CTNF 19/191,202 CTNF 84229 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Double Patenting 08-33 AIA 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. 08-34 AIA Claim s 1, 10, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1, 9, and 17 of U.S. Patent No. 12291941 . Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘941 are narrower in scope, thus obviously encompass the claimed invention . 08-30 AIA A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co. , 151 U.S. 186 (1894); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert , 245 F.2d 467, 114 USPQ 330 (CCPA 1957). A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101. 08-31 AIA Claim s 2-9, 11-18, and 20 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim s 1-17 of prior U.S. Patent No. 12291941 . This is a statutory double patenting rejection. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-21-aia AIA Claim (s) 1, 10, 18, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reaux US8353353 in view of Freeman US4474241 . Regarding claims 1 and 19 , Reaux teaches a well production system (Column 1: 21-24 “In a typical oil and gas well a casing string extends from the ground surface to a ground formation containing hydrocarbons to be produced. A production tubing string extends within the casing string.”, wherein the tubing string, casing string, and later described surface control subsurface safety valves Column 1: 34-36 are considered parts of a production system), comprising: a production tubing string (Column 1: 36-38 “A SCSSV is threadably inserted within the production tubing string and forms a portion of the production tubing string after insertion.”); and a tubing retrievable safety valve assembly 10 (wherein 10 is a subsurface safety valve as described in Column 4:57-58, which is considered equivalent to the claimed retrievable safety valve assembly) included in the production tubing string, the tubing retrievable safety valve assembly comprising: a primary flapper 30 movable between a first open position (Figure 1) and a first closed position (Figure 2), wherein the primary flapper prevents flow through the assembly in an uphole direction (flow is prevented upwards due to flapper 30 engaging outlet 28 as shown in Figure 2) when in the first closed position; a secondary flapper 40 movable between a second open position (Figure 1) and a second closed position (Figure 4), wherein the secondary flapper prevents flow through the assembly in an uphole direction when in the second closed position (wherein fluid flowing upwards in Figure 4 would be prevented by flapper 40 seated as shown); a flow tube 24 shiftable between: a first downhole position (Figure 1) to retain the primary flapper in the first open position (by flow tube 24’s presence); and a first uphole position (Figure 2, wherein 24 has been moved upwards and flapper 30 has closed) to allow the primary flapper to move to the first closed position; and a protective sleeve 26 positionable in a second uphole position (shown in Figure 1) to retain the secondary flapper in the second open position. Reaux further teaches using the secondary valve 14 (which has the secondary flapper 40) when the primary valve 12 (which has the primary flapper 30) is out of service Column 6: 35-36, which is determined to be equivalent to the claimed “failure of the primary flapper”. Reaux does not teach the protective sleeve is shiftable to a second downhole position upon failure of the primary flapper to allow the secondary flapper to move to the second closed position. Freeman teaches that it is known in the art to permit a flapper 66 to move from the open position (Figure 1) to the closed position (Figure 3) by moving a protective sleeve 130 from a second uphole position (Figure 1) to a second downhole position (Figure 3, wherein Figure 2 shows the transition period), thus using fluid pressure by landing ball shown in Figure 1 to permit the flapper to close (Column 2: 65-Column 3: 2 “the back pressure valve can be activated by dropping a weighted tripping ball, which will contact a seat in the bore of the activating sleeve, causing a pressure buildup above the ball which will shear the pins holding the activating sleeve and permit its downward movement inside the lower housing”). It would have been obvious to a person having ordinary skill in the art before the effective filing date to modify the protective sleeve of Reaux that moves from a second downhole position to a second uphole position in view of the protective sleeve of Freeman that moves from the second upper position to the second downhole position with a reasonable expectation of success to use a tripping ball to cause the secondary flapper to move to the second closed position. Regarding claim 10 , Reaux teaches a method of using a tubing retrievable safety valve assembly 10 (as discussed above), the method comprising: retaining a primary flapper 30 in a first open position (Figure 1) by positioning a flow tube 24 in a first downhole position (Figure 1); moving the