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 with traverse of Species I in the reply filed on 6/5/2026 is acknowledged. The traversal is on the ground(s) that the shared special technical feature is not known and provides a meaningful contribution over the art. This is not found persuasive because Miller et al. (US 2019/0032792) is known to anticipate all of the shared special technical features between the sets of claims (see rejection below). The requirement is still deemed proper and is therefore made FINAL. Claims 9 and 11-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species, there being no allowable generic or linking claim. Claims 1-8 and 25 are prosecuted below.
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 (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 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.
Claims 1-2 and 4-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miller et al. (US 2019/0032792).
Re Clms 1, 4, and 5: Miller et al. disclose (fig 2) a device comprising: a needle (52 with 60) having a taper surface toward a distal end (right) and a proximal portion (towards left) opposite the distal end in an axial direction, wherein a surface of the needle includes polycrystalline diamond (paragraph 0014); and a base (54, 56) including a non-diamond material (para 0020, non-super hard material) positioned around the proximal portion (as shown in fig 2), wherein the base at least partially surrounds and is joined to the proximal portion of the needle by a compression fit (shrink fit/interference fit, para 0022), wherein the base includes a pressure-balancing volume (cavity/volume behind base 59 of needle proximal portion) between at least a portion of the needle and at least a portion of the base (see fig 2).
Re Clm 2: Miller et al. disclose wherein the needle includes a monolithic diamond billet (portion 50).
Re Clms 6 and 7: Miller et al. disclose wherein the needle includes a plurality of angular segments relative to the axial direction (conical needle inherently has a plurality of angular segments, for example, 2 halves), wherein the angular segments of the plurality of angular segments each have a uniform arcuate length (see figs).
Re Clm 8: Miller et al. disclose a diamond seat (70, paragraph 0023 describing a super hard material, paragraph 0014 describing a super hard material being various diamond material) configured to receive the taper surface of the needle (fig 2).
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Miller et al. (US 2019/0032792).
Re Clm 3: Miller et al. fail to explicitly disclose the size of the dimension of the diamond billet being greater than 10mm. Examiner, however, notes that a change in the size of a prior art device is a design consideration within the skill of the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the present invention to have provided a dimension of the diamond billet of Miller et al. to be at least 10mm for the purpose of providing a properly sized needle surface for the desired application and choke valve size.
Allowable Subject Matter
Claim 25 is 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 a statement of reasons for the indication of allowable subject matter: the prior art fails to disclose wherein the volume includes a leak channel to a low pressure end of the needle.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN PETER MASINICK whose telephone number is (571)270-3060. The examiner can normally be reached Monday-Friday 8a-5p EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Anderson can be reached at (571)270-5281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN P MASINICK/Primary Examiner, Art Unit 3678
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