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 Objections
Claims 1-12 are objected to because of the following informalities:
MPEP 608.01(m) Form of Claims, states “Claims should preferably be arranged in order of scope so that the first claim presented is the least restrictive. All dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable. Where separate species are claimed, the claims of like species should be grouped together where possible. Similarly, product and process claims should be separately grouped. Such arrangements are for the purpose of facilitating classification and examination.”
In this case, claim 1 is more restrictive than claim 2.
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 1-8 rejected 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.
Claim 1 recites “an associated primary fluid supply channel” in both sections a2 and b1.Are these the same or different elements? This make the claim unclear.
Claim 1 recites “a manifold fluid inlet port” in both sections b1 and b2. Are these the same or different elements? This make the claim unclear.
Claim 1 recites “a secondary fluid supply channel” in a1 and “an associated secondary fluid supply channel” in b2 . Are these the same or different elements? This make the claim unclear.
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.
Claim(s) 2, and 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 11365586 B2 to Chambers in view of US 11371288 B2 to D’Silva.
Regarding claim 2: Chambers discloses Claim 2 (original) a steering tool for drilling deviated wellbores (abstract; col. 3, lines 63-67), said steering tool having a generally cylindrical tool housing (fig. 3,210) and a longitudinal tool axis, and further comprising:
(a) a steering head (Fig. 2, 225) having an upper end coaxially and co-rotatingly mountable to the tool housing, a lower end configured for connecting to a drill bit (fig. 3, 102), and a steering head bore extending between said upper and lower ends of the steering head, and further comprising one or more banks of two or more pistons (fig. 3, 220, 224), each having a piston axis and being reciprocatingly movable within an associated piston chan1ber formed in the steering head, such that each piston is outwardly extendable to exert a force against a wellbore being drilled by the drill bit (col. 4, line 57 -col. 5, line 11), and wherein each piston chamber is in fluid communication with an associated fluid supply channel (fig. 3,222) extending to the upper end of the steering head for conveying fluid for actuating each piston;
(b) a fluid manifold (fig. 4,242) having an upper end and a lower end, with the lower end of the fluid manifold being coaxially and co-rotatingly mountable to the upper end of the steering head, said fluid manifold defining:
(b1) a plurality of manifold fluid passages equal in number to the number of pistons in each bank of pistons, with each manifold fluid passage extending between a manifold fluid inlet port on the upper end of the fluid manifold and a manifold fluid outlet port on the lower end of the fluid manifold, with each manifold fluid outlet being in fluid communication with an associated fluid supply channel of the steering head (fig. 3, fluid passage 242 fluidly connecting valve 230 with steering head 225); and
(b2) one or more fluid bypass channels (fig. 4,246) extending between an upper region of the fluid manifold and the lower end of the fluid manifold (fig. 6, bypass channel 246 fluidly connecting from upper region of manifold 240 and steering head 225); and a valve section (fig. 4, 230) disposed within the tool housing, said valve section defining a valve section annulus between the valve section and the tool housing, and comprising:
(c1) a rotationally geostationary primary valve (col. 5, lines 25-31) defining a fluid chamber proximal to a lower end of the primary valve, with said lower end of the primary valve being engageable with the upper end of the fluid manifold such that the fluid chamber will be in fluid communication with the manifold fluid inlet ports (col. 5, line 56 -col. 6, line 38);
wherein the primary valve comprises co-rotating flow restriction means configured to restrict the number of manifold fluid inlets in fluid communication with the fluid chamber at any given time as the fluid manifold and the steering head rotate relative to the prin1ary valve, and wherein a non-diverted portion of the fluid flowing in the valve section annulus can flow into the steering head bore via the one or more fluid manifold bypass channels ( col. 5, line 56 - col. 6, line 38; col. 7, line 56 - col. 8, line 5).
Chambers fails to disclose (c2) a secondary valve disposed within the tool housing and configured to divert a portion of a fluid flowing through the valve section annulus and to deliver the diverted fluid to the primary valve.
D’Silva teaches a steering tool comprising a secondary valve (Figs. 3 and 9, 122) disposed within the tool housing and configured to divert a portion of a fluid flowing through the valve section annulus and to deliver the diverted fluid to the primary valve (col. 4, lines 40-58, Col 8, lines 10- Col 9 , line 3).
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Chambers to include a secondary valve in this system, in the style of D’Silva, in view of D’Silva, so as to allow reduced wear on the pad pistons (Col 9 , lines 1- 3)
Regarding claim 9: Chambers discloses the claimed invention except Claim 9 (new) The steering tool as in Claim 2 wherein the secondary valve comprises a solenoid valve disposed above the primary valve.
D’Silva teaches a steering tool wherein the secondary valve comprises a solenoid valve disposed above the primary valve (col. 4, lines 40-58).
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Chambers to include a solenoid valve as part of the secondary valve in this system, in the style of D’Silva, in view of D’Silva, so as to allow reduced wear on the pad pistons (Col 9 , lines 1- 3). Furthermore this would amount to no more than combining prior art elements according to known methods to yield predictable results.
Regarding claim 10: Chambers discloses the claimed invention except Claim 10 (new) The steering tool as in Claim 2 wherein the secondary valve comprises a sleeve valve disposed and axially movable within the valve section annulus proximal to the fluid chamber of the primary valve.
D’Silva teaches a steering tool wherein the secondary valve comprises any number of types of valves (col. 4, lines 40-58, the examiner interprets a barrel valve as a type of sleeve valve).
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Chambers to include a sleeve valve as part of the secondary valve in this system, in the style of D’Silva, in view of D’Silva, so as to allow reduced wear on the pad pistons (Col 9 , lines 1- 3). Furthermore this would amount to no more than combining prior art elements according to known methods to yield predictable results.
Regarding claim 11: Chambers discloses Claim 11 (new) The steering tool as in Claim 2 wherein the flow restriction means allows only one manifold fluid inlet to be in fluid communication with the fluid chamber at any given time.(Figure 4)
Regarding claim 12: Chambers discloses the claimed invention except Claim 12 (new) The steering tool as in Claim 2 wherein the fluid manifold is fabricated by means of an additive manufacturing process.
The examiner interpreters this claims as a “product by process claim”, see MPEP 2113. As such, the claim is rejected as the claimed fluid manifold (end product) does not differ from the prior art, and “the court held that product-by-process claims were properly rejected as "anticipated by a disclosure of the same product irrespective of the processes by which they are made."
Furthermore, the method of manufacture of an item is a design choice, and It would have been an obvious matter of design choice to manufacture the manifold by an additive manufacturing process, since applicant has not disclosed that an additive manufacturing process solves any stated problem or is for any particular purpose and it appears that the invention would equally well with another manufacturing process that produces the identical part.
Allowable Subject Matter
Claims 1, 3-8 would be allowable if rewritten or amended 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20060090935 A1 discloses a steering apparatus with pads that are actively extended and actively retracted.
US 20020011358 A1 discloses a steering apparatus with pads with first and secondary valves for each pad.
US 20200392790 A1 discloses a steering apparatus with pads that pivot about a point and a controlled via a piston.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN MACDONALD whose telephone number is (571)272-8763. The examiner can normally be reached M-F 9:00-5:30 EST.
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/STEVEN A MACDONALD/ Primary Examiner, Art Unit 3674