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 .
Specification
The abstract of the disclosure is objected to because of an implied phrase “…is disclosed”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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, an actuator housing, a body of a valve and a subsea valve must be shown or the feature(s) canceled from the claim(s). 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.
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 16-28 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 16 recites “an actuator housing for housing an actuator, the actuator housing including a contact portion” and “a receptacle … configured to connect to a body of a valve” that is unclear what they are referring to because no drawing shows an actuator housing and a body of a valve.
Claims 16 and 28 respectively recite “a body of a valve” and “a body of the valve” that is confusing. Are they same body or separate body?
Claims 16, 18, 19, 22, and 28 respectively recite “the other of the first mating end face”, “the material of the contact portion”, “the respective protrusions”, and “the internal chamber”. There is insufficient antecedent basis for these limitations in the claims.
Claims 21 and 23 recite “when”. The use of the term "when" renders the claim indefinite because "when" indicates that the respective limitation is not required (the limitation is optional). Therefore, the examiner is unable to determine the metes and bounds of the claims.
Claim 24 recites “a subsea valve” that is uncle what it refers to because of no drawing shows a subsea valve.
Claim 23 is rejected as being dependent on claim 22.
Claims 25-28 are rejected as being dependent on claim 24.
Claims 17-28 are rejected as being dependent on claim 16.
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.
Claim(s) 16-25 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Clausen et al. (20180363380 – Clausen).
Clausen discloses a system, comprising:
Re claim 16 (as best understood, 112 issue):
an actuator housing 370A for housing an actuator 372 (i.e., fig. 13) the actuator housing including a contact portion 370B (and, i.e., pgh. 74, ‘each key 384 is receivable in either one of the short slots 376 or long slots 378 of lower adjustment mandrel 370’ - multiple contact portions in the slots 376 or 378 when they receive key 384. Please see instant application fig. 4 for key 221 and slot 223); and
a receptacle 380 (i.e., fig. 14) for receiving the actuator (i.e., pgh. 74, ‘each key 384 is receivable in either one of the short slots 376 or long slots 378 of lower adjustment mandrel 370’), the receptacle including:
a receptacle housing (i.e., 380 as a whole) having a proximal end, a distal end, and an internal chamber, the proximal end configured to connect to a body of a valve 330 (i.e., pgh. 75, ports for fluid communication – valve),
wherein the contact portion and the receptacle housing each have a longitudinal axis (i.e., figs. 13-14), wherein the contact portion has a first mating end face that faces axially and the receptacle housing has a second mating end face that faces axially (i.e., figs. 13-14),
wherein one of the first mating end face or the second mating end face has protrusions (i.e., fig.as 13-14), and the other of the first mating end face or the second mating end face defines corresponding recesses for receiving the protrusions 384, the respective protrusions 384 and recesses 376 or 378 configured to provide an anti- rotation interface between the first mating end face and the second mating end face (i.e., pgh. 74, rotation restricted) that absorb a reaction torque during valve actuation.
Re claim 17, the protrusions 384 extend radially and axially away on either the first mating end face or the second mating end face, and the recesses 376, 378 extend radially and axially away on the other of the first mating end face or the second mating end face.
Re claim 18 (as best understood, 112 issue), the second mating end face 380A has the protrusions 384 extending radially and axially away from the second mating end face, and the first mating end face 370B defines the correspondingly shaped recesses f376, 378 or receiving the protrusions 384, the recesses 376, 378 extending radially and axially away from the first mating end face 370B into the material (material of 384) of the contact portion (i.e., portion that contacts 383 when 376, 378 receive the key 384) .
Re claim 19 (as best understood , 112 issue), each of the first mating end face and the second mating end face (multiple mating surfaces between 376, 378 and 384 when the slot 376 or 378 receive the key 384) has the protrusions 384 and the recesses 376 384 for receiving the respective protrusions (i.e., pgh. 74, ‘each key 384 is receivable in either one of the short slots 376 or long slots 378 of lower adjustment mandrel 370’).
