DETAILED ACTION
Acknowledgements
In the reply filed November 19, 2025, the applicant amended claims 1and 10.
Currently claims 1-7, 9-14 and 16 are under examination.
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, 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, 9-14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Gamper (U.S. Patent No. 5,865,253) alone.
Regarding Claim 1, Gamper discloses a borehole fishing tool, comprising:
A longitudinal axis that aligns with a borehole (Gamper: central axis of borehole)
A grapple (Gamper: inside 102) for fixedly attaching to a fish in a borehole;
A slip profile (Gamper: 121, 122, 128, 129) attached to each metal spring;
A plurality of teeth (Gamper: 65), mounted on the slip profile (Gamper: 121, 122, 128, 129), to engage the fish with the grapple (Gamper: inside 10); and
A connector (Gamper: 104) attached to the borehole fishing tool to connect the borehole fishing tool to a conveyor (Gamper: 105);
Gamper also teaches of prior art that comprises at least two metal springs (Gamper: 61: teaches that springs are associated with each slip), mounted in the grapple, to generate expansion and contraction for catching the fish in the borehole, wherein a direction of expansion and contraction of at least two metal springs is perpendicular to the longitudinal axis (direction of expansion and contraction is diagonal and therefore has a perpendicular component to its movement).
Because Gamper teaches both of a grapple for fixedly attaching to a fish in a borehole and teaches that it is well known in the art to incorporate springs into the slip arrangements of grapples, it would have been obvious to one skilled in the art before the effective filing date of the claimed invention to incorporate the springs of the prior art into the invention of Gamper in order to achieve the predictable result of biasing the slips into contact with the fish or other element to be grappled, which would have resulted in a fishing tool comprising springs wherein each of the at least two metal springs (Gamper: 61: teaches that springs are associated with each slip) is arranged such that the slip profile (Gamper: 121, 122, 128, 129) attached thereto is opposite to and facing another slip profile (Gamper: 121, 122, 128, 129) attached to another of the at least two metal springs (Gamper: 61: teaches that springs are associated with each slip: Figure 2A: slips are disposed around 109).
Regarding Claim 2, Gamper renders obvious the borehole fishing tool of claim 1, wherein the plurality of teeth (Gamper: 65) are designed so as to face uphole (Gamper: Figure 2A).
Regarding Claim 3, Gamper renders obvious the borehole fishing tool of claim 1, wherein the plurality of teeth (Gamper: 65) are designed each having unified angles (Gamper: Figure 2A: teeth have comparable angles).
Regarding Claim 4, Gamper renders obvious the borehole fishing tool of claim 1, wherein the grapple (Gamper: inside 10) comprises a neutral position (Gamper: springs uncompressed without fish) to allow the fish to enter an inner circumference (Gamper: inside 109).
Regarding Claim 5, Gamper renders obvious the borehole fishing tool of claim 1, wherein the grapple (Gamper: inside 10) comprises a latching position (Gamper: fish or tubing to enter 109 and compress springs) to allow the at least two metal springs (Gamper: 61: teaches that springs are associated with each slip) to be compressed to create space for the fish in the grapple (Gamper: inside 10).
Regarding Claim 6, Gamper renders obvious the borehole fishing tool of claim 4, wherein the inner circumference (Gamper: inside 109) is space inside the grapple (Gamper: inside 10).
Regarding Claim 7, Gamper renders obvious the borehole fishing tool of claim 1, wherein each of the at least two metal springs (Gamper: 61: teaches that springs are associated with each slip) are elastic.
Regarding Claim 9, Gamper renders obvious the borehole fishing tool of claim 1, wherein the conveyor (Gamper: 105) is selected from a group consisting of a a== string of drill pipe, and a string of wired drill pipe (Figure 1: teaches that overshot may be reliably connected to a work string via 32: Column 1: lines 27-29).
