DETAILED ACTION
Notice of 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 § 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 1-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 12655750 in view of Strilchuk (U.S. Publication No. 20150096807).
Regarding claim 1, claim 2 of the ‘750 patent teaches all of the limitations of the instant claim 1, such as “an interior flow passage that extend longitudinally…”, “ a valve that in a closed configuration precent fluid communication through the valve…”, and “actuated from the closed configuration to the open configuration in response to application of a predetermined longitudinal compressive load…”.
Claim 2 of ‘750 patent does recite that “the compression indication tool is configured for interconnection in a tubular string” but does not recite “ first and second connectors configured to connect the compression indication tool in a tool string”.
Strilchuk, drawn to a flow control valve, discloses first and second connectors (20, 24; Fig. 1A,1B, pp[0028]) configured to connect the compression indication tool (10) in a tool string (The interior and exterior threads (20, 24) can be usable to engage the valve (10) with adjacent tools and/or conduits, such as segments of a drilling string or other type of tubular string; pp[0028]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the compression indication tool of the ‘750 patent such that it comprises the first and second connectors as taught by Strilchuk in order to facilitate in connecting the compression indication tool with a tool string.
In light of the above modification, the combination of Claim 2 of ‘750 patent and Strilchuk teaches “a distance from the first connector to the second connector is shortened in response to the application of the predetermined compressive load.” because Claim 2 of ‘750 patent recites “longitudinal length of the compression indication tool is shortened in response to the application of the predetermined longitudinal compressive load”.
Regarding claims 3-14, the combination of claims 3-14 of the ‘750 patent and Strilchuk teaches all of the limitations of claims 3-14 of the instant application.
Claims 15-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-22 of U.S. Patent No. 12655750. Although the claims at issue are not identical, they are not patentably distinct from each other because
Regarding claim 15, claim 22 of the ‘750 patent teaches all of the limitations of instant claim 15, such as “connecting a compression indication tool in a tool string, the compression indication tool comprising a valve…”, “deploying the tool string into the well”, and “applying a predetermined longitudinal compressive load to the tool string…” . Claim 15 of the instant application further recites “the applying comprises longitudinally shortening the compression indication tool.” Which is also taught by claim 22 of the ‘750 patent which recites “the applying comprises decreasing a longitudinal length of the compression indication tool.”. Although the language used in the claims are not identical, the claims are not patentably distinct from each other.
Regarding claims 16-23, claims 15-22 of the ‘750 patent teaches all of the limitations of claims 16-23 of the instant application.
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.
Claim(s) 1, 4-13, 15-19 and 21-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Strilchuk (U.S. Publication No. 20150096807).
In regards to claim 1, Strilchuk teaches a compression indication tool (10; Fig. 1A, B) for use in a subterranean well (the valve (10) can be provided into a wellbore; para[0048]), the compression indication tool comprising:
first and second connectors (20, 24; Fig. 1A,1B, pp[0028]) configured to connect the compression indication tool (10) in a tool string (The interior and exterior threads (20, 24) can be usable to engage the valve (10) with adjacent tools and/or conduits, such as segments of a drilling string or other type of tubular string; pp[0028]);
an interior flow passage (axial bore 14) that extends longitudinally through the compression indication tool (Fig. 1B, 2); and
a valve (comprising 26, 44) that in a closed configuration (Fig. 1B, 2) prevents fluid communication through the valve (The port 28 of the sleeve 26 and the port 16 of the tool 10 are offset which prevents fluid communication through ports 28 of sleeve 26; para[0033]) between the interior flow passage (14) and an exterior (12) of the compression indication tool (10; Fig. 1A), and in an open configuration (Fig. 4) permits fluid communication through the valve (When the ports 16 and 28 are aligned, fluid is communicated through the port 28 of sleeve 26; para[0040]) between the interior flow passage (14) and the exterior (12) of the compression indication tool (10)
in which the valve (26, 44) is actuated from the closed configuration (Fig. 1B, 2) to the open configuration (Fig. 4) in response to application of a predetermined longitudinal compressive load to the compression indication tool (Compressive force provided by the springs 36 and 46 moves collet 32 and sleeves 26 and 44 in a downhole direction until ports 16 and 28 are aligned; para [0035],[0036], [0038]-[0039]. Any compressive force applied to any part of the compression indicating tool is considered a compressive load applied to the tool.), and
in which a distance from the first connector to the second connector is shortened in response to the application of the predetermined compressive load (The compressive load applied to the spring 40 causes the inner components of the tool to move from the Fig. 7 position to the Fig. 8 position. This movement involves a shortening of the length of the inner components of the tool, given that they have moved closer together. This shortening of the inner components of the tool is considered a shortening of “a distance from the first connector to the second connector”).
