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 .
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 12,497,872. Although the claims at issue are not identical, they are not patentably distinct from each other. Claims 1-20 in the instant application broader than the patent. However, they are not patenably distinct from each other because claims 1-20 of the instant application are obviously encompassed by the boundaries of claims 1-22 of U.S. Patent 12,497,872.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims.
In claim 8, different types of springs are claimed. However, most don't appear to be shown in the figures, specifically the "fluid biasing element, hydraulic biasing element, pneumatic biasing element, or electric biasing element", nor are any shown in combination as allowed by "at least one of".
In claims 6 and 10, neither "parallel orientation or a series parallel orientation" are shown in the figures.
Therefore, these features must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 12 is objected to because of the following informalities:
Claim 12 reads “…the face of the seat”. “the face” lacks proper antecedent basis.
Appropriate correction is required.
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 6 and 8-10 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 6 recites “a series parallel orientation”. Examiner is unclear and not sure what is required by “a series parallel orientation”. For the purpose of examination, it would be assumed to be a series and/or parallel orientation.
Claim 8 is indefinite because it is unclear how or if "one or more springs" differ from "one of more disc spring washers, one or more wave springs, a fluid biasing element, a hydraulic biasing element, a pneumatic biasing element, or an electric biasing element", as all of these can reasonably be called a "spring". For example, a "pneumatic biasing element" is also known as a "gas spring".
Claims 9-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being dependent on rejected claim 8.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 7-8, 11-13, 15, 17-18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by R.C. Pryor (U.S. 2,725,014).
Regarding claim 7, R.C. Pryor discloses gas lift valve (16, fig. 1 or 45, figs. 6A, 6B), comprising:
a valve element (see annotated fig. 6A below) for selectively placing a fluid inlet (see annotated fig. 6A below) in communication with a fluid outlet (37, figs. 6A, 6B) to direct a fluid into a production tubing (11) of a wellbore (see fig. 1);
a biasing feature (47, figs. 6A, 6B) to bias the valve element (see annotated fig. 6A below) to an open position or a closed position (see figs. 6A-6B and refer to col. 4, lines 30-45; col. 5, lines 30-35); and
a control pilot fluid chamber (29, fig. 6B) for selectively supplying a first pressure to a face of a piston (46, fig. 6A and refer to col. 4, line 66) of the valve element (see annotated fig. 6A below; refer to col. 4, lines 15-25, lines 30-44) that provides a force that is greater than a biasing force of the biasing feature and a second pressure to the face of the piston of the valve element that provides a force that is less than the biasing force of the biasing feature to selectively move the valve between the open position and the closed position (refer to col. 4, lines 30-45. Note that the operation of the embodiment of figs. 6a, 6b are the same as described in reference to figs. 3a and 3b).
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Regarding claim 8, R.C. Pryor discloses wherein the biasing feature comprises at least one of one or more springs (47), a fluid biasing element (47; see figs. 6A, 6B, and refer to col. 4, lines 65-70: “spring means 47”).
Regarding claim 11, R.C. Pryor discloses wherein the control pilot fluid chamber (29) is positioned uphole of the biasing feature (47; as shown in figs. 6A, 6B).
Regarding claim 12, R.C. Pryor discloses wherein the face of the piston (46) of the valve element is substantially parallel to the face of the seat (36, see figs. 6A, 6B).
Regarding claim 13, R.C. Pryor discloses wherein the biasing feature (47) is configured to bias the valve element to the open position (see figs. 6A, 6B, and refer to col. 4, lines 62-69).
Regarding claim 15, R.C. Pryor discloses a housing (45), the housing comprising:
a control pilot fluid inlet (see annotated fig. 6B below) for receiving a fluid from an uphole fluid source (via fluid supply means 22) into the control pilot fluid chamber (29), the fluid inlet (shown above) positioned and configured in the housing for receiving an inlet fluid comprising annulus fluid (see fig. 1) or tubing fluid; and
the fluid outlet (37) positioned and configured in the housing for conveying the inlet fluid to the production tubing (11) or annulus in a downhole location of the wellbore (see figs. 1 and 6A, 6B).
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Regarding claim 17, R.C. Pryor discloses a method of operating a gas lift valve assembly (16, fig. 1 or 45, figs. 6A, 6B), the method comprising:
biasing a valve element (see annotated fig. 6A above) to an open position or a closed position with a biasing feature (47, figs. 6A, 6B; refer to col. 4, lines 30-45; col. 5, lines 30-35); and
supplying a control pilot fluid (via control fluid supply means 22) to a control pilot fluid chamber (29, fig. 6B) at a first pressure to a face of a piston (46, figs. 6A, 6B) of the valve element to provide a first force that is greater than a biasing force of the biasing feature (47, figs. 6A, 6B) to selectively move the valve to the other of the open position or the closed position (refer to col. 4, lines 30-45. Note that the operation of the embodiment of figs. 6a, 6b are the same as described in reference to figs. 3a and 3b).