Regarding Claim 10, Gamper discloses a borehole fishing method, comprising:
attaching, to a conveyor (Gamper: 105), a borehole fishing tool having a grapple (Gamper: inside 10) and a longitudinal axis that aligns with a borehole (Gamper: central axis of borehole);
inserting the borehole fishing tool attached to the conveyor (Gamper: 105) into a borehole;
forming, using the grapple (Gamper: inside 102), a neutral position (Gamper: uncompressed without fish), to create space;
receiving, in the neutral position, a fish in between the two slips;
engaging, through a latching position (Gamper: fish or tubing to enter 109 and) in the grapple (Gamper: inside 10), a plurality of teeth (Gamper: 65) of a slip profile (Gamper: 121, 122, 128, 129) in the grapple (Gamper: inside 105) to the fish in the borehole;
engaging, guided by the slip profile (Gamper: 121, 122, 128, 129), the borehole fishing tool to the fish;
retracting the conveyor (Gamper: 105) from the borehole; and
raising the borehole fishing tool and the fish uphole until out of the borehole (Gamper: Column 1: lines 62 – 65).
Gamper also teaches prior art that discloses at least two metal springs (Gamper: 61: teaches that springs are associated with each slip) wherein a direction of expansion and contraction of at least two metal springs is perpendicular to the longitudinal axis (direction of expansion and contraction is diagonal and therefore has a perpendicular component to its movement)..
Because Gamper teaches both of a grapple for fixedly attaching to a fish in a borehole and teaches that it is well known in the art to incorporate springs into the slip arrangements of grapples, it would have been obvious to one skilled in the art before the effective filing date of the claimed invention to incorporate the springs of the prior art into the invention of Gamper in order to achieve the predictable result of biasing the slips into contact with the fish or other element to be grappled in each of the positions, which would have resulted in a fishing tool comprising springs wherein each of the at least two metal springs (Gamper: 61: teaches that springs are associated with each slip) is arranged such that the slip profile (Gamper: 121, 122, 128, 129) attached thereto is opposite to and facing another slip profile (Gamper: 121, 122, 128, 129) attached to another of the at least two metal springs (Gamper: 61: teaches that springs are associated with each slip: Figure 2A: slips are disposed around 109).
Regarding Claim 11, Gamper renders obvious the borehole fishing method of claim 10, wherein the conveyor (Gamper: 105) is selected from a group consisting of a string of drill pipe, and a string of wired drill pipe (Figure 1: teaches that overshot may be reliably connected to a work string via 32: Column 1: lines 27-29).
Regarding Claim 12, Gamper renders obvious the borehole fishing method of claim 10, wherein the latching position further comprises:
applying a force on the at least two metal springs (Gamper: 61: teaches that springs are associated with each slip) in the grapple (Gamper: inside 10) so as to compress the slip profile (Gamper: 121, 122, 128, 129) of each of the at least two metal springs (Gamper: 61: teaches that springs are associated with each slip).
Regarding Claim 13, Gamper renders obvious the borehole fishing method of claim 12, wherein the force is applied by the fish (fish entering the overshot compresses slip springs).
Regarding Claim 14, Gamper renders obvious the borehole fishing method of claim 10, wherein each of the at least two metal springs (Gamper: 61: teaches that springs are associated with each slip) are elastic.
Regarding Claim 16, Gamper renders obvious the borehole fishing method of claim 10 further comprising: selecting the conveyor (Gamper: 105) from a group consisting of a string of drill pipe, and a string of wired drill pipe (Figure 1: teaches that overshot may be reliably connected to a work string via 32: Column 1: lines 27-29).
Response to Arguments
Applicant's arguments filed November 19, 2025 have been fully considered but they are not persuasive.
Regarding claims 1 and 10, the applicant argues that Gamper fails to disclose all elements of the biasing mechanism, in that the metal springs do not expand and contract in a direction perpendicular to the longitudinal axis, but instead operate on a downward bias.
The applicant respectfully submits, that while there is a portion of the movement of the springs in a downward/upward manner, the angle of movement of said springs is diagonal, and therefore comprises movement also in a direction perpendicular to the longitudinal axis.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 3081123 (Bit grab).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOUGLAS S WOOD whose telephone number is (571)270-5954. The examiner can normally be reached Monday through Thursday 8:30 AM - 7:00 PM EST.
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DOUGLAS S. WOOD
Examiner
Art Unit 3672
/DOUGLAS S WOOD/Examiner, Art Unit 3672
/MATTHEW R BUCK/Primary Examiner, Art Unit 3672
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