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 .
Response to Arguments
Applicant's arguments filed 04/15/26 have been fully considered but they are not persuasive.
On pages 7-8 of the response, Applicant argues:
“The Examiner previously relied on Brantly to teach a tapered inner surface for purposes of claim 6. However, that reasoning does not support obviousness of amended claim 1 for at least three independent reasons.
1. Brantly's Inner Taper Is Not Part of a Shrink-Fit Interface
In Brantly:
The tapered inner surfaces (e.g., surfaces 24, 25) are part of internal upsets and bore transitions, primarily directed to:
o stress distribution,
o fluid flow,
o and maintaining internal diameter.
They are not disclosed as cooperating with a tapered outer shrink-fit surface, nor are they disclosed at the same axial end portion of the tool joint.
By contrast, amended claim 1 requires both tapered surfaces to be present at the same second end portion of the end piece, forming a coordinated dual-taper geometry.
2. Brantly does not teach or suggest a relative taper relationship
Even if one were to combine Cruickshank and Brantly, neither reference teaches or suggests ‘the tapering of the radial inner surface is greater than the tapering of the radial outwardly facing first contact surface,’ as recited in amended claim 1.
This is not a matter of routine optimization. It is a specific geometric relationship that directly affects:
‘interference behavior during shrink fitting,
‘stress gradients at the weld-shrink-fit interface, and
‘crack resistance under combined axial and torsional loading.
Applicant respectfully submits that the Examiner has cited no teaching, suggestion, or motivation in either reference that would lead a person of ordinary skill to select different taper magnitudes, let alone to select the inner taper to be greater than the outer taper.
Such a combination would require impermissible hindsight because Cruickshank is concerned with shrink-fit retention and Brantly is concerned with thread strength, fluid flow, and upset geometry. The Office Action lacks an explanation as to why a skilled person would:
‘extract Brantly's internal bore taper,
‘relocate it to the second end portion of a shrink-fit pin, and
‘further modify it to have a greater taper angle than the outer shrink-fit surface.
Absent Applicant's disclosure, such a reconstruction can only be achieved using impermissible hindsight.
Because neither Cruickshank alone nor Cruickshank in view of Brantly teaches or suggests:
‘two tapered surfaces at the same second end, and ‘a defined taper hierarchy between those surfaces, amended claim 1 and the clams dependent therefrom are not anticipated under 35 U.S.C. § 102 or obvious under 35 U.S.C. § 103.”
In response, Brantly has been relied upon for a general teaching that it is well-known in the pipe coupling art, and in the drill pipe coupling art, to taper the inner bore surface at a joint or coupling interface, in order to optimize flow at the interface and mitigate and/or prevent disruption or stagnation of fluid flow, which is known to not only reduce efficiency but also create undue stresses at the joint. The combination of Cruickshank and Brantly is certainly reasonable, as both teach drill pipe coupling assemblies having tapered interfaces. Not only that, both teach shrunk-fit interfaces. The modification of Cruickshank merely involves altering the interior bore at the flow-side pin end (36, Fig. 1a) of the shrunk-fit joint. Brantly teaches an outward taper at the flow-side pin end of his shrunk-fit joint, as shown at surface (24) in Fig. 1. The modification results in two tapered surfaces at the pin end (36) in Cruickshank.
"A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396.
As to the argument that Cruickshank et al in view of Brantly do not teach or suggest “the tapering of the radial inner surface is greater than the tapering of the radial outwardly facing first contact surface”, the Office disagrees. Cruickshank’s pin/box connection is a tapered one, and is shrunk fit. Brantly’s threaded pin/box connection is also slightly tapered, as described on page 1, col. 2, ll. 50-55. Brantly’s tapered surface (24) is at a much greater slope than his pin/box connection, as illustrated in Fig. 1. Brantly therefore teaches a defined taper hierarchy. As such, it would have been well within the purview of the skilled artisan to modify the pin end of Cruickshank et al, as taught by Brantly, to be tapered, in order to optimize fluid flow (see 103 rejection). Making this modification results in a taper hierarchy in Cruickshank, as Cruickshank’s pin/box connection is also slightly tapered.
Accordingly, for the foregoing reasons, the combination of Cruickshank et al and Brantly is sound, valid and reasonable.
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.
Claim(s) 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brantly (US 2,073,093).
