DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the AIA first to invent provisions. 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.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,270,258 B2 (“US ‘258”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 is generic to all that is recited in claim 1 of US ‘258. That is, claim 1 falls entirely within the scope of claim 1 of US ‘258 and is thereby anticipated by claim 1 of US ‘258.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,270,258 B2 (“US ‘258”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 is generic to all that is recited in claim 2 of US ‘258. That is, claim 2 falls entirely within the scope of claim 1 of US ‘258 and is thereby anticipated by claim 2 of US ‘258.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,270,258 B2 (“US ‘258”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 is generic to all that is recited in claim 4 of US ‘258. That is, claim 3 falls entirely within the scope of claim 4 of US ‘258 and is thereby anticipated by claim 4 of US ‘258.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,270,258 B2 (“US ‘258”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 is generic to all that is recited in claim 6 of US ‘258. That is, claim 5 falls entirely within the scope of claim 6 of US ‘258 and is thereby anticipated by claim 6 of US ‘258.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,270,258 B2 (“US ‘258”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 is generic to all that is recited in claim 3 of US ‘258. That is, claim 6 falls entirely within the scope of claim 3 of US ‘258 and is thereby anticipated by claim 3 of US ‘258.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,270,258 B2 (“US ‘258”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 is generic to all that is recited in claim 7 of US ‘258. That is, claim 7 falls entirely within the scope of claim 7 of US ‘258 and is thereby anticipated by claim 7 of US ‘258.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,270,258 B2 (“US ‘258”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 is generic to all that is recited in claim 8 of US ‘258. That is, claim 8 falls entirely within the scope of claim 8 of US ‘258 and is thereby anticipated by claim 8 of US ‘258.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,270,258 B2 (“US ‘258”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 is generic to all that is recited in claim 10 of US ‘258. That is, claim 10 falls entirely within the scope of claim 10 of US ‘258 and is thereby anticipated by claim 10 of US ‘258.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,270,258 B2 (“US ‘258”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 is generic to all that is recited in claim 12 of US ‘258. That is, claim 12 falls entirely within the scope of claim 12 of US ‘258 and is thereby anticipated by claim 12 of US ‘258.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,270,258 B2 (“US ‘258”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 13 is generic to all that is recited in claim 13 of US ‘258. That is, claim 13 falls entirely within the scope of claim 13 of US ‘258 and is thereby anticipated by claim 13 of US ‘258.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,270,258 B2 (“US ‘258”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 14 is generic to all that is recited in claim 17 of US ‘258. That is, claim 14 falls entirely within the scope of claim 17 of US ‘258 and is thereby anticipated by claim 17 of US ‘258.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12,270,258 B2 (“US ‘258”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 is generic to all that is recited in claim 18 of US ‘258. That is, claim 15 falls entirely within the scope of claim 18 of US ‘258 and is thereby anticipated by claim 18 of US ‘258.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. 12,270,258 B2 (“US ‘258”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 17 is generic to all that is recited in claim 20 of US ‘258. That is, claim 17 falls entirely within the scope of claim 20 of US ‘258 and is thereby anticipated by claim 20 of US ‘258.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12,270,258 B2 (“US ‘258”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 18 is generic to all that is recited in claim 19 of US ‘258. That is, claim 18 falls entirely within the scope of claim 19 of US ‘258 and is thereby anticipated by claim 19 of US ‘258.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 of U.S. Patent No. 12,270,258 B2 (“US ‘258”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 19 is generic to all that is recited in claim 21 of US ‘258. That is, claim 19 falls entirely within the scope of claim 21 of US ‘258 and is thereby anticipated by claim 21 of US ‘258.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 22 of U.S. Patent No. 12,270,258 B2 (“US ‘258”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 20 is generic to all that is recited in claim 22 of US ‘258. That is, claim 20 falls entirely within the scope of claim 22 of US ‘258 and is thereby anticipated by claim 22 of US ‘258.
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,270,258 B2 (“US ‘258”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 21 is generic to all that is recited in claim 14 of US ‘258. That is, claim 21 falls entirely within the scope of claim 14 of US ‘258 and is thereby anticipated by claim 14 of US ‘258.
