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 .
DETAILED ACTION
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.
CLAIM INTERPRETATION
The presence of claim limitations that are preceded by the phrases “wherein” often raises a question as to the limiting effect of the claim limitations (see MPEP §2111.04). The Examiner has interpreted the limitations following the phrase “wherein” as positively being claimed (i.e. the claim limitations are required and/or the claim limitations following the “wherein clause” limits the structure), where “wherein” is being used as a transitional phrase.
Election/Restrictions
Claims 34 and 35 have been added that recites a flush port. A flush port is shown in Figure 5 that is directed to Species II, which is a non-elected species. Claims 34 and 35 have hereby been withdrawn as being directed to a non-elected Species. Claims 34 and 35 are eligible for rejoinder if they are based off of an allowable claim.
Claim Objections
Claim 7 is objected to because of the following informalities: claim 7 recites “the the plurality of filter openings”, where one “the” should be removed.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 1, 2, 4-5, 7, 14, 19-21, 23, 25-27, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over SNYDER (U.S. Patent Publication US 2010/0038142 A1) in view of RUDD (U.S. Patent 7,188,687 B2).
Regarding claim 1, SNYDER discloses: a drilling assembly (see Abstract) comprising:
a positive displacement drilling motor (54, 100, 120, 140, 160, 200, 220) containing a metal stator (110, 112; 122, 130, 132; 142; 162; 202; 222) (¶0035, ¶0044, ¶0049; ¶0051-¶0052; ¶0056; ¶0061) (see Figures 3-9), a metal rotor (104; 124; 144; 164; 210, 214; 234, 236) (¶0036; ¶0046, ¶0049; ¶0051-¶0052; ¶0056-¶0057; ¶0061) (see Figures 3-9) at least partially disposed within the metal stator (see Figures 2-6 and 8-9), and a motor gap defined between the metal rotor and a lobe of the metal stator (see ¶0034, ¶0043; ¶0048; ¶0050; ¶0055; ¶0060 that discloses a clearance cross sectional fit up to about eighty thousandths of an inch).
SNYDER fails to disclose a particle adjusting mechanism that is a metal filter screen. Specifically SYNDER fails to disclose a particle adjusting mechanism having a housing positioned upstream of the metal stator of the positive displacement drilling motor, the housing including an inner surface defining a central bore, the particle adjusting mechanism including a metal filter screen, the metal filter screen having an upper end, a lower end, a cylindrical outer surface, and an internal filter cavity, the particle adjusting mechanism including an annular space defined by the inner surface of the housing and the outer surface of the metal filter screen, the metal filter screen including a plurality of filter openings configured to provide a fluid passageway for a media flowing between the internal cavity and the annular space; wherein the particle adjusting mechanism is configured to adjust a solid particle condition of the media flowing through the particle adjusting mechanism to a treated condition in which any remaining solid particles in the media after flowing through the plurality of filter openings in the metal filter screen will travel through the motor gap without widening the motor gap to a failure gap size.