As to claim 12, Brantly discloses a method of forming a drill pipe assembly to be used in a rock drilling rig (see page 1), wherein the method comprises: mounting end pieces (19) to opposite ends of a tubular drill pipe (11/13); providing first ends of the end pieces with first coupling means comprising thread surfaces (Fig. 1) for thread mounting; providing opposite second ends of the end pieces with truncated cones wherein radial outer surfaces of the truncated cones form first contact surfaces (pg. 2, col. 1, l. 63 - col. 2, l. 11; pg. 2, col. 2, ll. 50-74); forming socket parts to both ends of the drill pipe for receiving the truncated cones and being provided with second contact surfaces (pg. 2, col. 1, l. 63 - col. 2, l. 11; pg. 2, col. 2, ll. 50-74); heating the ends of the drill pipe at the socket parts to expand diameters of the second contact surfaces by means of thermal expansion (pg. 2, col. 1, ll. 63-75); pushing the truncated cones inside the thermally expanded socket parts; allowing the heated socket parts to cool and shrink whereby shrink fits are formed between the first and second contact surfaces (pg. 2, col. 1, l. 63 - col. 2, l. 11; pg. 2, col. 2, ll. 50-74); securing the mountings between the drill pipe and the end pieces by welding (pg. 2, col. 1, l. 63 - col. 2, l. 11); and providing the mating first and second connecting surfaces with tapered shapes (pg. 2, col. 1, l. 63 - col. 2, l. 11; pg. 2, col. 2, ll. 50-74); wherein the providing of the opposite second ends of the end pieces further comprises forming, at the second end of each end piece, a radial inner surface (24) extending an axial distance from the second end towards the first end and having a tapered configuration, and wherein the tapering of the radial inner surface is greater than the tapering of the radial outer surface forming the first contact surface (see Fig. 1 and page 1, col. 2, ll. 50-55).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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) 1-5 and 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cruickshank et al (US 3,923,324) in view of Brantly (US 2,073,093).
As to claim 1, Cruickshank et al discloses an end piece (12) of a drill pipe for a rotary or DTH drilling rig; the end piece comprising: an elongated tubular piece having an outer surface and an inner surface (Fig. 1a); a first end provided with a first coupling means including threaded surfaces (20) arranged for thread mounting with other drill components; and an opposite second end provided with second coupling means (tapered portion of 12) arranged for coupling the end piece to the drill pipe by means of a shrink fit (col. 2, l. 50 - col. 3, l. 63), wherein the second coupling means include a radial outwardly facing first contact surface extending a first axial distance from the second end towards the first end (Fig. 1a); and wherein the first contact surface has a tapered configuration (Fig. 1a).
Cruickshank et al fails to teach that at the second end of the end piece there is also a radial inner surface extending an axial distance from the second end towards the first end and having a tapered configuration, and wherein the tapering of the radial inner surface is greater than the tapering of the radial outwardly facing first contact surface.
However, Brantly teaches a similar shrunk-fit pipe coupling for drill pipe, wherein the threaded connection is also slightly tapered (pg. 1, col. 2, ll. 50-55), and the flow-end of the pin (19) includes a radial inner surface (24) extending an axial distance from the second end towards the first end and having a tapered configuration, which is greater than the slight taper of the threaded connection.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Cruickshank et al such that at the second end of the end piece there is also a radial inner surface extending an axial distance from the second end towards the first end and having a tapered configuration, as taught by Brantly, with a reasonable expectation of success, in order to enhance and optimize fluid flow.
As to claim 2, Cruickshank et al/Brantly discloses an end piece as claimed in claim 1, wherein an angle (K) of the tapering tapered first contact surface is 0.2 - 12°. Refer to col. 3, ll. 64-68 in Cruickshank et al.
As to claim 3, Cruickshank et al/Brantly discloses an end piece as claimed in claim 2, wherein the angle of the tapered first contact surface is 1 - 6°. Refer to col. 3, ll. 64-68 in Cruickshank et al.
As to claim 4, Cruickshank et al/Brantly discloses an end piece as claimed in claim 1, except that a length of the first axial distance (L) is 75 - 160 mm. Though Cruickshank et al discloses that the length of a tapered end pin (22), can be about 14 inches for a 6.5-inch drill collar body.
Nevertheless, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify Cruickshank et al/Brantly such that a length of the first axial distance (L) is 75 - 160 mm, with a reasonable expectation of success, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
As to claim 5, Cruickshank et al/Brantly discloses an end piece as claimed in claim 1, wherein a length of the first axial length distance of the tapered first contact surface is defined by a stop surface (26, Cruickshank et al) being orientated perpendicularly in relation to a longitudinal axis of the end piece.
