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 Amendment
The Amendment filed 10/15/25 has been entered. Claims 1-14 are pending in the application. Claims 12-14 are new, but are misnumbered and will be renumbered as 26-28 (see below).
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered claims 12-14 been renumbered as claims 26-28.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 6-10, 26, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Hanson et al. (US 2017/0328158). With respect to independent claim 1, Hanson discloses a debris separator ([0002], [0032], and Figs. 1, 4, and 6), comprising: a housing ([0036] and Fig. 4, container 380) having an inlet end, an outlet end, and an internal bore therebetween having a tapered discharge transitioning to the outlet end ([0022], [0027], [0036], [0038], [0040], and Figs. 1, 4, and 6); and a filter basket ([0017]-[0019] and Figs. 1 and 4, mesh screen housing 130) connected to the housing at the inlet end and extending into the internal bore, thereby forming an annulus between the filter basket and the housing ([0017]-[0019], [0025], [0040], and Figs. 1 and 4), the filter basket having a mesh size selected to pass a slurry therethrough and retain solid objects of a larger size ([0017]-[0019], [0025], [0032], [0040], and Fig. 6).
Regarding claim 1, Hanson discloses a debris separator comprising a filter sized such that it “can be used to remove… debris or other solids from a hydrocarbon production process” such as “a hydraulic fracturing operation” ([0032], [0040], and Fig. 6). However, Hanson fails to expressly disclose wherein the debris or other solids which are separated explicitly includes proppant. The Office considers filtering a proppant as a common and well-known practice in the art, and as such, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to consider the “debris or other solids [from] a hydraulic fracturing operation,” as disclosed by Hanson, to include “a slurry of proppant,” as instantly claimed.
With respect to depending claims 2 and 3, Hanson discloses wherein the slurry of proppant passes through the filter basket and into the annulus, thereby retaining the solid objects within the filter basket ([0017]-[0019], [0025], [0032], [0040], and Figs. 1, 4, and 6). Regarding wherein the proppant alternatively passes from the annulus and into the filter basket, as claimed in claim 3, since Hanson discloses passing a slurry through a filter and into the annulus to retain solid objects, the act of alternatively passing the slurry from the annulus and into the filter to retain solid objects amounts to nothing more than choosing from a finite number of possible and predictable solutions, as it has been taught "When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person having ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR at 1397
With respect to depending claim 4, Hanson discloses further comprising an inlet connector connected to the filter basket adjacent the inlet end and configured to receive the slurry ([0018] and Figs. 1 and 4). However, Hanson fails to expressly disclose the presence of a blender. The Office considers it well known in the art that debris separator systems further comprise additional components, such as a blender. Furthermore, the claim merely recites “and configured to receive the slurry from a blender” and not “and receives slurry from a blender,” i.e., the connector merely possesses the configuration such that a blender may theoretically be connected, but not that the connector needs necessarily actually be connected to a blender.
With respect to depending claim 6, which is dependent upon claim 4, Hanson discloses an inlet connector comprises a connection end for receiving flows of the slurry ([0018] and Figs. 1 and 4). Although silent to the presence of more than one connection end and inlet flows, i.e., “a plurality of connections ends for receiving a plurality of flows,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to consider a duplication of the connection ends and multiple flows as claimed since duplicating a disclosed part amounts to nothing more than an obvious matter of design choice. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)
With respect to depending claims 7 and 8, Hanson discloses wherein the mesh size may range between 300 to 1000 microns ([0019] and [0025]). Although silent to wherein the mesh size may be “120 mesh to 2 inches” or “1/16 inch to 1 inch,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a mesh size as claimed insofar as because it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) With respect to depending claims 9 and 10, Hanson discloses wherein the filter has an outer diameter which may be between about 4 inches and 12 inches, and an annulus created by the presence of a housing (container 380) ([0016], [0028], [0036], and Figs. 1 and 4). Although silent to wherein the relationship between the annulus and the filter diameter is “from about 2 to 50%” or “from about 5 ro 25%,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a size relationship as claimed insofar as because it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
With respect to independent claim 26, Hanson discloses a debris separator ([0002], [0032], and Figs. 1, 4, and 6), comprising: a housing ([0036] and Fig. 4, container 380) having an inlet end, an outlet end, and an internal bore therebetween having a tapered discharge transitioning to the outlet end ([0022], [0027], [0036], [0038], [0040], and Figs. 1, 4, and 6); and a filter basket ([0017]-[0019] and Figs. 1 and 4, mesh screen housing 130) connected to the housing at the inlet end and extending into the internal bore, thereby forming an annulus between the filter basket and the housing ([0017]-[0019], [0025], [0040], and Figs. 1 and 4), the filter basket having a mesh size selected to pass a slurry therethrough and retain solid objects of a larger size ([0017]-[0019], [0025], [0032], [0040], and Fig. 6); an inlet connector connected to the filter basket adjacent the inlet end ([0007], [0018], [0036]-[0040], and Figs. 4 and 6); an outlet connector connected to the housing at the outlet end ([0007], [0019], [0036]-[0040], and Figs. 4 and 6);
wherein the inlet connector is at a different height elevation than the outlet connector ([0007], [0018], [0019], [0036]-[0040], and Figs. 4 and 6).
