028, 1030 to move the intensifier piston 1028, 1030, and wherein movement of the intensifier piston 1028, 1030 applies a second pressure greater than the first pressure (in the same manner as the applicant’s apparatus, given that the applicant’s only justification for the relative increase in pressure is the relative reduction of surface area on the ends/sides of the intensifier piston) to the end of the ram piston 1018 to move the ram piston 1018.
Regarding claim 19, Coppedge discloses in Figs. 1-8 (particularly Figs. 5-8) that the housing 1010 comprises a generally circular horizontal cross-sectional shape (wherein the cross section is taken at any one of the intensifier cylinders 1026 or the flanges of the bore 40).
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.
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.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Coppedge in view of Peil et al. (US 4,558,842).
Regarding claim 12, alternatively to the retaining members disclosed by Coppedge, as previously discussed, Peil teaches in Figs. 1-3 an apparatus for a well comprising an insertable retaining member 80 for retaining the ram piston 28 within the housing 12, 20 (in the same manner as the retaining ring 60 disclosed by the applicant because the retaining member 80 holds portions of the housing 12, 20 together like the retaining ring 60 disclosed by the applicant), wherein the insertable retaining member 80 is outwardly movable in a lateral direction relative to the housing 12, 20.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the assembly disclosed by Coppedge to include an insertable retaining member that holds portions of the housing together that retain the ram piston to allow simple and quick assembly and/or disassembly by negating the use of tools, as Peil teaches (col. 4, lines 55-57).
Regarding claim 13, Peil teaches in Figs. 1-3 that the ram piston 28 is outwardly removeable along the ram piston longitudinal axis for accommodating repair, replacement, or maintenance thereof.
Claims 14-15 (alternatively: 14) are rejected under 35 U.S.C. 103 as being unpatentable over Coppedge in view of Hardgrave (US 4,214,605).
Regarding claim 14, alternatively to the structure in Coppedge previously indicated as a mechanical indicator, Hardgrave teaches in Figs. 1-3 a ram apparatus comprising a mechanical indicator 114 engaged with a ram piston 58 for verifying a position of the ram piston 48 relative to the housing 54 containing the ram piston 58 (col. 7, lines 37-51).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus disclosed by Coppedge to include a mechanical indicator on the ram piston for indicating the position of the ram to the operator, as Hardgrave teaches (col. 7, lines 37-51).
Regarding claim 15, Hardgrave teaches in Figs. 1-3 that the mechanical indicator 114 comprises an elongate member 114 positioned connected to the ram piston 58 and movable relative to the housing 58 (col. 7, lines 37-51).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Coppedge in view of Le Rouax (US 2,986,367).
Regarding claim 16, Coppedge discloses an apparatus with a ram piston 1018 to which pressure is applied by fluid in the ram fluid chamber 1038, as previously discussed, but lacks a locking member to retain the ram piston in the closed position.
Le Rouax teaches in Figs. 15-17 a ram apparatus comprising a locking member 190 movable to retain the ram head 159 (analogous to the ram 1016 or ram piston 1018 disclosed by the Coppedge) in the closed position independent of pressure applied to the ram head 159.
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the apparatus in Coppedge to include a locking member to hold the ram and the ram piston, which is fixed to the ram relative to their common reciprocating axis, in the closed positions to permit the actuator to be deactivated as Le Rouax teaches (col. 13, lines 53-57), which would improve the efficiency of the apparatus by saving energy and/or resources like electrical power and hydraulic fluid.
Allowable Subject Matter
Claims 4-5 and 7-8 would be allowable if rewritten to overcome the double patenting rejections set forth in this Office action, or if the proper terminal disclaimer is filed, and to include all of the limitations of the base claim and any intervening claims.
Claim 20 would be allowable if rewritten or amended to overcome the double patenting rejection set forth in this Office action, or if the proper terminal disclaimer is filed.
Claim 9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action, and if the double patenting rejections were overcome by the claims being rewritten or the proper terminal disclaimer being filed, and to include 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. The prior art fails to disclose or render obvious, in combination with the other limitations recited:
regarding claim 4, a top side of the intensifier piston offset from the first end of the intensifier piston;
regarding claim 7, a secondary fluid source to provide fluid to the second end of the intensifier piston; and
regarding claim 20, the use of compressible fluid in a clearance space to provide biasing to the intensifier piston.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner Jonathan Waddy, whose telephone number is 571-270-3146. The examiner can normally be reached on Monday-Friday (10:00AM-6:00PM EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors can be reached by phone. Kenneth Rinehart can be reached at 571-272-4881 or Craig Schneider can be reached at 571-272-3607. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J. W./
Examiner, Art Unit 3753
/KENNETH RINEHART/Supervisory Patent Examiner, Art Unit 3753