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 amendments dated 2/10/25 have resolved the previously presented 112 issues.
Applicant's arguments filed 2/10/25 have been fully considered but they are not persuasive. The primary reference cited in the rejection below is Kumar (US 20220349276 A1).
As previously argued regarding claim 1, applicant argues the resilient element is not a “mechanical spring” as claimed. The examiner respectfully disagrees. A mechanical spring is defined as: “mechanical springs such as coil springs, leaf springs, volute springs and compression springs are elastic devices that store mechanical potential energy when deformed by compression, extension or torsion” (see definition provided 1/28/25). A resilient member, such as a rubber element, is inherently elastic devices that store mechanical potential energy when deformed by compression, extension or torsion and so broadly and reasonably constitutes a “mechanical spring”. Wang (US 20180080283 A1), which is in the wellbore field of endeavor, is cited as additional evidence that the resilient element identified in Kumar would reasonably be considered a “mechanical spring”. Wang states in Para 0062, “mechanical spring such as a coil or helical spring, a flat spring, or a member made of a resilient material (e.g., an elastomer)”.
Regarding the additional functionality recited surrounding the “mechanical spring”, “heigh adjuster”, and other structures to which the examiner has drawn to the resilient/elastomeric member, the adjustment/application of pressure in response to compression/expansion is an inherent characteristic of resilient/elastomeric members (see e.g. Hooke’s law). The examiner additionally notes that the claim in question is an apparatus claim. As stated in MPEP 2114(II), “"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”.
The examiner notes for applicant that all claims are patentably indistinct from claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, this action is being made final.
Claim Objections
Claims 10-11 and 13-15 are objected to because of the following informalities:
Claim 10 recites “the height adjuster (40) is configured with a first and second position”. Claim 13 recites “the height adjuster (40) is configured with a first position and a second position”. This is grammatically awkward. Although the verbiage is similar to that used in the specification, Page 21, lines 25-30 describe “the plug assembly 200 moves from the first position to the second position”. This verbiage (with appropriate correction in view of the pending apparatus claims) may better reflect the invention. Correction for claims 11 and 14-15, as needed, should also be made.
Appropriate correction is required.
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.
Claim(s) 1, 4-6, and 9-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kumar (US 20220349276 A1).
Regarding claim 1, Kumar teaches a plug assembly (200) comprising:
a housing (140) (Fig 2-3, housing 110);
glass assembly (15) comprising a plug (10) (Fig 2-3, 142; Abstract, “plug assembly includes a glass member”); and
a height adjuster (40) comprising a mechanical adjuster (42) (Fig 2-3, adjuster 160); wherein:
wherein the mechanical adjuster (42) is a mechanical spring (Para 0031, adjuster 160 is resilient and may be formed of e.g. elastomer, please see response to arguments above which is not repeated again here for the sake of brevity);
the glass assembly (15) and the height adjuster (40) are arranged in the housing (140) (Fig 2-3, adjuster 160 and 142 are within housing 110);
the height adjuster (40) is arranged to apply a pressure to the glass assembly (15) (Fig 2-3, Para 0031, adjuster 160 applied pressure via feet inserts 164); and
a height of the mechanical adjuster (42) is automatically adjusted in response to a compression and an expansion of the mechanical spring (Para 0031, adjuster 160 is threaded and resilient and may be formed of e.g. elastomer. When compressed/expanded, the elastomer would “automatically adjust” as a function of its elastic properties).
Regarding claim 4, Kumar teaches wherein the height adjuster (40) further comprises an adjustment seat (41), and the adjustment seat (41) is in contact with the glass assembly (15) (Fig 2-3, Para 0031, feet 164 may additionally be construed as a part of the heigh adjuster).
Regarding claim 5, Kumar teaches wherein the plug assembly (200) further comprises a seat, wherein the seat (20) supports the glass assembly (15) from one side (Fig 2-3, seat 150/154 support plug from the bottom side) and the height adjuster (40) supports the glass assembly (15) from the other side (Fig 2-3, adjuster 160 supports glass plug from the top side).
Regarding claim 6, Kumar teaches wherein the mechanical adjuster (42) is arranged to change the pressure applied to the glass assembly (15) (Fig 2-3, adjuster 160 is arranged to apply a pressure on the upper end of assembly 142. Absent this placement of the adjuster, there would be no pressure applied from the upper end).
Regarding claim 9, Kumar teaches wherein the glass assembly (15) further comprises a bearing ring (11) arranged between the plug (10) and the height adjuster (40) (Para 0031, feet 164 are between the adjuster 160 and plug 142).
Regarding claim 10, Kumar teaches wherein the height adjuster (40) is configured with a first and second position (see below);
wherein: in the first position of the height adjuster (40), the height adjuster (40) applies a first pressure to the glass assembly (15) (Para 0032, the adjuster is rotatable such that is can have a loosen or lost engagement); and
in the second position of the height adjuster (40), the height adjuster (40) applies a second pressure to the glass assembly (15) (Para 0032, “Retainer 160 is rotated until the feet 164 are firmly engaged with the upper glass member”).
