DETAILED ACTION
The present application and its arguments have been reviewed and currently claims 1-12 are rejected.
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 .
Response to Arguments
Applicant's arguments filed 4/1/2026 have been fully considered but they are not persuasive.
In response to applicants arguments regarding claim 9 should not be objected to, the examiner respectfully disagrees as the claims, drawings, and specification requires:
“a first internal thread portion having a diameter of a predetermined dimension on an opening end side”
“a substantially tapered second internal thread portion that gradually expands radially along a direction away from the first internal thread portion” (ex., the first internal thread being on an opening end side, therefore the next thread is the second internal thread),
“internal thread portion has a third internal thread portion that is disposed on the opening end side with respect to the second internal thread portion”
“wherein the internal thread portion has a fourth circular region including the first internal thread portion, a fifth circular region including the second internal thread portion, and a sixth circular region including the third internal thread portion”
“The oil well pipe 400 has concentric circular region D (fourth circular region), circular region E (fifth circular region), and circular region F (sixth circular region) that include any of the first internal thread portion 422 through the third internal thread portion 426 and are virtually divided into three parts in the radial direction when seen in the axial direction (0151)
“the internal thread portion is made up of a first internal thread portion that is disposed on an opening end side and has a diameter of a predetermined dimension and a substantially tapered second internal thread portion that gradually contracts radially from the first internal thread portion side toward an inner side” (0015)
The drawings below explicitly show that the first internal thread region is the beginning near the opening and the third thread region is adjacent to 400a, thus the second internal thread region contracts.
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Therefore, applicants arguments regarding the claim objection is not persuasive as the drawings show the fourth circular region as being the first internal thread portion which is also supported by the specification (0151).
In response to applicants arguments on page 13 that Breihan does not disclose a straight-tapered-straight tapered configuration, the examiner respectfully disagrees as Breihan explicitly discloses either the first and third tapered threads or the makeup torque shoulder threaded section (ex., middle threads) can be straight (8:3-4). Therefore, applicants arguments are not persuasive as Breihan explicitly discloses that either the first/third and/or the second threaded sections can be straight.
In response to applicants arguments on page 13 that Kawai doesn’t teach three threaded regions and therefore can not be used as motivation, the examiner respectfully disagrees because Breihan discloses two threaded regions and a threaded torque shoulder and Kawai teaches two threaded regions and a non-threaded torque shoulder such that the cross sections of the regions of the pin and box are known parameters. Therefore, one of ordinary skill in the art observing Kawai would understand that the cross-sectional areas of the pin and box sections are known parameters and modifying a known parameter (ex., ratio between cross-sectional areas) to obtain a desired result would not have produced any new or unexpected results. In other words, both the present invention and prior art, Breihan, explicitly discloses a pin and box connector with three threaded regions which were designed by one of ordinary skill in the art; Kawai explicitly shows that cross-sectional area parameters are known such that a ratio between the cross-section area and the total cross-section area is known as described in the abstract. Thus, modifying the cross-sectional areas of Breihan, which was already designed to have specific cross-sectional area, based on the teachings of Kawai further affirming that the cross-sectional areas and the ratio between them is known would not have produced any new or unexpected results. For example, see MPEP 2141(III) where prior art is not limited just to the references being applied, but includes the understanding of one of ordinary skill in the art. The prior art reference (or references when combined) need not teach or suggest all the claim limitations, however, Office personnel must explain why the difference(s) between the prior art and the claimed invention would have been obvious to one of ordinary skill in the art. The "mere existence of differences between the prior art and an invention does not establish the invention’s nonobviousness." Dann v. Johnston, 425 U.S. 219, 230, 189 USPQ 257, 261 (1976). Lastly, MPEP 2142: To support the conclusion that the claimed invention is directed to obvious subject matter, either the references must expressly or impliedly suggest the claimed invention or the examiner must present a convincing line of reasoning as to why the artisan would have found the claimed invention to have been obvious in light of the teachings of the references." Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Inter. 1985). see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."
