DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 1/12/2026 has been entered with claims 1-20 pending and being examined herein.
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 5 and 11 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.
Claims 5 and 11 recite that the locking sub-features comprise an angled feature. These recitations are indefinite as it is not understood what is being claimed. Claims 1 and 6, from which claims 5 and 11 respectively depend, recite that the locking feature is scalloped. Thus, it is not clear which parts of the feature are being claimed as being angled.
Drawings
The drawings are objected to under 37 CFR 1.84(l). The drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.
The drawings (Fig. 5 and the additional views to Fig. 5) do not have satisfactory reproduction characteristics. The drawings appear to be multi-generation copies which are at least partially hand drawn or numbered. The lines and numbers are not all solid. Further, some of the smaller/finer elements are not clear.
The drawings are objected to under 37 CFR 1.84(u)(1). The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. Newly amended Fig. 5 appears to show at least 4 views with differing locking feature shapes.
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 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 of this title, 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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Watson et al. (US 4858687) in view of Booth (US 20130008671) and in view of Polsky et al (US 20190049324) and view of Budde (US 5390736).
Regarding claim 1: Watson discloses a well plug 12, 14 comprising a cylindrical body having a first end and a second end (Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24). Watson discloses a plurality of cylindrical fins 26, 48 encircling the cylindrical body between the first end and the second end (Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24). Watson discloses a core 16, 28, 36, 58 disposed within the cylindrical body between the first end and the second end (Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24). Watson discloses a non-rotating locking feature 30, 52, 60 provided in the core at the first end and configured to lock with an adjacent well plug (Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24).
Watson does not explicitly disclose that the core is concrete or that the non-rotating locking feature is scalloped. Watson discloses that the core may be formed of any suitable, easily drillable material, such as plastic, aluminum, etc. and that the non-rotating feature comprises teeth 30, 52, 60 (Fig. 1; col. 2, lines 2-36; col. 2, lines 50-55).
Booth discloses that an easily drillable material can be concrete (abstr.; [0002], [0015], [0016]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art, to have substituted the drillable material core of Watson with concrete as taught by Booth. As both Watson and Booth teach the use of an easily drillable material and as Booth explicitly teaches that concrete is an easily drillable material, it would have been within routine skill to select a specific type of drillable material from a finite list of well-known drillable materials taught in the downhole plug art. Such a selection and such a simple substitution would have been predictable with a reasonable expectation for success and no unexpected results.
Watson, as modified by Booth, does not explicitly disclose that the concrete core is configured to provide structural integrity for the well plug. However, Booth does teach that concrete is strong in compression ([0031] – the examiner finds that strong compression would provide structural strength). Polsky discloses that concrete is a structural building material ([0003]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art, to have understood that concrete is a structural building material, and taught by Polsky, and would therefore provide structural integrity where used (such as a concrete core in a well plug). As Watson, Booth, and Polsky are all directed to wellbore operations, as Watson and Booth are silent regarding the structural integrity of concrete, as Booth teaches that concrete is strong in compression, and as Polsky explicitly teaches that concrete is a structural building material, it would have been within routine skill to select a specific core material that would provide structural integrity from a finite list of well-known materials that provide structural integrity while also providing other desired features/properties (i.e. selecting concrete that has structural integrity but is also easily drillable). Such a selection and such a simple understanding would have been predictable with a reasonable expectation for success and no unexpected results.
Watson, as modified by Booth and Polsky, does not explicitly disclose that non-rotating locking feature is scalloped. Budde discloses a non-rotating scalloped locking feature disposed at the first end and configured to lock with an adjacent well plug (Figs. 1-5; 4-6; col. 3, lines 4-7). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art, to have substituted the scalloped locking features of Budde for the locking features (teeth) of Watson, as modified by Booth and Polsky. As both Watson and Budde teach similar locking features (i.e. substantially similar location and a substantially same function), it would have been within routine skill to select a specific type of locking features from a finite list of well-known locking features (teeth or scalloped features) taught in the cementing plug art. Such a selection and such a simple substitution would have been predictable with a reasonable expectation for success and no unexpected results.
Regarding claim 2: Watson, as modified by Booth, Polsky, and Budde, discloses that the locking feature further comprises a plurality of locking sub-features that are configured for interlocking the concrete core with a second concrete core of the adjacent well plug (Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24: Budde - Figs. 1-5).
Regarding claim 3: Watson, as modified by Booth, Polsky, and Budde, discloses that the locking sub-features comprise a plurality of scalloped shapes (Budde - Figs. 1-5; col. 4, lines 57-68).