Regarding claim 1, RUDD teaches:
a particle adjusting mechanism (70) (see Figures 5, 6, 8, and 9) having a housing (115) positioned upstream of the metal stator of the positive displacement drilling motor (see Figures 8 and 9, Column 7, line 57 - Column 8, line 6), the housing including an inner surface defining a central bore (see Figures 8 and 9 that shows a central bore of the housing), the particle adjusting mechanism including a metal filter screen (72), the metal filter screen having an upper end (see Marked up Figure 8 of RUDD), a lower end (see Marked up Figure 8 of RUDD), a cylindrical outer surface (see Marked up Figure 8 of RUDD), and an internal filter cavity (the internal filter cavity is the cavity that the metal filter screen surrounds), the particle adjusting mechanism including an annular space defined by the inner surface of the housing and the outer surface of the metal filter screen (see Figures 8 and 9, where the housing is defined by (74) that has openings (76, 76A), and the metal filter screen is (72) that is located within the housing, therefore there is an annular space defined by the inner surface of the housing and the outer surface of the metal filter screen, since there are two separate components that inherently have space between them in order to allow for the difference in the filtering, where the housing has openings (76, 76A) to provide one filtering, and the metal filter screen has other openings (75, 75A) to further filter the fluid), the metal filter screen including a plurality of filter openings (75, 75A) configured to provide a fluid passageway for a media flowing between the internal cavity and the annular space (see Figures 8 and 9, Column 6, line 66 – Column 7, line 28);
wherein the particle adjusting mechanism is configured to adjust a solid particle condition of the media flowing through the particle adjusting mechanism to a treated condition in which any remaining solid particles in the media after flowing through the plurality of filter openings in the metal filter screen will travel through the motor gap without widening the motor gap to a failure gap size (the claimed limitation directed to “the particle adjusting mechanism is configured to adjust a solid particle condition of the media flowing through the particle adjusting mechanism to a treated condition in which any remaining solid particles in the media after flowing through the plurality of filter openings in the metal filter screen will travel through the motor gap without widening the motor gap to a failure gap size” is considered as a functional limitation. It should be appreciated that the applicant’s functional language in the claims does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. See MPEP 2114. Furthermore, RUDD is capable of performing the claimed function since the particle adjusting mechanism (i.e. filter(s)) are used to adjust the solid particle condition of a media flowing through it (i.e. filtering out the solid particles that are within a specific size) that would then travel to the components downstream of the filters, thereby meeting the functional limitation).
It would have been obvious to a person having ordinary skill in the art at the time of the invention was made to have a particle adjusting mechanism having a housing positioned upstream of the metal stator of the positive displacement drilling motor, the housing including an inner surface defining a central bore, the particle adjusting mechanism including a metal filter screen, the metal filter screen having an upper end, a lower end, a cylindrical outer surface, and an internal filter cavity, the particle adjusting mechanism including an annular space defined by the inner surface of the housing and the outer surface of the metal filter screen, the metal filter screen including a plurality of filter openings configured to provide a fluid passageway for a media flowing between the internal cavity and the annular space; wherein the particle adjusting mechanism is configured to adjust a solid particle condition of the media flowing through the particle adjusting mechanism to a treated condition in which any remaining solid particles in the media after flowing through the plurality of filter openings in the metal filter screen will travel through the motor gap without widening the motor gap to a failure gap size in the drilling assembly of SNYDER, since utilizing removing solid particles from the media with a metal filter screen is well known in the art as evidence by RUDD. It would require only routine skill in the art to utilize a particle adjusting mechanism that includes a metal filter screen in order to keep solid particles from entering the drilling assembly, which would prevent damage from these particles.
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Regarding claim 2, SNYDER fails to disclose: the failure gap size is a size of the motor gap that causes the metal rotor to lock up within the metal stator or to slow down to a reduced rotational rate that renders drilling inefficient.
It would be obvious to a person having ordinary skill in the art at the time of the invention was made to determine that a particle size that is larger than the ”largest particle size” would be a failure gap size, since a particle above the largest particle size expected would not be able to pass between the metal stator and metal rotor of SNYDER due to the limitation of the flexibility of the components. Furthermore, it would have been obvious to a person having ordinary skill in the art at the time of the invention was made to have the failure gap size is a size of the motor gap that causes the metal rotor to lock up within the metal stator or to slow down to a reduced rotational rate that renders drilling inefficient in the drilling assembly of SNYDER, since the metal stator and metal rotor of SNYDER have a limited flexibility, thereby, a failure gap size would obviously be a size of the motor gap that causes the metal rotor to lock up or to slow down due to the inability of a particle above the largest particle size to pass between the metal stator and metal rotor.