Regarding claim 18, R.C. Pryor discloses supplying the control pilot fluid to the control pilot fluid chamber at a second pressure to the face of the piston to provide a second force that is less than the biasing force of the biasing feature to bias the valve back to the open position or the closed position (refer to col. 4, lines 29-44).
Regarding claim 20, R.C. Pryor discloses wherein supplying the control pilot fluid (via control fluid supply means 22) to the control pilot fluid chamber (29, fig. 6B) comprises supplying the control pilot fluid to the control pilot fluid chamber (29, fig. 6B) at a location uphole from the biasing feature (47, see figs. 6A, 6B).
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 1, 3-6, 9-10, 14, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over R.C. Pryor (U.S. 2,725,014), in view of Anderson et al. (U.S. 2021/0189850 A1).
Regarding claim 1, R.C. Pryor discloses a gas lift valve (16, fig. 1 or 45, figs. 6A, 6B), comprising:
a valve element (see annotated fig. 6A below) for selectively directing fluid from a well fluid source (from surface or the annulus) into a production fluid (production fluid in tubing 11);
a biasing feature (47, figs. 6A, 6B) comprising a spring (col. 4, lines 65-70) in a sealed location (sealed by seals 23 and 40) to bias the valve element (see annotated fig. 6A below) to an open position or a closed position (see figs. 6A-6B and refer to col. 4, lines 30-45; col. 5, lines 30-35); and
a control pilot fluid chamber (29, fig. 6B) for supplying a selectively variable force to the valve element (see annotated fig. 6A below; refer to col. 4, lines 15-25, lines 30-44) to selectively move the valve between the open position and the closed position (refer to col. 4, lines 30-45. Note that the operation of the embodiment of figs. 6a, 6b are the same as described in reference to figs. 3a and 3b).
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However, R.C. Pryor is silent to the spring comprising at least one of a stacked disc spring washers or stacked wave springs.
Anderson et al. teach a gas lift valve (104, see figs. 2, 9-11 and refer to para 0062), comprising: a housing (900); a valve element (910, para 0063) and a biasing feature/spring (920) to bias the valve element (910) in a first state of the open position or the closed position [(see fig. 9 and refer to para 0064-0065; para 0065: “the biasing member 920 may thus be pressured to allow the valve 204 to actuate (from closed to open, or open to closed, depending on the embodiment)];
wherein the biasing feature (920) comprises one or more disc spring washers (refer to para 0065: “Bellville washers”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted one type of biasing feature for another (i.e., one type of spring for another) to achieve the predictable result of biasing the valve element to the open or closed position in the gas lift valve (refer to para 0065).
Regarding claim 3, The combination of R.C. Pryor ad Anderson teach all the features of this claim as applied to claim 1 above; R.C. Pryor further disclose wherein the control pilot fluid chamber (29) is located and configured to supply the selectively variable force to a substantially planar face of a piston (46) of the valve element (see section of annotated fig. 6B below).
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Regarding claim 4, The combination of R.C. Pryor ad Anderson teach all the features of this claim as applied to claim 3 above; R.C. Pryor further disclose wherein the control pilot fluid chamber (29) is located uphole of the biasing feature (47; as shown in figs. 6A, 6B).
Regarding claim 5, The combination of R.C. Pryor ad Anderson teach all the features of this claim as applied to claim 1 above; R.C. Pryor further discloses that the biasing feature (as modified by Anderson) is prevented from fluid communication with each of fluid from the production fluid and the well fluid source (as shown in figs. 6A, 6B and accomplished by seals 32, 38).
However, R.C. Pryor, in the embodiment of figs. 6A, 6B, fail to disclose that the biasing feature is prevented from fluid communication with each of fluid from an uphole pilot fluid source and the control pilot fluid chamber.
R.C. Pryor, in the embodiment of figs. 5A, 5B, shows chamber (29) isolated from biasing chamber (29) by seals (31).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try having biasing feature prevented from fluid communication with each of fluid from an uphole pilot fluid source and the control pilot fluid chamber, by isolating the upper section of the biasing chamber with a seal, as taught by R.C. Pryor, in the embodiment of figs. 5A, 5B for the purpose of optimizing the gas lift valve.
Regarding claim 6, The combination of R.C. Pryor ad Anderson teach all the features of this claim as applied to claim 1 above; R.C. Pryor further disclose wherein the biasing feature consists of disc spring washers (as modified by Anderson et al. in the rejection of claim 1 above) in at least one of a series orientation, a parallel orientation, or a series parallel orientation (Pryor, as shown in figs. 6A, 6B. Also see the 112b rejection above).
Regarding claims 9-10, R.C. Pryor discloses that the spring is in a series or series parallel orientation (see figs. 6A, 6B, and refer to the 112b rejection above).
