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 .
Applicant’s Response
In the response date 04/06/2026, the Applicant amended claims 2 and 4, added new claims 6-16, and argued against the rejections in the Non-Final Rejection dated 01/06/2026.
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.
Claims 1, 3-4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Amani (U.S Patent 4,901,798) (“Amani”).
Regarding Claim 1, Amani discloses a method of controlling a flow of fluid (Abstract; Fig 17) comprising:
obtaining a valve assembly (Figs 11 and 17; Col 14, lines 48-67, flow control valve #70 and subassembly #71B; first and second valve elements #16 and #22) that comprises a housing (#71C, Figure 11), an inlet, an outlet (chamber #51 comprising inlet and outlet; Figure 11, Col 14, lines 48-67), a valve seat #56 and #86 and a plug member (#53 and #56 in the chamber each having a seal face, Figure 11), and a stem connected between the plug member and an actuator (Figure 13, Col 15, lines 52-67; Col 16, lines 1-15),
the plug member #54 selectively in sealing contact with the valve seat #56 and #86 to form a barrier to fluid flow through the valve assembly (Figure 11; Col 14, lines 48-67, flow control valve #70 and subassembly #71B) to define a closed configuration (Figure 11, valve member #54 is shown in a closed position with seat #56), and
the plug member moveable away from the valve seat #53 and #56 to form a passage between the valve seat and plug member to form a pathway for fluid flow through the housing #71 and to define an open configuration (Col 10, lines 9-22; Figures 11 and 12A-12B; Col 14, lines 48-67 [Wingdings font/0xE0] flow control valves are biased to an open position); and
reducing a compressive load in the stem by biasing the plug member against the valve seat (Col 10, lines 9-22; biasing spring #49; Col 12, lines 23-41 [Wingdings font/0xE0] flow control valves are biased to an open position).
Regarding Claim 3, Amani discloses the method of claim 2, wherein the inlet flow enters the valve assembly (Figure 11; Col 14, lines 48-67, flow control valve #70 and subassembly #71B) through an opening in the housing (#71C, Figure 11) that is located a side of the valve seat #53 opposite the plug member (Abstract; Figure 11), and wherein the pressure of the inlet flow is communicated to the side of the locking piston (Col 14, piston rod #54 and piston seals #52) opposite the plug member through a port formed in a sidewall of the housing (#53 and #56 in the chamber each having a seal face - Figure 11; Col 14, lines 48-67).
Regarding Claim 4, Amani discloses the method of claim 2, wherein the inlet flow enters the valve assembly through an opening in the housing that is located on a side of the valve seat opposite the plug member, and wherein the pressure of the inlet flow is communicated to the side of the locking piston (Col 14, piston rod #54 and piston seals #52) opposite the plug member through a line that is external to the housing (Abstract; Col 3, lines 25-32).
Regarding Claim 6, Amani discloses the method of claim 1, wherein the plug member is biased in a direction towards the valve seat #56 and #86 and a force for biasing the plug member is generated by a difference in pressures at the inlet and at the outlet (Col 10, lines 9-22; Figures 11 and 12A-12B; Col 12, lines 23-41; Col 14, lines 48-67 [Wingdings font/0xE0] flow control valves are biased to an open position).
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.
Claims 5, 7, 9-13 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Amani (U.S Patent 4,901,798) (“Amani”) in view of Manwill et al (U.S Pub 2017/0016290) (“Manwill”).
Regarding Claim 5, Amani fails to expressly disclose the method of claim 1, wherein the actuator is coupled to a motor, the inlet and outlet are in communication with portions in a wellbore separated by a tubular disposed in the wellbore, the method further comprising energizing the motor to move the plug assembly away from the valve seat to reconfigure the valve assembly into the open configuration so that lift gas flows between the portions in the wellbore and through the valve assembly.
Manwill teaches the method above wherein the actuator is coupled to a motor (Figure 2 – discloses an actuation system #20), the inlet and outlet are in communication with portions in a wellbore separated by a tubular disposed in the wellbore, the method further comprising energizing the motor to move the plug assembly away from the valve seat to reconfigure the valve assembly into the open configuration so that lift gas flows between the portions in the wellbore and through the valve assembly (Manwill: Abstract; Page 5, paragraph [0055] – motor actuated piston #34 and #80, actuator system #9 [Wingdings font/0xE0] Manwill teaches a motor coupled to a screw with a ball nut disposed on the screw and in functional contact with pistons #34 and #80) for the purpose of utilizing an actuator system comprising a piston in order to actuate the plurality of valves/chokes downhole from the closed and open positions and modulate the pressure and/or flow of fluid through the pathway of the drill string #14 (Figure 1) (Abstract; Page 5, paragraphs [0054]-[0055]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Amani to include an actuator coupled to a motor, as taught by Manwill, because doing so would help to utilize an actuator system comprising a piston in order to actuate the plurality of valves/chokes downhole from the closed position to selected open positions for fluid flow and to modulate the pressures downhole.
