DETAILED ACTION
Claim(s) 1-10, 12, 15-26, 28 and 31-32 is/are pending. Claim(s) 11, 13, 27 and 29 is/are withdrawn from consideration.
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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-10, 12, 15-26, 28 and 31-32 in the reply filed on 09/11/2023 is acknowledged.
Response to Arguments
The most recent 35 U.S.C. § 112 rejections have been withdrawn in light of the current claim amendments. However, there are new 35 U.S.C. § 112 rejections herein in light of the amended claims.
Applicant's arguments filed 01/28/2026 have been fully considered but they are not persuasive.
Examiner respectfully disagrees with respect to the arguments by Applicant’s representative introduced in pages 9-11 of the arguments dated 01/28/2026. Firstly, Examiner agrees with Applicant’s representative’s assertion of the benefits (i.e., providing the interconnected grooves to reduce expansion force requirement and increase tensile strength via crack propagation mitigation) introduced in Jackson of having the slip teeth/diamond grid reinforcement, as shown in figures 1-2 of Jackson. Examiner also agrees that modifying the actual structural embodiment of the specifically designed slip teeth/diamond grid reinforcement (itself) would likely be improper and would likely teach away from what Jackson teaches. However, the 35 U.S.C. 103 rejection is/was not taught to modify the slip teeth/diamond grid reinforcement (itself), as taught by Jackson. Rather, the modification was to essentially duplicate slip teeth/diamond grid reinforcement along the length of an expandable tubular, as taught by Dilber (see paragraph [0011] and figures 1-2 and 4 of Dilber), as it was considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, for the express motivation(s) as detailed in the rejection(s) herein. Furthermore, Examiner reiterates, that though Dilber teaches its own slip teeth reinforcement embodiments (i.e., as individually shown in figure 3), the modification did not rely on or was made to modify the teachings of Dilber’s own slip teeth reinforcement embodiment(s) (i.e., comprising 4A, 4B, 5 — as shown in figure 3). If Applicant’s representative is stating that the combination of both the references are incompatible due to one teaching away from another (or, something of the like), then detailed arguments need to be presented by the Applicant’s representative, as Examiner respectfully fails to see why a groove and corresponding slip teeth configuration (slip teeth/diamond grid reinforcement), as taught by Jackson, cannot be duplicated to teach separate “first and second separate and not interconnected grooves” each comprising “a plurality of discrete slip teeth”, as taught by Dilber.
Lastly, Examiner notes that the amendments to claims 1 and 17 do not overcome the most recent prior art references as it is still considered obvious to combine, in light of Examiner’s broadest reasonable interpretation. Examiner suggests incorporating more claim language (i.e. structural and/or functional) in light of the specification to overcome the prior art rejection and advance prosecution, preferably towards an allowance.
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 1-10, 12, 15-26, 28 and 31-32 is/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 (and, similarly claim 17) recites: “[...] wherein each plurality of discrete slip teeth is arranged circumferentially within its respective shallow groove so as to follow the curvature of that groove...”. Though the instant specification provides support for a plurality of grooves circumferentially distributed about a tubular, wherein each of the grooves comprise a respective discrete slip tooth (see disclosures corresponding to embodiments of figures 1-8), there is a lack of support for the individual groove (singular) itself to be curved, as claimed. Examiner notes that unless specified that the instant drawings are to scale, arguments based on generic drawing features are of little value. See MPEP 2125. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement." Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002). Due to claims 1 and 17 being rejected under 35 U.S.C. § 112(a), the corresponding dependent claims are also rejected.
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 1-10, 12, 15-26, 28 and 31-32 is/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 (and, similarly claim 17) recites: “[...] wherein each plurality of discrete slip teeth is arranged circumferentially within its respective shallow groove so as to follow the curvature of that groove...”. Examiner notes that the claim is confusing in light of the instant specification due to the lack of written description as to what is meant by “so as to follow the curvature of that groove” (see 35 U.S.C. § 112(a) rejection herein). One skilled in the art could interpret that the groove (itself) to have a curve or the plurality of the grooves to follow a curvature of the circumferential tubular. For examination purposes, the Examiner will take its broadest reasonable interpretation (BRI) in light of the instant specification and will assume for the latter. Due to claims 1 and 17 being rejected under 35 U.S.C. § 112(b), the corresponding dependent claims are also rejected.
