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 .
Election/Restrictions
Applicant’s election without traverse of species I in the reply filed on 6/17/2026 is acknowledged. Claims 12-14 and 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/17/2026.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 3/11/2025 and 10/9/2025 were filed prior to the mailing date of the mailing of this action. The submissions comply with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
Drawings
The drawings were received on 3/19/2025. These drawings are accepted.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-11 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Butler et al. (US Re. 35,116) in view of Wang et al. (US 10,786,853).
Regarding claim 1, Butler et al. disclose a gland repair tool (404,300,310,360,402, Fig.3,7,8) for repairing a gland seal (410) in a valve (400, 2) configured to control flow of a high-pressure medium, the gland repair tool comprising:
an elongated tool body (321) having a rear end and a front end configured for attachment to an injection shutoff device fitted to a wall (at 400, see Fig. 8) of the valve that is opposite the gland seal, a drill passage (the opening in 321 surrounding drill 402, see Fig. 8, also see Fig. 7 the opening is at the end of lead line 324) extending through the elongated tool body from the rear end to the front end, the drill passage being configured to receive a drill bit (402) for drilling a hole through the wall, a rotary seal (326) configured to create a seal that prevents the high-pressure medium from escaping the drill passage past the drill bit.
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Butler et al. are silent to having a cooling circuit including a cooling fluid inlet configured to convey a cooling fluid into the drill passage, a cooling fluid outlet configured to convey the cooling fluid out of the drill passage, and a one-way valve configured to prevent the cooling fluid from escaping the drill passage via the cooling fluid inlet.
Wang et al. teach the use of a cooling circuit (10, 18,16,88,86, col.4, lns. 19-47) including a cooling fluid inlet (16) configured to convey a cooling fluid into the drill passage, a cooling fluid outlet (18) configured to convey the cooling fluid out of the drill passage, and a one-way valve (38, the flow is indicated as going in one direction) configured to prevent the cooling fluid from escaping the drill passage via the cooling fluid inlet.
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ a cooling circuit as taught by Wang et al. into the device of Butler et al. to have a cooling circuit including a cooling fluid inlet configured to convey a cooling fluid into the drill passage, a cooling fluid outlet configured to convey the cooling fluid out of the drill passage, and a one-way valve configured to prevent the cooling fluid from escaping the drill passage via the cooling fluid inlet, in order to cool the rotary tool (col. 3, lns. 25-55, Wang et al.) to reduce wear of the tool, and thereby extending the life of the tool (col.1, lns. 18-34, Wang et al.).
Regarding claim 2, Wang et al. disclose a back stop in the drill passage, the back stop being configured to engage with an annular step on the drill bit to prevent ejection of the drill bit from the rear end of the elongated tool body under force of the high-pressure medium.
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Regarding claim 3, Wang et al. disclose the back stop includes a ledge (the inner diameter of the smaller central bore of 20 is considered as the ledge, in the same manner as applicants device in Figure 10B of the instant application) that radially protrudes into the drill passage.
Regarding claim 4, Wang et al. disclose the drill bit, wherein the drill bit is located in the drill passage and configured so that the annular step (the step being the chamfered end at the leftmost end of 46, see Fig. 3) engages the back stop when the drill bit is placed under the force of the high-pressure medium.
Regarding claim 5, Wang et al. disclose the back stop includes a ledge (the inner diameter of the smaller central bore of 20 is considered as the ledge, in the same manner as applicants device in Figure 10B of the instant application) that radially protrudes into the drill passage,
and the annular step defines an increased diameter (the outermost diameter of the bit) of the drill bit.
Regarding claim 6, Butler et al. when combined with Wang et al. disclose a drill (46,col.6, 28-31, Wang) configured to rotate the drill bit to create the hole though the wall of the valve.
Regarding claim 7, Butler et al. disclose a cap (361) on the rear end of the elongated tool body, wherein the cap is configured to compress the rotary seal against the drill bit.
Regarding claim 8, Butler et al. disclose a forward stop (in Fig. 8, the rightmost end of the angle parts of 404 that surround the drill) for setting a drilling depth of the drill bit. Alternatively, Wang et al. disclose the forward stop (44, see Fig. 2, col. 6, lns. 24-28).
The claimed limitations: “for setting a drilling depth of the drill bit”, are all considered as intended use limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 9, Butler et al. when combined with Wang et al. disclose the cooling fluid inlet is coupled to the drill passage at a location that is axially offset from a location (as shown in Figure 1, note inlet 16 in relation to outlet 18) where the cooling fluid outlet is coupled to the drill passage to facilitate circulation of cooling fluid through an entire length of the drill passage between the rotary seal and the front end.
Regarding claim 10, Butler et al. when combined with Wang et al. disclose that material/debris removed from the wall by the drill bit is transported away from the drill bit by the cooling fluid (Wang et al., col. 8, lns. 9-20).
Regarding claim 11, Butler et al. when combined with Wang et al. disclose the cooling fluid in the drill passage resists ingress of the high-pressure medium into the drill passage (since the fluid is delivered to the cutting edges 54, the fluid in the drill passage resists ingress of the high-pressure medium into the drill passage; Wang et al., col. 8,lns. 9-20).
Regarding claim 15, Butler et al. when combined with Wang et al. disclose a drill (404, in Butler; Alternatively, Wang, tool mount 20, col. 41-43) configured to rotate the drill bit.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Craig Price, whose telephone number is (571)272-2712 or via facsimile (571)273-2712. The examiner can normally be reached on Monday-Friday (8:00AM-4:30PM EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Craig Schneider, can be reached at telephone number 571-272-3607, Kenneth Rinehart can be reached at 571-272-4881. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CRAIG J PRICE/ Primary Examiner, Art Unit 3753
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