DETAILED ACTION
This Office Action is in response to the Amendment filed on 3/30/2026. Claims 25-28 were added (these claims have been renumbered as 27-30, see objection below). Claims 3 and 6 were canceled. Claims 1-2, 4-5 and 7-30 are now pending in the application. Claims 23-26 are withdrawn due to a previous restriction requirement.
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled (or withdrawn), the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered claims 25-28 have been renumbered 27-30.
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.
Claims 1-2, 4-5, 7-11, 13-22 and 25-28 are rejected under 35 U.S.C. 103 as being unpatentable over Fanucci et al. (US PG Pub 2003/0173459 A1).
Regarding claim 1, Fanucci et al. teach:
a lattice fin having a metallic cell structure (Abstract) reading on the synthetic metal system, wherein the metal lattice fin is assembled with an outer frame around the cell structure [0012], as shown in Fig. 1 replicated herewith:
PNG
media_image1.png
772
498
media_image1.png
Greyscale
thereby reading on the frame member comprising a lattice structure comprising a network of nodes and frame elements including a plurality of openings as required by the instant claim,
wherein the interior cell structure 12 is formed from a composite material comprising fibrous reinforcements impregnated with a matrix material, wherein the matrix materials are resins such as epoxy, polyester, and other thermoplastic resins [0043] thereby reading on the claimed matrix material comprising a polymeric material,
and wherein the composite material forms the interior cell structure 12 [0043] and wherein a hybrid embodiment may have the interior cell structure 12 formed of metal with the outer frame 14 formed of a composite material, or the interior cell structure 12 formed of a composite material with the outer frame 14 of metal. In any embodiment, a thicker shell of material can be added to the perimeter of the lattice grid or fin to increase strength and stiffness, as well as to protect the interior cell structure. Fanucci et al. teach the matric material bond to the metal [0038] thereby reading on the bonded to the frame member so that the frame member and the matric material are unable to separate from one another.
Fanucci et al. do not particularly teach the frame member is entirely encased within the matrix material.
However, Fanucci et al. teach a thicker shell of material can be added to the perimeter of the lattice grid or fin to increase strength and stiffness, as well as to protect the interior cell structure [0033]. Therefore, the amount of matrix material around the frame member can be optimized to reach the desired strength and stiffness of the frame member via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the relative amount of the matrix material around the frame member for the intended application via a routine optimization, thereby obtaining the present invention.
Regarding claim 2, Fanucci et al. demonstrate that the plurality of openings is defined by a plurality of frame elements which form the frame member as shown in the Fig. 1 replicated above.
Regarding claim 4, Fanucci et al. teach the plurality of openings defines a cavity within and/or on a surface of the frame member as demonstrated by the Fig. 1 replicated above.
Regarding claim 5, Fanucci et al. teach the frame member comprises two or more portions and wherein the frame member portions are configured for connection to one another and are retained in place relative to one another within the synthetic metal system by the matrix material as demonstrated by the Fig. 1 replicated above.
Regarding claim 7, Fanucci et al. teach the lattice fin may be formed entirely of metal, entirely of a composite material or may be a hybrid of metal and a composite material [0033] thereby reading on the at least a portion of the frame member is fabricated from a metallic material.
Regarding claims 8-9 and 18, Fanucci et al. teach the base is formed of aluminum ([0033], claim 74) thereby reading on the at least a portion of the frame member being made from an electrically conductive material and resilient deformable material.
Regarding claims 10 and 11, Fanucci et al. teach the matrix materials are resins such as epoxy, polyester, and other thermoplastic resins [0043] thereby reading on thermoplastic, thermosetting resins and the polymeric material suitable for processing by injection molding and/or extrusion.
Regarding claim 13, Fanucci et al. teach the matrix comprises a carbon fiber [0048].
Regarding claim 14, Fanucci et al. teach other additives in the matrix composition [0045] thereby reading on the unique identifier.
Regarding claims 15-17 and 19-22, the claims are reciting an intended use of the synthetic metal system (bottom hole assembly, projectile, etc.). Case law has held that a recitation with respect to the manner in which a claimed apparatus is intended to be used does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations Ex Parte Masham, 2 USPQ2d 1647 (1987). Fanucci et al. teach the same structural limitations of the instant claims as set forth in the rejection above and thereby read on the manner of which the claimed apparatus is intended to be used.
Regarding claim 25, Fanucci et al. teach triangular structure [0006].
Regarding claims 26-27, Fanucci teach the two or more frame member portions as set forth above for claim 5, wherein the frame member portions are recessed from the base (reference characters 16 and 19) shown in Fig. 1 replicated above, thereby reading on a recessed portion extending from a first end to a second end and further reading on the frame members connected to one another and the recess portion at least partially encases an elongate member (the base).
Regarding claim 28, the term “chemometric profile” is given its broadest reasonable interpretation which is “chemo” meaning chemical and “metric” meaning “measurements”; i.e. a chemical that is used in a measurement. Under this plain meaning of the term, the additives taught by Fanucci [0045] (such as a wax) can be chemically measured and thereby read on the “chemometric profile”.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Fanucci et al. (US PG Pub 2003/0173459 A1) in view of Moore et al. (US Patent 8,119,047 B2).
Regarding claim 12, Fanucci et al. teach the synthetic metal system according to claim 1 as set forth above and incorporated herein. Fanucci et al. teach thermoplastic resin [0043] but do not particularly teach polyurethanes.
Moore et al. teach a sleeve in Figs. 3 and 5-8 having a plurality of openings, and a matrix material (ref. characters 40 and 54) comprising a polymeric material (col. 4 line 54) wherein the matrix material penetrates the one or more plurality of openings of the frame member such that the frame member is at least partially encased within the matrix material (col. 4 line 54 – col. 5 line 30, col. 5 lines 59-61) and wherein the matrix material is a polyurethane. Moore et al. offer the motivation of choosing the polyurethane due to their ability to provide resistance to a verity of downhole fluids (col. 1 line 45). In light of these benefits, it would have been obvious to one of ordinary skill in the art to use the polyurethane of Moore et al. in the synthetic metal system of Fanucci et al. thereby arriving at the claimed invention.
Response to Arguments
Applicant’s arguments, see p. 1-4, filed 3/30/2026, with respect to the rejection of claims 1-11 and 13-22 under 102 in view of Fanucci have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, and in light of the amendment, a new ground of rejection under 103 is made in view of Fanucci.
Applicant’s arguments, see p. 4-6, filed 3/30/2026, with respect to the rejection of claims 1-22 under 102 in view of Moore have been fully considered and are persuasive. The 102 rejections of claim 1-22 in view of Moore have been withdrawn.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: WO 2016/067184 A1, WO 2005/065920 A2 and US Patent 6,214,049 as cited in the International Search Report dated 2/6/2023.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LANEE REUTHER whose telephone number is (571)270-7026. The examiner can normally be reached M-F 7:30-3:30.
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, Patricia Mallari can be reached at 571-272-4729. 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.
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
Prosecution Insights