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 .
Response to Amendment
Applicant’s response filed June 14, 2023 has placed the application in condition for allowance over the prior art - as detailed in the Non-Final Office Action dated January 19, 2023. Prosecution on this application was suspended pending a derivative trial which has now concluded (see written decision dated March 23, 2026). However, there are pending objections and rejections of the claims as noted below that need to be addressed before an Allowance may be issued.
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because the figures submitted on June 14, 2023 no longer contain cross-hatching when showing a cross-sectional view of the tool. The lines are also still very blurry and unclear as noted in the Non-Final Rejection dated January 19, 2023. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Claim Objections
Claims 1 and 4 are objected to because of the following informalities:
Claims 1 and 4 both recite “defining at least one bore” in lines 2 and 2-3 respectively. However, the remainder of the claims recite “the bore” which does not account for more than one bore that would be possible with “at least one bore”. For continuity in claim language, it is believed that claims 1 and 4 should recite --defining a bore--.
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 14-17 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 14 depends from a cancelled claim thus rendering the scope of the claim indefinite.
Claim 15, lines 11-12 recites “the wireline cutting assembly” which lacks antecedent basis. Claim 15 was amended to made into independent form but failed to incorporate claim 10 from which claim 15 originally depended from. Additionally, claim 17 also recites “the wireline cutting assembly” which would not be a problem if claim 15 positively recites this limitation.
Claims 16 and 17 are rejected as depending on a rejected indefinite claim.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TARA SCHIMPF whose telephone number is (571)270-7741. The examiner can normally be reached Monday-Friday 7:30am - 3:30pm EST.
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, John Fristoe can be reached at (571) 272-4926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676
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