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 .
Status of Claims
The following is a non-final, first office action in response to the communication filed on 11/06/2025. Claims 2—7, 10, 12, 14, and 21—29 are currently pending.
Priority
The Applicant’s claim for benefit of US Patent Application Nr. 18/099,925 filed on 01/21/2023, has been received and acknowledged.
Information Disclosure Statement
Information Disclosure Statement received 02/13/2025 has been reviewed and considered.
Election/Restrictions
Applicant’s election without traverse of GROUP I, directed to a drive shaft engaging with the intermediate gear, as shown by FIG. 3B of the instant application in the reply filed on 11/06/2025 is acknowledged. Examiner notes that claim 21, as provided in the Response to the Restriction Requirement, is not generically directed to GROUP I, GROUP II, and GROUP III as identified in the restriction requirement. For example, the claim is not directed to a single embodiment which directed to all three identified GROUPs, but rather, recites two distinct embodiments which are each directed to only one of GROUP I or GROUP II. As such, the following claim has been examined which is consistent with Applicant’s election of GROUP I:
21. (New) A downhole tool for use in a well, the downhole tool comprising:
an actuator comprising:
a first motor configured to produce a first drive;
a second motor configured to produce a second drive;
a first gear being rotatable in association with first drive;
a second gear being rotatable in association with second drive;
a screw being rotatable and having a proximal end;
an intermediate gear engaged between the first and second gears and being configured to synchronize first and second rotations of the first and second gears as a synchronized rotation produced by at least one of the first and second drives, wherein
a yoke disposed on the screw and being displaceable thereon by the synchronized rotation; and
an actuatable member of the downhole tool connected to the yoke of the actuator and being actuatable in response to the displacement of the yoke.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Claim 21, as adjusted above, recites a configuration of an actuator (e.g., actuator 100) including a screw which is consistent with FIG. 3B. Claim 28 recites limitations directed to an additional motor/gear configuration beyond what is depicted in FIG. 3B and which is consistent with the additional gear and motor configuration of FIG. 5. However, the application does not include a configuration of FIG. 3B which includes the additional motor/gear configuration as depicted in FIG. 5. Moreover, it is not clear that the embodiment generated from the combination of claim 21 and 28, which combined the specific screw configuration of FIG. 3B and the motor/gear assembly of FIG. 5, is actually disclosed in the application as originally filed. Therefore, the third motor, fourth motor, third gear, fourth gear, and second intermediate gear (e.g., along with the associated configuration) must be shown with respect to, specifically FIG. 3B, or the feature(s) canceled from the claim(s). If an additional figure is provided which combines the relevant features of FIG. 3B and FIG. 5 (e.g., in order to show claims 21 and 28 in a single figure), it is suggested/requested that Applicant point to the portions of the Specification which support such a configuration (e.g., in order to expedite prosecution and avoid unnecessary new matter rejections). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 6 is objected to because of the following informalities: As noted above with respect to the restriction requirement, the only embodiment of claim 21 which adheres with the election is the embodiment where “the intermediate gear has an inline connection to the proximal end of the screw.” As such, the portion of claim which Claim 6 recites the limitation “wherein the intermediate gear is disposed on the proximal end of the screw,” is redundant and it is suggested to amend claim 6 to remove the redundant portion of the claim. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 26 and 27 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 26 recites the limitation “wherein the first drive shaft is a rotor of the first motor,” without a previous recitation of “a first drive shaft.” As such, there is insufficient antecedent basis for this limitation in the claim.
Claim 27 recites the limitation “wherein the second drive shaft is a rotor of the second motor,” without a previous recitation of “a second drive shaft.” As such, there is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 112 (continued)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 22 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. As noted above, the as-filed version of claim 21 is directed to two distinct embodiments (e.g., not generic) which were subject to a species election. Since the Applicant elected the species of GROUP I, and claim 21 was not drafted in a generic manner, the adjustment made to claim 21, as discussed above (e.g., in order to adhere to the election), renders claim 22 an improper independent claim. For example, the limitations of claim 22 are directed to the only embodiment of claim 21 which is consistent with the election.
