DETAILED CORRESPONDENCE
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/15/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the bellow(s) (claims 5,11,12,16,20), electric wire (claim 9), electric wire splice (claim 10), and choke sleeve (claim 13) must be shown or the feature(s) canceled from the claim(s). See the related Section 112(a) rejections. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because of (a) the complete absence of reference numerals, such numerals being required for all claimed structure and structures referenced in the specification, with corresponding numeral references being necessary for the specification as well, (b) the presence of text in Figs. 1-3B, removal of such text being required, (c) the use of a single Fig. number for two distinct figures (Fig. 1), and (d) the lack of explanatory cross-section view indicators on the figures from which each of the sections of Figs. 4A, 4B, and 4C are taken (probably each of Figs. 3A-3D. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
(a) The abstract of the disclosure is objected to because “are provided” is implied and should be deleted. Correction is required. See MPEP § 608.01(b).
(b) The specification is objected to as indicated below. Correction is required.
(1) At paragraph [0019], the specification incorrectly indicates that the drawings show that the electric wire comes out of the bottom or downhole end of the electronics cartridge and/or unit containing the electronics cartridge. The drawings do not show the electric wire. The text should be amended to correct the mistake.
(2) At paragraph [0017], the phrase “located on a single housing” is an apparent typo of “located in a single housing”.
(3) At paragraph [0017], the word “ration” should be “ratio”.
(4) At paragraph [0023], the word “substnantially” should be “substantially”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 5 and 9-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 9 The specification does not describe the wire beyond a mere position with respect to the second unit, with no description as to what the wire connects to or does. The wire is not shown in the drawings. Claim 10 depends from claim 9.
Claims 5, 11, 12, 16, and 20 The specification does not describe the bellow(s) beyond a mere statement of function without describing how the functions are accomplished nor the related structures. The bellow(s) is/are not shown in the drawings.
Claim 10 The specification does not describe the wire beyond a mere position with respect to the second unit, with no description as to what the wire splices to or does. The wire is not shown in the drawings.
Claim 13 The specification does not describe the choke sleeve or any structures which might indicate the positioning and/or related functionality. The choke sleeve is not shown in the drawings. Claims 14-20 depend from claim 13.
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 13-20 are 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 pre-AIA the applicant regards as the invention.
Claim 13 It is unclear what is meant by “at least partially circumferentially aligned”. Based on specification paragraph [0023], the examiner assumes that an end view places both within a circumference, such as that defined by the housing, but without sharing a common longitudinal axis. Claims 14-20 depend from claim 13.
Claim 18 and 19 It is unclear what units and/or method of determining a quantitative value for eccentricity, e.g., 0.5 or 0.3, are intended. Based on specification paragraph [0023], the examiner has assumed that eccentricity is generally indicated by the extent to which the inside passage is offset from a concentric position with respect to the housing.
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 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, 2, 11-13, and 20, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Prost (US20210254431).
Claim 1 Prost discloses an electro-mechanical actuator (EMA) assembly [Figs. 1-8; abstract; para. 0006,0033,0040,0043] comprising:
an actuator 200 [Figs. 3,4; para. 0042,0043]; and
an electronics cartridge 230, wherein the actuator and electronics cartridge are disposed parallel to each other [Figs. 3,4].
Claim 2 Prost, as discussed with respect to claim 1, discloses a single housing 118, the actuator and electronics cartridge disposed in the single housing [Figs. 2-4; para. 0040,0042].
Claim 11 Prost, as discussed with respect to claim 1, discloses a bellows 288 configured to compensate volume changes due to extension and/or retraction of the actuator in use [para. 0043,0047-0051].
Claim 12 Prost, as discussed with respect to claim 1, discloses a first and second bellows 288, the first bellows configured to compensate volume changes of dielectric fluid associated with the actuator due to pressure and temperature changes downhole, and the second bellows configured to compensate volume changes due to extension and/or retraction of the actuator in use [para. 0043,0047-0051].
Claim 13 As discussed with respect to claim 1, Prost discloses a flow control valve [Figs. 1-8; title; abstract; para. 0006,0033,0040,0043] comprising:
a generally cylindrical housing 118;
a choke sleeve 104 disposed within the housing [Fig. 1; para. 0039] and
an electro-mechanical actuator (EMA) assembly housed by the housing, the EMA assembly comprising:
an actuator 200 [Figs. 3,4; para. 0042,0043];
an electronics cartridge 230, the actuator and electronics cartridge disposed parallel to and at least partially circumferentially aligned with each other [Figs. 3,4]. See the related Section 112(b) rejection.
