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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/20/2026 has been entered.
Response to Arguments
Applicant's arguments filed on 05/12/2025 have been fully considered but they are not persuasive.
Regarding the 112a rejection of claim 1, applicant argues that the amendment of “said at least one conductor receptacle being further configured to define a disengagement threshold for each of the respective exposed ends of said first and second of said one or more cable conductors wherein a force in excess of said disengagement threshold applied to said exposed end of said second of said one or more cable conductors causes said exposed end of said second of said one or more cable conductors to disengage from said at least one conductor receptacle…, wherein said upper assembly cap is configured to maintain engagement with said upper retention body when said force causes one of said exposed ends to disengage from said at least one conductor receptacle” has written description support in [0024] of the specification. Applicant cites the discussion of “the set screw 213” and how one of ordinary skill in the art would understand that forces exceeding that applied by the set screw would cause release.
Examiner respectfully disagree. There is no explicit discussion of a “disengagement threshold” or a “disengagement threshold applied to one of said exposed end of said second of said one or more cable conductors” recited in the specification. [0024] merely states that “torque applied to the set screws will dictate the amount of load that can be applied to the ESP cables before they are released from the lugs during a failure of other emergency events”. There is no discussion of a conductor receptacle being configured to define a disengagement threshold or any disengagement force exceeding a designated force threshold, wherein said upper assembly cap is configured to maintain engagement with said upper retention body when said force causes one of said exposed ends to disengage from said at least one conductor receptacle. In other words, there is no discussion of a “threshold” force in the entire specification such that when exceeded, it causes disengagement of respective exposed ends of a first and second cable conductors. Therefore, this claim limitation lacks written description support.
Applicant’s arguments with respect to the 103 rejection over Kennedy (U.S. 2021/0062589) have been considered but are moot because the new ground of rejection does not rely on Kennedy applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. See the new ground of rejection of claim 1 in view of Gould (U.S. 4,721,355).
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 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 17/658555 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 is generic to all that is recited in claim 1 of ‘555. In other words, claim 1 of ‘555 fully encompasses the subject matter of claim 1 and therefore anticipates claim 1. Since claim 1 is anticipated by claim 1 of the copending application ‘555, it is not patentably distinct from claim 1. Thus, the invention of claim 1 of ‘555 is in effect a “species” of the “generic” invention of claim 1. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 1 is anticipated (fully encompassed) by claim 1 of ‘555 of the patent, claim 1 is not patentably distinct from claim 1, regardless of any additional subject matter present in claim 1 of ‘555.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, the limitation of “one of said exposed ends” lacks proper antecedent basis.
Appropriate correction is required.
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 1-7 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.
Regarding claim 1: Claim 1 has been amended to recite: “said at least one conductor receptacle being further configured to define a disengagement threshold for each of the respective exposed ends of said first and second of said one or more cable conductors wherein a force in excess of said disengagement threshold applied to said exposed end of said second of said one or more cable conductors causes said exposed end of said second of said one or more cable conductors to disengage from said at least one conductor receptacle…, wherein said upper assembly cap is configured to maintain engagement with said upper retention body when said force causes one of said exposed ends to disengage from said at least one conductor receptacle”. Applicant, in their remarks, state that support for this amendment can be found in [0024] and [0027] of the specification as filed. Specifically, applicant states one of ordinary skill in the art would understand that forces exceeding that applied by the set screw 213 would necessarily result in release.
However, upon review of the cited paragraph, there is no explicit discussion of a “disengagement threshold” and a “disengagement threshold applied to one of said exposed end of said second of said one or more cable conductors” recited in the specification. [0024] merely states that “torque applied to the set screws will dictate the amount of load that can be applied to the ESP cables before they are released from the lugs during a failure of other emergency events”. There is no discussion of a conductor receptacle being configured to define a disengagement threshold or any disengagement force exceeding a designated force threshold, wherein said upper assembly cap is configured to maintain engagement with said upper retention body when said force causes one of said exposed ends to disengage from said at least one conductor receptacle. Therefore, the claim amendment lacks written description support. Similarly, there is no support for the limitation of claim 5 (i.e., one or more conductor retention elements adapted to define said designated threshold).
Regarding claim 1: Claim 1 recites “a further downhole second of said one or more cable conductors”. Upon review of the specification, there is no discussion of a second cable conductor that is located further downhole. Looking at the drawings, the first and second cable conductors are located in the tubing hanger which is at the wellbore surface and not in a downhole location below ground. Both cable conductors are located at surface inside the tubing hanger. Therefore, there is no written description support for a second cable conductor located further downhole.
Claims 2-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as being dependent on rejected claim 1.
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 (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 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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Anderson (U.S. 2020/0102796A1), in view of Gould (U.S. 4,721,355).
