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 Final Rejection in response to the communication filed on 06/19/2026. Claims 2—7, 10, 21, 24—27, and 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.
Response to Arguments
Applicant's amendments and arguments filed 06/19/2026 with respect to the drawing objection as it applied to claim 28 have been fully considered and are moot insofar as claim 28 has been cancelled. Accordingly, the drawing objection directed to claim 8 is withdrawn.
Applicant's amendments and arguments filed 06/19/2026 with respect to the objection to claim 6 have been fully considered and is persuasive. Accordingly, the objection of claim 6 withdrawn. Notably, claim 6 is currently rejected under 35 U.S.C. 112(b) for depending from a rejected base claim (e.g., claim 22) as addressed below.
Applicant's amendments and arguments filed 06/19/2026 with respect to the objection to claim 6 have been fully considered and is persuasive. Accordingly, the objection of claim 6 withdrawn. Notably, claim 6 is currently rejected under 35 U.S.C. 112(b) for depending from a rejected base claim (e.g., claim 22) as addressed below.
Applicant's amendments and arguments filed 06/19/2026 with respect to the rejection of claims 26 and 27 under 35 U.S.C. 112(b) have been fully considered and are moot insofar as claims 26 and 27 have been cancelled. Accordingly, the rejection of claims 26 and 27 under 35 U.S.C. 112(b) is withdrawn.
Applicant's amendments and arguments filed 06/19/2026 with respect to the rejection of claim 22 under 35 U.S.C. 112(d) have been fully considered and are moot insofar as claim 22 has been cancelled. Accordingly, the rejection of claim 22 under 35 U.S.C. 112(d) is withdrawn.
Applicant's arguments filed 06/19/2026 with respect to the rejection of claim 21 (e.g., the sole independent claim) under 35 U.S.C. 103 have been fully considered but are not persuasive. The arguments set forth on page 7 of the Response with respect to Hoppman are not relevant to the rejection provided in the Non-Final Office Action dated 02/19/2026 (e.g., herein after “NFOA”) insofar as Eriksen rather than Hoppmann was used to reject the features of the claims discussed at page 7 of the Response.
The arguments set forth on page 8 of the Response with respect to Eriksen are also not relevant to the NFOA because the arguments do not address the rejection as mapped (e.g., rejection of record). Notably, identifying deficiencies in a combination of elements which do not align with the rejection of record as provided in Office Action is not a persuasive avenue for showing deficiencies in the rejection of record. For example, gear 75 of Eriksen is not the component of Eriksen which was mapped to the claimed intermediate gear. Rather, gear 73a is the element which was mapped to the intermediate gear. Furthermore, gear 73a fulfills all the requirements recited in claim 21 for the intermediate gear. For example, the intermediate merely has to fulfill the following requirements:
The intermediate gear must be located between the gears identified as the first gear (e.g., mapped to gear 71a) and the second gear (e.g., mapped to common gear 75);
The intermediate gear must be configured to synchronize to rotations of the first and second gears (as stated in the office action, the rotations of gears 71a, 75, and 73a are configured such that their rotations are synchronized. For example, if the first motor is providing rotation then gear 71a rotates gear 73a which rotates gear 75. Likewise, if the second motor is providing rotation, then gear 75 rotates gear 73a which rotates gear 71a. Either one of these scenarios fully reads on the required synchronization capabilities of gear 73a); and
The intermediate gear has an inline connection to the proximal end of the screw and is configured to transfer the rotation to the screw (gear 73a has an inline connection to a proximal end of roller screw 5a and it also functions to transfer rotation to roller screw 5a).
For the above provided reasons, the arguments set forth at pages 7 and 8 of the Response are not persuasive in showing that the combination of Hoppman modified by Eriksen, as provided in the NFOA, is deficient in reading on the recited limitations of claim 21. Accordingly, the rejection of claim 21 is maintained.
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.
Claim 6 is 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 6 depends from cancelled claim 22 and is therefore rejected under 35 U.S.C. 112(b) for depending from a cancelled claim. For the purposes of examination, claim 6 is understood to depend from claim 21. Notably, claim 10, which is withdrawn and not under examination, also depends from a cancelled base claim (e.g., claim 23).
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) 2 and 21 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(s) 3—5, 7, 21, 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. Examiner notes the combination of Hopmann and Eriksen used to reject claim 21 as provided above for claim 2, differs from the combination of Hopmann and Eriksen as provided below for claims 3—5, 7, 21, and 24—29.
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 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 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 the version of claim 21 which is used to reject claims 3—5, 7, 21, 21—27, and 29.
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
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 URSULA NORRIS whose telephone number is (703)756-4731. The examiner can normally be reached Monday to Friday, 7 AM to 4 PM.
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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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/U.L.N./Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676
Prosecution Insights