Claim 20 Prost, as discussed with respect to claim 13, discloses a first and second bellows 288, the first bellows configured to compensate volume changes of dielectric fluid associated with the actuator due to pressure and temperature changes downhole, and the second bellows configured to compensate volume changes due to extension and/or retraction of the actuator in use [para. 0043,0047-0051].
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 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.
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.
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.
Claims 3-5, 7, 8, 14, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Prost, in view of Hiron et al. (US6499541) [Hiron].
Claim 3 Prost, as discussed with respect to claim 1, otherwise discloses all the limitations of this claim, but does not explicitly disclose that the actuator is enclosed in a first welded and sealed unit, and the electronics cartridge is enclosed in a second welded and sealed unit.
Hiron discloses a housing 20 with an inside passage 22 for electrical device components 26, including actuators, wherein the components are in welded and sealed units running parallel in the housing in welded 35,39,46 and sealed tubes 28, the units being coupled at a junction box 30 [Figs. 3,4; abstract; col. 1, lines 20-24, col. 4, line 38 – col. 6, line 43].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the apparatus and methods of Prost to position the actuator and electronics cartridge in respective welded and sealed units in a housing, coupled to a junction box to complete the welding/sealing, as disclosed by Hiron. One of ordinary skill in the art would reasonably have expected that this combination of prior art elements and techniques would have been within the skill of the art and would successfully yield and achieve the expected and predictable result that protection for the components would be enhanced.
Claim 4 Prost, as modified with respect to claim 3, discloses that the first unit contains dielectric fluid [para. 0043].
Claim 5 Prost, as modified with respect to claim 4, discloses that a bellows 288 configured to compensate volume changes of the dielectric fluid due to pressure and temperature changes downhole [para. 0043,0047-0051].
Claim 7 Prost, as modified with respect to claim 3, discloses a junction box [Hiron 30; as discussed herein at claim 3] coupling the first and second units [e.g., for the electronics 230 to control the actuator(s) 200; Fig. 3; para. 0042].
Claim 8 Prost, as modified with respect to claim 7, discloses that the junction box has a curved shape or profile [Figs. 3,4; col. 5, lines 20-30].
Claim 14 Prost, as discussed with respect to claim 13, otherwise discloses all the limitations of this claim, but does not explicitly disclose that the actuator is enclosed in a first welded and sealed unit, and the electronics cartridge is enclosed in a second welded and sealed unit.
Hiron discloses a housing 20 with an inside passage 22 for electrical device components 26, including actuators, wherein the components are in welded and sealed units running parallel in the housing in welded 35,39,46 and sealed tubes 28, the units being coupled at a junction box 30 [Figs. 3,4; abstract; col. 1, lines 20-24, col. 4, line 38 – col. 6, line 43].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the apparatus and methods of Prost to position the actuator and electronics cartridge in respective welded and sealed units in the housing, coupled to a junction box to complete the welding/sealing, as disclosed by Hiron. One of ordinary skill in the art would reasonably have expected that this combination of prior art elements and techniques would have been within the skill of the art and would successfully yield and achieve the expected and predictable result that protection for the components would be enhanced.
Claim 17 Prost, as modified with respect to claim 14, discloses that a junction box [Hiron 30; as discussed herein at claim 3] coupling the first and second units [e.g., for the electronics 230 to control the actuator(s) 200; Fig. 3; para. 0042], and further discloses that the junction box has a curved shape or profile [Figs. 3,4; col. 5, lines 20-30].
Claims 6, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Prost, in view of Hiron, and further in view of Schultz et al. (US20040226720) [Schultz].
Claim 6 Prost, as modified with respect to claim 3, otherwise discloses all the limitations of this claim, but does not explicitly disclose that the second unit contains inert gas.
Shultz discloses electronic components 106 positioned in a housing 50 [e.g., at 104] and protected by being surrounded by an inert gas [Figs. 3I,3J,5; para. 0064].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the apparatus and methods of Prost, as modified, to have the second unit contain inert gas, as disclosed by Schultz. One of ordinary skill in the art would reasonably have expected that this combination of prior art elements and techniques would have been within the skill of the art and would successfully yield and achieve the expected and predictable result that the components would be protected.
Claim 15 Prost, as modified with respect to claim 14, discloses that the first unit contains dielectric fluid [para. 0043], and otherwise discloses all the limitations of this claim, but does not explicitly disclose that the second unit contains inert gas.