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) 1, 5, 7, 10, 12, 15-17, 21, 23, 26, 28 and 31-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jackson et al. (US Publication 2004/0244994 A1; herein “Jackson”) in view of Dilber et al. (US Publication Number 2015/0068733 A1; herein “Dilber”).
In regard to claim 1, Jackson discloses: An expandable liner hanger assembly (as shown in figures 4-5), comprising:
a radially expandable tubular (200) defining an interior passageway (i.e., bore of 200) and an exterior surface (i.e., radially outermost surface of 200), the radially expandable tubular having a shallow groove (210) located in the exterior surface (figures 2 & 4-5); and
a plurality of discrete slip teeth (220) placed within the shallow groove circumferentially around the radially expandable tubular (paragraph [0028] and figures 2 & 4-5), wherein each plurality of discrete slip teeth is arranged circumferentially (i.e., circumferentially about the tubular 200 — figure 1) within its respective shallow groove so as to follow the curvature of that groove (note 35 U.S.C. § 112 rejections herein and BRI | furthermore, paragraph [0028] cites: “[...] carbide inserts 220 are press-fitted into preformed apertures in the outer surface of tubular body 200” — also, see figures 1-2), the radially expandable tubular configured to move from an initial state wherein the plurality of discrete slip teeth are not in contact with a wellbore tubular (400 — figure 4) to an expanded state wherein the plurality of discrete slip teeth are in gripping engagement with the wellbore tubular (figure 5).
However, Jackson is silent in regard to: the radially expandable tubular having first and second separate and not interconnected shallow grooves located in the exterior surface; and
a plurality of discrete slip teeth placed within each of the first and second separate shallow grooves circumferentially around the radially expandable tubular.
Nonetheless, Dilber introduces a downhole hanger tubular (3) comprising teeth (4B) which radially, outwardly penetrate in to the casing (1) adjacent thereof (figures 1-2, 4), as similarly taught by Jackson. Dilber teaches: the radially expandable tubular having first and second separate and not interconnected shallow grooves located in the exterior surface; and a plurality of discrete slip teeth placed within each of the first and second separate shallow grooves circumferentially around the radially expandable tubular (figures 1-2 and 4 shows a plurality/series of separate and not interconnected patterns of shallow grooves 5 which comprise teeth 4 in each of the separate shallow grooves about the hanger tubular 3).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the liner hanger comprising a single pattern of shallow grooves holding gripping inserts, as taught by Jackson, to include for a series of separate and not interconnected patterns of shallow grooves holding gripping inserts along the liner hanger, as taught by Dilber, since Dilber teaches that “[...] while three parallel bands are illustrated, differing number of band can be used. The width of the bands can be the same or different or the bands can be a series of spirals that are circumferentially spaced or a single spiral that wraps at least 360 degrees.” In other words, Dilber is teaching that these are just known configurations for attaching/gripping the teeth of expandable liner hanger to the surrounding tubular for hanging purposes (see abstract and paragraph [0001] of Dilber). With that being said, it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. See MPEP 2144.04, section VI, subsection B.
In regard to claim 5, Jackson further discloses: wherein the plurality of discrete slip teeth are at least four discrete slip teeth placed circumferentially around the radially expandable tubular (as shown in figure 1).
In regard to claim 7, Jackson further discloses: wherein the plurality of discrete slip teeth are at least eighteen discrete slip teeth placed circumferentially around the radially expandable tubular (as shown in figure 1).
