DETAILED ACTION
Acknowledgements
In the reply filed May 20, 2026, the applicant amended claims 1-18.
Currently claims 1-18 are under examination.
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.
Claims 1-18 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. Regarding claims 1 and 15, it is unclear how the application of force to the second member, using the second engagement mechanisms (Anderson: 170), urges the first member, with which it is not engaged, rather than urging the second member out of engagement with the first member.
Claims 2-14 and 16-18 are rejected as being dependent upon claim 1.
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 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 and 3-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Anderson (U.S. Pub. No. 2012/0273212).
Regarding Claim 1, Anderson discloses a subsea gasket removal tool for engaging and/or disengaging a first member (Anderson: 201) that is configured to be in contact with a second member (Anderson: 202), the subsea gasket removal tool comprising:
A frame (Anderson: 110) configured for fitting around or on top of a peripheral surface of the first member (Anderson: 201), the frame (Anderson: 110) having mounted thereon;
One or more first engagement mechanisms (Anderson: 123) having one or more first engagement members (Anderson: 123) configured for moving into and out of engagement with the peripheral surface of the first member (Anderson: 201) to grip the first member (Anderson: 201); and
One or more second engagement mechanisms (Anderson: 170) having one or more second engagement members (Anderson: 170) for engaging the second member (Anderson: 202), the one or more second engagement members (Anderson: 170) being configured for extending and retracting relative to the frame (Anderson: 110) to hydraulically (via 182) apply an axial force to the second member (Anderson: 202) to thereby urge the first member (Anderson: 201) out of contact with the second member (Anderson: 202);
Wherein the one or more second engagement members (Anderson: 170) are hydraulically driven (via 182).
Regarding Claim 3, Anderson discloses the subsea gasket removal tool as claimed in claim 1, wherein a plurality of first engagement mechanisms (Anderson: 123) and a plurality of second engagement mechanisms (Anderson: 170) are provided on the frame (Anderson: 110).
Regarding Claim 4, Anderson discloses the subsea gasket removal tool as claimed in claim 3, wherein the frame (Anderson: 110) comprises an annular body member (Anderson: 112) having an inwardly facing surface profiled to be substantially congruent with an outer profile of the first member (Anderson: 201).
Regarding Claim 5, Anderson discloses the subsea gasket removal tool as claimed in claim 4, wherein the plurality of first engagement mechanisms (Anderson: 123) are provided equidistantly around the annular body member (Anderson: 112).
Regarding Claim 6, Anderson discloses the subsea gasket removal tool as claimed in claim 4, wherein the plurality of second engagement mechanisms (Anderson: 170) are provided equidistantly around the annular body member (Anderson: 112).
Regarding Claim 7, Anderson discloses the subsea gasket removal tool as claimed in claim 4, wherein respective ones of the first and second engagement mechanisms (Anderson: 170, 123) are provided together adjacent one another, such that at designated locations around the annular body member (Anderson: 112) a first engagement mechanism is provided adjacent a second engagement mechanism as a pair (4 of each set).
Regarding Claim 8, Anderson discloses the subsea gasket removal tool as claimed in claim 7, wherein four pairs of first engagement mechanisms (Anderson: 123) and second engagement mechanisms (Anderson: 170) are provided substantially apart on the annular body member (Anderson: 112) (123 and 170 are adjacent to one another but still a distance apart).
Regarding Claim 9, Anderson discloses the subsea gasket removal tool as claimed in claim 1, wherein the first member (Anderson: 201) has an outwardly projecting rib (flange) having a downwardly facing surface (bottom of flange)
Regarding Claim 10, Anderson discloses the subsea gasket removal tool as claimed in claim 9, wherein the one or more first engagement members (Anderson: 123) of the one or more first engagement mechanisms (Anderson: 123) are configured to engage with the outwardly facing annular groove or downward facing surface or groove.
Regarding Claim 11, Anderson discloses the subsea gasket removal tool as claimed in claim 1, wherein the one or more first engagement members (Anderson: 123) of the one or more first engagement mechanisms (Anderson: 123) are orientated to extend and retract in a first direction (up and down) and one or more second engagement members (Anderson: 170) of the one or more second engagement mechanisms (Anderson: 170) are orientated to extend in a second direction (horizontally), the first and second directions being substantially at 90 degrees to one another.
Regarding Claim 12, Anderson discloses the subsea gasket removal tool as claimed in claim 11, further comprising a control means (ROV) to control timing of movement of the one or more first and second engagement members (Anderson: 170), whereby the one or more second engagement members (Anderson: 170) are activated to extend, after extension of the one or more first engagement members (Anderson: 123).
