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 .
Response to Arguments
Applicant's arguments filed 06/11/2026 have been fully considered but they are not persuasive. Applicant’s arguments that the newly amended limitations define over Hutton are not persuasive as detailed below.
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) 1-6, 8, 10, 11, 17, 18, and 21-25 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Hutton (US 20200063497 A1).
With respect to claim 1, Hutton discloses a steering actuator comprising: a stationary piston (265); a cylinder (240) encircling a portion of the stationary piston and moving relative to the stationary piston (pgph. 66); and an inner surface of the cylinder which faces the stationary piston (shown in fig. 3C); and wherein the cylinder moves away from the stationary piston when mud flows out of the stationary piston to contact the inner surface of the cylinder (pgph. 54), wherein the mud flows around an outer diameter of the cylinder (mud will flow around the outer diameter and along an outside surface of the cylinder when exiting ports 278).
With respect to claim 2, Hutton discloses wherein the cylinder contacts a wall of a borehole when actuated by hydraulic pressure (pgph. 66).
With respect to claims 3 and 4, Hutton discloses a cutout (249)in the cylinder; and a stopper pin (242) positioned within the cutout, wherein the stopper pin controls a stroke length of the cylinder (pgph. 69).
With respect to claims 5 and 6, Hutton discloses a skirt of the cylinder having an inner surface; and a sleeve (270) positioned on the inner surface wherein the cylinder contacts the sleeve as the cylinder moves (pgph. 58).
With respect to claim 8, Hutton discloses wherein mud is permitted to flow between the cylinder and the sleeve (until reaching 299).
With respect to claim 10, Hutton discloses a steering actuator comprising: a stationary piston; a cylinder positioned above the stationary piston and moving relative to the stationary piston; and an inner surface of the cylinder which faces the stationary piston (discussed supra); and a valley (283 or valley above element 610 shown in figs. 6, 3C) positioned at a bottom of the cylinder; and wherein mud enters the cylinder through the stationary piston, flows between the inner surface of the cylinder and the stationary piston (until reaching member 299) and connecting directly with the valley (pgph. 62 teaches mud connecting directly with the valley, while the fluid does not reach the valley directly from the piston and the flow between the members, this is not required by the claims since the exact flow path with a linear progression from one area to the next is not claimed).
With respect to claim 11, Hutton discloses wherein the cylinder directly contacts a wall of a borehole (pgph. 66).
With respect to claim 17, Hutton discloses a method for operating a steering actuator comprising: pumping a fluid through a stationary piston; contacting an interior surface of a cylinder with said fluid to cause the cylinder to move away from the stationary piston (discussed supra); and allowing said fluid to flow between the stationary piston and the interior surface of the cylinder until exiting by flowing around the cylinder (via 278, flowing around the cylinder does not require the fluid to flow through a gap between the interior surface of the cylinder and an exterior surface of the piston and then flow around the outer diameter of the cylinder, “around” is a very broad term and does not require the fluid passing along an outer diameter of the cylinder to exit).
The limitations of claims 18, 21, 24, and 25 are substantially similar to those of claims 1-6, 8, and 10, rejected supra.
With respect to claims 22 and 23, Hutton discloses wherein the valley allows for mud to move around sleeve and an outer surface of the skirt (via 283, shown in fig. 3C).
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) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hutton in light of Crowley (US 20240376783 A1).
With respect to claim 7, Hutton fails to disclose a metal to metal seal between the piston and cylinder as claimed.
Nevertheless, Crowley discloses using a tight fit between the piston and cylinder to seal the interface while allowing a slow but predictable leak between the two members (pgph. 15).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have provided a tight sealing metal to metal interface between the cylinder and piston (240 and 265 of Hutton) with a slow but predictable leak rate as taught by Crowley (pgph. 15) since this is the simple substitution of one prior art sealing method (elastomeric seals) for another (metal to metal interface with slow leak rate) with predictable results and a reasonable expectation for success and since Hutton teaches that elastomeric seals have a limited life when drilling fluid is used to actuate the pistons (pgph. 14).
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 KIPP CHARLES WALLACE whose telephone number is (571)270-1162. The examiner can normally be reached Monday - Friday 12:00 PM - 8:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at (571) 272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KIPP C WALLACE/Primary Examiner, Art Unit 3674 08/25/2026
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