As such, claim Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 3—5, 7, 21—22, and 24—29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published US Patent Application to Hopmann et al., hereinafter “Hopmann,” (US 20210062614 A1) and Published US Patent Application to Eriksen (US 20200340562 A1). For the sake of clarity, claim 21 is listed first since claim 21 is the independent claim from which all other claims depend.
Regarding claim 21, Hopmann discloses [a] downhole tool (interval control valve 170) for use in a well (para. [0049], “interval control valve 170 may be used for any of the downhole flow control or interval control valves described herein.”), the downhole tool comprising: an actuator (motor 176, gear box 177, and ball screw 180) comprising: a screw (ball screw 180) being rotatable and having a proximal end; and a yoke (ball nut 181 and lug 182) disposed on the screw (ball screw 180) and being displaceable thereon by the… rotation (para. [0053], “[r]otation of the ball screw 180 produces linear motion of a ball nut 181, which is connected to the valve inner sleeve 172 by means of a load yoke or load lug 182.”); and an actuatable member (sleeve 172) of the downhole tool connected to the yoke of the actuator and being actuatable in response to the displacement of the yoke (para. [0053], “[r]otation of the ball screw 180 produces linear motion of a ball nut 181, which is connected to the valve inner sleeve 172 by means of a load yoke or load lug 182. Thus, the inner sleeve 172 can be displaced to block or permit flow through the ports 185, 186 by applying DC power to the motor 176.”).
While Hopmann discloses a gear box driven by a motor, Hopmann may not disclose the specific gear and motor configuration for the actuator as recited in claim 21. However, Eriksen, which is in the same field of endeavor as the instant application insofar as it is directed to actuators used to rotate screws for oil and gas applications, teaches the deficient limitations.
For example, Eriksen teaches an actuator (deal motor and gearing assembly as described below) comprising: a first motor (motor in motor housing 3a) configured to produce a first drive (para. [0024], “the rotational means may be electric motors.”); a second motor (motor in motor housing 3b) configured to produce a second drive (para. [0024], “the rotational means may be electric motors.”); a first gear (first gear 71a as depicted in FIG. 3) being rotatable in association with first drive (all of the gears depicted in FIG. 3 are connected to both of the motors housed in motor housing 3a and motor housing 3b through the gearing assembly); a second gear (common gear 75 as depicted in FIG. 3) being rotatable in association with second drive all of the gears depicted in FIG. 3 are connected to both of the motors housed in motor housing 3a and motor housing 3b through the gearing assembly); a screw (roller screw 5a, see para. [0035]) being rotatable and having a proximal end; an intermediate gear (third gear 73a) engaged between the first and second gears (see FIG. 3 which depicts third gear 73a disposed between common gear 75 and first gear 71a) and being configured to synchronize first and second rotations of the first and second gears as a synchronized rotation produced by at least one of the first and second drives (each of gears 71a, 75, and 73a may be rotated by at least one of either motor housed in motor housing 3a and motor housing 3b where the gears are all engaged for synchronization), wherein the intermediate gear (gear 73a) has an inline connection to the proximal end of the screw (see FIG. 3 which depicts gear 73a disposed inline with roller screw 5a) and is configured to transfer the synchronized rotation to the screw (see FIG. 3 which depicts gear 73a disposed inline with roller screw 5a); and a yoke (roller nut 52a) disposed on the screw (roller nut 52a is disposed on roller 5a) and being displaceable thereon by the synchronized rotation (para. [0035], “screw 5 a… is arranged with a roller- nut 52 a. The roller-nuts 52 a… comprises threaded rollers (not shown) in engagement with the threads (not shown) on the screws 5 a… The threaded rollers enable the rotation of the screw 5 a… to be translated into an axial movement of the roller nut 52 a… along the screw 5 a…”).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have utilized the actuator of Eriksen (e.g., two motors, associated gearing, roller screw 5a and roller nut 52a) to replace the motor, gearing, screw, and yoke configuration in Hopmann in order to provide for a dual motor configuration where either motor is capable of providing rotation to the gearing assembly in order to rotate a screw (of Eriksen) and thereby to progress the roller nut (e.g., equivalent to the ball nuts of Hopmann) using either one of the two motors provided by Eriksen. The functions of both drive and gearing mechanisms were known in the art as set forth by each application where both drive and gearing mechanisms perform the same function of rotating a screw to advance a component disposed on the screw (e.g., a yoke). As such, the drive and gearing mechanisms of the two actuators are predictably interchangeable in order to achieve the predictable result of rotating a screw to advance a yoke disposed on the screw.
