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 Amendment
The Amendment filed 9/30/25 has been entered. Claims 1-21 and 31-39 remain pending in the application, of which claim 21 is withdrawn. Claims 22-30 have been canceled and claims 31-39 are new. As such, the claims being examined are claims 1-20 and 31-39.
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 37 is 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 pre-AIA the applicant regards as the invention. Claim 37 recites the limitation “the frangible device” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, claim 37 will be understood to be written as, “The downhole tool as recited in claim [[35]] 36…”
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-20, 33, and 36-39 are rejected under 35 U.S.C. 103 as being unpatentable over Rytlewski et al. (US 2006/0124312- cited previously). With respect to independent claim 1, Rytlewski discloses an inner sleeve ([0032]-[0037] and Figs. 2 and 4), comprising:
a tubular having an inside tubular surface and an outside tubular surface ([0032]-[0037] and Figs. 2 and 4), and a collet including two or more collet fingers coupled to one end of the tubular, the collet having an inside collet surface and an outside collet surface, and further wherein the inside collet surface flares outward from the inside tubular surface by an angle when the collet is in its natural state, the natural state being the state in which the two or more collet fingers begin with or return to when not compressed ([0032]-[0037] and Figs. 2 and 4).
Regarding claim 1, Rytlewski discloses a collet including two or more collet fingers, wherein the inside collet surface flares outward by an angle ([0032]-[0037] and Figs. 2 and 4). However, Rytlewski fails to expressly recite wherein the angle is ɵ0. The Office considers the angle “(ɵ0)” to be merely a label for the disclosed angle and since it is a well-known and common notation, acting as no more than an arbitrary variable, it would have been obvious for a person having ordinary skill in the art to set the angle as “(ɵ0),” as claimed.
With respect to depending claims 2-5, Rytlewski discloses wherein the inside collet surface flares outward by an angle ([0035]-[0037] and Fig. 2). Although silent to wherein the angle is respectively “from 1 degree to 90 degrees,” “from 3 degrees to 90 degrees,” “from 10 degrees to 90 degrees” and “from 5 degrees to 15 degrees,” instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for the angle as claimed insofar as because it has been held “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) Moreover, selecting the dimension as claimed would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention since the claimed dimension amounts to nothing more than scaling up or down of the disclosed device and a device having the claimed dimensions would not perform differently than the prior art device In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Furthermore, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018).
With respect to depending claim 6, Rytlewski discloses further including a plug seat extending radially inward from the inside collet surface ([0005]-[0007], [0040]-[0041], and Fig. 4). Although silent to the presence of more than one plug seat, i.e., “two or more plug seats,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to consider a duplication of the plug seat as claimed since duplicating a disclosed part amounts to nothing more than an obvious matter of design choice. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)
With respect to depending claim 7, which is dependent upon claim 6, Rytlewski discloses wherein an inner most radial point of the plug seat is radially outside of the inside tubular surface when the collet is in its natural state ([0005]-[0007], [0032]-[0041], and Figs. 2 and 4). With respect to independent claim 8, Rytlewski discloses a downhole tool, comprising: a valve connector housing ([0032]-[0037] and Figs. 2 and 4); and
an inner sleeve located at least partially within the valve connector housing ([0032]-[0037] and Figs. 2 and 4), the inner sleeve including:
a tubular having an inside tubular surface and an outside tubular surface ([0032]-[0037] and Figs. 2 and 4); and a collet including two or more collet fingers coupled to one end of the tubular, the collet having an inside collet surface and an outside collet surface ([0032]-[0037] and Figs. 2 and 4); and further wherein the collet is configured such that: when the collet is in its natural state outside of the valve connector housing the inside collet surface flares outward from the inside tubular surface by an angle, the natural state being the state in which the two or more collet fingers begin with or return to when not compressed ([0032]-[0037] and Figs. 2 and 4); and when the collet is in its compressed state inside of the valve connector housing the inside tubular surface and the inside collet surface are angled with regard to each other by a lesser angle ([0032]-[0042] and Figs. 2 and 4).
Regarding claim 8, Rytlewski discloses a collet including two or more collet fingers, wherein the inside collet surface flares outward by an angle ([0032]-[0037] and Figs. 2 and 4). However, Rytlewski fails to expressly recite wherein the angles are ɵ0 ɵ1. The Office considers the angles “(ɵ0)” and “(ɵ1)” to be merely labels for the disclosed angles and since they are well-known and common notations, acting as no more than arbitrary variables, it would have been obvious for a person having ordinary skill in the art to set the angles as “(ɵ0)” and “(ɵ1),” as claimed. With respect to depending claim 9, Rytlewski discloses further including: a body coupled to the valve connector housing and configured to fit within a casing string ([0032]-[0037] and Figs. 2 and 4); a first valve located within the body and configured to open and close a fluid flow path through the valve connector housing, wherein the first valve opens to a first valve open position in a direction towards a wellhead of the wellbore ([0023]-[0028], [0032]-[0037], and Figs. 1, 2, and 4); and
a second valve located within the body and configured to open and close a fluid flow path through the valve connector housing, wherein the second valve opens to a second valve open position in a direction away from the wellhead of the wellbore ([0023]-[0028], [0032]-[0037], and Figs. 1, 2, and 4).