As to claim 8, Cruickshank et al discloses a drill pipe assembly for rotary or DTH drilling (col. 1, ll. 1-18); comprising: a drill pipe (12) having opposed ends (attached to 14, 16) and an inside socket portion at each end of the drill pipe, the inside socket portions having a contact surface (see Figs. 1a and 1b); and an end piece according to claim 1 (the end piece comprising: an elongated tubular piece having an outer surface and an inner surface (Fig. 1a); a first end provided with a first coupling means including threaded surfaces (20) arranged for thread mounting with other drill components; and an opposite second end provided with second coupling means (tapered portion of 12) arranged for coupling the end piece to the drill pipe by means of a shrink fit (col. 2, l. 50 - col. 3, l. 63), wherein the second coupling means include a radial outwardly facing first contact surface extending a first axial distance from the second end towards the first end (Fig. 1a); and wherein the first contact surface has a tapered configuration (Fig. 1a)), mounted fixedly to each opposed end of the drill pipe (12), wherein the end pieces each include a male portion (pin portions) with a second coupling means outwardly facing first contact surface and being arranged to be inserted into inside socket portions at the ends of the drill pipe, wherein the end pieces are connected to the ends of the drill pipe by means of shrink fits based on a difference between the respective male socket portions and inside socket portions (col. 2, l. 50 - col. 3, l. 63); wherein mating radial first contact surfaces between surface of the male portions and the contact surface of the socket portions have tapered configurations (as at 22, 24).
Cruickshank et al fails to teach that at the second end of the end piece there is also a radial inner surface extending an axial distance from the second end towards the first end and having a tapered configuration, and wherein the tapering of the radial inner surface is greater than the tapering of the radial outwardly facing first contact surface.
However, Brantly teaches a similar shrunk-fit pipe coupling for drill pipe, wherein the threaded connection is also slightly tapered (pg. 1, col. 2, ll. 50-55), and the flow-end of the pin (19) includes a radial inner surface (24) extending an axial distance from the second end towards the first end and having a tapered configuration, which is greater than the slight taper of the threaded connection.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Cruickshank et al such that at the second end of the end piece there is also a radial inner surface extending an axial distance from the second end towards the first end and having a tapered configuration, as taught by Brantly, with a reasonable expectation of success, in order to enhance and optimize fluid flow.
As to claim 9, Cruickshank et al/Brantly discloses the drill pipe assembly as claimed in claim 8, except that that wherein a magnitude of the shrink fit is 0.1 -0.8 mm, and
As to claim 10, Cruickshank et al/Brantly discloses the drill pipe assembly as claimed in claim 8, except that a magnitude of the mentioned shrink fit is 0.2 - 0.6 mm.
Nevertheless, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify Cruickshank et al/Brantly such that a magnitude of the shrink fit is 0.1 -0.8 mm (claim 9), and a magnitude of the mentioned shrink fit is 0.2 - 0.6 mm (claim 10), with a reasonable expectation of success, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
As to claim 11, Cruickshank et al/Brantly discloses the drill pipe assembly as claimed in claim 8, except for further comprising weld joints between the end pieces and the drill tube arranged for providing additional fastening.
However, Brantly teaches a similar end piece for drill pipe, optionally including welds (28) in addition to the shrink fit connection at (18), in order to further secure and fasten the joint.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Cruickshank et al/Brantly to include weld joints between the end pieces and the drill tube, as taught by Brantly, with a reasonable expectation of success, in order to provide additional fastening.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cruickshank et al in view of Brantly, and further in view of Applicant’s Admitted Prior Art (hereinafter, “AAPA”).
As to claim 7, Cruickshank et al/Brantly discloses the end piece as claimed in claim 1, except that an outer surface of the end piece is provided with at least one discard indicator being a recess having a predetermined depth.
Applicant did not challenge the Official Notice of the use of a discard indicator being a recess having a predetermined depth, and therefore such is considered AAPA.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Cruickshank et al/Brantly such that an outer surface of the end piece is provided with at least one discard indicator being a recess having a predetermined depth, as taught by AAPA, with a reasonable expectation of success, in order to provide an indication of wear of the pipe.
Examiner’s Note:
The italicized portions in the foregoing claims are functional recitations. These clauses, as well as other statements of intended use do not serve to patently distinguish the claimed structure over that of the reference(s), as long as the structure of the cited reference(s) is capable of performing the intended use. See MPEP 2111-2115.
See also MPEP 2114, which states:
A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2d 1647;
Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531; and
[A]pparatus claims cover what a device is, not what a device does." Hewlett Packard Co. v. Bausch & Lomb Inc., 15 USPQ2d 1525,1528.
Any one of the systems in the cited reference(s) is capable of being used in the same manner and for the intended or desired use as the claimed invention. Note that it is sufficient to show that said capability exists, which is the case for the cited reference(s).
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 James M Hewitt II whose telephone number is (571)272-7084. The examiner can normally be reached M-F 9-930pm, mid-day flex 2-4pm.
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, Matthew Troutman can be reached at 571-270-3654. 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.
James M. Hewitt II
Primary Examiner
Art Unit 3679
/JAMES M HEWITT II/Primary Examiner, Art Unit 3679
Prosecution Insights