Regarding claim 2, Hopmann modified by Eriksen teaches wherein the screw comprises a worm gear feed screw (roller screw 5a of Eriksen); and wherein the yoke comprises a nut (roller nut 52a of Eriksen) disposed on the worm gear feed screw.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 3—5, 7, 21—22, and 24—29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published US Patent Application to Hopmann et al., hereinafter “Hopmann,” (US 20210062614 A1) and Published US Patent Application to Eriksen (US 20200340562 A1). For the sake of clarity, claim 21 is listed first since claim 21 is the independent claim from which all other claims depend.
Regarding claim 21, Hopmann discloses [a] downhole tool (interval control valve 170) for use in a well (para. [0049], “interval control valve 170 may be used for any of the downhole flow control or interval control valves described herein.”), the downhole tool comprising: an actuator (motor 176, gear box 177, and ball screw 180) comprising: a screw (ball screw 180) being rotatable and having a proximal end; and a yoke (ball nut 181 and lug 182) disposed on the screw (ball screw 180) and being displaceable thereon by the… rotation (para. [0053], “[r]otation of the ball screw 180 produces linear motion of a ball nut 181, which is connected to the valve inner sleeve 172 by means of a load yoke or load lug 182.”); and an actuatable member (sleeve 172) of the downhole tool connected to the yoke of the actuator and being actuatable in response to the displacement of the yoke (para. [0053], “[r]otation of the ball screw 180 produces linear motion of a ball nut 181, which is connected to the valve inner sleeve 172 by means of a load yoke or load lug 182. Thus, the inner sleeve 172 can be displaced to block or permit flow through the ports 185, 186 by applying DC power to the motor 176.”).
While Hopmann discloses a gear box driven by a motor, Hopmann may not disclose the specific gear and motor configuration for the actuator as recited in claim 21. However, Eriksen, which is in the same field of endeavor as the instant application insofar as it is directed to actuators used to rotate screws for oil and gas applications, teaches the deficient limitations.
For example, Eriksen teaches an actuator (deal motor and gearing assembly as described below) comprising: a first motor (motor in motor housing 3a) configured to produce a first drive (para. [0024], “the rotational means may be electric motors.”); a second motor (motor in motor housing 3b) configured to produce a second drive (para. [0024], “the rotational means may be electric motors.”); a first gear (first gear 71a as depicted in FIG. 3) being rotatable in association with first drive (all of the gears depicted in FIG. 3 are connected to both of the motors housed in motor housing 3a and motor housing 3b through the gearing assembly); a second gear (common gear 75 as depicted in FIG. 3) being rotatable in association with second drive all of the gears depicted in FIG. 3 are connected to both of the motors housed in motor housing 3a and motor housing 3b through the gearing assembly); a screw (roller screw 5a, see para. [0035]) being rotatable and having a proximal end; an intermediate gear (third gear 73a) engaged between the first and second gears (see FIG. 3 which depicts third gear 73a disposed between common gear 75 and first gear 71a) and being configured to synchronize first and second rotations of the first and second gears as a synchronized rotation produced by at least one of the first and second drives (each of gears 71a, 75, and 73a may be rotated by at least one of either motor housed in motor housing 3a and motor housing 3b where the gears are all engaged for synchronization), wherein the intermediate gear (gear 73a) has an inline connection to the proximal end of the screw (see FIG. 3 which depicts gear 73a disposed inline with roller screw 5a) and is configured to transfer the synchronized rotation to the screw (see FIG. 3 which depicts gear 73a disposed inline with roller screw 5a); and a yoke (roller nut 52a) disposed on the screw (roller nut 52a is disposed on roller 5a) and being displaceable thereon by the synchronized rotation (para. [0035], “screw 5 a… is arranged with a roller- nut 52 a. The roller-nuts 52 a… comprises threaded rollers (not shown) in engagement with the threads (not shown) on the screws 5 a… The threaded rollers enable the rotation of the screw 5 a… to be translated into an axial movement of the roller nut 52 a… along the screw 5 a…”).