Regarding claim 11, Kumar teaches wherein in the first position, the height adjuster (40) applies no pressure to the glass assembly (15) (Para 0032, the adjuster is rotatable such that is can have a lost engagement).
Regarding claim 12, Kumar teaches wherein the height adjuster (40) holds the glass assembly (15) in place, while the plug (10) is intact and stationary (Fig 2-3, Para 0031, the retainer 160 is used to retain an intact/stationary plug 142).
Regarding claim 20, Kumar teaches a plug assembly (200) comprising:
a housing (140) (Fig 2-3, housing 110);
a glass assembly (15) comprising a plug (10) (Fig 2-3, 142; Abstract, “plug assembly includes a glass member”); and
a height adjuster (40) comprising a mechanical adjuster (42) (Fig 2-3, adjuster 160) and an adjustment seat (41) (Fig 2-3, Para 0031, a single uphole most foot 164 of feet 164);
wherein: the glass assembly (15) and the height adjuster (40) are arranged in the housing (140) (Fig 2-3, adjuster 160 and 142 are within housing 110);
the height adjuster (40) is arranged to apply pressure to the adjustment seat (41) (Fig 2-3, Para 0031, adjuster 160 applied pressure via foot insert 164);
the adjustment seat (41) is arranged to apply pressure to the glass assembly (15) (Fig 2-3, Para 0031, adjuster 160 applied pressure via foot insert 164/adjustment seat);
the pressure applied by the height adjuster (40) on the glass assembly (15) directly corresponds to the compression and the expansion of the mechanical spring (Para 0031, adjuster 160 is threaded and resilient and may be formed of e.g. elastomer. When compressed/expanded, the elastomer would “directly correspond” as a function of its elastic properties); and
a height of the mechanical adjuster (42) is adjustable (Para 0031-0032, adjuster 160 is resilient and may be formed of e.g. elastomer and is threaded and thus “adjustable”).
Regarding claim 21, Kumar teaches wherein the mechanical adjuster (42) is arranged to change the pressure applied to the glass assembly (15) (Fig 2-3, adjuster 160, Para 0032, 160 may be threaded to vary the distance and consequently the applied pressure).
Regarding claim 22, Kumar teaches wherein the glass assembly (15) further comprises a bearing ring (11) arranged between the plug (10) and the height adjuster (40) (Para 0031, there may be a plurality of feet 164, the uphole most is the adjustment seat; the lowest most could be construed as the bearing ring). .
Regarding claim 23, Kumar teaches wherein the height adjuster (40) is configured with a first and second position (see below);
wherein: in the first position of the height adjuster (40), the height adjuster (40) applies a first pressure to the glass assembly (15) (Para 0032, the adjuster is rotatable such that is can have a loosen or lost engagement); and
in the second position of the height adjuster (40), the height adjuster (40) applies a second pressure to the glass assembly (15) (Para 0032, “Retainer 160 is rotated until the feet 164 are firmly engaged with the upper glass member”).
Regarding claim 24, Kumar teaches a plug assembly (200) comprising:
a housing (140) (Fig 2-3, housing 110 and 104);
a glass assembly (15) comprising a plug (10) (Fig 2-3, 142; Abstract, “plug assembly includes a glass member”); and
a height adjuster (40) comprising a mechanical adjuster (42) (Fig 2-3, adjuster 160); an adjustment seat (41) (Fig 2-3, Para 0031, a single uphole most foot 164 of feet 164),
wherein the adjustment seat (41) is in contact with the glass assembly (15) (Fig 2-3, Para 0031, uppermost of feet 164 is at least in indirect contact with glass assembly, where there is only one foot, such as depicted, there is direct contact), wherein: the glass assembly (15) and the height adjuster (40) are arranged in the housing (140) Fig 2-3, adjuster 160/164 and 142 are within housing 110/104);
the mechanical adjuster (42) is arranged between the adjustment seat (41) and the housing (140) (Fig 2-3, 160 adjuster is between the adjustment seat 164 and housing portion 104);
the height adjuster (40) is arranged to apply a pressure to the glass assembly (15) (Fig 2-3, Para 0031, adjuster 160 applied pressure via feet inserts 164), the pressure applied by the height adjuster (40) on the glass assembly (15), the pressure applied by the height adjuster (40) on the glass assembly (15) directly corresponds to a bias in the mechanical adjuster (42) (Para 0031, adjuster 160 is threaded and resilient and may be formed of e.g. elastomer. When compressed/expanded, the elastomer would “directly correspond” as a function of its elastic properties); and
a height of the mechanical adjuster (42) is adjustable (Para 0031-0032, adjuster 160 is resilient and may be formed of e.g. elastomer and is threaded).
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.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kumar (US 20220349276 A1), in view of Avant (US 20090044948 A1).
