DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
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.
Claim 20 is 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 20 recites “the penetrating body is made from a metal, a polymer, or a mixture thereof” and then goes on to recite the polymer materials. It is unclear if the polymer being referred to is the polymer of claim 12 or the penetrating body recited in claim 20. For the purpose of examination, the limitation will be interpreted as the polymer of the penetrating body.
Claim 20 recites a list of materials for the polymer but does not refer to them in the alternative. The list also includes “mixtures thereof.” As currently written, it appears that the penetrating body is made of a polymer comprising all of the listed materials. It is unclear how the polymer can be made of all of the materials and “mixtures thereof.” For the purpose of examination, “and” will be read as - -or- -.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 2 and 4 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 2 and 3 of prior U.S. Patent No. 12,398,610. This is a statutory double patenting rejection.
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, 3, 5, and 8-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5, and 8-19 of U.S. Patent No. 12,398601. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at issue are fully encompassed by the claims of the issued patent. The only difference in regards to claim 1 is the issued patent includes element (c) related to the compression plate. The only difference in regards to claim 12 is the issued patent includes element (c) related to the follower.
Claims 6 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 20 of U.S. Patent No. 12,398,610 alone.
Claim 2 of the issued U.S. Patent discloses all aspects of the invention of claim 6 of the current application except for the compression plate is made from a steel alloy, a polymer, or a mixture thereof. It would have been obvious to one having ordinary skill in the art at the time of filing to have the compression plate made from a steel alloy, a polymer, or a mixture thereof with a reasonable expectation of success, since it has been held to be within the ordinary skill in the art to select a known material on the basis of its suitability for the intended use. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Claim 20 of the issued U.S. Patent discloses all aspects of the invention of claim 20 of the current application except for the polymer comprises a polyether ether ketone, a polyethylene, a polypropylene, a polystyrene, a polyvinyl chloride, a synthetic rubber, a phenol formaldehyde resin, a neoprene, a nylon, a polyacrylonitrile, a polyvinyl butyral, a silicone, and mixtures thereof. It would have been obvious to one having ordinary skill in the art at the time of filing to have the polymer made from a polyether ether ketone, a polyethylene, a polypropylene, a polystyrene, a polyvinyl chloride, a synthetic rubber, a phenol formaldehyde resin, a neoprene, a nylon, a polyacrylonitrile, a polyvinyl butyral, a silicone, and mixtures thereof with a reasonable expectation of success, since it has been held to be within the ordinary skill in the art to select a known material on the basis of its suitability for the intended use. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Allowable Subject Matter
Claims 1, 3, 5-6, and 8-19 are allowable over the prior art and would be in condition for allowance if a terminal disclaimer was filed and approved.
Claim 7 is 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.
Claim 20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and a terminal disclaimer was filed and approved.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claim 1: Marbach (US 2023/0092719) discloses a wellhead penetrator system (Abstract, ¶ [0040]; Fig. 1) comprising:
(a) a penetrator body (300, 310, 320) comprising:
(i) a cylindrical frame (300) connecting a top end (310) to a bottom end (320), the cylindrical frame having a hollowed interior (Fig. 1) configured to house other components of the penetrator system and a cable (214) comprising three electrical wires (¶ [0034]; Figs. 1, 12, 16, 20 show the three electrical wires);
(ii) the bottom end comprising a cavity (space inside of 300, 320 that houses 222, 224 and accepts the cable from ESP; ¶ [0031, 34]) configured to receive the cable that is connected to an electrical submersible pump (¶ [0031, 34]); and
(iii) the top end configured to permit the cable to pass therethrough (Figs. 1, 18);
(b) a polymer insulator (302, 211; ¶ [0031]) comprising:
(i) a bottom face located within the penetrator body (Figs. 1, 23 show the face closest to 222 inside of the body, 300);
(ii) a top face connected to the bottom face through an elongated central portion (Figs. 1, 23 show the top face and the connecting elongated central portion of 211); and
(iii) three cylinder-shaped cavities configured to each provide a path for one of the plurality of insulated electrical wires of the cable (Figs. 1, 15 shows the three cavities for the three wires); and
(d) a cable seal, comprising:
(i) a cylindrical core (cylindrical base of 222) having three cylinder-shaped port holes configured to each provide a path for the three insulated electrical wires (Fig. 1 shows the three ports for the three wires);
(ii) a top side (Fig. 1); and
(iii) a bottom side facing into the cavity located in the bottom end of the penetrator body (Figs. 1, 23), wherein the port holes extend downward from the bottom side of the cable seal (Fig. 1 shows the three port holes extend downwards).
Marbach does not disclose or make obvious the top face of the polymer insulator extending out of the top end of the penetrator body; the cable seal has a polymer, the cable seal top side is seated against the bottom face of the polymer, and wherein the port holes extend upward from the top side of the cable seal into the bottom face of the polymer insulator.
With respect to claim 12: Marbach discloses a wellhead penetrator system (Abstract, ¶ [0040]; Fig. 1) comprising:
(a) a penetrator body (300, 310, 320) comprising:
(i) a cylindrical frame (300) connecting a top end (310) to a bottom end (320), the cylindrical frame having a hollowed interior (Fig. 1) configured to house other components of the penetrator system and a cable (214) comprising three electrical wires (¶ [0034]; Figs. 1, 12, 16, 20 show the three electrical wires);
(ii) the bottom end comprising a cavity (space inside of 300, 320 that houses 222, 224 and accepts the cable from ESP; ¶ [0031, 34]) configured to receive the cable that is connected to an electrical submersible pump (¶ [0031, 34]); and
(iii) the top end configured to permit the cable to pass therethrough (Figs. 1, 18);
(b) a cable seal, comprising:
(i) a cylindrical core (cylindrical base of 222) having three cylinder-shaped port holes configured to each provide a path for the three insulated electrical wires (Fig. 1 shows the three ports for the three wires);
(ii) a top side (Fig. 1); and
(iii) a bottom side facing into the cavity located in the bottom end of the penetrator body (Figs. 1, 23), wherein the port holes extend downward from the bottom side of the cable seal (Fig. 1 shows the three port holes extend downwards).
Marbach does not disclose or make obvious the cable seal has a cylindrical core made of a polymer, wherein the port holes extend upward from the top side of the cable seal.
Examiner notes that a hole is an opening through something. Therefore, the limitation of “three cylindrical holes” has been interpreted as three separate and distinct openings through the cylindrical metal body of the follower with each hole having a cylindrical shape. The hole of Marbach is a single hole.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTYN A HALL whose telephone number is (571)272-8384. The examiner can normally be reached M-F 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at (571) 272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISTYN A HALL/Primary Examiner, Art Unit 3672