Regarding claim 4, Strilchuk teaches in which the valve comprises a sliding sleeve valve (sleeves 26 and 44; para[0039], Figs. 2-4).
Regarding claim 5, Strilchuk teaches further comprising a flexible member (collet 32) that resists longitudinal compression of the compression indication tool (the collet can be compressed in a radial distance to a smaller diameter such that it can disengage from collet support 34 and move in a longitudinal direction. Therefore, collet 32 can resist longitudinal compression because in its radially expanded state in Fig. 2, additional resistance to compression is provided by spring 36; para [0037], [0038]).
Regarding claim 6, Strilchuk teaches in which the flexible member comprises at least one collet (collet 32; Fig. 2, 3, para[0037], [0038]).
Regarding claim 7, Strilchuk teaches in which the predetermined longitudinal compressive load is variable in response to a variation in a characteristic of the flexible member (The longitudinal fluid pressure on the collet 32 needed to move the collet 32 and compress the springs changes when the collet 32 is no longer in the collet support 34. The position of the collet 32 relative to the collet support 34 is considered “a characteristic of the flexible member”; para [0038]).
Regarding claim 8, Strilchuk teaches in which the characteristic comprises a flexibility of the flexible member (The flexibility of the collet 32 is variable because it is less flexible when it is within the collet support 34 (Fig. 2) than when it disengages from the collet support 34 (Fig. 3)).
Regarding claim 9, Strilchuk teaches in which the flexibility of the flexible member is variable from the exterior of the compression indication tool (The collet 32 disengages from the collet support 34 due to application of pressure in the axial bore 14 of the tool 10, the pressure being applied from the surface, which is exterior to the tool. Therefore, the flexibility of the collet 32 is variable from the exterior of the compression indication tool 10; para [0037]).
Regarding claim 10, Strilchuk teaches in which the characteristic comprises an angle of a tapered surface on the flexible member (The end portions of the collet 33 that are disposed within the collet support 34 are tapered. The tapered ends are the portions that disengage from the collet support 34. These tapered surfaces are capable of being adjusted, and steeper angles would decrease the resistance to compression; Fig. 2,3).
Regarding claim 11, Strilchuk teaches further comprising a biasing device (spring 36) that resists longitudinal compression of the compression indication tool (spring 36 resists longitudinal compression until a predetermined pressure is applied; para[0035]).
Regarding claim 12, Strilchuk teaches in which the predetermined longitudinal compressive load is variable in response to a variation in at least one of the group consisting of a spring rate and a preload of the biasing device (a variation in spring rate and/or preload of the spring 36 is implicit because the spring pack 36 can include a combination of wave springs and spacers, selected to provide the spring back (36) with a desired strength and/or biasing force; para[0030]).
Regarding claim 13, Strilchuk teaches in which longitudinal compression of the compression indication tool is resisted in response to a pressure differential from the interior flow passage to the exterior of the compression indication tool (The springs 36 and 42 within the compression indication tool resist compression in response to a pressure differential from the interior flow passage (14) to the exterior of the compression indication tool (12) until the pressure differential between the fluid in the axial bore (14) and that in the annulus external to the compression indication tool (10) exceeds a preset tolerance; para [0035]).
Regarding claim 15, Strilchuk teaches a method for use with a subterranean well, the method comprising:
connecting a compression indication tool (10; Fig. 1A,B) in a tool string (tool 10 can be connected to a drilling string or other type of tubular string; para[0028]), the compression indication tool comprising a valve (comprising 26, 44; Fig. 1B) that prevents fluid communication through the valve between an interior flow passage and an exterior of the compression indication tool (The port 28 of the sleeve 26 and the port 16 of the tool 10 are offset which prevents fluid communication through ports 28 of sleeve 26 to the exterior 12 of the tool 10; para[0033]);
deploying the tool string into the well (The drill string and the tool 10 can be positioned downhole; para[0028]); and
applying a predetermined longitudinal compressive load to the tool string, thereby opening the valve to permit fluid communication through the valve between the interior flow passage and the exterior of the compression indication tool (Compressive force provided by the springs 36 and 46 moves collet 32 and sleeves 26 and 44 in a downhole direction until ports 16 and 28 are aligned. The compressive force is predetermined because the springs 36 and 42 do not compress until the pressure differential between the fluid in the axial bore (14) and that in the annulus external to the compression indication tool (10) exceeds a preset tolerance; para [0035],[0036], [0038]-[0039]), in which the applying comprises longitudinally shortening the compression indication tool (The compressive load applied to the spring 40 causes the inner components of the tool to move from the Fig. 7 position to the Fig. 8 position. This movement involves a shortening of the length of the inner components of the tool, given that they have moved closer together. This shortening of the inner components of the tool is considered a shortening of “a longitudinal length of the compression indication tool”).
