DETAILED ACTION
Acknowledgements
In the reply filed January 30, 2026, the applicant amended claims 1 and 14.
Currently claims 1-20 are under examination.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,241,315 in view of Watkins (U.S. Patent No. 4,403,658). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the applicant’s invention are fully encompassed by the limitations of U.S. Patent No. 12,241,315 with the exception of a connector protrusion being provided on an outer surface of the connector.
Watkins discloses a connector housing with a connector comprising a connector protrusion provided on an outer surface of the connector (Figure 9: 78 can be seen in contact with the outer surface of 72).
It would have been obvious to one having ordinary skill in the art at the time of the invention’s filing to have utilized the connector protrusion positioning of Watkins within the invention of U.S. Patent No. 12,241,315, with the well-known and predictable result of fixing the connection together in a manner that allows flow paths between inner and outer portions of the connection to remain aligned.
Claim Rejections - 35 USC § 102
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 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 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 1-5, 10, 14, 17, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watkins (U.S. Patent No. 4,403,658).
Regarding Claim 1, Watkins discloses a system for connecting one or more flow lines, the system comprising:
A connector housing (Watkins: 38) comprising:
At least one inner guide ledge (Watkins: space for 78) formed on a connector housing inner surface (Watkins: inner surface of 38), the at least one inner guide ledge (Watkins: space for 78) comprising a slot (Watkins: space for 78); and
A first connection passage (Watkins: 92) formed through a wall of the connector housing (Watkins: 38);
A connector (Watkins: 72) comprising a connector protrusion (Watkins: 78) provided on an outer side surface of the connector (Figure 9: 78 can be seen in contact with the outer surface of 72), wherein the connector protrusion (Watkins: 78) is fitted within the slot to rotationally fix the connector (Watkins: 72) within the connector housing (Watkins: 38)(Watkins: 108 and 92 must rotationally align in order to function); and
A first annular flow path connection (Watkins: 108) formed between the connector housing (Watkins: 38) and the connector (Watkins: 72), wherein the first annular flow path connection (Watkins: 108) is formed by a first connector annular flow path connection groove (Watkins: 80) formed in an outer side surface of the connector (Watkins: 72), wherein the first connection passage (Watkins: 92) through the connector housing (Watkins: 38) intersects with the first annular flow path connection (Watkins: 108).
Regarding Claim 2, Watkins discloses the system of claim 1, wherein the connector (Watkins: 72) comprises a connector plate (Watkins: 128, 130) mounted to a top surface of the connector housing (Watkins: 38), where the connector plate (Watkins: 128, 130) comprises a cut-out (Watkins: space for 96) aligned with an umbilical connection.
Regarding Claim 3, Watkins discloses the system of claim 1, wherein the connector housing (Watkins: 38) includes a seal (Watkins: 110) extending about a circumference of the inner surface of the connector housing (Watkins: 38) to seal the first annular flow path connection (Watkins: 108).
Regarding Claim 4, Watkins discloses the system of claim 1, wherein the connector housing (Watkins: 38) is attached to an end of a frame of a BOP stack (Watkins: Column 2: lines 10-24: BOP is part of connected system).
Regarding Claim 5, Watkins discloses the system of claim 1, wherein:
The connector (Watkins: 72) has a body comprising a first bore (Watkins: 106);
The first bore (Watkins: 106) being formed through the body of the connector (Watkins: 72).
Regarding Claim 10, Watkins discloses the system of claim 1, wherein the at least one inner guide ledge (Watkins: space for 78) further comprises a sloped guide ledge (Watkins: inner surface of 98 is generally sloped until adjacent 78), wherein the sloped guide ledge (Watkins: inner surface of 98 is generally sloped until adjacent 78) extends from a top of the connector housing (Watkins: 38) in an axially downward direction and terminates at the slot.