Claim Rejections - 35 USC § 102
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) 1-5, 7, 9, 11, 12, 14-17 and 19-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Venugopal et al. (U.S. P.G. Publication No. 2014/0151122 A1; “Venugopal”).
Venugopal discloses:
Regarding claim 1:
An apparatus (10; FIG. 1) for damping torsional vibrations in a borehole string (14), the apparatus comprising:
an inertial mass (48; FIG. 4) disposed in a cavity (cavity 60 is within damping sub 54 which is a portion of the damping assembly 44; FIG. 4) in a rotatable downhole component (18, 56; FIG. 1 depicts the damping assembly 44 as a subassembly of the rotatable downhole component 18), the rotatable downhole component configured to be disposed in a borehole (12; FIG. 1) in a subsurface formation (16; FIG. 1 depicts the rotatable component 18 as being disposed underground within borehole 12), the inertial mass coupled to the rotatable downhole component by a damping fluid (62) and is free to move relative to the rotatable downhole component (¶ [0026], “The damping fluid viscosity provides a damping effect due to vicious resistance to shear created by the relative movement of the mass 48 and the housing 56 or other primary mass” [emphasis] thereby indicating that, even though it is coupled to the housing 56 via spring 50, mass 48 is able to rotate relative to the housing 56 by at least a partial revolution); wherein
the damping fluid is disposed in the cavity and between the inertial mass and the rotatable downhole component (¶ [0027], “a gap or clearance space 62 is formed within the cavity 62 between the inertia mass 48 and the housing 56. The fluid in the gap forms a viscous film having a damping coefficient c”), wherein rotational acceleration of the rotatable downhole component causes shear in the damping fluid to dissipate energy from the rotational acceleration of the rotatable downhole component and causes the rotational acceleration to be reduced (¶ [0026], “The damping fluid viscosity provides a damping effect due to viscous resistance to shear created by the relative movement of the mass 48 and the housing 56 or other primary mass. In some embodiments, the inertial or auxiliary mass 48 has a shape configured to provide a gap a having a relatively constant thickness that is sufficient to produce a damping effect based on shear resistance”; the “shear resistance” and “damping effect” refer to the dissipation of kinetic energy transferred from the acceleration of the rotatable downhole component as well as the deceleration thereof; see also ¶ [018] regarding the dampening of “rotational vibrations”).
Regarding claim 2:
The apparatus of claim 1, further comprising a housing (56; FIG. 4) including the cavity, the housing disposed at the rotatable downhole component (housing 56 is a portion of the damping sub 54, seen in FIG. 4, which is a portion of damping assembly 44 which is disposed at the component 18, seen in FIG. 1) and rotationally fixed relative to the rotatable downhole component (¶ [0022], “The housing 56 or a portion thereof is attached to the damping assembly 44 such that rotational motion is transferred from the housing 56 to the assembly 44. The housing 56 is attached or coupled to the drill string 14 and/or drilling assembly such that torque is transferred from the mud motor or surface drive.”), wherein the housing is sealed (¶ [0025], “the cavity 60 is configured to retain a viscous damping fluid therein”).
Regarding claim 3:
The apparatus of claim 1, wherein the apparatus is configured to dampen the torsional vibrations at one or more selected frequencies (FIG. 6 depicts the effective tuning/dampening of vibrations across a range of frequencies; see ¶ [0034]-[0037] regarding the targeting of the “selected natural frequency” of the rotating component 18 or other componentry).
Regarding claim 4:
The apparatus of claim 1, wherein the inertial mass is at least one of a ring segment and a ring disposed in the cavity (FIG. 4 depicts the mass 48 disposed within cavity 60; ¶ [0026], “cylindrical or toroid shape” i.e. a ring shape) and configured to rotate about a rotational axis of the rotatable downhole component (FIG. 1, 4 depicts the rotational center of mass 48 i.e. system 44 as being aligned with that of the rotatable downhole component i.e. drilling assembly 18).