In regard to claim 10, in view of modification of claim 1, Jackson further discloses: wherein the plurality of discrete slip teeth are each individually press fit within the shallow groove (paragraph [0028]). Dilber further teaches the plurality of shallow grooves (see claim 1 rejection).
In regard to claim 12, in view of modification of claim 1, Jackson further discloses: wherein the plurality of discrete slip teeth are coupled to each other using an elastic material (230) that holds the plurality of discrete slip teeth within the shallow groove (paragraph [0030] and figure 1). Dilber further teaches the plurality of shallow grooves (see claim 1 rejection).
In regard to claim 15, Jackson further discloses: one or more continuous anchoring ridges (i.e., distal region of discrete slip teeth 220) extending radially outward from the radially expandable tubular (as shown in the annotated figure 2 below).
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In regard to claim 16, in view of modification of the preceding claim(s), Jackson further discloses: wherein the one or more continuous anchoring ridges (as taught by Jackson) are positioned between a first set of plurality of discrete slip teeth and a second set of plurality of discrete slip teeth (Examiner notes that since the “continuous anchoring ridges” are being read as distal region of discrete slip teeth 220, it would be evident that the ridges are positioned longitudinally between, i.e., in the middle of, the uphole end of the plurality of discrete slip teeth — as shown in figure 1 of Jackson. Furthermore, Dilber teaches a plurality of patterns in which each pattern comprise a shallow groove with a set of slip teeth in the each of the shallow groove).
In regard to claim 17, Jackson discloses: A well system (paragraph [0003]), comprising:
a wellbore (300) extending through one or more subterranean formations (i.e., subterranean formation adjacent 300 — see paragraph [0034] and figure 5);
wellbore tubular (400) positioned within the wellbore (figure 4); and
an expandable liner hanger assembly positioned within the wellbore tubular (as shown in figures 4-5), the expandable liner hanger assembly including:
a radially expandable tubular (200) defining an interior passageway (i.e., bore of 200) and an exterior surface (i.e., radially outermost surface of 200), the radially expandable tubular having a shallow groove (210) located in the exterior surface (figures 2 & 4-5); and
a plurality of discrete slip teeth (220) placed within the shallow groove circumferentially around the radially expandable tubular (paragraph [0028] and figures 2 & 4-5), wherein each plurality of discrete slip teeth is arranged circumferentially (i.e., circumferentially about the tubular 200 — figure 1) within its respective shallow groove so as to follow the curvature of that groove (note 35 U.S.C. § 112 rejections herein and BRI | furthermore, paragraph [0028] cites: “[...] carbide inserts 220 are press-fitted into preformed apertures in the outer surface of tubular body 200” — also, see figures 1-2), the radially expandable tubular configured to move from an initial state wherein the plurality of discrete slip teeth are not in contact with a wellbore tubular (400 — figure 4) to an expanded state wherein the plurality of discrete slip teeth are in gripping engagement with the wellbore tubular (figure 5).
However, Jackson is silent in regard to: the radially expandable tubular having first and second separate and not interconnected shallow grooves located in the exterior surface; and
a plurality of discrete slip teeth placed within each of the first and second separate shallow grooves circumferentially around the radially expandable tubular.
Nonetheless, Dilber introduces a downhole hanger tubular (3) comprising teeth (4B) which radially, outwardly penetrate in to the casing (1) adjacent thereof (figures 1-2, 4), as similarly taught by Jackson. Dilber teaches: the radially expandable tubular having first and second separate and not interconnected shallow grooves located in the exterior surface; and a plurality of discrete slip teeth placed within each of the first and second separate shallow grooves circumferentially around the radially expandable tubular (figures 1-2 and 4 shows a plurality/series of separate and not interconnected patterns of shallow grooves 5 which comprise teeth 4 in each of the separate shallow grooves about the hanger tubular 3).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the liner hanger comprising a single pattern of shallow grooves holding gripping inserts, as taught by Jackson, to include for a series of separate and not interconnected patterns of shallow grooves holding gripping inserts along the liner hanger, as taught by Dilber, since Dilber teaches that “[...] while three parallel bands are illustrated, differing number of band can be used. The width of the bands can be the same or different or the bands can be a series of spirals that are circumferentially spaced or a single spiral that wraps at least 360 degrees.” In other words, Dilber is teaching that these are just known configurations for attaching/gripping the teeth of expandable liner hanger to the surrounding tubular for hanging purposes (see abstract and paragraph [0001] of Dilber). With that being said, it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. See MPEP 2144.04, section VI, subsection B.