Regarding Claim 14, Watkins discloses a method, comprising:
Providing a connector housing (Watkins: 38) connected to a BOP stack Watkins: Column 2: lines 10-24: BOP is part of connected system), the connector housing (Watkins: 38) comprising:
At least one inner guide ledge (Watkins: space for 78) formed on a connector (Watkins: 72) housing inner surface (Watkins: inner surface of 38); and
A first connection passage (Watkins: 92) formed through a wall of the connector housing (Watkins: 38);
Connecting the riser to a connector (Watkins: 72) via a riser connection (Watkins: 131), wherein the connector (Watkins: 72) comprises:
A connector protrusion (Watkins: 78) provided on an outer side surface of the connector (Watkins: 72; Figure 9: 78 can be seen in contact with the outer surface of 72); and
A first bore (Watkins: 106) formed through a body of the connector (Watkins: 72);
Inserting the connector (Watkins: 72) into the connector housing (Watkins: 38), comprising:
Contacting the connector protrusion (Watkins: 78) to the at least one inner guide ledge (Watkins: space for 78); and
Guiding the connector protrusion (Watkins: 78) along the at least one inner guide ledge (Watkins: space for 78) to rotationally align (Watkins: 108 and 92 must rotationally align in order to function) the connector (Watkins: 72) within the connector housing (Watkins: 38) as the connector (Watkins: 72) is inserted into the connector housing (Watkins: 38) until the connector (Watkins: 72) is in a fixed position within the connector housing (Watkins: 38), wherein, when the connector (Watkins: 72) is in the fixed position:
A first annular flow path connection (Watkins: 108) is formed between the connector housing (Watkins: 38) and the connector (Watkins: 72) by;
A first housing annular flow path connection groove formed in an inner surface of the connector housing (Watkins: 38), a first connector annular flow path connection groove (Watkins: 80) formed in an outer side surface of the connector (Watkins: 72), or a combination of the first housing annular flow path connection groove (Watkins: 80) axially aligned with the first connector annular flow path connection groove (Watkins: 80), the first connection passage (Watkins: 92) through the connector housing (Watkins: 38) intersects with the first annular flow path connection (Watkins: 108), and the first bore (Watkins: 106) is in fluid communication with the first annular flow path connection (Watkins: 108).
Regarding Claim 17, Watkins discloses the method of claim 14, wherein the at least one inner guide ledge (Watkins: space for 78) comprises a sloped guide ledge (Watkins: inner surface of 98 is generally sloped until adjacent 78) and a slot, wherein the sloped guide ledge (Watkins: inner surface of 98 is generally sloped until adjacent 78) extends from a top of the connector housing (Watkins: 38) in an axially downward direction and terminates at the slot, and wherein when the connector (Watkins: 72) is in the fixed position, connector protrusion (Watkins: 78) is fitted within the slot.
Regarding Claim 18, Watkins discloses the method of claim 14,wherein inserting the connector (Watkins: 72) comprises sealing (Watkins: via 110) the first annular flow path connection (Watkins: 108) via a seal (Watkins: 110).
Allowable Subject Matter
Claims 6-9, 11-13, 15, 16, 19 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance: The use of language directed toward a second housing annular flow path connection groove, and its relationship with the second annular flow path connection, the second bore, the connector and the connector housing, when combined with the other limitations of claim 6, would not be obvious to include in the applicant’s invention and is therefore sufficient to distinguish the applicant’s invention from prior art. The use of language directed toward a piston actuated stab and its relationship with the connector, connector housing and first bore, when combined with the other limitations of claims 9 and 20 is sufficient to distinguish the applicant’s invention from prior art. The use of language directed toward the placement of a winch-receiving cavity that extends from a bottom surface of the connector and into the body of the connector and its associated latch, when combined with the other limitations of claim 11, is sufficient to distinguish the applicant’s invention from prior art. The use of language directed toward the method of using a winch system on a frame containing a blowout preventer to pull the connector into the connector housing, when combined with the other limitations of claim 15, is sufficient to distinguish the applicant’s invention from prior art. The use of additional language directed toward the placement and angles of the first, second, and third bores through the connector and connector housing, when combined with the other limitations of claim 19, is sufficient to distinguish the applicant’s invention from prior art.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant's arguments filed January 30, 2026, have been fully considered but they are not persuasive
Regarding claims 1 and 14, the applicant argues that Watkins does not disclose the claimed annular flow path connection formed by a groove formed in an inner surface of a connector housing and/or outer side surface of a connector, instead showing an annular groove (80) in which a pawl (78) is latched into, which is not a flow path.