Shultz discloses electronic components 106 positioned in a housing 50 [e.g., at 104] and protected by being surrounded by an inert gas [Figs. 3I,3J,5; para. 0064].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the apparatus and methods of Prost, as modified, to have the second unit contain inert gas, as disclosed by Schultz. One of ordinary skill in the art would reasonably have expected that this combination of prior art elements and techniques would have been within the skill of the art and would successfully yield and achieve the expected and predictable result that the components would be protected.
Claim 16 Prost, as modified with respect to claim 15, discloses that a bellows 288 configured to compensate volume changes of the dielectric fluid due to pressure and temperature changes downhole [para. 0043,0047-0051].
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Prost, in view of Hiron, and further in view of Lisk et al. (US20210140288) [Lisk].
Claim 9 Prost, as modified with respect to claim 3, discloses that an electrical power cable provides electrical power to the valve [para. 0035], and further discloses multiple flow control valves in a well’s completion [para. 0003,0035], and otherwise discloses all the limitations of this claim, but does not explicitly disclose that an electric wire extends downhole from a bottom or downhole end of the second unit.
Lisk discloses multiple electric flow control valves 14,140 in a completion, wherein a power cable 40 extends downhole from a bottom of a valve’s electronic section 240 to provide power to the next valve below such valve [Figs. 1A-2C; para. 0053-0057,0062,0063].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the apparatus and methods of Prost, as modified, to extend a power cable/wire from a bottom or downhole end of the second unit. One of ordinary skill in the art would reasonably have expected that this combination of prior art elements and techniques would have been within the skill of the art and would successfully yield and achieve the expected and predictable result that the power cable/wire would be positioned for providing electrical power to the next electric flow control valve downhole from the second unit.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Prost, in view of Hiron and Lisk, and further in view of Semple et al. (US20140335712) [Semple].
Claim 10 Prost, as modified with respect to claim 9, otherwise discloses all the limitations of this claim, but does not explicitly disclose that a splice to the electric wire is made below or downhole of a downhole tool comprising the EMA assembly.
Semple discloses splicing 131 two power cable ends 111,112,640,641 that are present in a downhole environment [Figs. 1,6,7; para. 0009,0033-0036,0044,0047,0048].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the apparatus and methods of Prost, as modified, to not only extend a power cable/wire from a bottom or downhole end of the second unit, but also to provide a splicing connector to join such extension to a power cable segment attached to the next valve downhole, the splicing and splicing connector being disclosed by Semple in a wellbore environment. One of ordinary skill in the art would reasonably have expected that this combination of prior art elements and techniques would have been within the skill of the art and would successfully yield and achieve the expected and predictable result that the power cable between the two valves could be assembled in the field, negating the need to transport multiple valves already connected by a single power cable with no separation.
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Prost.
Claim 18 Prost, as discussed with respect to claim 13, otherwise discloses all the limitations of this claim, but does not explicitly disclose that the flow control valve has an eccentricity less than 0.5.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have sized and positioned the actuator and electronics cartridge to minimize the amount to which the inside passage is offset from concentricity with respect to the housing, thus reducing eccentricity such that the eccentricity is within the claimed range, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable range involves only routine skill in the art. “[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). MPEP 2144.05I. See the related Section 112(b) rejection.
Claim 19 Prost, as discussed with respect to claim 13, otherwise discloses all the limitations of this claim, but does not explicitly disclose that the flow control valve has an eccentricity less than 0.3.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have sized and positioned the actuator and electronics cartridge to minimize the amount to which the inside passage is offset from concentricity with respect to the housing, thus reducing eccentricity such that the eccentricity is within the claimed range, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable range involves only routine skill in the art. “[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). MPEP 2144.05I. See the related Section 112(b) rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Holder et al. (US20200141506) discloses parallel positioning of tubes 7,8 having actuator and electrical components in holes drilled in the wall of a housing [Figs. 1-3B; para. 0020]. Walton et al. (US20200248531) discloses an actuator 108 and electronics 112 position between an inner passage 106 and a housing exterior [Figs. 1A,1B; para. 0012,0013]. Pringle (US6148843) discloses parallel positioning of actuator and electrical components between an inner passage and a housing 14 exterior [Figs. 1A-1C,6,7].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE STERLING GRAY whose telephone number is (313)446-4820. The examiner can normally be reached 7-4 Eastern - M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tara Schimpf can be reached at 571-270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GEORGE S GRAY/ Primary Examiner, Art Unit 3676
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