Regarding claim 7, while Kumar teaches the adjuster is resilient such as an elastomer (Para 0031), Kumar is silent on wherein the mechanical adjuster (42) is a coil spring, a wave spring, a tension wire, or a disc spring.
Avant teaches wherein the mechanical adjuster (42) is a coil spring, a wave spring, a tension wire, or a disc spring (Para 0029,coil spring/Belleville springs are known alternative resilient elements to elastomer).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Kumar by having the resilient element be one of the claimed alternatives such as a coil spring or disc spring as disclosed by Avant because such mechanism are known alternative resilient elements, known to be used predictably as a resilient element, in a downhole environment.
Claim(s) 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kumar (US 20220349276 A1) in view of Brandsdal (US 20190017345 A1).
Regarding claim 13, Kumar teaches wherein the height adjuster (40) is configured with a first position (Para 0032, the adjuster is rotatable such that is can have a loosen or lost engagement) and a second position (Para 0032, “Retainer 160 is rotated until the feet 164 are firmly engaged with the upper glass member”).
While Kumar teaches a failure of the glass plug due to impact (Para 0037), Kumar is silent on a breaker object (30) wherein: in the first position, the plug (10) is intact and stationary; and in the second position the breaker object (30) has made contact with the plug (10).
Brandsdal teaches a breaker object (30) (Fig 3-5, object 4, see also Fig 1-2) wherein: in the first position, the plug (10) is intact and stationary (Fig 3, plug 2 is intact and maintained); and in the second position the breaker object (30) has made contact with the plug (10) (Fig 2, Fig 4, plug 2 has contacted object 4).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Kumar by having the breaker object and its associated positions/breaking mechanisms as disclosed by Brandsdal because it is a known alternative means for breaking a downhole glass plug member which is operable with predictable results to break a frangible member as evidenced by Brandsdal.
Regarding claim 14, Kumar as modified teaches further comprising a shear ring (50) which supports a seat (Fig 1-2 of Brandsdal, seat 11b supported by shear ring 11a), wherein: the breaker object (30) is not in contact with the plug (10) in the first position of the height adjuster (40) (Fig 1, Fig 3 of Brandsdal object 4 is not in contact with plug 2); and the shear ring (50) has sheared in the second position of the height adjuster (40), wherein the shear ring (50) is arranged to shear when a pressure above a threshold pressure is applied to the glass assembly (15), releasing the plug and moving to the second position of the height adjuster (40) (Fig 2, 4, Para 0035 of Brandsdal, shear ring portion is sheared off at 11c “when subjected to a force higher than a predetermined breaking force”; as a modification to Kumar, please note that like applicant’s disclosure, the second position is a contacting position).
Regarding claim 15, in the embodiment relied upon, Kumar is silent on the recited first bearing ring and its particulars.
In another embodiment Kumar, as modified, teaches wherein the glass assembly (15) further comprises a first bearing ring (14) (Fig 8-9, ring 364 contains/bears upon plug 142) between the height adjuster (40) and the plug (10) (Fig 8, between retainer 360 and plug 142), wherein the first bearing (14) is not in contact with the plug (10) when in the plug assembly (200) is in the second position (Fig 2, 4, as modified by Brandsdal above, the plug is moved downhole to shear. Fig 8, Paras 0057 of Kumar, the bearing ring 364 is retained/claimed to the housing and thus would not move with the plug and remain uphole when the plug moves downhole i.e. moves to the second position).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by the first embodiment of Kumar as modified by having the bearing ring and its coupling uphole as disclosed by the second embodiment of Kumar because it would help prevent the feet from being lost downhole when the plug shatters, which would reduce the chances of the feet causing an obstruction downhole.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kumar (US 20220349276 A1) in view of Hiorth (US 20180313183 A1).
Regarding claim 16, Kumar as modified teaches wherein the glass assembly (15) further comprises a stabilizer (12) (Fig 2-3, stabilizer 172); the plug (10) further comprises a middle edge surface (64) which contains the widest portion of the plug (10) (Fig 2-3, circumferential surface of 142); and the stabilizer (12) is arranged around at least a portion of the middle edge surface (64) (Fig 2-3, 172 is around the circumferential surface/middle edge surface as defined above).
Kumar is silent on wherein: the stabilizer is at least partially non-elastomeric.
Hiorth teaches wherein: the stabilizer is at least partially non-elastomeric (Fig 2B, Paras 0071-73, circumferential seal/stabilizer containers fibers 32 which results in the sealing at least partly being non-elastomeric by virtue of their inclusion).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Kumar by having the stabilizer be at least partially non-elastomeric as disclosed by Hiorth because they would help to reinforce the seal, which is being deployed in a rugged pressurized downhole environment.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 THEODORE N YAO whose telephone number is (571)272-8745. The examiner can normally be reached typically 8am-4pm ET.
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 on (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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/THEODORE N YAO/Primary Examiner, Art Unit 3676