DETAILED ACTION
Claims 1-21 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 .
Response to Arguments
Applicant's arguments filed 01/19/2026 have been fully considered but they are not persuasive.
Applicant’s representative argues the following:
“Reid, in this instance, is the same inventor as the first named inventor on the instant application. Reid, as applied, fails to teach, disclose or suggest this element. First, Reid does not form a pressure activated cantilever feature. In contrast, Reid's open channel 310 (e.g., what the Office Action likens to the claimed slot) is not pressure activated. While Reid’s open channel 310 may accept fluid, it is pressure balanced, and thus cannot by nature form a pressure activated cantilever feature. Second, Reid's open channel 310 begins at a point outside of its annular sealing area 308 (e.g., what the Office Action likens to the claimed spherical seal area). Annotated FIG. 3A of Reid clearly shows this, wherein the radial inner most starting slot circumference 310a of the open channel 310 is radially outside of the radial outer most seal area circumference 308a of the annular sealing area 308.
[...]
Because the cited portions of Reid fail to teach or disclose at least these limitations of Claims 1, 11 and 21, the Office Action cannot meet the stringent standard of anticipation under 35 U.S.C. § 102. Accordingly, Applicant respectfully requests reconsideration and allowance of Claims 1, 11 and 21, and their dependent claims.”
Examiner respectfully disagrees. In regard to the first argument, Examiner notes that the claimed “pressure activated cantilever feature” is broad in nature and the instant specification does not limit as to what the pressure activation entails. A reading of the specification provides no evidence to indicate that a specific structural limitation must be importing into the claims to give meaning to the disputed terms. Constant v. Advanced Micro-Devices Inc., 7 USPQ2d 1064. With that being said, Examiner gave its broadest reasonable interpretation of the term in light of the instant specification. Paragraph [0034] of Reid clearly cites that its “pressure activated cantilever feature” (as interpreted by Examiner in the rejection herein) allows for pressure balancing which activates (initiates) “[...] closed face deformation that is substantially more circularly uniform. The difference in circular uniformity of the closed face deformation may translate to higher differences along an annular sealing area such as from 0.008″-0.010″ for FIG. 3E and lower differences such as approximately 0.003″ for FIG. 3F” (paragraph [0034]). In regard to second argument, Examiner notes that the positioning of the open channel with respect to the sealing area, as taught by Reid is commensurate to that as shown in figure 2A of the instant drawings. The “slot beginning at a point inside of the spherical seal area” is broad in nature, in which figure 3C of Reid depicts the slots “310” to be inside the “seal area” by virtue of being underneath or covered beneath the “seal area” 306/308 (or, circumferentially inside/within with respect to the “seal area”). Examiner recommends to incorporate language to teach the claimed positioning with respect to the sealed configuration corresponding to the valve seating area to further distinguish the claim from Reid, as the current claims have no context as to what the limitation is being referenced to aside from a “seal area”.
Drawings
The drawings were received on 01/19/2026. The drawings are acceptable.
Specification
The amendment filed 01/19/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as at least follows:
The term “donut” (at least paragraph [0040]).
The limitations reciting, for example, at least “[...] the radial outer ending slot circumference 230c ends at a point that is at least 10 percent of the distance from radial inner most seal area circumference 222b to the radial outer most seal area circumference 222c”.
Also, reference numerals “222b” and “222c” were not discussed, nor introduced in the originally filed drawings nor the instant specification.
Applicant is required to cancel the new matter in the reply to this Office Action.
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 2-8 and 12-18 is/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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 2 (and, similarly claims 3-7, 12-17) cite: “[...] wherein the slot ends at a point at least 10 percent under the spherical seal area.” The instant specification teach support for the limitation broadly in paragraphs [0040-0041] therein. Specifically, paragraph [0040] cites: “[...] the slot 230 ends at a point at least 10 percent under the spherical seal area 222a, as shown in FIG. 2A”. Figure 2A (and, similarly figure 1) show the apparatus in the closed configuration, where the slot “230” is positioned uphole (above), not “under”, the spherical seal area “222a”. Unless, Applicant’s representative is treating the limitation to be with respect to a certain orientation, the instant specification lacks support for the limitation. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement." Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002).
Claim 8 (and, similarly claim 18) cite: “[...] wherein the pressure activated cantilever feature has a uniform cross-sectional shape”. Examiner notes that though the instant specification discloses support for the limitation, the drawing (specifically element 632 in figure 6) rather shows a semi-uniform or partly uniform (not uniform/constant) cross-sectional shape as well considering that the end is rounded. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement." Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002).
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 1-21 is/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 1 (and, similarly claims 11 and 21) cites: “[...] a slot extending into the closed face of the spherical contoured body to form a pressure activated cantilever feature, the slot beginning at a point inside of the spherical seal area”. Examiner notes that the limitation is confusing and contradicting. The limitation discloses the “slot extending into the closed face” (from the exterior surface thereof) and also for the “slot” to begin (i.e., start, initiate) at a point inside of the spherical seal area. For examination purposes the Examiner will give its broadest reasonable interpretation in light of the instant specification. Due to claims 1, 11 and 21 being rejected under 35 U.S.C. § 112(b), the corresponding dependent claims are also rejected.
Claim 2 (and, similarly claims 3-7, 12-17) cite: “[...] wherein the slot ends at a point at least 10 percent under the spherical seal area.” Examiner notes that the claim limitation(s) in light of the instant specification are confusing as one skilled in the art would question what the metes and bounds of the limitation(s) are. For example, is the slot ending at a “point” at least 10 percent under (the spherical seal area) corresponding to ending with respect to a specific section, distance, size, element, circumference, axis, depth, width, etc. of the claimed apparatus? Also, it’s confusing as to what orientation the limitation(s) are supposed to be viewed with respect to (e.g., closed, opened), since “under” (below, downhole, etc.) can be construed to be viewed differently depending on the orientation perspective. For examination purposes the Examiner will give its broadest reasonable interpretation in light of the instant specification.