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have utilized the specific motor/drive and gearing configuration of Eriksen (e.g., two motors and associated gearing) to replace the generically recited motor and gearing configuration disclosed in Hopmann in order to provide for a dual motor configuration where either motor is capable of providing rotation to the gearing assembly in order to rotate a screw (of Hopmann) and thereby to progress a yoke (of Hopmann) using either one of the two motors provided by Eriksen. The functions of both drive and gearing mechanisms were known in the art as set forth by each application where both drive and gearing mechanisms perform the same function of rotating a screw to advance a component disposed on the screw (e.g., a yoke). As such, the drive and gearing mechanisms of the two actuators are predictably interchangeable in order to achieve the predictable result of rotating a screw to advance a yoke disposed on the screw. Examiner notes that while Eriksen teaches a screw and a yoke as mapped above, the mapped components of Eriksen are not used to read on these elements and are rather used to show the analogous purposes of the gear/motor assembly along with showing how Eriksen would integrate into Hopmann. Moreover, Hopmann fully discloses screw/yoke portion of the combined assembly and Eriksen is only used to replace the motor and gearing assembly.
Regarding claim 3, Hopmann modified by Eriksen teaches a first mount having a first bearing (bearing 205 of Hopmann disposed on the side of FIG. 9 which includes motor section 176 and gearbox 177) supporting the proximal end of the screw on the first mount (see FIG. 9 where ball screw 180 is supported/mounted to motor end support 204 on the same side as the aforementioned bearing 205); and a motor mount (the generically indicated motor portion in FIG. 7 as indicated by motor 176 is mounted within housing 171 as depicted in FIG. 7 of Hopmann) having the first and second motors mounted thereon (the generically indicated motor section 176 is replaced with the two motors of Eriksen as set forth in the rejection for claim 21), wherein the first gear, the second gear, and the intermediate gear (the three gears which make up the gearing assembly of Eriksen as discussed in claim 21 would be located in the generic gear box 177 of FIG. 7 of Hopmann) are disposed between the first mount and the motor mount (see FIG. 9 where gearbox 177 is disposed between bearing 205 and motor 176, thereby being disposed between the first mount associated with the bearing 205 supporting the roller screw 180 and motor section 176).
Regarding claim 4, Hopmann modified by Eriksen teaches a second mount having a second bearing (see bearing 205 of Hopmann disposed on the side of FIG. 9 which includes planetary gearbox 221 and motor 220) supporting a distal end of the screw on the second mount (bearing 205 on the other side of actuator assembly 80 in FIG. 9 supports the other side of ball screw 180).
Regarding claim 5, Hopmann modified by Eriksen teaches wherein the yoke is displaceable in a first linear direction in response to the first drive of the first motor alone in a first rotational direction (as noted with regards to claim 21, the gears of Eriksen are all engaged as depicted in FIG. 3 of Eriksen such that either one of the motors disposed in motor housing 3a or motor housing 3b may function to actuate the screw 5a), the second drive of the second motor alone in the first rotational direction, or the first and second drive of the first and second motors both in the first rotational direction; and wherein the yoke is displaceable in a second linear direction opposite to the first linear direction (regarding the direction of rotation, Eriksen at para. [0035] teaches “[d]irection of axial movement of the roller-nuts 52 a, 52 b depends on the direction of rotation of the screw 5 a.”) in response to the first drive of the first motor alone in a second rotational direction opposite to the first rotational direction (as noted with regards to claim 21, the gears of Eriksen are all engaged as depicted in FIG. 3 of Eriksen such that either one of the motors disposed in motor housing 3a or motor housing 3b may function to actuate the screw 5a), the second drive of the second motor alone in the second rotational direction, or the first and second drives of the first and second motors both in the second rotational direction.