However, R.C. Pryor is silent to the spring comprises one or more disc spring washers or one or more wave springs.
Anderson et al. teach a gas lift valve (104, see figs. 2, 9-11 and refer to para 0062), comprising: a housing (900); a valve element (910, para 0063) and a biasing feature/spring (920) to bias the valve element (910) in a first state of the open position or the closed position [(see fig. 9 and refer to para 0064-0065; para 0065: “the biasing member 920 may thus be pressured to allow the valve 204 to actuate (from closed to open, or open to closed, depending on the embodiment)];
wherein the biasing feature (920) comprises one or more disc spring washers (refer to para 0065: “Bellville washers”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted one type of biasing feature for another (i.e., one type of spring for another) to achieve the predictable result of biasing the valve element to the open or closed position in the gas lift valve (refer to para 0065).
Regarding claim 14, R.C. Pryor is silent to an embodiment wherein the biasing feature is configured to bias the valve element to the closed position.
Anderson et al. teach wherein the biasing element comprises a mechanical force element (para 0065: “Bellville washers, springs”) that is configured to position the valve element in the closed position [para 0065: “the biasing member 920 may thus be pressured to allow the valve 204 to actuate (from closed to open, or open to closed, depending on the embodiment)].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the biasing element of R.C. Pryor configured to position the valve element in an open or closed position, as taught by Anderson et al., for the predictable result of controlling the opening and closing of the gas lift valves.
Regarding claims 19, R.C. Pryor discloses wherein biasing the valve element to the open position or the closed position with the biasing feature/spring in a sealed location (sealed location via seals 32 and 40).
However, R.C. Pryor is silent to the spring comprises one or more disc spring washers or one or more wave springs.
Anderson et al. teach a gas lift valve (104, see figs. 2, 9-11 and refer to para 0062), comprising: a housing (900); a valve element (910, para 0063) and a biasing feature/spring (920) to bias the valve element (910) in a first state of the open position or the closed position [(see fig. 9 and refer to para 0064-0065; para 0065: “the biasing member 920 may thus be pressured to allow the valve 204 to actuate (from closed to open, or open to closed, depending on the embodiment)];
wherein the biasing feature (920) comprises one or more disc spring washers (refer to para 0065: “Bellville washers”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted one type of biasing feature for another (i.e., one type of spring for another) to achieve the predictable result of biasing the valve element to the open or closed position in the gas lift valve (refer to para 0065).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over R.C. Pryor (U.S. 2,725,014), in view of Anderson et al. (U.S. 2021/0189850 A1) as applied to claim 1 above, and further in view of Gass et al. (U.S. 4,295,795).
Regarding claim 2, The combination of R.C. Pryor ad Anderson teach all the features of this claim as applied to claim 1 above; R.C. Pryor further disclose a seat (36, figs. 6A, 6B).
However, R.C. Pryor, as modified by Anderson is silent to the valve element comprises a substantially spherical ball. In other words, the valve element of Pryor is not substantially spherical in shape.
Gass et al. teach a gas lift valve stem comprising a valve element (13, fig. 1) and valve seat (14), wherein the valve element is substantially spherical in shape (see fig. 1 and refer to col. 4, lines 40-55).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the valve element of R.C. Pryor, as modified by Anderson, such that it is substantially spherical in shape, as taught by Gass et al. for the purpose of optimization to efficiently close the seat when the valve is in the closed configuration. Examiner also notes that a change in shape is generally recognized as being within the level of ordinary skill in the art, In re Dailey, 357 F. 2d 669, 149 USPQ 47 (CCPA1966).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over R.C. Pryor (U.S. 2,725,014) alone.
Regarding claim 16, R.C. Pryor disclose wherein the biasing feature (47) is sealed and prevented from fluid communication with each of the fluid inlet and the fluid outlet (as shown in figs. 6A, 6B and accomplished by seals 32, 38).
However, R.C. Pryor, in the embodiment of figs. 6A, 6B, fail to disclose that the biasing feature is sealed and prevented from fluid communication with the control pilot fluid chamber.
R.C. Pryor, in the embodiment of figs. 5A, 5B, shows chamber (29) isolated from biasing chamber (29) by seals (31).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try having biasing feature prevented from fluid communication with each of fluid from an uphole pilot fluid source and the control pilot fluid chamber, by isolating the upper section of the biasing chamber with a seal, as taught by R.C. Pryor, in the embodiment of figs. 5A, 5B for the purpose of optimizing the gas lift valve.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Wildman (U.S. 2022/0307353A1), C.R. Canalizo (U.S. 3,362,347), H.E. MoGowen, JR (U.S. 2,797,700).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YANICK A AKARAGWE whose telephone number is (469)295-9298. The examiner can normally be reached M-TH 7:30-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/YANICK A AKARAGWE/Primary Examiner, Art Unit 3672