Regarding Claim 7, Amani discloses a method of controlling a flow of fluid (Abstract; Fig 17) comprising:
operating a valve assembly (Figs 11 and 17; Col 14, lines 48-67, flow control valve #70 and subassembly #71B; first and second valve elements #16 and #22) that comprises a housing (#71C, Figure 11), a valve seat #56 and #86, a plug member (#53 and #56 in the chamber each having a seal face, Figure 11), and a stem connected between the plug member and an actuator (Figure 13, Col 15, lines 52-67; Col 16, lines 1-15); and
reducing a compressive force in the stem by applying a biasing force on a portion of the plug member that is spaced away from where the stem is connected to the plug member (Col 10, lines 9-22; biasing spring #49; Col 12, lines 23-41 [Wingdings font/0xE0] flow control valves are biased to an open position),
and where the force is applied in a direction towards the valve seat (Col 10, lines 9-22; biasing spring #49; Col 12, lines 23-41 [Wingdings font/0xE0] flow control valves are biased to an open position).
Amani, however, fails to expressly disclose putting the valve assembly into a closed configuration by energizing the actuator to urge the plug member against the valve seat.
Manwill teaches the method above of putting the valve assembly into a closed configuration by energizing the actuator (Figure 2 – discloses an actuation system #20) to urge the plug member against the valve seat (Manwill: Abstract; Page 5, paragraph [0055] – motor actuated piston #34 and #80, actuator system #9 [Wingdings font/0xE0] Manwill teaches a motor coupled to a screw with a ball nut disposed on the screw and in functional contact with pistons #34 and #80) for the purpose of utilizing an actuator system comprising a piston in order to actuate the plurality of valves/chokes downhole from the closed and open positions and modulate the pressure and/or flow of fluid through the pathway of the drill string #14 (Figure 1) (Abstract; Page 5, paragraphs [0054]-[0055]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Amani to include an actuator coupled to a motor that is energized, as taught by Manwill, because doing so would help to utilize an actuator system comprising a piston in order to actuate the plurality of valves/chokes downhole from the closed position to selected open positions for fluid flow and to modulate the pressures downhole.
Regarding Claim 9, Amani discloses the method of Claim 8, wherein the compressive load in the stem is generated by a difference between pressures of inlet and outlet flows to and from the valve assembly (Col 10, lines 9-22; Figures 11 and 12A-12B; Col 12, lines 23-41; Col 14, lines 48-67 [Wingdings font/0xE0] flow control valves are biased to an open position), and wherein the plug member is biased against the valve seat by communicating the pressure of the inlet flow to a side of the locking piston (Col 14, piston rod #54 and piston seals #52) opposite the plug member (#53 and #56 in the chamber each having a seal face - Figure 11; Col 14, lines 48-67).
Regarding Claim 10, Amani discloses the method of Claim 9, wherein the inlet flow enters the valve assembly (Figure 11; Col 14, lines 48-67, flow control valve #70 and subassembly #71B) through an opening in the housing (#71C, Figure 11) that is located a side of the valve seat #53 opposite the plug member (Abstract; Figure 11), and wherein the pressure of the inlet flow is communicated to the side of the locking piston (Col 14, piston rod #54 and piston seals #52) opposite the plug member through a port formed in a sidewall of the housing (#53 and #56 in the chamber each having a seal face - Figure 11; Col 14, lines 48-67).
Regarding Claim 11, Amani discloses the method of Claim 9, wherein the pressure of the inlet flow is communicated to the side of the locking piston (Col 14, piston rod #54 and piston seals #52) opposite the plug member through a line that is external to the housing (Abstract; Col 3, lines 25-32).
Regarding Claim 12, Amani in view of Manwill teach the method of Claim 7, wherein the valve assembly comprises an inlet and an outlet that are in communication with portions in a wellbore separated by a tubular disposed in the wellbore and wherein the actuator is coupled to a motor (Manwill: Figure 2 – discloses an actuation system #20), the method further comprising energizing the motor to move the plug assembly away from the valve seat to reconfigure the valve assembly into the open configuration so that lift gas flows between the portions in the wellbore and through the valve assembly (Manwill: Abstract; Page 5, paragraph [0055] – motor actuated piston #34 and #80, actuator system #9 [Wingdings font/0xE0] Manwill teaches a motor coupled to a screw with a ball nut disposed on the screw and in functional contact with pistons #34 and #80).