In regard to claim 21, Jackson further discloses: wherein the plurality of discrete slip teeth are at least four discrete slip teeth placed circumferentially around the radially expandable tubular (as shown in figure 1).
In regard to claim 23, Jackson further discloses: wherein the plurality of discrete slip teeth are at least eighteen discrete slip teeth placed circumferentially around the radially expandable tubular (as shown in figure 1).
In regard to claim 26, Jackson further discloses: wherein the plurality of discrete slip teeth are each individually press fit within the shallow groove (paragraph [0028]). Dilber further teaches the plurality of shallow grooves (see claim 1 rejection).
In regard to claim 28, Jackson further discloses: wherein the plurality of discrete slip teeth are coupled to each other using an elastic material (230) that holds the plurality of discrete slip teeth within the shallow groove (paragraph [0030] and figure 1). Dilber further teaches the plurality of shallow grooves (see claim 1 rejection).
In regard to claim 31, Jackson further discloses: one or more continuous anchoring ridges (i.e., distal region of discrete slip teeth 220) extending radially outward from the radially expandable tubular (as shown in the annotated figure 2 below).
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In regard to claim 32, Jackson further discloses: wherein the one or more continuous anchoring ridges are positioned between a first set of plurality of discrete slip teeth and a second set of plurality of discrete slip teeth (Examiner notes that since the “continuous anchoring ridges” are being read as distal region of discrete slip teeth 220, it would be evident that the ridges are positioned longitudinally between, i.e., in the middle of, the uphole end of the plurality of discrete slip teeth — as shown in figure 1 of Jackson. Furthermore, Dilber teaches a plurality of patterns in which each pattern comprise a shallow groove with a set of slip teeth in the each of the shallow groove).
Claim(s) 2-4 and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jackson et al. (US Publication 2004/0244994 A1; herein “Jackson”) in view of Dilber et al. (US Publication Number 2015/0068733 A1; herein “Dilber”) in further view of Potts et al. (US Publication 2018/0112486 A1; herein “Potts”).
In regard to claim 2, Jackson discloses: wherein each of the plurality of discrete slip teeth has a yield strength (“…fabrication materials for the inserts 220 include ceramic materials (such as carbide) and hardened metal alloy materials” — paragraph [0029]).
However, Jackson in view of Dilber are silent in regard to: wherein each of the plurality of discrete slip teeth has a minimum yield strength of at least 175ksi.
Nonetheless, Potts introduces a downhole tool which is secured in a wellbore via, e.g., slips, buttons, die inserts. Potts teaches that “friction enhancing structures such as buttons, slips and die inserts” may include material, such as, carburized steel. Also, Potts equates ceramic materials as equal to carburized steel (paragraph [0045]). Examiner notes that the instant application’s specification (i.e., paragraphs [0028, 0037]) indicate that the “carburized steel” has a yield strength of 300 ksi.
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to simply substitute the material of the discrete slip teeth, as taught by Jackson in view of Dilber, with carburized steel, as taught by Potts, to yield the predicable result of improving resistance to slippage of downhole tool(s) within the well casing (paragraph [0045] of Potts).
In regard to claim 3, Jackson discloses: wherein each of the plurality of discrete slip teeth has a yield strength (“…fabrication materials for the inserts 220 include ceramic materials (such as carbide) and hardened metal alloy materials” — paragraph [0029]).
However, Jackson in view of Dilber are silent in regard to: wherein each of the plurality of discrete slip teeth has a minimum yield strength of at least 200ksi.
