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 .
In view of the appeal brief filed on 4/16/2026, PROSECUTION IS HEREBY REOPENED. A hew ground of rejection is set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/TARA SCHIMPF/ Supervisory Patent Examiner, Art Unit 3676
Claim Rejections - 35 USC § 102
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 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, 2, and 4 are rejected under 35 U.S.C. 102a1 as being anticipated by Graham (5697445).
Graham discloses an isolation sleeve, comprising:
Re claim 1:
a tubular 66 having a first tubular end and a second tubular end (i.e., figs. 9 and 10); and
a first high-expansion seal 94 (i.e., from fig. 9 to fig. 10, it clearly shows the seal radially expands by at least 3%) located at least partially along an outer surface of the tubular proximate the first tubular end and a second high-expansion seal 76 (i.e., from fig. 9 to fig. 10, it clearly shows the seal radially expands by at least 3%) located at least partially along the outer surface of the tubular proximate the second tubular end, the first and second high-expansion seals configured to move between a radially retracted state for running the isolation sleeve in hole (i.e., fig. 9) and a radially expanded state (i.e., fig. 10) for engaging an inner surface of a frac window system 18.
Re claim 2, a depth mechanism 82 (i.e., fig. 10, it is anchored at the certain depth of the tubular 66) disposed at least partially along the outer surface of the tubular 66, the depth mechanism configured to engage a related depth mechanism (i.e., a potion of 18 that engages with 82) disposed along an inner surface of the frac window system.
Re claim 4, the first high- expansion seal 94 and the second high-expansion seal 76 are spaced such that they span a junction between a first wellbore 14 (i.e., fig. 1) and a secondary wellbore 24 that the frac window system is located (i.e., figs. 9 and 10).
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Graham.
Graham discloses the depth mechanism 82, but is silent on the depth mechanism positioned between the first high-expansion seal and the first tubular end. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to move the mechanism of Graham between the first high-expansion seal and the first tubular end to effectively support hanging weight of the tubular, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YONG-SUK (PHILIP) RO whose telephone number is (571)270-5466. The examiner can normally be reached Monday-Friday 8:00-4:30.
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, 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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/YONG-SUK (PHILIP) RO/Primary Examiner, Art Unit 3676
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