Regarding claim 5:
The apparatus of claim 1, further comprising at least one bearing device (64; FIG. 5) configured to be disposed between at least one inertial mass of the plurality of masses and the rotatable downhole component (FIG. 5 depicts the bearing 64 between mass 48 and housing 56 of the rotatable component; ¶ [0028], “one embodiment, shown in FIG. 5, the housing 56 (or other primary mass ma) is mounted on a bearing 64 connected to the BHA by a spring 50 having a SELECTED torsional stiffness ka”), the bearing device configured to support movement of the inertial mass relative to the rotatable downhole component (FIG. 5 depicts the bearing 64 as being disposed radially inward against the mass 48 indicating that it supports relative movement of the mass 48 relative to the rotatable component 20; see ¶ [0026] regarding relative movement between the mass 48 and housing 56).
Regarding claim 7:
The apparatus of claim 1, wherein the apparatus has one or more properties configured to dampen the torsional vibrations at a selected vibrational frequency (FIG. 6 discloses a range of target frequencies in which vibrations are effectively dampened; see ¶ [0034] regarding a “selected natural frequency of the rotating string or other component”; viscosity of fluid 52 is selected so as to create a particular resistance to shear to dampen vibrations, see ¶ [0020], [0026]), the one or more properties including at least one of a selected density of the inertial mass, a selected weight of the inertial mass, a selected roughness of an outer surface of the inertial mass, a selected roughness of an inner surface of the cavity, a selected gap size between the inertial mass and the inner surface, a selected viscosity of the damping fluid (¶ [0020], [0025], [0026]), a selected density of the damping fluid, a selected compressibility of the damping fluid.
Regarding claim 9:
The apparatus of claim 1, wherein the housing includes a fluid port that allows the cavity to be at least partially filled with the damping fluid (¶ [0031], “chemical additives that can be applied to the fluid, e.g. via a reservoir and controllable valve in the damping sub 54, to alter the fluid viscosity” wherein the “valve” qualifies as a fluid port that allows partial filling of the cavity with the damping fluid).
Regarding claim 11:
The apparatus of claim 1, further comprising a plurality of inertial masses (¶ [0032], “a hydraulically expandable or retractable ring” thereby indicating a first mass i.e. the “ring” and a second mass i.e. the hydraulic fluid used in the “hydraulically expandable or retractable ring g) coupled to the rotatable downhole component by the damping fluid (FIG. 4 depicts inertia mass unit, including the ring and hydraulics, coupled to the viscous fluid 60) and free to move relative to the rotatable downhole component (¶ [0026], “The damping fluid viscosity provides a damping effect due to viscous resistance to shear created by the relative movement of the mass 48 and the housing 56 or other primary mass”)
wherein the rotational acceleration of the rotatable downhole component causes shear in the damping fluid to dissipate energy from the rotational acceleration (¶ [0026]).
Regarding claim 12:
The apparatus of claim 11, wherein the plurality of inertial masses includes a first inertial mass (¶ [0032], “a hydraulically expandable or retractable ring” thereby indicating a first mass i.e. the “ring”) configured to mainly dampen the torsional vibrations at a first frequency (FIG. 6 depicts one of several frequencies in which vibrations were effectively dampened), and a second inertial mass (¶ [0032], the second mass being the fluid used in the “hydraulically expandable or retractable ring”) configured to mainly dampen the torsional vibrations at a second frequency (FIG. 6 depicts a second of several frequencies in which vibrations were effectively dampened), the first frequency different than the second frequency (FIG. 6 depicts a range of different frequencies, e.g. wherein fT = 0.98, 1.00, 1.02).
Regarding claim 14:
A method of damping torsional vibrations in a borehole string, the method comprising:
disposing a rotatable downhole component and a damping assembly in a borehole in a subsurface formation (¶ [0041] “the drill string 14 [and its damping assembly 44] is disposed at a borehole or formation”),
the damping assembly including a cavity (60) that is rotationally fixed relative to the rotatable downhole component, and an inertial mass (48) disposed in the cavity and coupled to the rotatable downhole component by a damping fluid (62) disposed between the inertial mass and the rotatable downhole component,
wherein the inertial mass is free to move relative to the rotatable downhole component (¶ [0026], “The damping fluid viscosity provides a damping effect due to viscous resistance to shear created by the relative movement of the mass 48 and the housing 56 or other primary mass”);
performing an operation that includes rotating the rotatable downhole component and causes the torsional vibrations of the rotatable downhole component (¶ [0041], “drilling operation is commenced” which causes vibrations); and
damping at least partially the torsional vibrations of the rotatable downhole component (¶ [0043]), wherein the damping includes causing rotational acceleration to be reduced based on shear occurring in the damping fluid due to relative movement between the inertial mass and the rotatable downhole component (¶ [0025]-[0026]).