With respect to depending claim 10, which is dependent upon claim 9, Rytlewski discloses wherein multiple valves are configured to be placed as part of the downhole tool in the wellbore ([0023]-[0028], [0032]-[0037], and Figs. 1, 2, and 4). With respect to which valve is open and when, since Rytlewski discloses placing multiple valves as part of a downhole tool into a wellbore, the act of opening and closing the valve at different points along the wellbore amounts to nothing more than choosing from a finite number of possible and predictable solutions, as it has been taught “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person having ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” KSR at 1397
With respect to depending claim 11, which is dependent upon claim 9, Rytlewski discloses wherein the inner sleeve is configured to shift the collet from the compressed state to the natural state after placement of the downhole tool in the wellbore and wherein multiple valves are configured to be placed as part of the downhole tool in the wellbore ([0023]-[0028], [0032]-[0037], and Figs. 1, 2, and 4). With respect to which valve is open and when, since Rytlewski discloses placing a valve as part of a downhole tool into a wellbore, the act of opening and closing the valve at different points along the wellbore amounts to nothing more than choosing from a finite number of possible and predictable solutions, as it has been taught “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person having ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” KSR at 1397
With respect to depending claim 12, Rytlewski discloses further including a plug seat extending radially inward from the inside collet surface ([0005]-[0007], [0040]-[0041], and Fig. 4). Although silent to the presence of more than one plug seat, i.e., “two or more plug seats,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to consider a duplication of the plug seat as claimed since duplicating a disclosed part amounts to nothing more than an obvious matter of design choice. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)
With respect to depending claim 13, which is dependent upon claim 12, Rytlewski discloses wherein the collet is in the compressed state, and further wherein a plug engages with the two or more plug seats ([0032]-[0037] and Figs. 2 and 4).
With respect to depending claim 14, which is dependent upon claim 13, Rytlewski discloses wherein an inner most radial point of the two or more plug seats is radially inside of the inside tubular ([0032]-[0037] and Figs. 2 and 4).
With respect to depending claim 15, which is dependent upon claim 12, Rytlewski discloses wherein the collet is in the natural state, and further wherein an inner most radial point of the plug seat is radially outside of the inside tubular surface ([0005]-[0007], [0032]-[0041], and Figs. 2 and 4).
With respect to depending claims 16-19, Rytlewski discloses wherein the inside collet surface flares outward by an angle ([0035]-[0037] and Fig. 2). Although silent to wherein the angle is respectively “from 1 degree to 90 degrees,” “from 3 degrees to 90 degrees,” “from 10 degrees to 90 degrees” and “from 5 degrees to 15 degrees,” instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for the angle as claimed insofar as because it has been held “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) Moreover, selecting the dimension as claimed would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention since the claimed dimension amounts to nothing more than scaling up or down of the disclosed device and a device having the claimed dimensions would not perform differently than the prior art device In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Furthermore, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018).
With respect to depending claim 20, Rytlewski discloses when the collet is in its compressed state inside of the valve connector housing the inside tubular surface and the inside collet surface are angled with regard to each other by a lesser angle ([0032]-[0042] and Figs. 2 and 4). Although silent to wherein the lesser angle is “between 2 degrees and zero degrees,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for the angle as claimed insofar as because it has been held “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) Moreover, selecting the dimension as claimed would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention since the claimed dimension amounts to nothing more than scaling up or down of the disclosed device and a device having the claimed dimensions would not perform differently than the prior art device In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Furthermore, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018).