Regarding claim 4, the modified drilling assembly of SNYDER/RUDD discloses: in the treated condition any remaining solid particles in the media fit through the motor gap (the claimed limitation directed to “in the treated condition any remaining solid particles in the media fit through the motor gap” is considered as a functional limitation. It should be appreciated that the applicant’s functional language in the claims does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. See MPEP 2114. Furthermore, the modified drilling assembly of SNYDER/RUDD is capable of performing the claimed function, since RUDD is designed to filter out the larger solid particle that is expected to pass through the motor, and therefore, any remaining solid particles in the media will fit through the motor gap).
Alternatively, it would have been obvious to a person having ordinary skill in the art at the time of the invention was made to have in the treated condition any remaining solid particles in the media fit through the motor gap in the modified drilling assembly of SNYDER/RUDD, in order to protect the motor from damage and wear, since solid particles that cannot fit thru the motor gap would obviously get stuck causing the motor to stop, get clogged, or to damage the motor.
Regarding claim 5, SNYDER discloses: a size of the motor gap is 0.005 inches to 0.020 inches (see ¶0034, ¶0043; ¶0048; ¶0050; ¶0055; ¶0060 that discloses a clearance cross sectional fit up to about eighty thousandths of an inch (.008 inch), which is within the claimed range, thereby meeting the claimed limitation).
Regarding claim 7, RUDD further teaches: the solid particle condition is an amount of solid particles contained in the media (this limitation is merely stating what is considered to be the solid particle condition, which the modified drilling assembly of SNYDER/RUDD has a solid particle condition due to solid particles contained in the media); wherein the plurality of filter openings in the metal filter screen is configured to remove at least a portion of any solid particles contained in the media (the claimed limitation directed to “the plurality of filter openings in the metal filter screen is configured to remove at least a portion of any solid particles contained in the media” is consider as a functional limitation. It should be appreciated that the applicant’s functional language in the claims does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. See MPEP 2114. Furthermore, RUDD is capable of performing the claimed function, since the particle adjusting mechanism (i.e. filters of RUDD) are configured to remove at least a portion of any solid particles contained in the media since the filters have openings where larger size particles are not able to pass thru).
Regarding claim 14, RUDD further teaches: the solid particle condition is a size, a dimension, or a shape of any solid particles contained in the media (this limitation is merely stating what is considered to be the solid particle condition, which a solid particle condition being a size, a dimension, or a shape of any solid particles contained in the media is met since RUDD discloses solid particles in the media); wherein the plurality of filter openings in the metal filter screen is configured to reduce the size, reduce the dimension, deform, or modify the shape of at least a portion of any solid particles contained in the media (see Figures 5, 6, 8, and 9, that shows the metal filter screen is configured to reduce the size, reduce the dimension, deform, or modify the shape of at least a portion of any solid particles contained in the media, since it keeps larger sized particles from entering thru the metal filter screen thereby reducing the size of the solid particles in the media).
Regarding claim 19, SNYDER discloses: the positive displacement drilling motor is a Moineau motor (¶0004).
Regarding claim 20, the modified drilling assembly of SNYDER/RUDD as discussed above in claim 1 would inherently perform the method of drilling a subterranean wellbore as claimed in claim 20.
Regarding claim 21, the modified drilling assembly of SNYDER/RUDD as discussed above in claim 4 would inherently perform the method of drilling a subterranean wellbore as claimed in claim 21.
Regarding claim 23, the modified drilling assembly of SNYDER/RUDD as discussed above in claim 7 would inherently perform the method of drilling a subterranean wellbore as claimed in claim 23.
Regarding claim 25, the modified drilling assembly of SNYDER/RUDD as discussed above in claim 7 would inherently perform the method of drilling a subterranean wellbore as claimed in claim 25.
Regarding claim 26, the modified drilling assembly of SNYDER/RUDD as discussed above would inherently perform the method of drilling a subterranean wellbore since the solid particles that are filtered out as disclosed by RUDD would inherently be collected between the metal filter screen and the housing (i.e. the annular space), since these solid particles are unable to pass thru the metal filter screen thereby, having them remain in the annular space.