The applicant further argues that Watkins fails to disclose a connection passage through the connector housing that intersects with the annular flow path connection, instead showing bores (106, 108) that intersect with housing ports that are separate from a spaced apart from the pawl groove (80).
The applicant also argues that Watkins does not teach the claimed inner guide ledge, slot, or protrusions required by “at least one inner guide ledge formed on a connector housing inner surface, the at least one guide ledge comprising a slot… a connector comprising a connector protrusion provided on an outer side surface of the connector, wherein the connector protrusion is fitted within the flow to rotationally fix the connector within the connector housing.
Lastly, the applicant argues that there is no mention in Watkins of axially rotating the termination housing 38 to form a connection.
The examiner respectfully submits that while it is true that the pawl groove (80) being used to anticipate the annular flow path connection does not operate as a flow path for fluid, there is no limitation in the claim requiring that it does so. 80 does however function to connect the fluid connection between 72 and 98 (through 106, 108, 92, and 90), and can therefore considered to be an annular flow path connection.
The examiner further respectfully submits that while it is additionally true that Watkins does not disclose a connection passage through the connector housing that intersects with the annular flow path connection (80), this is not required by the claims as they are currently written which requires that the first annular flow path connection be formed by a first connector annular flow path connection groove. As the use of the annular flow path connection/pawl groove (is used) to make up the connection between 38 and 72, and therefore the flow path within these parts when connected, the annular flow path groove/pawl groove (80) can be said to be at least partially responsible for forming the first annular flow path connection by facilitating the connection of 38 and 72.
The examiner also respectfully submits that Watkins does disclose “at least one inner guide ledge (Watkins: space for 78) formed on a connector housing inner surface (Watkins: inner surface of 38), the at least one inner guide ledge (Watkins: space for 78) comprising a slot (Watkins: space for 78) “ as well as “a connector (Watkins: 72) comprising a connector protrusion (Watkins: 78) provided on an outer side surface of the connector (Figure 9: 78 can be seen in contact with the outer surface of 72), wherein the connector protrusion (Watkins: 78) is fitted within the slot to rotationally fix the connector (Watkins: 72) within the connector housing (Watkins: 38)(Watkins: 108 and 92 must rotationally align in order to function)”. The protrusion/pawls (78), while not an integral part of the outer surface of the connector (72), are indeed provided on the outer surface of the connector as required by the claims.
Lastly, the examiner submits that while Watkins does not specifically describe a rotational motion to align the flow paths in the termination housing, the invention of Watkins would not be functional without the rotational alignment of said passageways. Watkins further discloses that (Watkins: Column 6: lines 25-42) that once the termination head 72 is in place the passageways are then aligned. As the only manner in which these passageways may be aligned, while termination head 72 is already seated, is in a rotational manner, the invention of Watkins anticipates the rotational motion to align the termination housing to form a connection as required by the claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DOUGLAS S WOOD whose telephone number is (571)270-5954. The examiner can normally be reached Monday through Thursday 8:30 AM - 7:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole A Coy can be reached at (571) - 272 - 5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DOUGLAS S. WOOD
Examiner
Art Unit 3679
/DOUGLAS S WOOD/Examiner, Art Unit 3679
/MATTHEW R BUCK/Primary Examiner, Art Unit 3672
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