Regarding claim 15:
The method of claim 14, wherein the damping assembly includes a housing (56) including the cavity (60), the housing rotationally fixed relative to the rotatable downhole component (¶ [0022], “The housing 56 or a portion thereof is attached to the damping assembly 44 such that rotational motion is transferred from the housing 56 to the assembly 44. The housing 56 is attached or coupled to the drill string 14 and/or drilling assembly such that torque is transferred from the mud motor or surface drive.”), wherein the housing is sealed (¶ [0025], “the cavity 60 is configured to retain a viscous damping fluid therein”).
Regarding claim 16:
The method of claim 14, wherein the inertial mass is at least one of a ring segment and a ring disposed in the cavity (FIG. 4 depicts the mass 48 disposed within cavity 60; ¶ [0026], “cylindrical or toroid shape” i.e. a ring shape) and configured to rotate about a rotational axis of the rotatable downhole component (FIG. 1, 4 depicts the rotational center of mass 48 i.e. system 44 as being aligned with that of the rotatable downhole component i.e. drilling assembly 18).
Regarding claim 17:
The method of claim 14, wherein the damping assembly includes at least one bearing device (64) (64; FIG. 5) configured to be disposed between the inertial mass and the rotatable downhole component (FIG. 5 depicts the bearing 64 between mass 48 and housing 56 of the rotatable component; ¶ [0028], “one embodiment, shown in FIG. 5, the housing 56 (or other primary mass ma) is mounted on a bearing 64 connected to the BHA by a spring 50 having a SELECTED torsional stiffness ka”), the bearing device configured to support movement of the inertial mass relative to the rotatable downhole component (FIG. 5 depicts the bearing 64 as being disposed radially inward against the mass 48 indicating that it supports relative movement of the mass 48 relative to the rotatable component 20; see ¶ [0026] regarding relative movement between the mass 48 and housing 56).
Regarding claim 19:
The method of claim 14, further comprising selecting a vibration frequency (FIG. 6 discloses a range of target frequencies in which vibrations are effectively dampened; see ¶ [0034] regarding a “selected natural frequency of the rotating string or other component”), and selecting one or more properties configured to dampen the torsional vibrations at the selected vibration frequency (viscosity of fluid 52 is selected so as to create a particular resistance to shear to dampen vibrations, see ¶ [0020], [0026]), wherein the one or more properties including at least one of a density of the inertial mass, weight of the inertial mass, a roughness of an outer surface of the inertial mass, a roughness of an inner surface of the cavity, a gap size between the inertial mass and the inner surface, a viscosity of the damping fluid (¶ [0020], [0026])), a density of the damping fluid, and a compressibility of the damping fluid.
Regarding claim 20:
The method of claim 15, wherein the damping assembly includes a first inertial mass (¶ [0032], “a hydraulically expandable or retractable ring” thereby indicating a first mass in the “ring”) configured to mainly dampen the torsional vibrations at a first frequency (FIG. 6 depicts one of several frequencies in which vibrations were effectively dampened), and a second inertial mass (¶ [0032], the second mass being the hydraulic fluid used in the “hydraulically expandable or retractable ring”) configured to mainly dampen the torsional vibrations at a second frequency (FIG. 6 depicts a second of several frequencies in which vibrations were effectively dampened), the first frequency different than the second frequency (FIG. 6 depicts a range of different frequencies, e.g. wherein fT = 0.98, 1.00, 1.02).
Regarding claim 21:
The apparatus of claim 1, wherein the damping fluid is configured to at least one of: over-proportionally dissipate the energy at high rotational accelerations above a selected acceleration, under-proportionally dissipate the energy at the high rotational accelerations, and proportionally dissipate the energy at the high rotational accelerations and/or at accelerations lower than the high rotational accelerations (¶ [0025] indicates the use of a “silicone-based damping fluid” which inherently provides a linear proportional behavior with respect to velocity, as recognized by Applicant on page 21 in the instant written description, and therefore would under-proportionally dissipate the energy at the high accelerations).