Regarding claim 26, Hanson discloses a debris separator comprising a filter sized such that it “can be used to remove… debris or other solids from a hydrocarbon production process” such as “a hydraulic fracturing operation” ([0032], [0040], and Fig. 6). However, Hanson fails to expressly disclose wherein the debris or other solids which are separated explicitly includes proppant. The Office considers filtering a proppant as a common and well-known practice in the art, and as such, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to consider the “debris or other solids [from] a hydraulic fracturing operation,” as disclosed by Hanson, to include “a slurry of proppant,” as instantly claimed.
With respect to depending claim 28, Hanson discloses an inlet connector comprises a connection end for receiving flows of the slurry ([0018] and Figs. 1 and 4). Although silent to the presence of more than one connection end and inlet flows, i.e., “a plurality of connections ends for receiving a plurality of flows,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to consider a duplication of the connection ends and multiple flows as claimed since duplicating a disclosed part amounts to nothing more than an obvious matter of design choice. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)
Claims 5 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Hanson et al. (US 2017/032158), as evidenced by Boyd et al. (US 8,623,221).
With respect to depending claims 5 and 27, Hanson discloses further comprising an outlet connector connected to the housing at the outlet end and configured to discharge the slurry ([0038] and Figs. 1 and 4). However, Hanson fails to expressly disclose the presence of a manifold. The Office considers it well known in the art that debris separator systems further comprise additional components, such as a manifold connected to an outlet of a housing, as evidenced by Boyd (Abstract and col. 3 lines 43-53).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Hanson et al. (US 2017/032158), as evidenced by Hiracheta et al. (US 10,399,029).
With respect to depending claim 11, Hanson discloses flowing a fluid comprising debris and/or solids into a separator (Abstract). However, he fails to expressly disclose wherein the separator comprises one or more pressure gauges or transducers, as instantly claimed. The Office considers it well known in the art that debris separator systems further comprise additional components, such as pressure gauges or transducers, as evidenced by Hiracheta (Abstract and col. 3 lines 36-38).
Response to Arguments
Applicant's arguments filed 10/15/25 have been fully considered but they are not persuasive.
Applicant argues that “the purpose of the tapered discharge adjacent to the outlet end is to provide a smooth bore transition and reduce or prevent sand or other proppants from packing off within the housing as the slurry is discharged from the debris separator… Hanson does not provide any purpose or reasoning for having a tapered or sloped outer diameter.” The Examiner notes that these features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that “Hanson also fails to teach that the tapered/sloped diameter is at an internal bore transitioning to the outlet end.” The Examiner finds this argument unpersuasive. Hanson discloses spaced apart supports along the entire length of the housing, wherein the supports “provide a tapered or sloped outer diameter” ([0022]). The “outlet end” has these tapered supports and therefore Hanson does indeed disclose “that the tapered/sloped diameter is at an internal bore transitioning to the outlet end.” Applicant argues that Hanson fails to disclose a manifold. This argument is rendered moot in view of the evidentiary support provided (see above).
Applicant argues that Hiracheta “fails to teach ‘a housing having an inlet end, an outlet end, and an internal bore therebetween having a tapered discharge transitioning to the outlet end.’” The Examiner notes that Hiracheta is not being relied upon to teach this feature. Applicant argues that Hanson fails to disclose the new limitations of an inlet connector, an outlet connector, and wherein said connectors are at different heights. The Examiner finds this argument unpersuasive. Hanson discloses an inlet comprising a sealing material and surrounding piping and an outlet, at a different height, comprising a cap and flow diverter. Inasmuch as a “connector” has not been defined in the claim, components connected to the inlet and outlet anticipate claims to “an inlet connector” and “an outlet connector.”
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 AVI T. SKAIST whose telephone number is (571)272-9348. The examiner can normally be reached M-F 9:30-6.
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/AVI T SKAIST/Examiner, Art Unit 3674
/WILLIAM D HUTTON JR/Supervisory Patent Examiner, Art Unit 3674