Regarding claim 7, Hopmann modified by Eriksen teaches wherein the downhole tool is an interval control valve (Interval Control Valve 170 of FIG. 7 of Hopmann) comprising a housing (housing 171 of FIG. 7 houses both inner sleeve 172 and an unlabelled bore) having a bore (housing 171 of FIG. 7 houses both inner sleeve 172 and an unlabelled bore) and at least one side port (housing flow ports 186); and wherein the actuatable member comprises a sliding sleeve (inner sleeve 172) disposed in the bore and connected to the yoke (sleeve 172 is connected to load lug 182 and ball nut 181), the sliding sleeve being movable relative to the at least one side port in response to the displacement of the yoke (see para. [0050] and [0053] of Hopmann).
Regarding claim 22, Hopmann modified by Eriksen teaches wherein the intermediate gear (third gear 73a of Eriksen is inline with roller screw 5a of Eriksen and likewise would be aligned inline with ball screw 180 of Hopmann) has the inline connection to the proximal end of the screw (the gear is connected to the screw in order to rotate it).
Regarding claim 24, Hopmann as modified by Eriksen teaches wherein the downhole tool only has the one screw (ICV 170 of FIG. 7 and actuator assembly 80 of FIG. 9 of Hopmann, to which the screw of claim 21 is mapped, is a single screw. Notably, while the screw of Eriksen is used to show analogous parts, Eriksen is only used for the motor and gearing configuration.).
Regarding claim 25, Hopmann modified by Eriksen teaches wherein the screw is a rotatable screw of a ball screw assembly (Hopmann at FIGs. 7 and 9 as mapped in claim 21 discloses ball screw 180); and wherein the yoke (ball nut 181 and load yoke 182 of Hopmann) comprises a ball nut (ball nut 181 of Hopmann) of the ball screw assembly disposed on the rotatable screw (see FIGs. 7 and 9 of Hopmann).
Regarding claim 26, Hopmann modified by Eriksen teaches wherein the first drive shaft (the motor disposed in motor housing 3a includes a drive shaft which engages with first gear 71b as depicted in FIG. 2 of Eriksen) is a rotor of the first motor (the motor disposed in motor housing 3a is coupled to first gear 71b via a rotor which rotates the gear. See FIG. 3) or is a gear shaft of a gear box coupled to the rotor of the first motor.
Regarding claim 27, Hopmann modified by Eriksen teaches wherein the second drive shaft (see drive shaft of the motor housed in housing 3b) is a rotor of the second motor (the drive shaft is couples to the gearing arrangement detailed in claim 21 in order to rotate the gearing assembly) or is a gear shaft of a gear box coupled to the rotor of the second motor.