Examiner notes that no prior art rejections have been presented in this action. The issues pertaining to 35 U.S.C. § 112 addressed above are preventing the Examiner from properly understanding the scope of Applicant’s invention due to the lack of definiteness associated with each of the claims. Thereby, Applicant is highly advised to appropriately correct all deficiencies identified in this rejection. The Examiner respectfully reserves the rights to apply prior art rejections in the future based off of a better understanding of the claims pursuant to Applicant’s forthcoming corrections.
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) 1, 9, 11, 19 and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reid et al. (US Publication Number 2022/0003076 A1; hereinafter “Reid”).
In regard to claim 1, Reid discloses: A ball-type flow stopper (as shown in figure 3 | “FIGS. 3-7 depict ball valve stoppers configured in accordance with some embodiments and may be utilized as ball valve stoppers for the ball valves depicted in FIGS. 1, 2A, and 2B” — paragraph [0033]), comprising:
a spherical contoured body (“Ball valve stopper 300 comprises a spherical contoured metallic body...” — paragraph [0033] and figures 3), the spherical contoured body having a closed face (306), the closed face including a spherical seal area (i.e., of 306) configured to engage with a valve seat (220) of a ball valve assembly (paragraphs [0024-0035] and figures 2-3);
a flow port (304) extending entirely through the spherical contoured body orthogonal with the closed face (paragraphs [0024-0035] and figures 2-3);
a slot (310) extending into the closed face of the spherical contoured body to form a pressure activated cantilever feature (312), the slot beginning at a point inside of the spherical seal area (paragraphs [0033-0035] and figures 3); and
a rotation support member (302) extending from the spherical contoured body and aligned orthogonally to the flow port and the spherical seal area (paragraphs [0024-0035] and figures 2-3).
In regard to claim 9, Reid further discloses: wherein the pressure activated cantilever feature has a non-uniform cross-sectional shape (at least figure 3C).
In regard to claim 11, Reid discloses: A ball valve assembly (200 — figure 2), comprising:
a valve body (202), the valve body including a cavity (204); and
a ball-type flow stopper (as shown in figure 3 | “FIGS. 3-7 depict ball valve stoppers configured in accordance with some embodiments and may be utilized as ball valve stoppers for the ball valves depicted in FIGS. 1, 2A, and 2B” — paragraph [0033]) located within and configured to rotate within the cavity of the valve body (paragraphs [0021-0027, 0033-0035]), the ball-type flow stopper including:
a spherical contoured body (“Ball valve stopper 300 comprises a spherical contoured metallic body...” — paragraph [0033] and figures 3), the spherical contoured body having a closed face (306), the closed face including a spherical seal area (i.e., of 306) configured to engage with a valve seat (220) of a ball valve assembly (paragraphs [0024-0035] and figures 2-3);
a flow port (304) extending entirely through the spherical contoured body orthogonal with the closed face (paragraphs [0024-0035] and figures 2-3);
a slot (310) extending into the closed face of the spherical contoured body to form a pressure activated cantilever feature (312), the slot beginning at a point inside of the spherical seal area (paragraphs [0033-0035] and figures 3); and
a rotation support member (302) extending from the spherical contoured body and aligned orthogonally to the flow port and the spherical seal area (paragraphs [0024-0035] and figures 2-3).
In regard to claim 19, Reid further discloses: wherein the pressure activated cantilever feature has a non-uniform cross-sectional shape (at least figure 3C).
In regard to claim 21, Reid discloses: A method (abstract and paragraph [0017]), comprising:
positioning a ball valve assembly (200 — figure 2) within a wellbore extending through one or more subterranean formations (paragraphs [0019, 0021-0023]), the ball valve assembly including:
a valve body (202), the valve body including a cavity (204);
a ball-type flow stopper (as shown in figure 3 | “FIGS. 3-7 depict ball valve stoppers configured in accordance with some embodiments and may be utilized as ball valve stoppers for the ball valves depicted in FIGS. 1, 2A, and 2B” — paragraph [0033]) located within and configured to rotate within the cavity of the valve body (paragraphs [0021-0027, 0033-0035]), the ball-type flow stopper including:
a spherical contoured body (“Ball valve stopper 300 comprises a spherical contoured metallic body...” — paragraph [0033] and figures 3), the spherical contoured body having a closed face (306), the closed face including a spherical seal area (i.e., of 306) configured to engage with a valve seat (220) of a ball valve assembly (paragraphs [0024-0035] and figures 2-3);
a flow port (304) extending entirely through the spherical contoured body orthogonal with the closed face (paragraphs [0024-0035] and figures 2-3);
a slot (310) extending into the closed face of the spherical contoured body to form a pressure activated cantilever feature (312), the slot beginning at a point inside of the spherical seal area (paragraphs [0033-0035] and figures 3); and
a rotation support member (302) extending from the spherical contoured body and aligned orthogonally to the flow port and the spherical seal area (paragraphs [0024-0035] and figures 2-3); and
rotating the ball-type flow stopper between a closed state and an open state (paragraphs [0021-0027, 0033-0035]).
Allowable Subject Matter
Claims 10 and 20 would potentially be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
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 NEEL PATEL whose telephone number is (469)295-9168. The examiner can normally be reached M-F, 9:00AM-5:00PM CST.
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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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/NEEL GIRISH PATEL/Primary Patent Examiner, Art Unit 3676
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