primary flapper from the first open position to a first closed position (Figure 2) by shifting the flow tube to a first uphole position (Figure 2 shows tube 24 moved upwards); retaining a secondary flapper 40 in a second open position (Figure 1) by positioning a protective sleeve 26 in a second uphole position (as shown in Figure 1); and upon failure of the primary flapper (using the secondary valve 14, which has the secondary flapper 40, when the primary valve 12, which has the primary flapper 30, is out of service Column 6: 35-36, which is determined to be equivalent to the claimed “failure of the primary flapper”), shifting the protective sleeve to allow the secondary flapper to move from the second open position (Figure 1) to a second closed position (Figure 4). Reaux does not teach shifting the protective sleeve is shiftable to a second downhole position to allow the secondary flapper to move to the second closed position. Freeman teaches that it is known in the art to permit a flapper 66 to move from the open position (Figure 1) to the closed position (Figure 3) by shifting a protective sleeve 130 from a second uphole position (Figure 1) to a second downhole position (Figure 3, wherein Figure 2 shows the transition period), thus using fluid pressure by landing ball shown in Figure 1 to permit the flapper to close (Column 2: 65-Column 3: 2). It would have been obvious to a person having ordinary skill in the art before the effective filing date to modify the step of shifting the protective sleeve of Reaux that moves from a second downhole position to a second uphole position in view of the protective sleeve of Freeman that moves from the second upper position to the second downhole position with a reasonable expectation of success to use a tripping ball to cause the secondary flapper to move to the second closed position. Reaux does not teach the protective sleeve is shiftable to a second downhole position upon failure of the primary flapper to allow the secondary flapper to move to the second closed position. Regarding claim 18, Freeman teaches fixing the protective sleeve 130 against a tubing string 18 downhole of the assembly 10 while shifting the protective sleeve to the second downhole position (wherein Figure 2 and 3 shows protective sleeve’s 130 shoulder engaging frustoconical surface 106 on housing 90, which is fixed to 18 via threads 12, tubular 20, and cement 32, thus it is considered that the protective sleeve 130 is fixed against further downward movement relative to downhole tubing string 18) . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure : Musselwhite, et al. US6401824 teaches a primary and secondary flapper, but only a single tube that is moved downhole to allow each to close. Jackson US2007/0284119: a primary flapper 125 held open by flow tube 140 and secondary flapper 150 held open by protective sleeve 155. The secondary flapper does not prevent uphole fluid flow, since it is arranged to prevent downhole fluid flow, and does not teach closing the secondary flapper upon primary flapper failure- the primary and second flappers work on conjunction with each other ¶0022. McStravick US4457379 teaches flow tube 20 that holds open flapper 16, and secondary opening prong 5 attached to the flow tube 20 to retain flapper 16 in an open position (Figure 4). McStravick’s flow tube 20 does not move from the downhole position to the uphole position (Figure 1 versus Figure 3 shows the opposite, to open the flapper 16, rather than to hold open the flapper and then permit the flapper to transition to the closed position) and the secondary opening prong does not retain a secondary flapper in the second option position, since only a single flapper is shown. Modification for the flow tube that is moved in the opposite direction as claimed, to open a second flapper that was previously held open by a protective sleeve, would not be obvious, as the operation of the valve of McStravick is opposite of what is claimed. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Cathleen Hutchins whose telephone number is (571)270-3651. The examiner can normally be reached M-F 11am-9:30PM EST. 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, Nicole Coy can be reached at (571)272-5405. 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. /CATHLEEN R HUTCHINS/Primary Examiner, Art Unit 3672 6/12/2026 Application/Control Number: 19/191,202 Page 2 Art Unit: 3672 Application/Control Number: 19/191,202 Page 3 Art Unit: 3672 Application/Control Number: 19/191,202 Page 4 Art Unit: 3672 Application/Control Number: 19/191,202 Page 5 Art Unit: 3672 Application/Control Number: 19/191,202 Page 6 Art Unit: 3672 Application/Control Number: 19/191,202 Page 7 Art Unit: 3672 Application/Control Number: 19/191,202 Page 8 Art Unit: 3672 Application/Control Number: 19/191,202 Page 9 Art Unit: 3672 Application/Control Number: 19/191,202 Page 10 Art Unit: 3672 Application/Control Number: 19/191,202 Page 11 Art Unit: 3672
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