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 Arguments
Applicant’s arguments with respect to the prior art rejection of the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, and 6-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 as amended recites: “the groove extending in a direction parallel to the longitudinal axis of the ring”. The groove in the original disclosure is tapered/angled relative to the longitudinal axis, as seen in Figure 4. Additionally, there is no textual support for this limitation. Consequently, the claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 3, 6-14 are rejected for depending from a rejected claim.
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.
Claim 1, 3, and 6-14 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 1 as amended recites: “the groove extending in a direction parallel to the longitudinal axis of the ring”. The groove in the original disclosure is tapered/angled relative to the longitudinal axis, as seen in Figure 4. It is unclear therefore what applicant regards as being “parallel” given that a line formed by the groove would eventually intersect the longitudinal axis. It is unclear if applicant intends a different meaning for “extending in a direction parallel to the longitudinal axis”. For the purpose of examination, see the examiner’s interpretation of the claim, below.
Claims 3, 6-14 are rejected for depending from a rejected claim.
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, 8-10, 13-14, and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bishop (US 20100071908 A1).
Regarding claim 1, Bishop teaches a backup comprising:
a gage ring having a longitudinal axis (Fig 2, 78), and a gage frustoconical surface (Fig 2, downhole surface indicated at 78), the gage ring further including a groove in the gage frustoconical surface (Fig 2, Para 0013, element 18 is a “slot”), the groove extending in a direction parallel to the longitudinal axis of the ring (Fig 2, as best understood, the groove 18 has a longitudinally dimension which would be parallel to the longitudinal axis);
a wedge ring (Fig 2, 82) having a wedge frustoconical surface (Fig 2, surface indicated at 82), the wedge ring longitudinally spaced from the gage ring (Fig 2, spaced as seen);
a plurality of discrete segments (Fig 1, segments of 10), the plurality of discrete segments collectively forming segment frustoconical surfaces at each longitudinal end (Fig 3, taper 88/86), the segment frustoconical surfaces being in physical contact with the gage frustoconical surface on one end of the plurality of discrete segments and in contact with the wedge frustoconical surface on another end of the plurality of discrete segments of the(Para 0012, “angled surfaces 78 and 82, of the ramps 18, engage with angled surfaces 86, 88 of the wedges 14, respectively”), at least one segment of the plurality of discrete segments having an overlap finger (Fig 3, finger 26) and at least one segment of the plurality of discrete segments having a finger receptor (Fig 3, receptor 40), each segment having a surface in contact with the wedge ring in both a run in and a set position (Para 0012), the plurality of discrete segments forming a circumferentially continuous contact path with the wedge ring and a circumferentially complete contact path with a separate radially outwardly positioned tubular in the set position (Fig 1, see the “Z” shaped continuous contact path that would be formed as a result of the finger within the finger receptor; Paras 0011, “the dual backup 10 has the two continuous perimetrical supports 50, 54, two ends 64, 65” this is “regardless of a specific radial position”), and wherein at least one segment of the plurality of discrete segments includes a nose engaged with and riding in the groove (Para 0013, protrusions 96); and
a retainer member disposed about an outer circumference of the plurality of discrete segments (Fig 2, springs 22).
Regarding claim 8, Bishop teaches wherein the overlap finger includes a chamfer (Fig 3, finger 26 has chamfer as seen).
Regarding claim 9, Bishop teaches hold down recesses in the segment (Fig 3, segment has recesses at 31 to accommodate retainer which provide a force to hold the segments down/radially inwardly).
Regarding claim 10, Bishop teaches a downhole tool comprising: an element (Fig 2, 58); a first backup as claimed in claim 1 adjacent the element (see claim 1).
Regarding claim 13, Bishop teaches a borehole system comprising: a borehole in a subsurface formation (Para 002, 0004, downhole tool); a string disposed within the borehole (Para 0002, 0004, deployed on a tubular); a backup as claimed in claim 1 disposed within or as a part of the string (see claim 1; Para 0002, 0004).
Regarding claim 14, Bishop teaches a borehole system comprising: a borehole in a subsurface formation (Para 002, 0004, downhole tool); a string disposed within the borehole (Para 0002, 0004, deployed on a tubular); a tool as claimed in claim 10 disposed within or as a part of the string (see claim 10; Para 0002, 0004).