Re claim 20, one or more of the recesses 376, 378 have a pair of open radial ends (i.e., fig. 13).
Re claim 21 (as best understood, 112 issue), one or more of the protrusions 384 in confined within a boundary of the respective mating end face when viewed along the longitudinal axis (i.e., fig. 20).
Re claim 22 (as best understood, 112 issue), the proximal end of the receptacle housing 380 is configured to connect to the body of the valve 330 such that a drive element of the valve (i.e., pgh. 74, keys in the housing 320) is at least partly located in the internal chamber (i.e., slot 376, 378), and the distal end is configured to receive at least part of a drive mechanism 372 (372 with slots 376, 378) of the actuator such that the drive mechanism and the drive element engage within the internal chamber (i.e., slots - internal chambers).
Re claim 23 (as best understood, 112 issue), the receptacle housing 380 has an inner circumferential surface (i.e., between 384, fig. 14) defining a set of circumferential grooves (i.e., two grooves), wherein a portion of the drive mechanism 372 of the actuator has a corresponding set of circumferential ribs (i.e., between 376 and 378, fig. 13) for engaging the set of circumferential grooves so as to interlock the receptacle housing and the drive mechanism, wherein the set of circumferential grooves and the set of circumferential ribs are spaced apart from the protrusions and the corresponding recesses (i.e., figs. 13 and 14) when the subsea valve actuation system is assembled.
Re claim 24 (as best understood, 112 issue), a subsea valve 330 (i.e., pgh. 3, ‘the recovery of hydrocarbons or minerals from a subsurface formation’ – subsurface can be also the formation below the sea level – subsea valve) wherein the receptacle 380 is provided on the subsea valve (i.e., pgh. 75).
Re claim 25, comprising an actuator 372 for the subsea valve, wherein the contact portion 370B and multiple contact potion in 376, 378 is provided on the actuator.
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.
Claim(s) 26-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clausen.
Re claim 26, Clausen discloses the actuator comprises: the actuator housing 370A having a proximal end and a distal end; a mud motor 35 (i.e., fig. 1) located within the actuator housing; a drive mechanism 120 (i.e., pgh. 50, ‘driveshaft’) configured to be driven by the motor and engageable with the subsea valve; and wherein the contact portion is provided at the proximal end of the actuator housing 370A (i.e., fig. 3). Clausen is silent on an electric motor located within the actuator housing and a drive mechanism configured to be driven by the motor, However, an electrical motor is well known in the art. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to try the actuator of the Clausen with an electrical motor for energy efficiency, environmental advantages, versatility and ubiquity, economic and maintenance benefits, and technological advancement (https://www.bing.com/search?q=benefit+of+electrical+motor&cvid=86c8141647fb42a6a482679893a1b724&gs_lcrp=EgRlZGdlKgYIABBFGDkyBggAEEUYOTIGCAEQABhAMgYIAhAAGEAyBggDEAAYQDIGCAQQABhAMgYIBRAAGEAyBggGEAAYQDIGCAcQABhAMgYICBAAGEAyCAgJEOkHGPxV0gEINjA0N2owajeoAgCwAgA&FORM=ANAB01&PC=U531), since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious deign choice. In re Leshin, 125 USPQ 416.
Clausen further discloses,
Re claim 27, the contact portion is provided at the proximal end of the actuator housing (i.e. ,fig.13).
Re claim 28, the proximal end of the receptacle housing is configured to connect to a body of the valve such that a drive element of the valve is at least partly located in the internal chamber, and the distal end is adapted to receive at least part of a drive mechanism of the actuator such that the drive mechanism and the drive element engage within the internal chamber (this is pertinent to claim 22 above).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited prior art all show similar features to those of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YONG-SUK (PHILIP) RO whose telephone number is (571)270-5466. The examiner can normally be reached Monday-Friday 8:00-4:30.
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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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/YONG-SUK (PHILIP) RO/Primary Examiner, Art Unit 3676
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