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 .
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-2,11-12,18 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Tutton 2307171.
Referring to claims 1 and 11,Tutton discloses a system positioned in a wellbore formed in a subsurface formation comprising: a first solenoid ( 31) configured to generate a first solenoid actuation pulse in a first linear direction in response to the first solenoid being energized; a first shaft (30) configured to axially translate in the first linear direction with the first solenoid actuation pulse; a first gearing mechanism (28) coupled with the first shaft and configured to axially rotate in a first rotational direction with the first solenoid actuation pulse; and a second shaft (27) configured to move via the first gearing mechanism by a fixed incremental step with each first solenoid actuation pulse to modify an area of an orifice (see page 2, col 1, lines 45-57 each stroke can move gear a step to open the valve and col. 2lines 62-65).
Referring to claims 2 and 12, Tutton discloses the second shaft (27) is configured to move via the first gearing mechanism (28) in the first rotational direction.
Referring to claim 18, Tutton discloses a method comprising: energizing a first solenoid (31) positioned in a wellbore formed in a subsurface formation to generate a first solenoid actuation pulse in a first linear direction; axially translating a first shaft ( 30) in the first linear direction with the first solenoid actuation pulse; axially rotating a first gearing mechanism (28) in a first rotational direction with the first solenoid actuation pulse, wherein the first gearing mechanism is coupled with the first shaft; and moving a second shaft (27) via the first gearing mechanism by one fixed incremental step with the first solenoid actuation pulse to modify an area of an orifice (see page 2, col 1, lines 45-57 each stroke can move gear a step to open the valve and col. 2lines 62-65).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-2,11-12 and 18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Allowable Subject Matter
Claims 3-7,13-16 and 19 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: Referring to claims 3 and 13, the closes prior art to Tutton 2307171 does not teach or suggest the second shaft is coupled with a needle valve, and wherein the area of the orifice is modified via the needle valve in combination with the other limitations of the claim nor would the device disclosed by Tutton function as described in the specification if this modification was made.
Referring to claim 4, Tutton does not teach or suggest one or more springs coupled with the first shaft and configured to return the first gearing mechanism to a neutral position when the first solenoid is deenergized in combination with the other limitations of the claim nor would the device disclosed by Tutton function as described in the specification if this modification was made.
Referring to claims 5, 14, Tutton does not teach or suggest a second solenoid configured to generate a second solenoid actuation pulse in a second linear direction that is opposite the first linear direction when the second solenoid is energized, wherein the first shaft is configured to axially translate in the second linear direction with the second solenoid actuation pulse in combination with the other limitations of the claim nor would the device disclosed by Tutton function as described in the specification if this modification was made.
Referring to claim 19, Tutton does not teach or suggest energizing a second solenoid to generate a second solenoid actuation pulse in a second linear direction that is opposite the first linear direction; axially translating the first shaft in the second linear direction with the second solenoid actuation pulse; axially rotate the first gearing mechanism in a second rotational direction with the second solenoid actuation pulse; moving the second shaft via the first gearing mechanism in the second rotational direction to modify the area of the orifice in combination with the other limitations of the claim nor would the device disclosed by Tutton function as described in the specification if this modification was made.
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 GIOVANNA WRIGHT whose telephone number is (571)272-7027. The examiner can normally be reached M-F 8 am- 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at (571) 272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Giovanna Wright/ Primary Examiner, Art Unit 3672
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