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 .
Drawings
The drawings are objected to because they are grey scale and of poor line quality. Every line, number, and letter must be durable, clean, black, sufficiently dense and dark, and uniformly thick and well-defined. See MPEP 608.02 and 37 CFR 1.84.
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.
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 1-2, 7-9, 16-17, 22-25, 31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7-9, 13-14, 16, 24-25, 28-31 of copending Application No. 19/423051 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because
Claims 1-2, 7-9, 16-17, 22-25, 31 of the pending application are essentially the same as claim 1, 7-9, 13-14, 16, 24-25, 28-31 of the co-pending application and any differences are minor. Any differences that may exist cause the pending claims to be broader than the co-pending claims, and therefore the co-pending claims fully encompass the pending claims and are obviously directed to the same invention.
Under the same logic that a narrower species will always anticipate the broader genus (MPEP §2131.02, subsection 1), and that a generic disclosure will anticipate a claimed species covered by that disclosure even when the reference describes the limitations but does not expressly spell out the limitations (MPEP §2131.02, subsection III), claims which are only narrower cannot be held patentably distinct from claims which are only broader. Present claims 1-2, 7-9, 16-17, 22-25, 31 is/are only narrower/broader than pending claims 1, 7-9, 13-14, 16, 24-25, 28-31through their overlapping alternative limitations and/or nomenclature. (e.g. permanent magnet / ferromagnet; two or more electromagnet assemblies / a first electromagnet assembly, a second electromagnet assembly etc…)
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 16-30 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.
Claims 16-30 include, or depend from claims that include, the limitation(s): “wherein the two or more electromagnet assemblies are operable to receive electric power to produce, and supplying electric power…” It is unclear if the claim contains a scrivener’s error and text is missing after “to produce” or if the limitation is not an error, it is unclear what is required by the limitation (i.e. what is produced after the electric power is received).
Clarification and/or correction are required. No new matter may be entered. The claims will be read and examined as best understood.
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, 3-4, 7-8, 13-16, 18-19, 22-23, 28-31 is/are, as best understood, rejected under 35 U.S.C. 102(a)(1) as being anticipated by Williamson (US 20080053662).
Regarding claim 1, Williamson teaches: A downhole device, comprising:
a member (Williamson comprising 28) having a first member end (Williamson near one of 26/44) and a second opposite member end (Williamson near other of 26/44);
a movable element (Williamson 40) positioned about the member, the movable element having a first movable element end (Williamson near one of 26/44) and a second opposite movable element end (Williamson near other of 26/44), the movable element configured to move a stroke distance (D) from a first position (Williamson one of Fig. 2D / 3D; [0027-0034]) to a second position (Williamson other of Fig. 2D/3D);
one or more ferromagnet assemblies (Williamson 38) fixed to one of the member or the movable element; and
two or more electromagnet assemblies (Williamson 32) fixed to an other of the movable element or the member,
wherein a combined number (n) (Williamson Fig. 2B n = 12X) of the two or more electromagnet assemblies is greater than a combined number (m) (Williamson Fig. 2B-2C m = 20X) of the one or more ferromagnet assemblies,
wherein the two or more electromagnet assemblies are operable (Williamson [0031-0032, 0041]) to receive electric power to produce two or more electromagnetic fields configured to (Williamson [0031-0032, 0041]) actuate the movable element from the first position toward the second position.
Regarding claim 3, Williamson teaches: The downhole device as recited in claim 1, wherein n is at least 3 (Williamson Fig. 2B n = 12X).
Regarding claim 4, Williamson teaches: The downhole device as recited in claim 1, wherein n is at least 4 (Williamson Fig. 2B n = 12X).
Regarding claim 7, Williamson teaches: The downhole device as recited in claim 1, wherein the two or more electromagnet assemblies are operable (Williamson [0023, 0032, 0048]) to receive the electric power to produce two or more electromagnetic fields having a same electromagnetic polarity (Y).
Regarding claim 8, Williamson teaches: The downhole device as recited in claim 1, wherein a first of the two or more electromagnet assemblies is operable (Williamson [0023, 0032, 0048]) to receive the electric power to produce a first electromagnetic field having an electromagnetic polarity (Y) and a second of the two or more electromagnet assemblies is operable (Williamson [0023, 0032, 0048]) to receive the electric power to produce a second electromagnetic field having an opposite electromagnetic polarity (Y′).