Regarding claim 17, Bishop teaches a backup comprising:
a gage ring having a longitudinal axis (Fig 2, 78), and a gage frustoconical surface (Fig 2, downhole surface indicated at 78), the frustoconical surface having a plurality of grooves (Fig 2, Para 0013, element 18 is a “slot”);
a wedge ring (Fig 2, 82) having a wedge frustoconical surface (Fig 2, surface indicated at 82), the wedge ring longitudinally spaced from the gage ring (Fig 2, spaced as seen);
a plurality of discrete segments (Fig 1, segments of 10), the plurality of discrete segments forming opposing segment frustoconical surfaces (Fig 3, taper 88/86), the segment frustoconical surfaces being in physical contact with the gage frustoconical surface on one end of the plurality of discrete segments and in contact with the wedge frustoconical surface on another end of the plurality of discrete segments (Para 0012, “angled surfaces 78 and 82, of the ramps 18, engage with angled surfaces 86, 88 of the wedges 14, respectively”) at least one segment of the plurality of discrete segments having an overlap finger (Fig 3, finger 26), the at least one segment having the overlap finger engaged with one of the plurality of grooves (Fig 3, finger 26 is at least indirectly engaged with groove 18 via protrusion 96), and at least one segment of the plurality of discrete segments having a finger receptor (Fig 3, finger receptor 40 of another segment), the at least one segment having the finger receptor engaged with another of the plurality of grooves (Fig 3, receptor 40 is at least indirectly engaged with another groove 18 via protrusion 96), each segment having a surface in contact with the wedge ring in both the run in and set positions, the plurality of discrete segments forming a circumferentially continuous contact path with the wedge ring (Fig 1, see the “Z” shaped continuous contact path that would be formed as a result of the finger within the finger receptor; Paras 0011, “the dual backup 10 has the two continuous perimetrical supports 50, 54, two ends 64, 65” this is “regardless of a specific radial position”); and
a retainer member disposed to retain the segment (Fig 2, springs 22).
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) 3, 6, 11-12, and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bishop (US 20100071908 A1), in view of Heiman (US 20190360297 A1).
Regarding claim 3, Bishop teaches wherein the retainer member is a spring disposed about the longitudinal axis of the gauge ring (Fig 1, springs 22).
Bishop is silent on the spring being a garter/coiled-type spring (Fig 21, spring 370).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Bishop by having the spring being a garter/coiled-type spring as disclosed by Heiman because Bishop teaches a generic type of spring and one would look to the structural and implementing details as it taught by Heiman and known to work with a segmented back-up ring in a downhole environment.
Regarding claim 6, Bishop is silent on a hold down attached to the segment to retain the retainer member to the segment.
Heiman teaches a hold down (Fig 21, bolt 376) attached to the segment (Fig 21, segment 354) to retain the retainer member to the segment (Fig 21, bolt 376 is used to retain a spring/retainer 356 as a modification to Bell to the segment 354).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Bishop by having the hold down and its particulars as disclosed by Heiman because it is a known means of coupling the spring member to the segment (Para 0126).
Regarding claim 11, while Bishop teaches in the background “back up the two ends of a single seal”, Bishop is not explicit on a second backup also adjacent the element and spaced from the first backup by the element.
Heiman teaches a second backup also adjacent the element and spaced from the first backup by the element (Fig 11, second back up at downhole 50, not specifically labelled, but generally at 34 which sandwiches the seal 86 to 88).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Bishop by having a second backup also adjacent the element and spaced from the first backup by the element as disclosed by Heiman because it would limit extrusion of the seal on its opposing end.
Regarding claim 12, Bishop is silent on setting and unsetting the backup as claimed in claim 1 a plurality of times.
Heiman teaches setting and unsetting the backup a plurality of times (Abstract, “backup ring (50) to elastically expand and retract”).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Bishop by setting and unsetting the backup a plurality of times as disclosed by Heiman because it would allow for the device to be re-used which would reduce costs over a single-use device.
Regarding claim 19, Bishop teaches wherein the retainer member is a spring disposed about the longitudinal axis of the gauge ring (Fig 1, springs 22).
Bishop is silent on the spring being a garter/coiled-type spring (Fig 21, spring 370).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Bishop by having the spring being a garter/coiled-type spring as disclosed by Heiman because Bishop teaches a generic type of spring and one would look to the structural and implementing details as it taught by Heiman and known to work with a segmented back-up ring in a downhole environment.
Regarding claim 20, Bishop is silent on a hold down attached to the segment to retain the retainer member to the segment.
Heiman teaches a hold down (Fig 21, bolt 376) attached to the segment (Fig 21, segment 354) to retain the retainer member to the segment (Fig 21, bolt 376 is used to retain a spring/retainer 356 as a modification to Bell to the segment 354).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Bishop by having the hold down and its particulars as disclosed by Heiman because it is a known means of coupling the spring member to the segment (Para 0126).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bishop (US 20100071908 A1), in view of Heiman (US 20190360297 A1), further in view of Applicant Admitted Prior Art (AAPA).
Regarding claim 7, Bishop as modified further teaches wherein the segment includes holes to secure the hold down to the segment (Heiman: Fig 21, there are multiple bolts 376, with a corresponding hole 372 in the segment see Fig 22).
Bell as modified is silent on the holes being threaded.
Applicant Admitted Prior Art teaches that it is known to have bolt/screw/pin and similar fasteners be threaded into corresponding threaded holes.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Bishop as modified by having the holes be threaded as is known in the art because it would be a conventional means for allowing the coupling of elements via a bolt or similar fastener.
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 THEODORE N YAO whose telephone number is (571)272-8745. The examiner can normally be reached typically 8am-4pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, TARA SCHIMPF can be reached at (571) 270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THEODORE N YAO/Primary Examiner, Art Unit 3676