Regarding claim 16, Strilchuk teaches in which the applying comprises observing a decrease in fluid pressure applied to the tool string (The decrease in pressure is implicitly “observed,” given that the claim does not place any meaningful limits on what constitutes “observing”; para[0042], [0050]).
Regarding claim 17, Strilchuk teaches in which the applying comprises decreasing a pressure differential from the interior flow passage to the exterior of the compression indication tool (para[0042]).
Regarding claim 18, Strilchuk teaches further comprising applying the pressure differential from the interior flow passage to the exterior of the compression indication tool prior to the applying the predetermined longitudinal compressive load (This is implicit because the springs 36 and 42 do not compress until the pressure differential between the fluid in the axial bore (14) and that in the annulus external to the compression indication tool (10) exceeds a preset tolerance; para [0035]. Therefore, there is a differential pressure from fluid in the axial bore (14) prior to the compressive force from the springs 36 and 42.).
Regarding claim 19, Strilchuk teaches in which the applying comprises deflecting a flexible member (collet 33) of the compression indication tool (the collet deflects radially and disengages from the collet support 34; Fig. 2, 3, para [0038]).
Regarding claim 21, Strilchuk teaches further comprising adjusting a characteristic of the flexible member, thereby varying the predetermined longitudinal compressive load The flexibility of the collet 32 is variable because it is less flexible when it is within the collet support 34 (Fig. 2) than when it disengages from the collet support 34 (Fig. 3). The longitudinal fluid pressure on the collet 32 can change when the collet 32 is no longer in the collet support 34; para [0038]).
Regarding claim 22, Strilchuk teaches in which the applying comprises longitudinally compressing a biasing device (36) of the compression indication tool (“the collet (32), collet support (34), and the associated sleeve (26) and lower sleeve (44) are moved in a downhole direction an axial distance (D1), through compression of the spring pack (36); para [0036]).
Regarding claim 23, Strilchuk teaches further comprising adjusting a preload of the biasing device, thereby varying the predetermined longitudinal compressive load (adjusting the preload of the spring 36 is implicit because the spring pack 36 can include a combination of wave springs and spacers, selected to provide the spring back (36) with a desired strength and/or biasing force; para[0030]).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Strilchuk (U.S. Publication No. 20150096807) in view of Williamson, JR. (U.S. Publication No. 20160290100).
Regarding claim 2, Strilchuk teaches the compression indication tool of claim 1.
Strilchuk is silent regarding in which the valve comprises a poppet valve.
Williamson, Jr., drawn to a valve assembly (400; Fig.4A) for use in a well, discloses that the valve comprises a poppet valve (para[0019],[0049]).
Therefore, It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ) or at the time the invention was made (pre-AIA ), to have modified Strilchuk such that the poppet valve of Williamson, Jr. is substituted for the sleeve valve of Strilchuck as both valve structures are art-recognized equivalents as a means to control fluid flow. As such, the poppet valve of Williamson, Jr. would yield the same predictable results as the sleeve valve of Strilchuk which is to regulate fluid flow during wellbore operations. In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958).
Regarding claim 3, the combination of Strilchuk and Williamson, Jr., teaches the compression indication tool of claim 2.
Williamson, Jr., further discloses that the poppet valve comprises an annular closure member (at least the upper portion of the closure member proximate numeral 420 is annular; Fig. 4A) that sealingly engages an annular seat (412) in the closed configuration (Fig. 4A, para[0049]).
Allowable Subject Matter
Claims 14 and 20 have not been rejected under prior art; however the claims are rejected under Double Patenting as discussed above.
Conclusion
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/LAMIA QUAIM/Examiner, Art Unit 3676
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