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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: the “inside surface 28” as stated in paragraph [0012]. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
Paragraph [0001], Last Line states “is known to exits suing…” It is not clear as to what is being stated here.
Paragraph [0011], Line 3, replace “16 a” with “16”.
Appropriate correction is required.
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.
Claims 5 and 8 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 5 recites “wherein the element is a plurality of elements.” However, it is indefinite and unclear as to how a SINGLE “element” as recited in claim 1 can later become “a plurality of elements” as recited in claim 5? For purposes of examination, the examiner assumes that in claim 1, the recitation of “an element” means to recite “at least one element.”
Claim 8 recites the limitation "the member" in Line 1. There is insufficient antecedent basis for this limitation in the claim. Additionally, the “member” appears to be introduced within claim 7 and not claim 6. Therefore, it is indefinite and unclear as to what claim, claim 8 is meant to depend upon? For purposes of examination, the examiner assumes that claim 8 is meant to depend upon claim 7.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5, 7-9, 11, 14-18, 20 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2010/0006290 (Saylor, III et al.).
Regarding Claims 1-5, 7-9, 11, 14-18 and 21, Saylor, III et al. teaches: Claim 1 – a method for pulling casing comprising: disposing a casing modification and pulling tool (including elements of cutting device (201) and spearing device (302)) having an element (207) therein that includes a profile; causing the element (207) to move radially outwardly into contact with a casing disposed radially outwardly of the tool (at least paragraph [0028] describing the element (207) moving radially outwards from cutting device (201) to cut a casing); deforming the casing with the element (207 - at least paragraph [0028] describing the element (207) moving radially outwards from cutting device (201) to deform/cut a casing); applying a load to the casing (as described in at least paragraph [0031], the teeth (314) of the spearing device (302) grip the casing to pull the casing from the bore); and failing the casing at the deformation (at least paragraph [0028] describing the element (207) moving radially outwards form the tool to cut a casing), (Figures 1-8); Claim 2 – further comprising setting a spear (302 - as described in at least paragraph [0031], the teeth (314) of the spearing device (302) grip the casing to pull the casing from the bore), (Figures 1-8); Claim 3 – further comprising pulling the casing from a borehole in which the casing is disposed (as described in at least paragraph [0031], the teeth (314) of the spearing device (302) grip the casing to pull the casing from the bore), (Figures 1-8); Claim 4 - wherein the element (207) is a punch (207 – as described in at least paragraph [0028[, cutting element (207) is moved via a piston through the casing and is thus understood to “punch” through the casing), (Figures 1-8); Claim 5 - wherein the element (207) is a plurality of elements (207), (Figures 1-8); Claim 7 - wherein causing the element (207) to move radially outwardly is by shifting a member (211) having a changing outside dimension to a position where the element (207) is moved radially outwardly, (Figures 1-8); Claim 8 - wherein the member (211) is a piston (at least paragraph [0028] describes a “piston” being used to activate elements (211) and (207)), (Figures 1-8); Claim 9 - wherein the load applied is tension (as described in at least paragraph [0031], the teeth (314) of the spearing device (302) grip the casing to pull the casing from the bore), (Figures 1-8); Claim 11 - wherein the causing is repeated upon repositioning of the element (207) to another azimuthal position of the tool (including elements of cutting device (201) and spearing device (302); the entire tool which is also referenced as the drilling string is capable of rotation and movement within the bore as described in at least paragraph [0023]; and thus would be capable of moving to another azimuth during use), (Figures 1-8); Claims 14 and 15 - jarring the element into/out of the casing (jarring device (103) is provided as discussed in at least paragraph [0024]), ((Figures 1-8); Claim 16 – wherein the deforming opens a fluid passage through the casing (element (207) cuts the casing and thus offers a fluid passage), (Figures 1-8); Claim 17 – wherein the deforming is plastic deformation (the casing is permanently deformed in shape by element (207) and is thus “plastically deformed”), (Figures 1-8); Claim 18 - wherein the deforming is weakening the casing (the casing is cut by element (207) and is thus “weakened”), (Figures 1-8); Claim 21 - a borehole in a subsurface formation; a casing disposed in the borehole; and a casing modification and pulling tool as claimed in claim 1 disposed in the casing (described in at least the abstract), (Figures 1-8).