Nonetheless, Potts introduces a downhole tool which is secured in a wellbore via, e.g., slips, buttons, die inserts. Potts teaches that “friction enhancing structures such as buttons, slips and die inserts” may include material, such as, carburized steel. Also, Potts equates ceramic materials as equal to carburized steel (paragraph [0045]). Examiner notes that the instant application’s specification (i.e., paragraphs [0028, 0037]) indicate that the “carburized steel” has a yield strength of 300 ksi.
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to simply substitute the material of the discrete slip teeth, as taught by Jackson in view of Dilber, with carburized steel, as taught by Potts, to yield the predicable result of improving resistance to slippage of downhole tool(s) within the well casing (paragraph [0045] of Potts).
In regard to claim 4, Jackson discloses: wherein each of the plurality of discrete slip teeth has a yield strength (“…fabrication materials for the inserts 220 include ceramic materials (such as carbide) and hardened metal alloy materials” — paragraph [0029]).
However, Jackson in view of Dilber are silent in regard to: wherein each of the plurality of discrete slip teeth has a minimum yield strength of at least 250ksi.
Nonetheless, Potts introduces a downhole tool which is secured in a wellbore via, e.g., slips, buttons, die inserts. Potts teaches that “friction enhancing structures such as buttons, slips and die inserts” may include material, such as, carburized steel. Also, Potts equates ceramic materials as equal to carburized steel (paragraph [0045]). Examiner notes that the instant application’s specification (i.e., paragraphs [0028, 0037]) indicate that the “carburized steel” has a yield strength of 300 ksi.
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to simply substitute the material of the discrete slip teeth, as taught by Jackson in view of Dilber, with carburized steel, as taught by Potts, to yield the predicable result of improving resistance to slippage of downhole tool(s) within the well casing (paragraph [0045] of Potts).
In regard to claim 18, Jackson discloses: wherein each of the plurality of discrete slip teeth has a yield strength (“…fabrication materials for the inserts 220 include ceramic materials (such as carbide) and hardened metal alloy materials” — paragraph [0029]).
However, Jackson in view of Dilber are silent in regard to: wherein each of the plurality of discrete slip teeth has a minimum yield strength of at least 175ksi.
Nonetheless, Potts introduces a downhole tool which is secured in a wellbore via, e.g., slips, buttons, die inserts. Potts teaches that “friction enhancing structures such as buttons, slips and die inserts” may include material, such as, carburized steel. Also, Potts equates ceramic materials as equal to carburized steel (paragraph [0045]). Examiner notes that the instant application’s specification (i.e., paragraphs [0028, 0037]) indicate that the “carburized steel” has a yield strength of 300 ksi.
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to simply substitute the material of the discrete slip teeth, as taught by Jackson in view of Dilber, with carburized steel, as taught by Potts, to yield the predicable result of improving resistance to slippage of downhole tool(s) within the well casing (paragraph [0045] of Potts).
In regard to claim 19, Jackson discloses: wherein each of the plurality of discrete slip teeth has a yield strength (“…fabrication materials for the inserts 220 include ceramic materials (such as carbide) and hardened metal alloy materials” — paragraph [0029]).
However, Jackson in view of Dilber are silent in regard to: wherein each of the plurality of discrete slip teeth has a minimum yield strength of at least 200ksi.
Nonetheless, Potts introduces a downhole tool which is secured in a wellbore via, e.g., slips, buttons, die inserts. Potts teaches that “friction enhancing structures such as buttons, slips and die inserts” may include material, such as, carburized steel. Also, Potts equates ceramic materials as equal to carburized steel (paragraph [0045]). Examiner notes that the instant application’s specification (i.e., paragraphs [0028, 0037]) indicate that the “carburized steel” has a yield strength of 300 ksi.
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to simply substitute the material of the discrete slip teeth, as taught by Jackson in view of Dilber, with carburized steel, as taught by Potts, to yield the predicable result of improving resistance to slippage of downhole tool(s) within the well casing (paragraph [0045] of Potts).
