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 .
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.
Claim 44-47 and 52 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3, 5 and 12 of copending Application No. 18/338503 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present invention are merely a broader form of the claims in the ‘503 application with minor obvious changes in claim language. A broader claim is never patentably distinct from a narrower claim that contains all the limitations of the broader claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 44, 46-48 and 52 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 11 and 12 of U.S. Patent No. 11,274,520. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present invention are merely a broader form of the claims in the ‘520 document with minor obvious changes in claim language. A broader claim is never patentably distinct from a narrower claim that contains all the limitations of the broader claim.
Claim Rejections - 35 USC § 102
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) 44-47 and 52 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lymberopoulos et al. (US 2012/0227983, hereafter Lymberopoulos).
With regards to claim 44, it discloses a system for regulating a wellhead control mechanism (valve 120), the system comprising:(a) an actuator system (para 30, element 200) that is configured to directly actuate the wellhead control mechanism;(b) a controller circuit (220) that is operatively connected to the actuator system and the controller circuit is configured for sending regulatory commands to the actuator system (para 32).
With regards to claim 45, it discloses a user interface (150) that is operatively communicatable with the controller circuit.
With regards to claim 46 and 47, it discloses a sensor that is configured for providing object-based or fluid-based information to the controller circuit and/or the user interface (para 32-35).
With regards to claim 52, it discloses the wellhead control mechanism is: a swab valve, a pump-down valve, a hydraulic master-valve, a side port valves, a zipper manifold valve, a flow-back valve, a pump-down valve, a choke or a blowout preventer (it is a safety valve, para 10, which is broadly read as a hydraulic master valve or BOP).
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.
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.
Claim(s) 48 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lymberopoulos in view of Martino et al. (US 2011/0308619, hereafter Martino).
With regards to claim 48, Lymberopoulos shows all the limitation of the present invention except, it fails to disclose the actuator system comprises an electronic actuator that is operatively coupled to the wellhead control mechanism for actuating the wellhead control mechanism under direction of the controller circuit. Martino discloses a valve element (38) that is controlled by a controller circuit (124) and is electronically actuated. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the electronic actuation disclosed in Martino with the apparatus taught in Lymberopoulos with a reasonable expectation of success. This would be done because electronic actuation is common downhole along with pneumatic and hydraulic actuation.
Allowable Subject Matter
Claims 49-51 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 DANIEL P STEPHENSON whose telephone number is (571)272-7035. The examiner can normally be reached M-F 10am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/DANIEL P STEPHENSON/Primary Examiner, Art Unit 3676