Regarding claim 27, the modified drilling assembly of SNYDER/RUDD discloses: the plurality of filter openings comprises a first set of filter openings (76) and a second set of filter openings (75), the second set of filter openings being downstream of the first set of filter openings (see Figures 5 and 8, where the second set of filter openings is located downstream due to being inside of (74)), and wherein step (b) further comprises collecting a first portion of the solid particles of a first size range contained in the media using the first set of filter openings and collecting a second portion of the solid particles of a second size range contained in the media using the second set of filter openings (see Figures 5 and 8); wherein the first size range is larger than the second size range (see Figures 5 and 8, where the first size is larger in diameter due to the second size range is a thin slot).
Regarding claim 30, the modified drilling assembly of SNYDER/RUDD as discussed above in claim 14 would inherently perform the method of drilling a subterranean wellbore as claimed in claim 30.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over the modified drilling assembly of SNYDER/RUDD as applied to claim 1 above, and further in view of PAFITIS (U.S. Patent 6,241,494 B1).
Regarding claim 3, SNYDER discloses: that the motor gap is .008 inches (see ¶0034, ¶0043; ¶0048; ¶0050; ¶0055; ¶0060 that discloses a clearance cross sectional fit up to about eighty thousandths of an inch), however, fails to disclose the failure gap size is greater than 0.020 inches.
Regarding claim 3, PAFITIS discloses that the gap size was between .023+ 0.005 inches (see Column 4, lines 22-25), and that the gap size is designed for the largest solid particle expected to pass through the motor (Column 3, lines 48-57).
It would have been obvious to a person having ordinary skill in the art at the time of the invention was made to have the failure gap size is greater than 0.020 inches in the modified drilling assembly of SNYDER/RUDD, since PAFITIS discloses that the gap size (negative interference) is larger than 0.020 inches and that the gap size is designed to allow the “largest solid particles to pass through the motor” (i.e. where the largest solid particle sets up the failure gap size (see discussion above)).
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over the modified drilling assembly of SNYDER/RUDD as applied to claim 23 above, and further in view of legal precedent.
Regarding claim 24, SNYDER discloses that it is well knowns to have high temperatures in the subterranean wellbore (see ¶0010 and ¶0042), however, fails to specifically disclose that the temperature within the subterranean wellbore is between 320°F and 1110°F.
The specification does not disclose the criticality of the temperature range being between 320° F. and 1110° F being in the subterranean wellbore. SYNDER discloses using a metal stator and a metal rotor (see rejections above), as well as, that the drilling assembly is used in high temperatures in the subterranean wellbore (see ¶0010 and ¶0042 of SNYDER).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have a temperature within the subterranean wellbore is between 320° F. and 1110° F, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955) (see MPEP §2144.05). Furthermore, SNYDER discloses using materials capable of handling the claimed range of temperatures (i.e. using a metal stator and a metal rotor), as well as, being able to operate at a high temperatures in the subterranean wellbore (see ¶0010 and ¶0042 of SNYDER).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4, and 6 are each rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7/6/5/1 of U.S. Patent No. 12,305,640 B2. U.S. Patent No. 12,305,640 B2 discloses the claimed invention including utilizing a filter with a filter screen (see claim 7) the filter screen containing a plurality of filter openings therethrough, an annular space (a collection cavity), and an internal filter cavity (a second space). U.S. Patent No. 12,305,640 B2 fails to disclose a particle adjusting mechanism having a housing including an inner surface defining a central bore, the particle adjusting mechanism including a metal filter screen (U.S. Patent No. 12,305,640 B2 discloses a filter screen but the material is not disclosed), the metal filter screen having an upper end, a lower end, a cylindrical outer surface, the annular space (collection space) defined by the inner surface of the housing and the outer surface of the metal filter screen.
