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 .
35 USC 102 rejections
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) 9-10 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by US 4,488,853 (Benson).
Regarding independent claim 9, Benson discloses a method of opening a traveling valve element 62 during a pump upstroke, in a rod pump (pump including a piston 57a, rod 57c and prong 57b in figure 13A), the method comprising the steps of: (a) providing an actuator having an activation chamber (chambers 60, 60” can be considered activation chambers because both have compressed gas chamber) and a piston connected to a prong, moveable between a retracted position and an extended position where the prong 57b extends upwards to contact the traveling valve element 62; (note the pump can be mounted at various positions (column 17, lines 24-42) including upside down, the prong 57b travels in the vertical direction at least in the figure 13A) (b) when the pump barrel is at least partially filled with a liquid, allowing liquid to enter and exit the activation chamber during normal operation where the piston and prong are retracted (note check valve (reed valve 188) can be open or closed to control the fluid inside chamber 60, 60”;) (c) storing gas within the activation chamber 60, 60” when the pump barrel is filled with gas, such that the piston 57a, and the prong 57b are extended when the activation chamber pressure exceeds pressure within the pump barrel.
Regarding claim 10, Benson discloses that wherein the activation chamber seals to store gas by the action of (a) a distal valve comprising a specific gravity element which has a specific gravity greater than gas and less than oil or water, or mixtures thereof; and (b) a check valve (note reed valve 188 is a type of check valve) permitting fluid flow into the activation chamber but which does not permit fluid flow out of the activation chamber.
Obviousness Double Patenting Rejections
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 12,523,117. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Note the claim-matching table below:
Independent claims 1, 9 of this application
Claims of US 12,523,117
1. A traveling valve actuator, for use with a traveling valve which reciprocates within a pump barrel and having a traveling valve element, comprising: (a) a distal valve responsive to fluid conditions in a pump barrel to close the distal valve when the pump barrel fluid is gas dominated and open the distal valve when the pump barrel fluid comprises liquid; (b) pressure cylinder including an activation chamber defined in part by the distal valve and a piston which reciprocates within the pressure cylinder, the piston having a one-way check valve configured to allow fluid to enter the activation chamber from the pump barrel; (c) an intake housing having at least one port open to the pump barrel and the one-way check valve; and (d) a prong connected to the piston which reciprocates upwards to impinge on the traveling valve ball when the activation chamber is closed by the distal valve and the one-way check valve.
9. A method of opening a traveling valve element during a pump upstroke, in a rod pump, the method comprising the steps of: (a) providing an actuator having an activation chamber and a piston connected to a prong, moveable between a retracted position and an extended position where the prong extends upwards to contact the traveling valve element; (b) when the pump barrel is at least partially filled with a liquid, allowing liquid to enter and exit the activation chamber during normal operation where the piston and prong are retracted; (c) storing gas within the activation chamber when the pump barrel is filled with gas, such that the piston and the prong are extended when the activation chamber pressure exceeds pressure within the pump barrel.
1. A non-locking actuator system, for attachment to a traveling valve and disposed within a pump barrel defining a pump barrel volume, comprising: (a) a ported seat plug configured to attach to a distal end of a traveling valve cage, and defining a port allowing fluid communication from the pump barrel volume to a central chamber which is open to the traveling valve when attached to the traveling valve; (b) an intake section having a housing attached to a distal end of the ported seat plug and defining an interior volume, the intake housing defining at least one radial port for allowing fluid communication from the pump barrel volume into the non-locking actuator; (c) a pressure cylinder attached to a distal end of the intake housing and defining an internal activation chamber; (d) a distal inlet/outlet assembly connected to a distal end of the pressure cylinder and having a specific gravity valve closing a distal end of the activation chamber, the specific gravity valve comprising a specific gravity element having a specific gravity between that of a gas and a liquid, such that the specific gravity element sinks in a gas and floats on a liquid, thus moveable between an open position when a liquid is present in the assembly and a closed position when a gas is present in the assembly; (e) a reciprocating actuator assembly comprising a prong having a proximal end disposed in the ported seat plug central chamber and a distal end connected to a rod crossover which extends distally into the intake housing; (f) an intake manifold disposed within the intake housing, defining a fluid flow path from the at least one radial port into a check valve chamber formed within a distal end of the rod crossover; (g) a check valve permitting fluid flow from the check valve chamber to the activation chamber when the check valve is open, but which does not permit fluid flow from the activation chamber to the check valve chamber; and (h) a bias piston attached to a distal end of the rod crossover and sealed to an inner surface of the pressure cylinder, wherein the bias piston is responsive to a pressure differential between the pump barrel volume and the activation chamber, to move between a non-actuated distal position and an actuated proximal position, wherein the bias piston is biased into the non-actuated position, and wherein the bias piston moves the prong proximally to impinge on a traveling valve ball to unseat the traveling valve ball when in the actuated position.
Anticipation:
Based on the claim-matching table above, claim 1 of US 12,523,117 anticipates the claimed subject matter of independent claims 1, 9 of this application. The claims of the patent recite more elements than in this application and therefore the claims of this application should be rejected under obviousness double patenting rejection. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993).
Furthermore:
Claim 1 of US 12,523,117 also anticipates claims 2, 6, 10.
Claim 2 of US 12,523,117 anticipates claims 3, 4.
Claim 4 of US 12,523,117 anticipates claim 5.
Claim 6 of US 12,523,117 anticipates claim 7.
Claim 7 of US 12,523,117 anticipates claim 8.
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.
Prior Art of Record
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Tetzlaff, Soderberg, Vlacancinch, and Probst disclose pumps having prongs, distal valve and pneumatic chambers.
Conclusions
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The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HOANG M NGUYEN/Primary Examiner, Art Unit 3746
HOANG NGUYEN
PRIMARY EXAMINER
ART UNIT 3746
Hoang Minh Nguyen
7/21/2026
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