Regarding Claim 13, Amani discloses a method of controlling a flow of fluid (Abstract; Fig 17) comprising:
operating a valve assembly (Figs 11 and 17; Col 14, lines 48-67, flow control valve #70 and subassembly #71B; first and second valve elements #16 and #22) that comprises a housing (#71C, Figure 11), a valve seat#56 and #86, a plug member (#53 and #56 in the chamber each having a seal face, Figure 11), and a stem connected between the plug member and an actuator (Figure 13, Col 15, lines 52-67; Col 16, lines 1-15); and
reducing a compressive force in the stem by, generating a biasing force from a pressure difference between an inlet and outlet to the valve assembly and applying the biasing force to the plug member in a direction towards the valve seat and on a portion of the plug member spaced away from where the stem is connected to the plug member (Col 10, lines 9-22; biasing spring #49; Col 12, lines 23-41 [Wingdings font/0xE0] flow control valves are biased to an open position).
Amani, however, fails to expressly disclose energizing the actuator to urge the plug member against the valve seat.
Manwill teaches the method above of energizing the actuator (Figure 2 – discloses an actuation system #20) to urge the plug member against the valve seat (Manwill: Abstract; Page 5, paragraph [0055] – motor actuated piston #34 and #80, actuator system #9 [Wingdings font/0xE0] Manwill teaches a motor coupled to a screw with a ball nut disposed on the screw and in functional contact with pistons #34 and #80) for the purpose of utilizing an actuator system comprising a piston in order to actuate the plurality of valves/chokes downhole from the closed and open positions and modulate the pressure and/or flow of fluid through the pathway of the drill string #14 (Figure 1) (Abstract; Page 5, paragraphs [0054]-[0055]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Amani to include an actuator coupled to a motor that is energized, as taught by Manwill, because doing so would help to utilize an actuator system comprising a piston in order to actuate the plurality of valves/chokes downhole from the closed position to selected open positions for fluid flow and to modulate the pressures downhole.
Regarding Claim 15, Amani discloses the method of Claim 14, wherein the pressure at the inlet is communicated to a side of the locking piston (Col 14, piston rod #54 and piston seals #52) opposite the plug member (Abstract; Figure 11) through an equalizing port formed radially across a sidewall of the valve assembly (Figure 11; Col 14, lines 48-67, flow control valve #70 and subassembly #71B), and wherein pressure at the outlet is communicated to a side of the locking piston adjacent the plug member through a flow port formed radially across the sidewall (#53 and #56 in the chamber each having a seal face - Figure 11; Col 14, lines 48-67).
Regarding Claim 16, Amani discloses the method of Claim 14, wherein the pressure at the inlet is communicated to a side of the locking piston (Col 14, piston rod #54 and piston seals #52) opposite the plug member (Abstract; Figure 11) through a tube that is outside a housing of the valve assembly (Figure 11; Col 14, lines 48-67, flow control valve #70 and subassembly #71B).
Allowable Subject Matter
Claims 2, 8 and 14 are 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.
Response to Arguments
Applicant’s arguments filed 04/06/2025 have been fully considered but are not persuasive.
The Applicant argues wherein reference Amani ‘798 fails to disclose “reducing a compressive load in the stem.” The Applicant states the biasing force though is generated by forces from a pressure differential and a spring #49 which is exerted against and transmitted through the valve member #54; therefore, Amani only discloses increasing compressive forces in a stem by biasing a plug member against the valve seat, as illustrated on Pages 7-8 of the Applicant’s arguments/remarks dated 04/06/2026.
Upon further consideration of the Applicant’s arguments/remarks above, the examiner finds the arguments moot. Reference Amani discloses methods of controlling a flow of fluid (Abstract; Fig 17) comprising a valve assembly (Figs 11 and 17; Col 14, lines 48-67, flow control valve #70 and subassembly #71B with an inlet and an outlet (chamber #51 comprising inlet and outlet; Figure 11, Col 14, lines 48-67) and a valve seat #56 and #86 and a plug member (#53 and #56 in the chamber each having a seal face, Figure 11), and a stem connected between the plug member and an actuator (Figure 13, Col 15, lines 52-67; Col 16, lines 1-15). Amani further mentions (Fig 6) wherein the flow control valves 70A and 70B each have resilient urging means biasing each flow control valve to an open position which results in an increase in compressive load in the stem; however, when the fluid in the control line #115 is pressurized as stated by Amani, the lower flow control valve 70B is closed first, then further pressurizing the fluid in the control line #115 will result in closing the upper flow control valve 70A as well, thus resulting in a reduction in compressive load in the stem, as claimed by the Applicant. As a result, the Applicant’s arguments with regards to reference Amani failing to disclose a reduction in compressive load in a stem is not persuasive and moot.
The examiner suggests, in order to advance prosecution of this application, amending Independent claim #1 to incorporate the allowable subject matter of newly amended dependent claim #2.
In light of the arguments presented above, the rejection stands as previously set forth.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASHISH K VARMA whose telephone number is (571)272-9565. The examiner can normally be reached Monday-Friday 9:30-5:30pm, Telework Mondays and Fridays.
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/ASHISH K VARMA/Examiner, Art Unit 3674
/WILLIAM D HUTTON JR/Supervisory Patent Examiner, Art Unit 3674
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