Regarding claim 28, the actuator assembly 80 of Hopmann as depicted in FIG. 9 includes two sets of motor sections (e.g., 176 and 220) and associated gear assemblies (e.g., 177 and 221) where each respective motor section and gear assembly is disposed on opposite sides of ball screw 180 (e.g., proximal and distal). As described in claim 21, the motor section 176 and gear assembly 177 of Hopmann was directly replaced with the two motors and intermeshed multi-gear assembly of Eriksen. The replacement dual motor and gear assembly of Eriksen as described in claim 21 would be an obvious replacement for gearbox 221 and motor 220 of Hopmann as depicted in FIG. 9. The mapping, which would be analogous to that set forth above is provided as follows to completeness: a third motor (motor in motor housing 3a) configured to produce a third drive (para. [0024], “the rotational means may be electric motors.”); a fourth motor (motor in motor housing 3b) configured to produce a fourth drive (para. [0024], “the rotational means may be electric motors.”); a third gear (first gear 71a as depicted in FIG. 3) being rotatable in association with third drive (all of the gears depicted in FIG. 3 are connected to both of the motors housed in motor housing 3a and motor housing 3b through the gearing assembly); a fourth gear (common gear 75 as depicted in FIG. 3) being rotatable in association with fourth drive (all of the gears depicted in FIG. 3 are connected to both of the motors housed in motor housing 3a and motor housing 3b through the gearing assembly); and a second intermediate gear (third gear 73a) engaged between the third and fourth gears (see FIG. 3 which depicts third gear 73a disposed between common gear 75 and first gear 71a) and being configured to synchronize third and fourth rotations of the third and fourth gears as second synchronized rotation produced by at least one of the third and fourth drives (each of gears 71a, 75, and 73a may be rotated by at least one of either motor housed in motor housing 3a and motor housing 3b where the gears are all engaged for synchronization), wherein the second intermediate gear has a second inline connection to a second end of the screw (see FIG. 3 which depicts gear 73a disposed inline with roller screw 5a) and is configured to transfer the second synchronized rotation to the screw (see FIG. 3 which depicts gear 73a disposed inline with roller screw 5a).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have utilized the specific motor/drive and gearing configuration of Eriksen (e.g., two motors and associated gearing) to replace the generically recited motor and gearing configuration disclosed in Hopmann in order to provide for a dual motor configuration where either motor is capable of providing rotation to the gearing assembly in order to rotate a screw (of Hopmann) and thereby to progress a yoke (of Hopmann) using either one of the two motors provided by Eriksen. The functions of both drive and gearing mechanisms were known in the art as set forth by each application where both drive and gearing mechanisms perform the same function of rotating a screw to advance a component disposed on the screw (e.g., a yoke). As such, the drive and gearing mechanisms of the two actuators are predictably interchangeable in order to achieve the predictable result of rotating a screw to advance a yoke disposed on the screw. Examiner notes that while Eriksen teaches a screw and a yoke as mapped above, the mapped components of Eriksen are not used to read on these elements and are rather used to show the analogous purposes of the gear/motor assembly along with showing how Eriksen would integrate into Hopmann. Moreover, Hopmann fully discloses screw/yoke portion of the combined assembly and Eriksen is only used to replace the motor and gearing assembly.
Regarding claim 29, Hopmann modified by Eriksen teaches wherein the downhole tool is a valve (inflow control valve 170 of Hopmann including adjustable sleeve 172 of Hopmann), a packer, a fluid sampler, a formation tester, a pump, an inflow control device, a safety valve, or an interval control valve.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published US Patent Application to Hopmann et al., hereinafter “Hopmann,” (US 20210062614 A1) and Published US Patent Application to Eriksen (US 20200340562 A1) as applied to claim 21 above.
Regarding claim 6, Hopmann modified by Eriksen may not explicitly disclose wherein the inline connection comprises a spline connection of the intermediate gear to the proximal end of the screw. For example, while third gear 73a of Eriksen is connected inline with screw 5a as depicted in FIG. 2, Eriksen does not go into detail regarding the specifics of the shaft on which the gear is disposed. However, common gear 75, as depicted in FIG. 3, depicts a splined connection disposed within the gear insofar as connection has four ridges attached to what is otherwise a circular connector.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the splined shaft connector of common gear 75, as depicted in FIG. 3 of Eriksen to replace the generic connector for third gear 73a, where both shaft connectors function to connect their respective gears to an additional element to relay rotation and where the results of the substitution would be predictable (e.g., able to relay rotation from the gear to the additional element, in this case, a screw).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Published US Patent Application to Hall et al., (US20100212966 A1) which teaches an actuator used in a downhole tool which includes a similar gearing configuration as that recited in the instant claims; and
Published US Patent Application to Eriksen (US 20190032806 A1) which teaches a linear actuator including a roller screw 78 and a nested/intermeshed gearing assembly which is similar to that of the instant claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to URSULA NORRIS whose telephone number is (703)756-4731. The examiner can normally be reached Monday to Friday, 7 AM to 4 PM.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/U.L.N./Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676