In regard to claim 20, Jackson discloses: wherein each of the plurality of discrete slip teeth has a yield strength (“…fabrication materials for the inserts 220 include ceramic materials (such as carbide) and hardened metal alloy materials” — paragraph [0029]).
However, Jackson in view of Dilber are silent in regard to: wherein each of the plurality of discrete slip teeth has a minimum yield strength of at least 250ksi.
Nonetheless, Potts introduces a downhole tool which is secured in a wellbore via, e.g., slips, buttons, die inserts. Potts teaches that “friction enhancing structures such as buttons, slips and die inserts” may include material, such as, carburized steel. Also, Potts equates ceramic materials as equal to carburized steel (paragraph [0045]). Examiner notes that the instant application’s specification (i.e., paragraphs [0028, 0037]) indicate that the “carburized steel” has a yield strength of 300 ksi.
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to simply substitute the material of the discrete slip teeth, as taught by Jackson in view of Dilber, with carburized steel, as taught by Potts, to yield the predicable result of improving resistance to slippage of downhole tool(s) within the well casing (paragraph [0045] of Potts).
Claim(s) 6, 8, 22 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jackson et al. (US Publication 2004/0244994 A1; herein “Jackson”) in view of Dilber et al. (US Publication Number 2015/0068733 A1; herein “Dilber”) in further view of Davies et al. (US Publication 2019/0316434 A1; herein “Davies”).
In regard to claim 6, Jackson discloses: wherein the at least four discrete slip teeth are placed circumferentially equidistant (the teeth 220 appear be equidistant to another, as shown in figure 1) around the radially expandable tubular (as shown in figure 1).
However, Jackson in view of Dilber are explicitly silent in regard to: wherein the discrete slip teeth are placed equidistant around the radially expandable tubular.
Nonetheless, Davies introduces a downhole tool comprising of slip teeth (figures 13). Paragraph [0285] introduces “…the inserts 1378 may be equidistantly spaced apart”.
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the positioning of the slip teeth, as taught by Jackson in view of Dilber, with the slip teeth being placed equidistant around the radially expandable tubular, as taught by Davies, to yield the predictable result of providing alternative patterns/configurations of the arrangement of the slop teeth/inserts, e.g., triangular pattern, alternating back-n-fort pattern, equidistant pattern, etc. (paragraph [0287] of Davies).
In regard to claim 8, Jackson discloses: wherein the at least eighteen discrete slip teeth are placed circumferentially equidistant (the teeth 220 appear be equidistant to another, as shown in figure 1) around the radially expandable tubular (as shown in figure 1).
However, Jackson in view of Dilber are explicitly silent in regard to: wherein the discrete slip teeth are placed equidistant around the radially expandable tubular.
Nonetheless, Davies introduces a downhole tool comprising of slip teeth (figures 13). Paragraph [0285] of Davies introduces “…the inserts 1378 may be equidistantly spaced apart”.
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the positioning of the slip teeth, as taught by Jackson in view of Dilber, with the slip teeth being placed equidistant around the radially expandable tubular, as taught by Davies, to yield the predictable result of providing alternative patterns/configurations of the arrangement of the slop teeth/inserts, e.g., triangular pattern, alternating back-n-fort pattern, equidistant pattern, etc. (paragraph [0287] of Davies).
In regard to claim 22, Jackson discloses: wherein the at least four discrete slip teeth are placed circumferentially equidistant (the teeth 220 appear be equidistant to another, as shown in figure 1) around the radially expandable tubular (as shown in figure 1).
However, Jackson in view of Dilber are explicitly silent in regard to: wherein the discrete slip teeth are placed equidistant around the radially expandable tubular.
Nonetheless, Davies introduces a downhole tool comprising of slip teeth (figures 13). Paragraph [0285] introduces “…the inserts 1378 may be equidistantly spaced apart”.