Regarding claim 13, Williamson teaches: The downhole device as recited in claim 1, wherein the member is a flow control valve housing (Williamson comprising 28), the movable element is a movable flow control element (Williamson 40), and further including a valve closure mechanism (Williamson 44) coupled with the flow control valve housing, the movable flow control element configured to actuate between the first position (Williamson one of Fig. 2D / 3D) and the second position (Williamson other of Fig. 2D / 3D) and thereby move the valve closure mechanism between a closed state (Williamson one of Fig. 2D) and an open state (Williamson one of Fig. 3D).
Regarding claim 14, Williamson teaches: The downhole device as recited in claim 13, wherein the movable flow control element is a movable flow control tube (Williamson 40).
Regarding claim 15, Williamson teaches: The downhole device as recited in claim 14, wherein the valve closure mechanism is a flapper-type valve (Williamson 44) configured to rotate between the closed state (Williamson one of Fig. 2D) and an open state (Williamson one of Fig. 3D) as the movable flow control tube moves between the first position and the second position.
Regarding claim 16, Williamson teaches: A method, comprising:
accessing (Williamson Fig. 1) a downhole device located within a wellbore extending through one or more subterranean formations, wherein the downhole device includes:
a member (Williamson comprising 28) having a first member end (Williamson near one of 26/44) and a second opposite member end (Williamson near other of 26/44);
a movable element (Williamson 40) positioned about the member, the movable element having a first movable element end (Williamson near one of 26/44) and a second opposite movable element end (Williamson near other of 26/44), the movable element configured to move a stroke distance (D) from a first position (Williamson one of Fig. 2D / 3D; [0027-0034]) to a second position (Williamson other of Fig. 2D/3D);
one or more ferromagnet assemblies (Williamson 38) fixed to one of the member or the movable element; and
two or more electromagnet assemblies (Williamson 32) fixed to an other of the movable element or the member,
wherein a combined number (n) (Williamson Fig. 2B n = 12X) of the two or more electromagnet assemblies is greater than a combined number (m) (Williamson Fig. 2B-2C m = 20X) of the one or more ferromagnet assemblies,
wherein the two or more electromagnet assemblies are operable (Williamson [0031-0032, 0041]) to receive electric power to produce; and
supplying (Williamson [0031-0032, 0041]) electric power to the two or more electromagnet assemblies to produce two or more electromagnetic fields to actuate the movable element from the first position toward the second position.
Regarding claim 18, Williamson teaches: The method as recited in claim 16, wherein n is at least 3 (Williamson Fig. 2B n = 12X).
Regarding claim 19, Williamson teaches: The method as recited in claim 16, wherein n is at least 4 (Williamson Fig. 2B n = 12X).
Regarding claim 22, Williamson teaches: The method as recited in claim 16, wherein the two or more electromagnet assemblies are operable (Williamson [0023, 0032, 0048]) to receive the electric power to produce two or more electromagnetic fields having a same electromagnetic polarity (Y).
Regarding claim 23, Williamson teaches: The method as recited in claim 16, wherein a first of the two or more electromagnet assemblies is operable (Williamson [0023, 0032, 0048]) to receive the electric power to produce a first electromagnetic field having an electromagnetic polarity (Y) and a second of the two or more electromagnet assemblies is operable (Williamson [0023, 0032, 0048]) to receive the electric power to produce a second electromagnetic field having an opposite electromagnetic polarity (Y′).
Regarding claim 28, Williamson teaches: The method as recited in claim 16, wherein the member is a flow control valve housing (Williamson comprising 28), the movable element is a movable flow control element (Williamson 40), and further including a valve closure mechanism (Williamson 44) coupled with the flow control valve housing, the movable flow control element configured to actuate between the first position (Williamson one of Fig. 2D / 3D) and the second position (Williamson other of Fig. 2D / 3D) and thereby move the valve closure mechanism between a closed state (Williamson one of Fig. 2D) and an open state (Williamson one of Fig. 3D).
Regarding claim 29, Williamson teaches: The method as recited in claim 28, wherein the movable flow control element is a movable flow control tube (Williamson 40).