Regarding claim 1, Anderson discloses a wellhead electrical connector assembly (see figs. 1 and 14; also refer to para 0023) comprising: a substantially cylindrical outer housing body (24, see fig. 14 and refer to para 0030), said outer housing body (24) being configured to substantially contain a first retention assembly (16, 18, 26; “splice 48”, see figs. 7 and 9), wherein said first retention assembly (16, 18, 26, “splice 48”; see figs. 7, 9; refer to para 0033 and 0035 ) comprises:
a substantially cylindrical inner housing body (18; “18” is inside “16” as shown in fig. 9):
at least one conductor receptacle (16, see fig. 2 with “16” receiving conductor 54), said at least one conductor receptacle (16) being configured to engage (as shown in fig. 4) with one or more cable conductors (“insulating layer 50” comprising “conductor 54”), said at least one conductor receptacle (16) being further configured to securely couple (by reason of the cable conductors passing through the bore of conductor receptable 16) an exposed end (“pin 46”) of a first of said one or more cable conductors to an exposed end of a further downhole second of said one or more cable conductors (as shown in fig. 4, the “pin 46” of one conductor connects to a “pin 46” of another conductor via ‘splice 48”; also as shown in fig. 14, the second cale conductor extends into the wellbore further downhole as shown by 52),
an upper assembly cap (38, fig. 12 and 14. “38” is on the upper end of the assembly housing 24) configured to engage with a first end of said outer housing body (24; see fig. 12); and
an upper retention body (as broadly claimed “O-ring 66” can be considered a retention body because it retains the “cap 38” within 90, fig. 12, 14, and para 0039) configured to engage with said upper assembly cap (38; see fig. 12), said upper retention body (66) being further configured to be securely contained within a tubing hanger (90; see figs. 12, 14, and refer to para 0039).
However, Anderson fails to teach that said at least one conductor receptacle configured to define a disengagement threshold for each of the respective exposed ends of said first and second of said one or more cable conductors wherein a force in excess of said disengagement threshold applied to said exposed end of said second of said one or more cable conductors causes said exposed end of said second of said one or more cable conductors to disengage from said at least one conductor receptacle, wherein said upper assembly cap is configured to maintain engagement with said upper retention body when said force causes one of said exposed ends to disengage from said at least one conductor receptacle.
Gould teaches a wireline cable conductor (100, fig. 1) comprising first and second cable conductor pins (24, 26, figs. 1 and 3-5) connected by a connection link (25, see fig. 5) wherein the connection link is designed as a breakable link which permits the extraction of the wireline conductor when the cable is trapped or wedged in a wellbore (refer to col. 5, lines 11-21).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrical connector assembly of Anderson to include an emergency release feature, wherein said at least one conductor receptacle is configured to define a disengagement threshold for each of the respective exposed ends of said first and second of said one or more cable conductors wherein a force in excess of said disengagement threshold applied to said exposed end of said second of said one or more cable conductors causes said exposed end of said second of said one or more cable conductors to disengage from said at least one conductor receptacle, wherein said upper assembly cap is configured to maintain engagement with said upper retention body when said force causes one of said exposed ends to disengage from said at least one conductor receptacle, as taught by Gould, for the purpose of extracting the wireline conductor when the cable is trapped or wedged in a wellbore (refer to para 0118).
Regarding claim 2, the combination of Anderson and Gould teach all the features of this claim as applied to claim 1 above; Anderson further discloses that the outer housing is attached to the upper assembly cap with set screws (88; refer to para 0039), but does not disclose that they are in threaded engagement with one another (i.e., said outer housing body has a first threaded outer housing section, wherein said upper assembly cap has a first threaded inner cap section, said first threaded outer housing section and said first threaded inner cap are configured for threaded engagement with one another).
However, Anderson does disclose installing the lower cap (10) to the housing (24) with threads (refer to para 0031).
As Anderson teaches two ways to attaching a cap to a housing, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the set screws with threads for the predictable result of securing the cap to the housing.
Regarding claim 3, the combination of Anderson and Gould teach all the features of this claim as applied to claim 1 above; Anderson further discloses a lower assembly cap (10, fig. 11 and 14) configured to engage with a second end of said outer housing body (24; see figs. 11 and 14).
Regarding claim 4, the combination of Anderson and Gould teach all the features of this claim as applied to claim 1 above; Anderson further discloses a second retention assembly (12 and 14, see figs. 2 and 9) comprising a primary lower sealing element (14; refer to para 0031) configured to couple to said one or more cable conductors (see figures 2 and 9), wherein said outer housing body (24) is further configured to substantially contain said second retention assembly when said lower assembly cap (10) is engaged to said second end of said outer housing body (see fig. 9 and refer to para 0031. The second retention assembly abuts the outer housing and is thus substantially contained by the housing in conjunction with nut 10).
Regarding claim 5, the combination of Anderson and Gould teach all the features of this claim as applied to claim 1 above; Anderson further discloses wherein said at least one conductor receptacle comprises one or more conductor retention elements (26) adapted to define said disengagement threshold (as modified by Gould. Refer to the rejection of claim 1 above).
Regarding claim 6, the combination of Anderson and Gould teach all the features of this claim as applied to claim 5 above; Anderson further discloses wherein said one or more conductor retention elements is at least one set screw (26; refer to para 0033).
Regarding claim 7, the combination of Anderson and Gould teach all the features of this claim as applied to claim 6 above; Anderson further discloses said at least one set screw is flat-headed (see figure 7, which shows a set screw that is flush with the outer cylindrical housing and thus flat-headed).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. A. W. Johnson (U.S. 3,517,740).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YANICK A AKARAGWE whose telephone number is (469)295-9298. The examiner can normally be reached M-TH 7:30-5:30.
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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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/YANICK A AKARAGWE/ Primary Examiner, Art Unit 3672