Claim Objections
Claims 9 and 12 are objected to because of the following informalities:
In claim 9, line 5, “gradually expands” should be “gradually contracts” as the tapered section contracts as its going away from the first threaded portion (ex., see fig. 15A, where 424 is contracting).
In claim 12, lines 8-9, “the third internal thread portion” should be “the first internal thread portion” as L3’ is less than L4’ (see fig. 18b; see paragraph 0158).
In claim 12, line 11, “the first internal thread portion” should be “the third internal thread portion” as L1’ is less than L2’ (see fig. 18b; see paragraph 0158).
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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) 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Breihan et al. (U.S. PGPub No. 2009/0058085) in view of Kawai et al. (U.S. Patent No. 11,053,749).
In regards to claim 1, Breihan discloses:
An oil well pipe coupling structure (see annotated fig. 1 below) comprising:
a first oil well pipe (see annotated fig. 1) having an external thread portion on an outer circumferential surface (see annotated fig. 1); and
a second oil well pipe (see annotated fig. 1) that has an internal thread portion (see annotated fig. 1) that is screwed to the external thread portion on an inner circumferential surface and can be connected to the first oil well pipe,
wherein the external thread portion is made up of a first external thread portion (see annotated fig. 1) having a diameter of a predetermined dimension (see annotated fig. 1, where the thread portion comprises a diameter) and a substantially tapered second external thread portion (see annotated fig. 1, where all thread portions are tapered) that is disposed on one end portion side with respect to the first external thread portion and gradually contracts radially toward one end side (see annotated fig. 1, where the tapered portion contracts radially to the right),
the internal thread portion is made up of a first internal thread portion (see annotated fig. 1) that is disposed on an opening end side (see annotated fig. 1) and has a diameter of a predetermined dimension (see annotated fig. 1, where the thread portion comprises a diameter) and a substantially tapered second internal thread portion (see annotated fig. 1) that gradually contracts radially from the first internal thread portion side toward an inner side,
the first external thread portion is screwed to the first internal thread portion (see annotated fig. 1),
the second external thread portion is screwed to the second internal thread portion (see annotated fig. 1), and
the first oil well pipe and the second oil well pipe are coupled together (see annotated fig. 1);
wherein the external thread portion has a third external thread portion (see annotated fig. 1) that is disposed on the one end side with respect to the second external thread portion and has a diameter of a predetermined dimension (see annotated fig. 1),
the internal thread portion has a third internal thread portion (see annotated fig. 1) that is disposed on the inner side with respect to the second internal thread portion and has a diameter of a predetermined dimension (see annotated fig. 1), and
the third external thread portion can be screwed to the third internal thread portion (see annotated fig. 1),
wherein the external thread portion has a first circular region including the first external thread portion (ex., the circular region produced by the first external threads), a second circular region including the second external thread portion (ex., circular region produced by second external threads), and a third circular region including the third external thread portion (ex., the circular region produced by the third external threads) that are virtually divided in a radial direction (ex., it is inherent that viewing the first oil well pipe in the axial direction would produce three circular regions),
the internal thread portion has a fourth circular region including the first internal thread portion, a fifth circular region including the second internal thread portion, and a sixth circular region including the third internal thread portion that are virtually divided in a radial direction (ex., it is inherent that viewing the second oil well pipe in the axial direction would produce three circular regions),
the first and third external thread portions comprising straight threads (8:3-4, where the first and third threads can be straight),
the second external thread portion comprising tapered threads (see annotated fig. 1)
but does not disclose:
an area of the first circular region is equal to or smaller than a third of a total cross-sectional area of a transverse section of the first oil well pipe,
an area of the second circular region is equal to or larger than a third of the total cross-sectional area of the transverse section of the first oil well pipe,
an area of the third circular region is equal to or smaller than a third of the total cross-sectional area of the transverse section of the first oil well pipe,
an area of the fourth circular region is equal to or smaller than a third of a total cross-sectional area of a transverse section of the second oil well pipe,
an area of the fifth circular region is equal to or larger than a third of the total cross-sectional area of the transverse section of the second oil well pipe, and
an area of the sixth circular region is equal to or smaller than a third of the total cross-sectional area of the transverse section of the second oil well pipe.
