DETAILED ACTION
Claims 1-27 and 37-48 are pending.
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 Arguments
Applicant's arguments filed 01/30/2026 have been fully considered but they are not persuasive.
Examiner respectfully disagrees in regard to Applicant’s representative’s arguments presented corresponding to the 35 U.S.C. § 112(a) rejection previously presented. Though Applicant’s representative attempted to fill in the missing link (i.e., functional support to cause the actual releasing of pop lock “170” comprising the fingers “180” subsequent to the piston “190” moving uphole), there is no definitive specification support for doing so, neither in the specification itself, nor the drawings. Specifically, Applicant’s representative cites the following:
“Once sufficient fluid flow (pressure) has built up to overcome friction of a pop lock 170 and a first nose shear screw 210, the grapple release tool 100 shifts the upper piston 190 upward, releasing a finger 180 c on the pop lock 170 from a main body 130.”
However, Examiner questions as to what exactly causes the fingers “180” to be released? In other words, the arguments fail to provide any support from the instant specification as to how written description provides support to arrive from structure to function.
Nonetheless, Applicant attempted to cure the deficiencies by providing an Affidavit dated 01/30/2026 to disclose that the missing releasement function mechanism corresponding to the fingers “180” is/was factual evidence. In doing so, Applicant cites the following:
“As shown in FIG. 2B-1, when the screw is sheared, the piston 240 no longer is disposed within to the pop lock 170 to expand it.
[...]
A person having ordinary skill in the art would understand that the piston kept the pop lock expanded, since it is disposed inside the piston in FIG. 1A. As stated in paragraph [0529] of the specification, fingers of the pop lock illustrated in the drawings release when the upper piston shifts upward.”
Examiner notes that the instant specification fails to disclose any written description in regard to having the pop lock “170” expanded (or, something of the like), as the affidavit is attempting to disclose new matter not originally, materially disclosed in the instant specification. Examiner recommends amending the claim language to perhaps focus on the structure of the assembly, rather than the functional language, for potential allowability purposes.
Examiner notes that no prior art rejections have been presented in this action. The issues pertaining to 35 U.S.C. § 112 addressed herein are preventing the Examiner from properly understanding the scope of Applicant’s invention due to the lack of definiteness associated with each of the claims. Thereby, Applicant is highly advised to appropriately correct all deficiencies identified in this rejection. The Examiner respectfully reserves the rights to apply prior art rejections in the future based off of a better understanding of the claims pursuant to Applicant’s forthcoming corrections.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the releasing aspect of the “grapple release tool” (see 35 U.S.C. § 112(a) rejection herein) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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:
Examiner suggests removing “upper” from “upper piston”, since it appears that there is only piston in the instant invention.
Appropriate correction is required.
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 1-14 and 47-48 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 claims 47-48) recite a “grapple release tool”. Examiner notes that the instant specification provides support for releasing the fingers “180” on the pop lock “170” from a main body “130” by shifting the piston “190” upward (at least paragraphs [0034, 0107, 0527, 0578]). However, the instant specification lacks support for exactly how the releasing is done subsequent to shifting the piston “190” upward. The replacement drawings dated 06/12/2025 along with the instant specification lack detail corresponding the disconnect/release of the tool, leaving one skilled in the art left to guess what the nexus is between the piston “190” and the fingers “180”. At the very least, it appears that there is no structural connection between the piston “190” and the fingers “180”, as figure 1E-2 shows the radial outer surface of the upper portion of the fingers “180” to have ridges, whereas figure 1F-2 depicted the connecting radial inner surface of the lower portion of the piston “190” to be longitudinal. In other words, there is a lack of support for allows for locking and releasing the elements of the tool, as there is no nexus between the locking/releasing elements. “An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved…”. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010). See MPEP 2163.03, subsection V. Due to claim 1 being rejected under 35 U.S.C. § 112(a), the corresponding dependent claims are also cancelled.
Claim 1 (and, similarly claims 47-48) recite an “upper piston”. Examiner notes that reciting an “upper piston” implicitly suggests that there is another piston below the “upper piston”. However, there is no support in the instant specification for another piston aside from the “upper piston”. Due to claim 1 being rejected under 35 U.S.C. § 112(b), the corresponding dependent claims are also cancelled.
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 1-14 and 47-48 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 claims 47-48) recite an “upper piston”. Examiner notes that reciting an “upper piston” implicitly suggests that there is another piston below the “upper piston”. However, there is no discussion of another piston being claimed, therefore causing confusion as to whether the claim(s) require an additional piston or not. For examination purposes, the Examiner will take its broadest reasonable interpretation in light of the instant specification and will assume for the claims to not require another piston. Due to claim 1 being rejected under 35 U.S.C. § 112(b), the corresponding dependent claims are also cancelled.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NEEL PATEL whose telephone number is (469)295-9168. The examiner can normally be reached M-F, 9:00AM-5:00PM CST.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NEEL GIRISH PATEL/Primary Patent Examiner, Art Unit 3676
Prosecution Insights