Regarding claim 22:
A vibration damping device (44, 54; FIG. 4) for use with a downhole tool (14), the downhole tool having a tool axis (FIG. 1 depicts the tool 14 having a longitudinal axis that extends that extends in the vertical direction), the vibration damping device comprising:
a device housing (56) mechanically coupled to the downhole tool (¶ 22), wherein the device housing includes a cavity (60) having a cavity volume (depicted in FIG. 4) and an inner surface (FIG. 5 depicts an inner surface of housing 56 engaged with bearing 64; ¶ 28, “one embodiment, shown in FIG. 5, the housing 56 (or other primary mass ma) is mounted on a bearing 64 connected to the BHA by a spring 50 having a SELECTED torsional stiffness ka”); and
an inertia element (48; FIG. 4) movably supported in the cavity and having a volume (FIG. 4 depicts element 48 as occupying space i.e. having volume), a mass (¶ 20, “inertia mass 48”), and a non-zero moment of inertia about the tool axis (FIG. 4 depicts mass 48 as having a radius and ¶ 20 discloses it as an “inertia mass 48” both of which dictate its moment of inertia e.g. I = ½MR^2 or MR^2) ;
at least one of an axial bearing and a radial bearing (64) positioned between the inertia element and the inner surface of the cavity (depicted in FIG. 5; ¶ 28);
wherein the volume of the inertia element is less than the cavity volume (FIG. 4-5 depict the inertia element 48 as being contained within the housing 56 so as to form a gap 62 therebetween, thereby indicating that it has less volume than the cavity) so that an interstitial volume is defined between the inertia element and the inner surface (FIG. 5 depicts space between mass 48 and the inner surface e.g. area in which bearings 64 are disposed), and wherein the interstitial volume is occupied by a fluid (¶ 28, “In one embodiment, shown in FIG. 5, the housing 56 (or other primary mass m.sub.a) is mounted on a bearing 64 connected to the BHA by a spring 50 having a SELECTED torsional stiffness ka. Damping action can be added by using fluid between this assembly and the hollow sub as described above” thereby indicating fluid in said area in which the bearing 64 is located); and
wherein the inertia element is supported within the cavity in a manner that allows the inertia element to move relative to the device housing (¶ 26, “The damping fluid viscosity provides a damping effect due to viscous resistance to shear created by the relative movement of the mass 48 and the housing 56 or other primary mass”).
Claim Rejections - 35 USC § 103
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.
Claim(s) 6, 8, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Venugopal.
Regarding claim 6, Venugopal discloses the apparatus of claim 2, see above, and further teaches a thermally conductive material configured to transfer the dissipated energy away from at least one of the inertial mass, the damping fluid, the housing, and the rotatable downhole component (¶ [0047], “Further, various other components may be included . . . cooling component. . . .” wherein the “cooling component” is inherently capable of transferring dissipated energy i.e. heat away from the components i.e. inertial mass, the damping fluid, the housing, and the rotatable downhole component). However, Venugopal does not expressly disclose that the thermally conductive material has a heat conductivity greater than at least one of a heat conductivity of the inertial mass, a heat conductivity of the damping fluid, a heat conductivity of the housing, and a heat conductivity of the rotatable downhole component.
Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); see also Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."); see also In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977. Here, Venugopal teaches the general condition of a thermally conductive material, i.e. “cooling component” mentioned in paragraph [0047], that has the result/effect of transferring heat away from at least one of the inertial mass, the damping fluid, the housing, and the rotatable downhole component (¶ [0047]). As such, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the thermally conductive material has a heat conductivity greater than at least one of a heat conductivity of the inertial mass, a heat conductivity of the damping fluid, a heat conductivity of the housing, and a heat conductivity of the rotatable downhole component since it has been held that where the general conditions of a claim are disclosed in the prior art (¶ [0047], “cooling component”), discovering the optimum or workable ranges involves only routine skill in the art. See MPEP § 2144.05. In addition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the thermally conductive material i.e. “cooling component” as having a heat conductivity greater than at least one of a heat conductivity of the inertial mass, a heat conductivity of the damping fluid, a heat conductivity of the housing, and a heat conductivity of the rotatable downhole component, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use (i.e. cooling the inertial mass, damping fluid, housing, and rotatable downhole component) as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 8, Venugopal discloses the limitations of claim 1, see above, and further teaches that the inertial mass includes a first constituent component and a second constituent component (¶ [0032], the “ring” in the “hydraulically expandable or retractable ring” and the hydraulic fluid in the “hydraulically expandable or retractable ring” being either the first or second constituent components), each component having a respective first and second density (the ring and hydraulic fluid inherently have densities). However, Venugopal does not expressly disclose the second density being greater than the first density.
Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); see also Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."); see also In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977. Here, Venugopal teaches the general condition that “the physical and/or inertial properties of the inertia mass 48 are adjustable to change the natural frequency of the assembly 44” and that “[a]djustment of the inertia mass 48 results in a change in rotational inertia, which in turn changes the natural frequency of the assembly” (¶ [0032]) As such, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the second density being greater than the first density since it has been held that where the general conditions of a claim are disclosed in the prior art (¶ [0032]), discovering the optimum or workable ranges involves only routine skill in the art. See MPEP § 2144.05. In addition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the second density being greater than the first density since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use (i.e. cooling the inertial mass, damping fluid, housing, and rotatable downhole component) as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 18:
The method of claim 15, further comprising transferring dissipated energy away from the damping assembly by a thermally conductive material (via “cooling component” in ¶ [0047]) having a heat conductivity greater than at least one of a heat conductivity of the inertial mass, a heat conductivity of the damping fluid, a heat conductivity of the housing, a heat conductivity of the rotatable downhole component (see above regarding obviousness of optimizing workable ranges given general conditions and use of preferred materials as a matter of obvious design choice).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Venugopal in view of Clinard et al. (U.S. Patent No. 5,743,362 A; “Clinard”).
Venugopal discloses:
Regarding claim 10:
The apparatus of claim 1 (see above), wherein the apparatus is configured to reduce a gap between an inner surface of the cavity and the inertial mass (¶ [0029]-[0032] contemplates actively changing the parameters of the fluid and inertia mass; the “viscosity of the fluid may be adjusted using various catalysts”; that the damping fluid “has a viscosity that is adjustable based on exposure to a catalyst; that said catalysts include “temperature controls” which inherently involve controls for i.e. responses to changes in temperature i.e. a decrease or increase in temperature; that said catalyst may be used in conjunction with “a hydraulically expandable or retractable ring”; and that expanding the ring inherently reduces the gap between the mass and the inner surface of the cavity).
However, Venugopal does not expressly disclose reducing the gap in response to increasing temperature.
Clinard teaches reducing a gap in response to increasing temperature (col. 1, ll. 31-34; col. 4, ll. 28-41) to compensate for a decrease in viscosity that occurs due to the temperature increase (col. 4, ll. 28-41, “Without compensation, this would cause the damper 10 to convert less energy than when operating at a cooler temperatures. However, as the working temperature increases (FIG. 4), the first ring 44 expands. The expansion of the first ring 44 causes the second ring 46 to expand at a higher rate than would otherwise be realized. The expansion of the rings 44 and 46 causes the size of the annular orifice 50 to decrease. Due to the reduced size of the annular orifice 50, more energy is converted by the movement of the fluid through the orifice than would be had the annular orifice 50 remained unchanged.”).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Venugopal to include reducing the gap in response to increasing temperature, as taught by Clinard, to compensate for a decrease in viscosity that occurs due to the temperature increase.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Venugopal in view of McLean (U.S. Patent No. 3,552,230 A; “McLean”).
Regarding claim 13, Venugopal teaches the apparatus of claim 12, see above, but does not expressly disclose at least one of a porous material, an elastic material, and a tortuous material between the inertial mass and the cavity.
McLean teaches an elastic material (23; col. 4, ll. 36, “elastomeric bearing member disks 23”) between an inertial mass (17) and a cavity (11) for the purpose of centering the inertial mass (col. 4, ll. 39-42, “adequate centering”).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Venugopal to incorporate at least one of a porous material, an elastic material, and a tortuous material between the inertial mass and the cavity, as taught by McLean, for the purpose of centering the inertial mass.
Allowable Subject Matter
Claim 23 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.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/DANIEL D YABUT/Primary Examiner, Art Unit 3656