Regarding claim 1, RUDD teaches:
a particle adjusting mechanism (70) (see Figures 5, 6, 8, and 9) having a housing (115) positioned upstream of the metal stator of the positive displacement drilling motor (see Figures 8 and 9, Column 7, line 57 - Column 8, line 6), the housing including an inner surface defining a central bore (see Figures 8 and 9 that shows a central bore of the housing), the particle adjusting mechanism including a metal filter screen (72), the metal filter screen having an upper end (see Marked up Figure 8 of RUDD), a lower end (see Marked up Figure 8 of RUDD), a cylindrical outer surface (see Marked up Figure 8 of RUDD), and an internal filter cavity (the internal filter cavity is the cavity that the metal filter screen surrounds), the particle adjusting mechanism including an annular space defined by the inner surface of the housing and the outer surface of the metal filter screen (see Figures 8 and 9, where the housing is defined by (74) that has openings (76, 76A), and the metal filter screen is (72) that is located within the housing, therefore there is an annular space defined by the inner surface of the housing and the outer surface of the metal filter screen, since there are two separate components that inherently have space between them in order to allow for the difference in the filtering, where the housing has openings (76, 76A) to provide one filtering, and the metal filter screen has other openings (75, 75A) to further filter the fluid), the metal filter screen including a plurality of filter openings (75, 75A) configured to provide a fluid passageway for a media flowing between the internal cavity and the annular space (see Figures 8 and 9, Column 6, line 66 – Column 7, line 28);
wherein the particle adjusting mechanism is configured to adjust a solid particle condition of the media flowing through the particle adjusting mechanism to a treated condition in which any remaining solid particles in the media after flowing through the plurality of filter openings in the metal filter screen will travel through the motor gap without widening the motor gap to a failure gap size (the claimed limitation directed to “the particle adjusting mechanism is configured to adjust a solid particle condition of the media flowing through the particle adjusting mechanism to a treated condition in which any remaining solid particles in the media after flowing through the plurality of filter openings in the metal filter screen will travel through the motor gap without widening the motor gap to a failure gap size” is considered as a functional limitation. It should be appreciated that the applicant’s functional language in the claims does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. See MPEP 2114. Furthermore, RUDD is capable of performing the claimed function since the particle adjusting mechanism (i.e. filter(s)) are used to adjust the solid particle condition of a media flowing through it (i.e. filtering out the solid particles that are within a specific size) that would then travel to the components downstream of the filters, thereby meeting the functional limitation).
It would have been obvious to a person having ordinary skill in the art at the time of the invention was made to have a particle adjusting mechanism having a housing including an inner surface defining a central bore, the particle adjusting mechanism including a metal filter screen, the metal filter screen having an upper end, a lower end, a cylindrical outer surface, the annular space defined by the inner surface of the housing and the outer surface of the metal filter screen in the drilling assembly of U.S. Patent No. 12,305,640 B2, since utilizing removing solid particles from the media with a metal filter screen is well known in the art as evidence by RUDD. It would require only routine skill in the art to utilize a particle adjusting mechanism that includes a metal filter screen in order to keep solid particles from entering the drilling assembly, which would prevent damage from these particles.
Claims 20, 22, 25, and 27 are each rejected on the ground of nonstatutory double patenting as being unpatentable over claim 24/22/18 of U.S. Patent No. 12,305,640 B2. U.S. Patent No. 12,305,640 B2 discloses the claimed invention including utilizing a filter with a filter screen (see claim 24) the filter screen containing a plurality of filter openings therethrough. U.S. Patent No. 12,305,640 B2 fails to disclose a particle adjusting mechanism having a housing including an inner surface defining a central bore, the particle adjusting mechanism including a metal filter screen (U.S. Patent No. 12,305,640 B2 discloses a filter screen but the material is not disclosed), the metal filter screen having an upper end, a lower end, a cylindrical outer surface, the annular space (collection space) defined by the inner surface of the housing and the outer surface of the metal filter screen.