Regarding Claim 13, Anderson discloses the subsea gasket removal tool as claimed in claim 12, wherein the one or more first and second engagement mechanisms (Anderson: 170) are hydraulically driven from a common fluid source (Anderson: 190), fluid to drive the one or more second engagement mechanisms (Anderson: 170) only being available to the one or more second engagement mechanisms (Anderson: 170) once the one or more first engagement mechanisms (Anderson: 123) have been activated (hydraulic fluid in second engagement mechanism is only available to second engagement mechanism once first engagement mechanism attaches to flange).
Regarding Claim 14, Anderson discloses the subsea gasket removal tool as claimed in claim 1, wherein the one or more second engagement members (Anderson: 170) are configured to engage an upwardly facing surface of the second member (Anderson: 202)(wedges act upon upper face of 202).
Regarding Claim 15, Anderson discloses a method for disengaging a first subsea member (Anderson: 201) that is in contact with a subsea second member (Anderson: 202), the method comprising:
(A) positioning a subsea gasket removal tool according to claim 1 such that its frame (Anderson: 110) is around a peripheral surface of the first member (Anderson: 201);
(B) activating one or more of said first engagement mechanisms (Anderson: 123) provided on the frame (Anderson: 110) such that one or more engagement members engage with the peripheral surface of the first member (Anderson: 201); and
(C) activating one or more of said second engagement mechanisms (Anderson: 170) provided on the frame (Anderson: 110) such that one or more of the second engagement members (Anderson: 170) are hydraulically driven to engage with the second member (Anderson: 202) to urge the first subsea member out of contact with the second subsea member.
Regarding Claim 16, Anderson discloses a method for engaging a first member (Anderson: 201) into contact with a subsea second member (Anderson: 202), the method comprising:
a) positioning a subsea gasket removal tool according to claim 1 such that its frame (Anderson: 110) is around a peripheral surface of the first member (Anderson: 201);
b) activating one or more of said first engagement mechanisms (Anderson: 123) provided on the frame (Anderson: 110) such that one or more engagement members engage with the peripheral surface of the first member (Anderson: 201) to hold it for transport thereof;
c) activating one or more of said second engagement mechanisms (Anderson: 170) provided on the frame (Anderson: 110) such that one or more of the second engagement members (Anderson: 170) hydraulically extend to be proud of the first member (Anderson: 201);
d) transporting the tool so as to be positioned above the second member (Anderson: 202);
e) lowering the tool so that the second engagement members (Anderson: 170) land on the second member (Anderson: 202);
f) activating the one or more second engagement mechanisms (Anderson: 170) to retract the second engagement members (Anderson: 170), thereby lowering the first member (Anderson: 201) onto the second member (Anderson: 202); and
g) activating the one or more first engagement mechanisms (Anderson: 123) to retract the first engagement members (Anderson: 123) to release the first member (Anderson: 201) from the tool and in position on the second member (Anderson: 202).
Regarding Claim 17, Anderson discloses the method as claimed in claim 16, wherein steps a) and b) are carried out before the tool is subsea.
Regarding Claim 18, Anderson discloses the method as claimed in claim 16, wherein the tool comprises at least one downwardly depending guide arm (Anderson: 142) for guiding the tool into position with respect to the second member (Anderson: 202).
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Anderson in view of Williams (U.S. Patent No. 5,941,530).
Regarding Claim 2, Anderson discloses the subsea gasket removal tool as claimed in claim 1, but does not disclose wherein the first member is a gasket and the second member is a subsea wellhead or subsea equipment.
Williams discloses a gasket (Williams: 52) that is a part of an upper flange on top of a piece of subsea equipment (Williams: 48).
It would have been obvious to one having ordinary skill in the art that a gasket such as the one in the invention of Williams would be a common component of flanges in subsea pipelines such as those in the invention of Anderson in order to perform the predictable and well known effect of acting as a fluid barrier between flange connections, and therefore the flange removal tool of Anderson can also be considered a gasket removal tool.
Response to Arguments
Applicant’s arguments, see reply, filed May 20, 2026, with respect to the rejection(s) of claim(s) 1-18 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Anderson in view of Williams as detailed above.
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 DOUGLAS S WOOD whose telephone number is (571)270-5954. The examiner can normally be reached Monday through Thursday 8:30 AM - 7:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole A 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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DOUGLAS S. WOOD
Examiner
Art Unit 3672
/DOUGLAS S WOOD/Examiner, Art Unit 3672
/Nicole Coy/Supervisory Patent Examiner, Art Unit 3672
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