In regards to the area of each circular region, while Breihan does not expressly disclose “an area” of each circular region, the “area” may be determined through the use of routine experimentation during the engineering design process to optimize the functionality of the device, suited to the intended use and desired parameters because Kawai explicitly discloses that the cross-sectional area (ex., circular areas) are known parameters for both a first oil well pipe (ex., see fig. 1) and a second oil well pipe (ex., see fig. 2) such that the ratio between a cross-section area and the total cross section area is known (see abstract, where S1/S0 >= 15% or S2/S0’ >= 20%).
It would have been obvious to one having ordinary skill in the art at the time of invention to modify the area of each circular cross section of Breihan above to meet the limitations of claim 1 because the “area” of each circular region (ex., circular regions 1-6) may be optimized to the desired operational parameters through the use of routine experimentation. A person of ordinary skill in the art undertaking such experimentation would have had a reasonable expectation of success and the results would have been predictable because Kawai explicitly discloses that it is known to modify areas or circular regions of threaded connectors to be within a certain percentage of the total cross sectional area of the pipe (ex., see abstract). See MPEP 2144.05(II)(A).
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In regards to claim 2, Breihan further discloses:
The oil well pipe coupling structure according to claim 1, wherein the first external thread portion and/or the third external thread portion have a thread with a symmetrical shape (4:19-21),
the first internal thread portion has the thread shape corresponding to the thread of the first external thread portion (see annotated fig. 1 above hereinafter), and
the third internal thread portion has the thread shape corresponding to the thread of the third external thread portion (see annotated fig. 1).
In regards to claim 3, Breihan further discloses:
The oil well pipe coupling structure according to claim 1, wherein a sealing structure is provided between an outer circumferential surface of a tip portion of the first oil well pipe (see annotated fig. 1 near the magnified portion) and an inner circumferential surface on the inner side of the internal thread portion of the second oil well pipe (see annotated fig. 1) or between an outer circumferential surface on a base end side of the external thread portion of the first oil well pipe and an inner circumferential surface of the opening end side of the second oil well pipe (ex., see the opposite side where the structure is similarly met).
In regards to claim 4, Breihan further discloses:
The oil well pipe coupling structure according to claim 1, wherein a sealing structure is provided between an outer circumferential surface of a tip portion of the first oil well pipe (see annotated fig. 1 near the magnified portion) and an inner circumferential surface on an inner side of the internal thread portion of the second oil well pipe (see annotated fig. 1 near the magnified portion) or between an outer circumferential surface on a base end side of the external thread portion of the first oil well pipe and an inner circumferential surface of the opening end side of the second oil well pipe, and
in the sealing structure, a length in an axial direction of the outer circumferential surface of a tip portion of the first oil well pipe is set to shorter than a length in the axial direction of the third internal thread portion of the second oil well pipe (ex., see annotated fig. 1, where the tip portion is shorter than any of the thread lengths) or
a length in the axial direction of the outer circumferential surface on the base end side of the external thread portion of the first oil well pipe is set to shorter than a length in the axial direction of the inner circumferential surface on the opening end side of the second oil well pipe (see the two circumferential surface lengths near Opening End Side in annotated fig. 1).