With respect to depending claim 33, Rytlewski discloses wherein the valve connector housing is an axially fixed valve connector housing having a valve ([0032], [0033], and Figs. 2 and 4), and further wherein the inner sleeve is a sliding inner sleeve configured to slide within the axially fixed valve connector housing causing the collet to move between a compressed state and a natural state ([0036]-[0039], and Figs. 2 and 4). However, Rytlewski fails to expressly disclose wherein the initial state is compressed and the subsequent state is natural, as instantly claimed. Inasmuch as Rytlewski discloses a compressed state and a natural state, and switching between the two states, the act of the initial state being compressed and the subsequent state being natural amounts to nothing more than choosing from a finite number of possible and predictable solutions, as it has been taught "When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person having ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR at 1397
With respect to depending claims 36 and 37, Rytlewski discloses wherein the sliding inner sleeve is fixed to the valve connector housing ([0032]-[0037] and Figs. 2 and 4). However, Rytlewski fails to expressly disclose wherein the sliding inner sleeve may be fixed via a frangible device such as shear pins, screws, or rings, as instantly claimed. The Office considers it well known in the art of valves and sliding sleeves, that the components may be fixed via frangible devices in order to temporarily attach said components and separate them based upon the needs and functions of the valve. Regarding the sliding inner sleeve being fixed “when the collet of the sliding inner sleeve is in the initial compressed state,” inasmuch as Rytlewski discloses a compressed state and a natural state, act of fixing the sliding inner sleeve when the collet is in the compressed state amounts to nothing more than choosing from a finite number of possible and predictable solutions, as it has been taught "When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person having ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR at 1397
With respect to depending claims 38 and 39, dependent upon claim 9, Rytlewski discloses wherein multiple valves are configured to be placed as part of the downhole tool in the wellbore ([0023]-[0028], [0032]-[0037], and Figs. 1, 2, and 4) and wherein each valve comprises a mandrel for compressing the collet fingers and moving the collet between a natural state and a compressed state ([0036]-[0039], and Figs. 2 and 4). With respect to which valve is open and when, since Rytlewski discloses placing multiple valves as part of a downhole tool into a wellbore, the act of opening and closing the valve at different states amounts to nothing more than choosing from a finite number of possible and predictable solutions, as it has been taught “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person having ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” KSR at 1397
Claims 31 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Rytlewski et al. (US 2006/0124312- cited above) in view of Davies (US 2018/0163486).
With respect to depending claims 31 and 32, Rytlewski discloses a sleeve comprising a collet or collet fingers ([0032]-[0037] and Figs. 2 and 4). However, Rytlewski fails to expressly disclose the material of the collet or collet fingers. Davies teaches a sleeve comprising a collet or collet fingers wherein the collet or collet fingers may comprise aluminum (Abstract and [0029]). It would have been obvious to a person having ordinary skill in the art at the time of the invention to employ a material for the collet or collet fingers disclosed by Rytlewski such as those taught by Davies, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
With regard to the remaining materials, the Office considers these as obvious variants to those disclosed by the reference, and, therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was made to alternatively include such materials for the collet or collet fingers.
Claims 34 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Rytlewski et al. (US 2006/0124312- cited above) in view of Campbell (US 2019/0153818).
With respect to depending claim 34, which is dependent upon claim 33, and depending claim 35, which is dependent upon claim 34, Rytlewski discloses a valve comprising a sliding sleeve and expanding collet, and moving the collet between a natural state and a compressed state ([0036]-[0039], and Figs. 2 and 4). However, Rytlewski fails to expressly disclose wherein a lock ring is employed to secure the collet in the natural state. Campbell teaches a valve comprising a sliding sleeve and expanding collet, wherein a lock ring (“stop ring”) is employed to secure the collet in a desired state (Abstract and [0026]). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to consider employing a lock ring for the collet and sliding sleeve disclosed by Rytlewski as taught by the collet and sliding sleeve of Campbell since it prevents the collet from moving between states. Regarding which of the two states (compressed state or natural state) is secured in place by the lock ring, inasmuch as Rytlewski discloses a compressed state and a natural state, and switching between the two states, the act of the securing one state or the other amounts to nothing more than choosing from a finite number of possible and predictable solutions, as it has been taught "When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person having ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR at 1397
Response to Arguments
Applicant's arguments filed 9/30/25 have been fully considered but they are not persuasive.
Applicant argues that “it is unclear from Ryt whether its inside tubular surface is not flared, or inwardly flared, when in its natural state.” The Examiner notes that this feature is not recited in the rejected claim(s). The claims recite “wherein the inside collet surface flares outward from the inside tubular surface” and this is disclosed by Rytlewski (see above). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that “the claimed angle ɵ0 is not a mere label but a functional limitation that defines the mechanical behavior of the collet in its natural state.” The Examiner finds this argument unpersuasive. The angle of the collet when in the natural state may alternatively be ɵ5, σ0, γ0, γ3, etc. without changing the scope of the limitation, i.e., the angle when in the natural state is no different regardless of what variable is employed to label said angle.
Applicant argues that “the claimed angle ranges are not arbitrary optimizations but are critical to the operation of the downhole tool… Applicant has discovered that the claimed range produces unexpected results in terms of: 1) Hydraulic seal performance; 2) Controlled release of the plug; and 3) Reliable transition between valve states.” The Examiner finds this argument unpersuasive. Firstly, this feature is not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Secondly, the Specification provides no support that the specific ranges claimed, e.g. “from 5 degrees to 15 degrees,” corresponds to these specific benefits. That is to say, the Specification does not link the claimed angle ranges of “from 5 degrees to 15 degrees” as providing the specific benefit of “hydraulic seal performance” any more than an angle range of “from 10 degrees to 90 degrees” or from 1 degree to 179 degrees, or even that the specific benefit of “hydraulic seal performance” is any more than a generalized assertion of an improvement (rather than a specific improvement by a quantifiable amount).
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.
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/AVI T SKAIST/Examiner, Art Unit 3674
/WILLIAM D HUTTON JR/Supervisory Patent Examiner, Art Unit 3674