Regarding claims 4 and 10: Watson, as modified by Booth, Polsky, and Budde, discloses that the locking sub-features comprise eight scalloped shapes disposed around a circumference of a cavity (Budde - Figs. 1-5; col. 4, lines 57-68).
Regarding claims 5 and 11: Watson, as modified by Booth, Polsky, and Budde, discloses that the locking sub-features comprise an angled feature (Watson - Fig. 1).
Regarding claim 6: Watson, as modified by Booth, Polsky, and Budde, discloses a well plug comprising a cylindrical body having a first end and a second end (see above; Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24). Watson, as modified by Booth, Polsky, and Budde, discloses a plurality of cylindrical fins (Watson - 26, 48; Budde – 4, 104) encircling the cylindrical body between the first end and the second end (see above; Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24; Budde – Figs. 1, 2). Watson, as modified by Booth, Polsky, and Budde, discloses a concrete core disposed within the cylindrical body between the first end and the second end (see above; Watson and Budde disclose cores and Booth discloses the concrete material for the core). Watson, as modified by Booth, Polsky, and Budde, discloses that the concrete core is configured to provide structural integrity for the well plug (see above; Booth – [0031] – concrete is strong in compression; Polsky - [0003]). Watson, as modified by Booth and Budde, discloses a cavity disposed in the concrete core along an axis of the cylindrical body between the first end and the second end (see above; Watson (Fig. 1) and Budde (Figs. 1, 2) disclose a cavity in the core and Booth discloses the concrete material for the core). Watson, as modified by Booth and Budde, discloses a non-rotating scalloped locking feature disposed at a first end in the concrete core and configured to lock with an adjacent well plug and the locking feature having a penetration (see above; Watson – Fig.1 – discloses a locking feature and cavity; Budde - Figs. 1, 2 – discloses that the locking feature is scalloped and has a cavity; Booth - discloses the concrete material for the core).
Regarding claim 7: Watson, as modified by Booth, Polsky, and Budde, discloses a second locking feature disposed at a second end in the concrete core and having a penetration (Watson - Fig. 1; Budde - Figs. 1-5).
Regarding claim 8: Watson, as modified by Booth, Polsky, and Budde, discloses that the locking feature further comprises a plurality of locking sub-features disposed around a periphery of the penetration (Watson - Fig. 1; Budde - Figs. 1-5).
Regarding claim 9: Watson, as modified by Booth, Polsky, and Budde, discloses that the locking sub-features comprise a scalloped shape with scalloped features disposed around a periphery of the penetration (Budde - Figs. 1-5).
Claims 12-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Watson et al. (US 4858687) in view of Booth (US 20130008671) and in view of Polsky et al (US 20190049324).
Watson, Booth, and Polsky disclose the invention substantially as claimed and as discussed above.
Regarding claim 12: Watson discloses a well plug system comprising a solid core well plug 12 with a locking feature 28, 30 attached at a first end configured to prevent rotation (Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24). Watson discloses a hollow core well plug 14 with a locking feature 54, 52 at a first end and that the locking feature of the solid core well plug interlocks with the locking feature of the hollow core well plug (Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24).
Watson does not explicitly disclose that the core is concrete. Watson discloses that the core may be formed of any suitable, easily drillable material, such as plastic, aluminum, etc. (Fig. 1; col. 2, lines 2-36; col. 2, lines 50-55). Booth discloses that an easily drillable material can be concrete (abstr.; [0002], [0015], [0016]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art, to have substituted the drillable material core of Watson with concrete as taught by Booth. As both Watson and Booth teach the use of an easily drillable material and as Booth explicitly teaches that concrete is an easily drillable material, it would have been within routine skill to select a specific type of drillable material from a finite list of well-known drillable materials taught in the downhole plug art. Such a selection and such a simple substitution would have been predictable with a reasonable expectation for success and no unexpected results.
Watson, as modified by Booth, does not explicitly disclose that the concrete core is configured to provide structural integrity for the well plug. However, Booth does teach that concrete is strong in compression ([0031] – the examiner finds that strong compression would provide structural strength). Polsky discloses that concrete is a structural building material ([0003]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art, to have understood that concrete is a structural building material, and taught by Polsky, and would therefore provide structural integrity where used (such as a concrete core in a well plug). As Watson, Booth, and Polsky are all directed to wellbore operations, as Watson and Booth are silent regarding the structural integrity of concrete, as Booth teaches that concrete is strong in compression, and as Polsky explicitly teaches that concrete is a structural building material, it would have been within routine skill to select a specific core material that would provide structural integrity from a finite list of well-known materials that provide structural integrity while also providing other desired features/properties (i.e. selecting concrete that has structural integrity but is also easily drillable). Such a selection and such a simple understanding would have been predictable with a reasonable expectation for success and no unexpected results.