Regarding Claim 20, Saylor, III et al. teaches: Claim 20 - a system for pulling casing comprising: a casing modification tool (including elements of cutting device (201) and spearing device (302)) having an element (207) radially displaceable into a casing disposed radially outwardly thereof, the element (207) configured to deform the casing; a casing spear (302) operably connected to the casing modification tool (including elements of cutting device (201) and spearing device (302)), the spear (302) “configured to/capable of” apply a load to the casing to fail the casing at the deformation, (Figures 1-8).
Claim(s) 1, 10 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 1,927,310 (Edwards).
Regarding Claims 1, 10 and 19, Edwards teaches: Claim 1 – a method for pulling casing comprising: disposing a casing modification and pulling tool (seen in Figure 5) having an element (33) therein that includes a profile; causing the element (33) to move radially outwardly into contact with a casing (1) disposed radially outwardly of the tool (seen in Figure 5); deforming the casing (1) with the element (33); applying a load to the casing (as described in at least Page 2, Lines 133-139; as element (33) is cutting the casing (1), the casing (1) is subjected to an upward pull); and failing the casing at the deformation (as described in at least Page 2, Lines 133-139; the casing (1) is pulled apart while simultaneously being cut by element (33)), (Figures 1-8); Claim 10 - wherein the load applied is rotation (the rotational load is applied to the casing (1) as the stem and cutters (33) are rotated when cutting the casing (1)), (Figures 1-8); Claim 19 - wherein the failing is tearing the casing (as described in at least Page 2, Lines 133-139; the casing (1) is pulled apart while simultaneously being cut by element (33)), (Figures 1-8).
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) 6 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2010/0006290 (Saylor, III et al.) in view of U.S. Patent Application Publication No. 2014/0352976 (Tinnen).
Regarding Claim 6, Saylor, III et al. teaches the method as described above, but does not teach: wherein the element is an explosive charge (Claim 6). However, Tinnen teaches: Claim 6 – a tool for cutting a casing, wherein the cutting can be mechanical or explosive (See paragraph [0100]), (Figures 1-28). Therefore, it would have been obvious to one of ordinary skill in the art to modify the method of Saylor, III et al. to have wherein the element is an explosive charge (Claim 6) as taught by Tinnen as it represents the simple substitution of one known element (the explosive cutting element of Tinnen) for another (the mechanical cutting element of Saylor, III et al.) to obtain the predictable result of using an explosive charge which may be more effective depending on casing material.
Claim(s) 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2010/0006290 (Saylor, III et al.) in view of U.S. Patent No. 8,893,791 (Crow).
Regarding Claims 12 and 13, Saylor, III et al. teaches the method as described above, but does not teach: including operating an indexer to select the another azimuthal position (Claim 12); and the indexer includes a J-slot (Claim 13). However, Crow teaches: Claims 12 and 13 – a spear (S) connected to a cutter (C) for tandem rotation as described in at least Column 4, Lines 18-21; wherein the embodiment for a spear (S) as seen in Figure 5A show an indexer to select an azimuthal position of the spear (S)/cutter (C) by use of J-slots (252) which move the spear (S)/cutter (C) ¼ turn at a time, (Figures 1-29). Therefore, it would have been obvious to one of ordinary skill in the art to modify the method of Saylor, III et al. to have including operating an indexer to select the another azimuthal position (Claim 12); and the indexer includes a J-slot (Claim 13) as taught by Crow for the purposes of providing a means to both quickly move the tool of Saylor, III et al. and engage the features of the tool iself.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/JOSHUA E RODDEN/Primary Examiner, Art Unit 3642