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 Objections
Claim 10 is objected to because of the following informalities: In line 1, “open” should be changed to --opens--. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: The word “wherein” should be inserted before “rotational,” and “comprising” should be changed to --comprises--. Appropriate correction is required.
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.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12, 366,131. Although the claims at issue are not identical, they are not patentably distinct from each other because:
With regard to claims 1, 9, and 15, the patented claims in the ‘131 patent are generally narrower than the pending claims in the instant application. However, the pending claims require that the poppet moves “solely as a result of fluid pressure acting on the poppet,” while the patented claims state that “an imbalanced pressure cycles the fluid flow control valve between the open and closed positions.” Given that the patented claim already states that a pressure imbalance closes the valve, then it would have been considered obvious to eliminate unnecessary parts and not provide a spring bias, in order to simplify the device and reduce costs, such that the valve would be closed solely by fluid pressure.
Claims 2-8, 10-14, and 16-21 of the instant application are similar to patented claims 2-7, 9-12, and 14-18 and do not add material that is patentable over the claims in the ‘131 patent.
Conclusion
It is noted that the claims have not been rejected using the prior art.
Only claim 15 will be addressed below because it is the broadest independent claim. Claims 1 and 9 both contain all of the limitations of claim 15, plus additional material.
The closest prior art to claim 15 is that of Elfar (US 10,865,612).
Elfar discloses (see mainly Figs. 19A and 19B) a device for generating pulsations in a tool string. The device utilizes two valves which function together to generate the pulsations: An upper, axially-moving valve (212) and a lower, rotary valve valve (see sleeve 40 and ports 46 and 62). However, the upper, axially-moving valve 212 does not meet the claimed requirements of a “poppet” and “poppet mandrel.” The valve 212 is not a classical “poppet valve.” The element that could be considered a “poppet” in the valve 212 is element 226, because it selectively closes off the lower end of the tube 230 at location 227. However, element 226 does not meet the limitation of “a poppet axially movable on a poppet mandrel…the poppet mandrel having at least one outlet port defined therein.” The poppet mandrel would be considered element 50’, because it has outlet ports 62. Poppet element 226 is fixed with respect to mandrel 50’. Additionally, the alleged “poppet valve” 212 utilizes a spring 238, and thus does not move “solely as a result of fluid pressure acting on the poppet,” as required by all independent claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT E FULLER whose telephone number is (571)272-6300. The examiner can normally be reached M-F 8:30AM - 5:30PM.
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/ROBERT E FULLER/ Primary Examiner, Art Unit 3676