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the positioning of the slip teeth, as taught by Jackson in view of Dilber, with the slip teeth being placed equidistant around the radially expandable tubular, as taught by Davies, to yield the predictable result of providing alternative patterns/configurations of the arrangement of the slop teeth/inserts, e.g., triangular pattern, alternating back-n-fort pattern, equidistant pattern, etc. (paragraph [0287] of Davies).
In regard to claim 24, Jackson discloses: wherein the at least eighteen discrete slip teeth are placed circumferentially equidistant (the teeth 220 appear be equidistant to another, as shown in figure 1) around the radially expandable tubular (as shown in figure 1).
However, Jackson in view of Dilber are explicitly silent in regard to: wherein the discrete slip teeth are placed equidistant around the radially expandable tubular.
Nonetheless, Davies introduces a downhole tool comprising of slip teeth (figures 13). Paragraph [0285] of Davies introduces “…the inserts 1378 may be equidistantly spaced apart”.
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the positioning of the slip teeth, as taught by Jackson in view of Dilber, with the slip teeth being placed equidistant around the radially expandable tubular, as taught by Davies, to yield the predictable result of providing alternative patterns/configurations of the arrangement of the slop teeth/inserts, e.g., triangular pattern, alternating back-n-fort pattern, equidistant pattern, etc. (paragraph [0287] of Davies).
Claim(s) 9 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jackson et al. (US Publication 2004/0244994 A1; herein “Jackson”) in view of Dilber et al. (US Publication Number 2015/0068733 A1; herein “Dilber”) in further view of Davies et al. (US Publication 2019/0316434 A1; herein “Davies”) and Davis et al. (US Publication 2019/0218873 A1; herein “Davis”).
In regard to claim 9, Jackson in view of Dilber and Davies discloses claim 8 above.
However, Jackson in view of Dilber and Davies are silent in regard to: wherein the discrete slip teeth each extend circumferentially around the radially expandable tubular an angle (Γ) of 10 degrees or less.
Nonetheless, Davis teaches a downhole tool comprising of slip teeth (figure 1). Davis introduces: wherein the discrete slip teeth (84) each extend circumferentially around the radially expandable tubular (20 — figure 1) an angle (Γ) of 10 degrees or less (the outer surface 86 of each discrete slip teeth 1378, which extend circumferentially around the tubular 20, has an angle “α” from about 5 degrees to about 45 degrees — paragraph [0025]).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to simply substitute the discrete slip teeth, as taught by Jackson in view of Dilber and Davies, with discrete slip teeth each extending circumferentially around the radially expandable tubular an angle (Γ) of 10 degrees or less, as taught by Davis, to yield the predictable result of “setting or anchoring a downhole drillable packer, bridge plug and frac plug tools” (paragraph [0001] of Davis).
In regard to claim 25, Jackson in view of Dilber and Davies discloses claim 8 above.
However, Jackson in view of Dilber and Davies are silent in regard to: wherein the discrete slip teeth each extend circumferentially around the radially expandable tubular an angle (Γ) of 10 degrees or less.
Nonetheless, Davis teaches a downhole tool comprising of slip teeth (figure 1). Davis introduces: wherein the discrete slip teeth (84) each extend circumferentially around the radially expandable tubular (20 — figure 1) an angle (Γ) of 10 degrees or less (the outer surface 86 of each discrete slip teeth 1378, which extend circumferentially around the tubular 20, has an angle “α” from about 5 degrees to about 45 degrees — paragraph [0025]).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to simply substitute the discrete slip teeth, as taught by Jackson in view of Dilber and Davies, with discrete slip teeth each extending circumferentially around the radially expandable tubular an angle (Γ) of 10 degrees or less, as taught by Davis, to yield the predictable result of “setting or anchoring a downhole drillable packer, bridge plug and frac plug tools” (paragraph [0001] of Davis).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/NEEL GIRISH PATEL/Primary Patent Examiner, Art Unit 3676
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