Regarding claim 20, RUDD teaches:
a particle adjusting mechanism (70) (see Figures 5, 6, 8, and 9) having a housing (115) positioned upstream of the metal stator of the positive displacement drilling motor (see Figures 8 and 9, Column 7, line 57 - Column 8, line 6), the housing including an inner surface defining a central bore (see Figures 8 and 9 that shows a central bore of the housing), the particle adjusting mechanism including a metal filter screen (72), the metal filter screen having an upper end (see Marked up Figure 8 of RUDD), a lower end (see Marked up Figure 8 of RUDD), a cylindrical outer surface (see Marked up Figure 8 of RUDD), and an internal filter cavity (the internal filter cavity is the cavity that the metal filter screen surrounds), the particle adjusting mechanism including an annular space defined by the inner surface of the housing and the outer surface of the metal filter screen (see Figures 8 and 9, where the housing is defined by (74) that has openings (76, 76A), and the metal filter screen is (72) that is located within the housing, therefore there is an annular space defined by the inner surface of the housing and the outer surface of the metal filter screen, since there are two separate components that inherently have space between them in order to allow for the difference in the filtering, where the housing has openings (76, 76A) to provide one filtering, and the metal filter screen has other openings (75, 75A) to further filter the fluid), the metal filter screen including a plurality of filter openings (75, 75A) configured to provide a fluid passageway for a media flowing between the internal cavity and the annular space (see Figures 8 and 9, Column 6, line 66 – Column 7, line 28);
wherein the particle adjusting mechanism is configured to adjust a solid particle condition of the media flowing through the particle adjusting mechanism to a treated condition in which any remaining solid particles in the media after flowing through the plurality of filter openings in the metal filter screen will travel through the motor gap without widening the motor gap to a failure gap size (the claimed limitation directed to “the particle adjusting mechanism is configured to adjust a solid particle condition of the media flowing through the particle adjusting mechanism to a treated condition in which any remaining solid particles in the media after flowing through the plurality of filter openings in the metal filter screen will travel through the motor gap without widening the motor gap to a failure gap size” is considered as a functional limitation. It should be appreciated that the applicant’s functional language in the claims does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. See MPEP 2114. Furthermore, RUDD is capable of performing the claimed function since the particle adjusting mechanism (i.e. filter(s)) are used to adjust the solid particle condition of a media flowing through it (i.e. filtering out the solid particles that are within a specific size) that would then travel to the components downstream of the filters, thereby meeting the functional limitation).
It would have been obvious to a person having ordinary skill in the art at the time of the invention was made to have a particle adjusting mechanism having a housing including an inner surface defining a central bore, the particle adjusting mechanism including a metal filter screen, the metal filter screen having an upper end, a lower end, a cylindrical outer surface, the annular space defined by the inner surface of the housing and the outer surface of the metal filter screen in the drilling assembly of U.S. Patent No. 12,305,640 B2, since utilizing removing solid particles from the media with a metal filter screen is well known in the art as evidence by RUDD. It would require only routine skill in the art to utilize a particle adjusting mechanism that includes a metal filter screen in order to keep solid particles from entering the drilling assembly, which would prevent damage from these particles.
Response to Arguments
The Examiner has withdrawn claims 34 and 35 due to they are directed to a non-elected species.
Applicant’s arguments with respect to claim(s) 1-7, 14, 19-27, and 30 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.
A new rejection is based on the amendments made to the claims.
The Examiner would like to note that metal filters in wellborn drilling assemblies are well-known in the art. Additional prior art that is cited includes: RUDD ‘927 (U.S. Patent Publication US 2004/0003927 A1), MORRISON (U.S. Patent 1,338,460), and SIMONDS (U.S. Patent 7,108083 B2) which all disclose using metal filters in a drilling assembly.
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.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARY DAVIS whose telephone number is (571)272-9965. The examiner can normally be reached M-F, 8 am-4pm.
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/Mary A Davis/Primary Examiner, Art Unit 3746