In regards to claim 5, Breihan discloses:
An oil well pipe having a hollow structure (see annotated fig. 1 above hereinafter), comprising:
an external thread portion on an outer circumferential surface (see annotated fig. 1),
wherein the external thread portion is made up of a first external thread portion (see annotated fig. 1) having a diameter of a predetermined dimension (see annotated fig. 1) and a substantially tapered second external thread portion (see annotated fig. 1) that is disposed on one end portion side with respect to the first external thread portion and gradually contracts radially toward one end side, and
the external thread portion is screwed to a different member (ex., see “Second Oil Well Pipe” in annotated fig. 1) having an internal thread portion;
wherein the external thread portion has a third external thread portion (see annotated fig. 1) that is disposed on the one end side with respect to the second external thread portion and has a diameter of a predetermined dimension,
wherein the external thread portion has a first circular region including the first external thread portion, a second circular region including the second external thread portion, and a third circular region including the third external thread portion that are virtually divided in a radial direction (ex., it is inherent that viewing the oil well pipe in the axial direction would produce three circular regions),
but does not disclose:
an area of the first circular region is equal to or smaller than a third of a total cross-sectional area of a transverse section of the oil well pipe,
an area of the second circular region is equal to or larger than a third of the total cross-sectional area of the transverse section of the oil well pipe, and
an area of the third circular region is equal to or smaller than a third of the total cross-sectional area of the transverse section of the oil well pipe.
In regards to the area of each circular region, while Breihan does not expressly disclose “an area” of each circular region, the “area” may be determined through the use of routine experimentation during the engineering design process to optimize the functionality of the device, suited to the intended use and desired parameters because Kawai explicitly discloses that the cross-sectional area (ex., circular areas) are known parameters for both a first oil well pipe (ex., see fig. 1) and a second oil well pipe (ex., see fig. 2) such that the ratio between a cross-section area and the total cross section area is known (see abstract, where S1/S0 >= 15% or S2/S0’ >= 20%).
It would have been obvious to one having ordinary skill in the art at the time of invention to modify the area of each circular cross section above to meet the limitations of claim 5 because the “area” of each circular region may be optimized to the desired operational parameters through the use of routine experimentation. A person of ordinary skill in the art undertaking such experimentation would have had a reasonable expectation of success and the results would have been predictable because Kawai explicitly discloses that it is known to modify areas or circular regions of threaded connectors to be within a certain percentage of the total cross sectional area of the pipe (ex., see abstract). See MPEP 2144.05(II)(A).
In regards to claim 6, Breihan further discloses:
The oil well pipe according to claim 5, wherein the first external thread portion and the third external thread portion have the thread having a symmetrical shape (see annotated fig. 1).
In regards to claim 7, Breihan further discloses:
The oil well pipe according to claim 5, wherein, on a tip side or a base end side of the external thread portion, an outer circumferential surface (see annotated fig. 1) that can be brought into close contact with an inner circumferential surface (see annotated fig. 1) of the different member substantially throughout an entire circumference when the external thread portion has been fitted into the internal thread portion of the different member is provided (see annotated fig. 1, near the magnified portion).
In regards to claim 8, Breihan further discloses:
The oil well pipe according to claim 5, wherein, on a tip side or a base end side of the external thread portion, an outer circumferential surface (see annotated fig. 1) can be brought into close contact with an inner circumferential surface (see annotated fig. 1) of the different member substantially throughout an entire circumference when the external thread portion has been fitted into the internal thread portion of the different member is provided (see annotated fig. 1, near the magnified portion), and
a length in an axial direction of the outer circumferential surface on the tip side of the external thread portion is set to shorter than a length in the axial direction of the third external thread portion (see annotated fig. 1, where the tip portion is shorter than the third external thread portion) or a length in the axial direction of the outer circumferential surface on the base end side of the external thread portion is set to shorter than a length in the axial direction of the first external thread portion (ex., see near “Opening End Side” which shows an outer circumferential surface shorter than the first external thread portion).
