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 .
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 1-6,9-11,14-15,19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4,11,27,28,31,36, 46 of copending Application No. 18178388 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the application 18178388 claims a friction reducing vibration tool, having a rotary driving device, a valve having a rotary component and a stationary component, a bypass passage, a bypass actuator have a valve poppet, a sensor and a processor. Thus, the claim limitations although broader are obviously met by the patent. Therefore, the claims are obviously directed toward the same invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 7 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 18178388 in view of Espinoza et al. 20220034165 . The application does not claim the rotary driving device is a Moineau-style rotor within a stator. Espinoza teaches that a Moineau-style rotor within a stator is a known driver for rotating a valve (see abstract). Therefore, it would be obvious to one of ordinary skill in the art to modify the claims disclosed by the application to have Moineau-style rotor within a stator rotate the valve in view of the teachings of Espinoza as this is a known rotary driver for a valve.
This is a provisional nonstatutory double patenting rejection.
Claim 8 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 18178388 in view of Gillis 20140246234 . The application does not claim the bypass actuator comprises an electric motor and a ball screw. Gillis teaches that electric motor and a ball screw is a known type of bypass valve actuator (see paragraph 0089). Therefore, it would be obvious to one of ordinary skill in the art to modify the claims disclosed by the application to have a electrical motor and ball screw to operate the bypass valve in view of the teachings of Gillis as this is a known type of valve actuator.
This is a provisional nonstatutory double patenting rejection.
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) 11-13 and 15 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Rodney 20150337652 .
Referring to claim 11, Rodney discloses a method of activating or deactivating a friction-reducing vibration tool in a drill string, the method comprising: detecting a stimulus using a sensor (116); and electrically activating or deactivating the friction-reducing vibration tool in response to signals from the sensor indicative of the stimulus being detected (see paragraph 0020).
Referring to claim 12, Rodney discloses generating a control signal from surface; and transmitting the control signal downhole, wherein the control signal is the stimulus (see paragraph 0020, controller 142, at surface can send signal to fluid pulse source, FPS) .
Referring to claim 13, Rodney discloses activating or deactivating a plurality of friction-reducing vibration tools ( see figure 2, at right signals sent to two friction reducing tools, at 132) in a drill string at the same time using the control signal.
Referring to claim 15, Rodney disclose the stimulus is a condition downhole ( sensor 116 is located downhole, see paragraph 0020).
Claim(s) 11-12, 15 and 18 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Lanning et al. 20230296013 .
Referring to claim 11, Lanning (see fig 2b) discloses a method of activating or deactivating a friction-reducing vibration tool in a drill string, the method comprising: detecting a stimulus using a sensor (sensor 203 or transceiver 211); and electrically activating or deactivating the friction-reducing vibration tool in response to signals from the sensor indicative of the stimulus being detected (see paragraph 0057).
Referring to claim 12, Lanning discloses generating a control signal from surface; and transmitting the control signal downhole, wherein the control signal is the stimulus (see fig 1, and paragraph 0059, control signal can be generated by surface control at 50 and sent downhole) .
Referring to claim 15, Lanning disclose the stimulus is a condition downhole ( see fig. 2b, sensor 203 is located downhole, see paragraph 0020).
Referring to claim 18, Lanning discloses the control signal is a variation in pressure cycles ( signal can be mud pulse signal, see paragraph 0033).
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.
Claim(s) 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lanning et al. 20230296013 in view of Moody 20210262340.
Referring to claims 16 and 17,Lanning does not disclose the control signal is a series of timed pump cycles or a series of timed rotary cycles. Moody teaches sending controls signals by rotary cycles or pump cycles (see paragraph 0031). Therefore, it would be obvious to one of ordinary skill in the art to modify the method disclosed by Lanning to have the control signal be a series of timed pump cycles in view of the teachings of Moody with a reasonable expectation of success as this is merely a simple substitution of one type of telemetry system for sending control signals for another type of telemetry system.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Mody et al. 20050257931, Samuel 20200011146, Switzer et al., 20220003063 disclose detecting a stimulus with a sensor and activating a friction reducing vibration tool based on the stimulus.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GIOVANNA WRIGHT whose telephone number is (571)272-7027. The examiner can normally be reached M-F 8 am- 5 pm.
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/Giovanna Wright/ Primary Examiner, Art Unit 3672