DETAILED ACTION
Claim(s) 1-10 as filed 6/18/2025 are pending for consideration.
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 .
Specification
The abstract of the disclosure is objected to because the sentence does not end in a period. Additionally, the abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. Therefore, mention of the fluid sealing groove should be made. Correction is required. See MPEP § 608.01(b).
The specification is objected to because it introduces new matter into the disclosure of the invention. As per MPEP 201.07, a continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application. The added material which is not supported by the parent disclosure is as follows: paragraphs 0010 and 0014 both include new subject matter, including the explanation that the PSI of the energized grease may be sufficient to hold the secondary seal without washing out the insert. Applicant is required to cancel the new matter in the reply to this Office Action.
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 and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,359,732. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim of the parent patent recites all of the limitations of the claims of the instant application including moving a floating plug, forming a primary seal and forming a secondary seal via an energized fluid. It is noted that the parent claim recites the energized fluid forming the secondary seal having a pressure larger than the first pressure which necessarily requires “an energized pressure associated with the energized fluid to form the secondary seal is dependent on the first pressure associated with the primary seal” as recited in the instant application. Regarding Claim 4, the method of the parent patent is seen to necessarily limit washing out the plug and the insert in the same manner as achieved by applicant’s claim.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2-4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 2 recites “as the first pressure increases the energized pressure decreases” and claim 3 recites “as the first pressure decreases the energized pressure increases”. However, these features were not described in the specification of the parent application as required by MPEP 201.07 and therefore constitute new matter.
Claim 4 recites “to limit washing out the plug and the insert”. These features were not described in the specification of the parent application as required by MPEP 201.07 and therefore constitute new matter.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the first sealing surface" in line 5 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites “to limit washing out the plug and the insert”. It is unclear what is meant by “limit washing out the plug and the insert”. It is unclear whether these limitations are intended to require a sealing arrangement or some other structural feature.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4, 5, 7, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reeves et al. (US Patent 6,675,825) in view of Hoyle et al. (US Patent 3,183,925).
Regarding Claim 1, when making and using the device of Reeves, Reeves necessarily discloses a method associated with a high-pressure valve assembly (the valve assembly of Reeves is capable of handling high-pressure, it is noted that the term “high-pressure” is a broad term that has not been given a special definition in applicant’s specification as filed), the method comprising: moving a floating plug 16 (plug 16 is seen to be readable as a “floating plug” at least because it is capable of rotation within the body 12) from an open position (open position such that bore 32 is aligned with conduit 18) and a closed position (closed position such that bore 32 is misaligned with conduit 18), the floating plug 16 having a hollow passageway 32 extending from a passageway inlet to a passageway outlet (shown in Figure 2 on the left and right sides of 32); forming a primary seal (a primary seal is formed by surface 36 as shown in Figures 1 and 2 forming a sealing interface 50) by positioning the first sealing surface 36 against an insert 14 (defining sealing interface 50) based on a first pressure being applied against the floating plug 16 in a first direction (pressure from either 18a or 18b will act against the plug to provide increased sealing pressure on the interface 50 at the opposite side of the plug; this sealing force is dependent on the fluid pressure in the line) during a fracturing operation (the valve is used in fracturing operations; col. 1, lines 15-20); communicating energized fluid into a first sealing groove 34 via a port 46 during the fracturing operation (col. 4, lines 53-65), the first sealing groove 34 being positioned along an outer circumference of the first sealing surface 36 (as best shown in Figure 3); forming a secondary seal (via the lubricant or “sealant”; it is noted that “sealant” inherently forms a seal) between the first sealing groove 34 and the insert 14 via the energized fluid within the first sealing groove 34 (as described above).
Reeves does not disclose an energized pressure associated with the energized fluid (sealant) to form the secondary seal is dependent on the first pressure associated with the primary seal.
Hoyle teaches a rotary plug valve with a lubricant sealant and further teaches (Figure 6 especially) the pressure of the lubricating fluid (via passage 30) is dependent on a first pressure applied to the plug 10 of the valve (spool 33 is moved in response to pressures from the upstream and downstream fluid lines which are the pressures applied to the plug; the spool 33 controls the energized pressure of the lubricant from passage 30).
It would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify the method of Reeves such that the pressure of the energized fluid is dynamically controlled based on fluctuations of pressures applied to the plug as taught by Hoyle for the purpose of preventing sticking of the valve in the event of excessive pressures in a particular direction.
Regarding Claim 4, Reeves in view of Hoyle is seen as further disclosing the energized pressure (energized pressure of the sealant of Reeves) is dependent on the first pressure (in the manner taught by Hoyle as described above) to limit washing out the plug and the insert (the sealant of Reeves is seen to limit washing out the plug and the insert as best understood in at least the same manner as achieved by applicant’s device).
Regarding Claim 5, Reeves further discloses the insert 14 is a static insert.
Regarding Claim 7, when using the device of Reeves, Reeves necessarily discloses the fluid flowing causes upstream pressure to be exerted onto the plug (this occurs during normal use of the device, especially when the valve is closed), and the insert 14 is a downstream insert (the insert 14 extends along the downstream side of the valve).
Regarding Claim 8, when using the device of Reeves, Reeves necessarily discloses the fluid flowing causes downstream pressure to be exerted onto the plug (this occurs during normal use of the device, especially when the valve is open), and the insert 14 is an upstream insert (the insert 14 extends along the upstream side of the valve).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reeves et al. (US Patent 6,675,825) in view of Hoyle et al. (US Patent 3,183,925) as applied to claim 1 above, and further in view of von Pechmann (US Patent 4,506,696).
Regarding Claim 6, Reeves further discloses the secondary seal is a fluid seal (formed by the sealant as described above).
Reeves does not disclose the materials of the plug and insert and therefore does not disclose the primary seal is a metal-to-metal seal.
von Pechmann teaches a plug valve (abstract) and further teaches the rotary plug 8 and insert 10 form a metal-to-metal seal (abstract; col. 3, lines 38-48).
It would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify the method of Reeves such that the plug and insert are each formed of metal to provide a metal-to-metal seal as taught by von Pechmann for the purpose of utilizing a well known and widely available material known in the art to be suitable for use in plug valves.
Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reeves et al. (US Patent 6,675,825) in view of Hoyle et al. (US Patent 3,183,925) as applied to claim 1 above, and further in view of von Bredtschneider (US Patent 3,042,359).
Regarding Claim 9, Reeves does not disclose the energized pressure is bled off to remove the secondary seal after the fracturing operation.
Bredtschneider teaches a valve device including a secondary fluid for sealing (applied via conduit 24 as shown in Figures 1 and 2) and further teaches the secondary fluid is bled off to remove the secondary seal after a period of use (“relieved”; col. 3, lines 43-53).
It would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify the method of Reeves such that the energized pressure is bled off to remove the secondary seal after a period of use as taught by Bredtschneider for the purpose of relieving unnecessary pressures in the device.
Regarding Claim 10, Reeves further discloses the first pressure (the upstream pressure) is decreased to remove the primary seal after the fracturing operation (this occurs when the entire system is shut down or taken off line; such a procedure is seen to occur during normal use of the system).
Allowable Subject Matter
Claims 2 and 3 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph and 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Salmen (US Patent 3,103,948) teaches a floating plug valve including a secondary seal 4. Smith (US Patent 4,116,208) teaches a lubricated plug valve with a pressure regulating device in the lubrication line.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN MURPHY whose telephone number is (571)270-5243. The examiner can normally be reached Monday - Friday 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Craig Schneider can be reached on (571) 272-3607. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN F MURPHY/Primary Examiner, Art Unit 3753
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