In regards to claim 9, Breihan discloses:
An oil well pipe (see annotated fig. 1 above hereinafter) having a hollow structure, comprising:
an internal thread portion on an inner circumferential surface,
wherein the internal thread portion is made up of a first internal thread portion (see annotated fig. 1) having a diameter of a predetermined dimension (ex., diameter of one of the threads) on an opening end side (see annotated fig. 1) and a substantially tapered second internal thread portion (see annotated fig. 1) that gradually “contracts” radially along a direction away from the first internal thread portion, and
the internal thread portion is screwed to a different member having an external thread portion (see annotated fig. 1);
wherein the internal thread portion has a third internal thread portion (see annotated fig. 1) that is disposed on the opening end side with respect to the second internal thread portion and has a diameter of a predetermined dimension (ex., diameter of one of the threads)
wherein the internal thread portion has a fourth circular region including the first internal thread portion, a fifth circular region including the second internal thread portion, and a sixth circular region including the third internal thread portion that are virtually divided in a radial direction (ex., it is inherent that viewing the oil well pipe in the axial direction would produce three circular regions),
but does not disclose:
an area of the fourth circular region is equal to or smaller than a third of a total cross-sectional area of a transverse section of the oil well pipe,
an area of the fifth circular region is equal to or larger than a third of the total cross-sectional area of the transverse section of the oil well pipe, and
an area of the sixth circular region is equal to or smaller than a third of the total cross-sectional area of the transverse section of the oil well pipe.
In regards to the area of each circular region, while Breihan does not expressly disclose “an area” of each circular region, the “area” may be determined through the use of routine experimentation during the engineering design process to optimize the functionality of the device, suited to the intended use and desired parameters because Kawai explicitly discloses that the cross-sectional area (ex., circular areas) are known parameters for both a first oil well pipe (ex., see fig. 1) and a second oil well pipe (ex., see fig. 2) such that the ratio between a cross-section area and the total cross section area is known (see abstract, where S1/S0 >= 15% or S2/S0’ >= 20%).
It would have been obvious to one having ordinary skill in the art at the time of invention to modify the area of each circular cross section of Breihan above to meet the limitations of claim 9 because the “area” of each circular region may be optimized to the desired operational parameters through the use of routine experimentation. A person of ordinary skill in the art undertaking such experimentation would have had a reasonable expectation of success and the results would have been predictable because Kawai explicitly discloses that it is known to modify areas or circular regions of threaded connectors to be within a certain percentage of the total cross sectional area of the pipe (ex., see abstract). See MPEP 2144.05(II)(A).
In regards to claim 10, Breihan further discloses:
The oil well pipe according to claim 9, wherein the first internal thread portion and the third internal thread portion have the thread having a symmetrical shape (see annotated fig. 1).
In regards to claim 11, Breihan further discloses:
The oil well pipe according to claim 9, wherein, on the opening end side or an inner side of the internal thread portion, an inner circumferential surface (see annotated fig. 1) that can be brought into close contact with an outer circumferential surface (see annotated fig. 1) of the different member (see annotated fig. 1, near the magnified portion) substantially throughout an entire circumference when the internal thread portion has been fitted into the external thread portion of the different member is provided (see annotated fig. 1, near the magnified portion).
In regards to claim 12, Breihan further discloses:
The oil well pipe according to claim 9, wherein, on the opening end side or an inner side of the internal thread portion, an inner circumferential surface (see annotated fig. 1) that can be brought into close contact with an outer circumferential surface (see annotated fig. 1) of the different member (see annotated fig. 1, near the magnified portion) substantially throughout an entire circumference when the internal thread portion has been fitted into the external thread portion of the different member is provided (see annotated fig. 1, near the magnified portion), and
a length in an axial direction of the inner circumferential surface on the opening end side of the internal thread portion is set to shorter than a length in the axial direction of the third internal thread portion (see annotated fig. 1, where the length of the circumferential surface is shorter than any of the threaded portions) or a length in the axial direction of the inner circumferential surface on the inner side of the internal thread portion is set to shorter than a length in the axial direction of the first internal thread portion (see annotated fig. 1, where the length of the circumferential surface is shorter than any of the threaded portions).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER TYLER RUFRANO whose telephone number is (571)272-6223. The examiner can normally be reached Mon - Fri 8:30AM to 4:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Troutman can be reached at (571) 270-3654. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.T.R./Examiner, Art Unit 3679
/Matthew Troutman/Supervisory Patent Examiner, Art Unit 3679
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