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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “first coupling means”, “second coupling means”, “means of a shrink fit” in claim 1; “second coupling means”, “means of a shrink fit” in claim 7; “first coupling means”, “means of thermal expansion-” in claim 12.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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) 1-3, 5 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cruickshank et al (US 3,923,324).
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).
As to claim 2, Cruickshank et al 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.
As to claim 3, Cruickshank et al 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.
As to claim 5, Cruickshank et al 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) being orientated perpendicularly in relation to a longitudinal axis of the end piece.
As to claim 7, Cruickshank et al discloses an end piece as claimed in claim 1, wherein an outer surface of the end piece is provided with at least one discard indicator (38) being a recess having a predetermined depth.
Claim(s) 8 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brantly (US 2,073,093).
As to claim 8, Brantly discloses a drill pipe assembly for rotary or DTH drilling (see page 1); comprising: a drill pipe (Figs. 1 and 3) having opposed ends and an inside socket portion at each end (11/13) of the drill pipe, the inside socket portions having a contact surface (Figs. 1 and 3); and an end piece (19) according to claim 1, mounted fixedly to each opposed end of the drill pipe (pg. 2, col. 1, l. 63 - col. 2, l. 11; pg. 2, col. 2, ll. 50-74), wherein the end pieces each include a male portion (as at 18) 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 (Fig. 1), 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 (pg. 2, col. 1, l. 63 - col. 2, l. 11; pg. 2, col. 2, ll. 50-74); wherein mating radial first contact surfaces between surface of the male portions and the contact surface of the socket portions have tapered configurations (pg. 2, col. 1, l. 63 - col. 2, l. 11; pg. 2, col. 2, ll. 50-74).
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).
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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cruickshank et al.
As to claim 4, Cruickshank et al 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 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.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cruickshank et al in view of Official Notice.
As to claim 7, Cruickshank et al 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.
However, Examiner takes Official Notice of the use of a discard indicator being a recess having a predetermined depth.
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 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 Official Notice, with a reasonable expectation of success, in order to provide an indication of wear of the pipe.
Claim(s) 6 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cruickshank et al in view of Brantly.
As to claim 6, Cruickshank et al discloses the end piece as claimed in claim 1, except 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.
However, Brantly teaches a similar end piece for drill pipe, having a radial inner surface (24) extending an axial distance from the second end towards the first end and having a tapered configuration.
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 11, Cruickshank et al 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 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) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brantly.
As to claim 9, 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, 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 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.
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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Welton discloses a drill pipe joint with a tapered connection that is shrunk fit.
Zhang discloses a drill pipe joint with a shrunk fit and welded connection.
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.
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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.
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James M. Hewitt II
Primary Examiner
Art Unit 3679
/JAMES M HEWITT II/Primary Examiner, Art Unit 3679