Regarding claim 30, Williamson teaches: The method as recited in claim 29, wherein the valve closure mechanism is a flapper-type valve (Williamson 44) configured to rotate between the closed state (Williamson one of Fig. 2D) and an open state (Williamson one of Fig. 3D) as the movable flow control tube moves between the first position and the second position.
Regarding claim 31, Williamson teaches: A well system, comprising:
a wellbore (Williamson 20) extending through one or more subterranean formations (Williamson near 20); and
a downhole (Williamson comprising 28) device located within the wellbore, the downhole device including:
a member (Williamson comprising 28) having a first member end (Williamson near one of 26/44) and a second opposite member end (Williamson near other of 26/44);
a movable element (Williamson 40) positioned about the member, the movable element having a first movable element end (Williamson near one of 26/44) and a second opposite movable element end (Williamson near other of 26/44), the movable element configured to move a stroke distance (D) from a first position (Williamson one of Fig. 2D / 3D; [0027-0034]) to a second position (Williamson other of Fig. 2D/3D);
one or more ferromagnet assemblies (Williamson 38) fixed to one of the member or the movable element; and
two or more electromagnet assemblies (Williamson 32) fixed to an other of the movable element or the member,
wherein a combined number (n) (Williamson Fig. 2B n = 12X) of the two or more electromagnet assemblies is greater than a combined number (m) (Williamson Fig. 2B-2C m = 20X) of the one or more ferromagnet assemblies,
wherein the two or more electromagnet assemblies are operable (Williamson [0031-0032, 0041]) to receive electric power to produce two or more electromagnetic fields configured to (Williamson [0031-0032, 0041]) actuate the movable element from the first position toward the second position.
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.
Claim(s) 9, 24 is/are, as best understood, rejected under 35 U.S.C. 103 as being unpatentable over Williamson in view of Vick (US 20160265309).
Regarding claim 9, Williamson teaches: The downhole device as recited in claim 1, wherein the one or more ferromagnet assemblies are one or more permanent magnet (Williamson [0024, 0046]) assemblies, the one or more permanent magnet assemblies producing an inherent magnetic field having a magnetic polarity (X), but does not expressly state: the one or more permanent magnet assemblies generating a magnetic coupling force that biases the movable element toward the first position.
Vick teaches a magnetic booster for a subsurface safety valve wherein one or more permanent magnet assemblies (Vick 148/158) is configured to generate a magnetic coupling force that biases the movable element toward the first position.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date (AIA ) or at the time the invention was made (Pre-AIA ), to have modified Williamson to include a permanent magnet configuration to provide a bias toward the open and/or close position in order to reduce the amount of power/energy required to shift the valve.
Regarding claim 24, Williamson teaches: The method as recited in claim 16, wherein the one or more ferromagnet assemblies are one or more permanent magnet assemblies (Williamson [0024, 0046]), the one or more permanent magnet assemblies producing an inherent magnetic field having a magnetic polarity (X), but does not expressly state: the one or more permanent magnet assemblies generating a magnetic coupling force that biases the movable element toward the first position.
Vick teaches a magnetic booster for a subsurface safety valve wherein one or more permanent magnet assemblies (Vick 148/158) is configured to generate a magnetic coupling force that biases the movable element toward the first position.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date (AIA ) or at the time the invention was made (Pre-AIA ), to have modified Williamson to include a permanent magnet configuration to provide a bias toward the open and/or close position in order to reduce the amount of power/energy required to shift the valve.
Allowable Subject Matter
Claim 5-6, 10-12 are 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 17, 20-21, 25-27 would be allowable if rewritten 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 to include all of the limitations of the base claim and any intervening claims.
Prior Art
The following prior art made of record and not relied upon is considered pertinent to Applicant's disclosure.
McMillon (US 20130333872) teaches a downhole tool comprising permanent magnets and electromagnets, the magnetic assembly configured to actuate a downhole tool.
El Mallawany (US 20250305387) teaches a subsurface safety valve configured to be actuated by a magnetic assembly comprising electromagnets and permanent magnets.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David Carroll whose telephone number is (571)272-4808. The examiner can normally be reached M-F 2:00-10:00 PM EDT.
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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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/David Carroll/ Primary Examiner, Art Unit 3674
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