Regarding claim 13: Watson, as modified by Booth and Polsky, discloses that the hollow concrete core well plug comprises a cylindrical body and the locking feature comprises chevron shapes (Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24 (the Watson teeth shape meets the recited chevron shape); Booth – discloses concrete material).
Regarding claim 14: Watson, as modified by Booth and Polsky, discloses that the hollow concrete core well plug comprises a plurality of cylindrical fins 48 encircling the cylindrical body and the locking feature comprises pyramidal shapes (Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24 (the Watson teeth shape meets the recited pyramidal shape); Booth – discloses concrete material).
Regarding claim 15: Watson, as modified by Booth and Polsky, discloses that the hollow concrete core well plug comprises a concrete core disposed within the cylindrical body (Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24; Booth – discloses concrete material).
Regarding claim 16: Watson, as modified by Booth and Polsky, discloses that the hollow concrete core well plug comprises a cavity disposed in the concrete core along an axis of the cylindrical body (Watson - Fig. 1; Booth – discloses concrete material).
Regarding claim 17: Watson, as modified by Booth, discloses that the hollow concrete core well plug comprises a second locking feature 58, 60 disposed at a second end in the concrete core (Watson - Fig. 1; col. 2, lines 26-36; Booth – discloses concrete material).
Regarding claim 18: Watson, as modified by Booth and Polsky, discloses that the locking feature of the solid concrete core well plug and the locking feature of the hollow concrete core well plug each comprise a plurality of locking sub-features (Watson - Fig. 1; col. 1, line 64-col. 2, line 36; Booth – discloses concrete material).
Regarding claim 20: Watson, as modified by Booth and Polsky, discloses that the hollow concrete core well plug comprises a rupture disk 56 disposed in a hollow core (Watson - Fig. 1; col. 2, lines 14-43; col. 3, lines 18-22; Booth – discloses concrete material).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Watson et al. (US 4858687), Booth (US 20130008671), and Polsky et al (US 20190049324), as applied to claim 18 above, and further in view of Budde (US 5390736).
Watson, Booth, Polsky, and Budde disclose the invention substantially as claimed and as discussed above.
Regarding claim 19: Watson, as modified by Booth and Polsky, does not explicitly disclose that the locking sub-features comprise a scalloped shape. Budde discloses that the locking sub-features comprise a scalloped shape (Figs. 1-5; 4-6; col. 3, lines 4-7). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art, to have substituted the scalloped locking features of Budde for the locking features (teeth) of Watson, as modified by Booth and Polsky. As both Watson and Budde teach similar locking features (i.e. substantially similar location and a substantially same function), it would have been within routine skill to select a specific type of locking features from a finite list of well-known locking features (teeth or scalloped features) taught in the cementing plug art. Such a selection and such a simple substitution would have been predictable with a reasonable expectation for success and no unexpected results.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting over claims 21-40 of US Pat. Appl. No. 18887583. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of the instant application fully encompass claims 21-40 of US Pat. Appl. No. 18887583. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicants’ amendments and arguments, filed 1/12/2026, with respect to the previous rejections of claims 1-20 have been fully considered and they are at least partially persuasive. The objections/rejections that have been withdrawn are not repeated herein.
Applicants’ arguments, directed to claims 1-20 are moot because the arguments do not apply to any of the reference combinations being used in the current rejection.
It should be noted that applicants argue that the prior art such as Booth discloses that the core does not provide structural integrity, see e.g. [0031] ("The sleeve 14 is not intended to be structural and can be made of easy-to-drill material such as brass, plastic or the like.") Similarly, Watson discloses easy to drill materials that are made of similar materials that are unable to provide structural support. Applicants conclude that a person of skill in the art would not understand that the cores of Watson or Booth are configured to provide structural support.
Applicants’ conclusion is incorrect as it is based on a misreading of Booth and Watson. Booth’s element 14 is not made of concrete. Booth states that sleeve 14 is not intended to be structural but does not equate the possible materials (of sleeve 14), themselves, to lack any possibility of structural integrity. It is the examiner’s position that the design of sleeve 14 (e.g. thin sleeve; as this as 0.005” to 0.25” in thickness) is why the sleeve may not be structural rather than the possible material of sleeve 14. Watson is silent regarding the structural integrity of the core or concrete.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TARAS P BEMKO whose telephone number is (571)270-1830. The examiner can normally be reached on Monday-Friday 8:00-5:00 (EDT/EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached on 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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/Taras P Bemko/
Primary Examiner, Art Unit 3672
6/16/2026
Prosecution Insights