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 .
This Office action is in response to the March 17, 2025 response to the February 13, 2025 non-final Office action.
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,613,740 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
The amendment filed March 17, 2025 is not in the proper format. 37C.F.R. 1.173(d) requires additions relative to the patented claims to be underlined and deletions relative to the patented claims to be in single brackets. Claims 1-10 are original claims that have not been amended so they should not be underlined. See MPEP 1453.
The March 17, 2025 declaration states that specification was filed April 14, 2023 as reissue application number 18/1356,040. A new declaration with application number 18/135,040 needs to be submitted. Signed documents cannot be amended without requiring a new signature.
Claims 1-13,15-25 and 27-33 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
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 11-13,15-25 and 27-33 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.
In independent claims 11 and 24, there is a first end with protrusions on the top surface and a second end with protrusions on the top surface which mate with the protrusions on the first end. As the plug is inserted into the wellbore to contact the component already in the wellbore, it would seem that protrusions on the top of one component would mate with protrusions on the bottom of the other component. It is unclear how protrusions on the top of components stacked on one another can mate. The other rejected claims depend from claims 11 or 24 so they are rejected due to their dependency.
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.
Claim(s) 11-13,15-25 and 27-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pre-Grant Publication 2019/0234177 to Silva et al (hereinafter “Silva”) in view of US Patent No. 5,246,069 to Glaser et al. (hereinafter “Glaser”).
Silva discloses a wellbore plug (33) comprising a first end ( “second end” 37) including a first clutch (88) and a second end (“first end” 36) including a second clutch (61), wherein the first clutch and the second clutch each have protrusions on their outer peripheries which are configured to mate with one another, “clutch 61 is located on the first end 36 of mandrel 34, to facilitate anti rotation between multiple plug assemblies 33 during mill out operations by enabling opposed surfaces 62 and 63 to receive and rotationally lock opposed faces 89 and 90 from shoe 76 clutch 88” (paragraph 35). See also paragraph 58. Silva does not show the protrusions forming a sawtooth pattern. Glaser shows a self-aligning well apparatus such as a plug (abstract) with figures 3A, 3B, 3C and 3D showing sawtooth teeth 102. Line 61 of column 8 states the, “teeth 102 extend from the side wall 107 (the outer edge of the recess 103) inwardly to the inner edge of an opening 114”. Lines 13 and 14 of column 9 state that the teeth of adjacent units interengage. The paragraph at the top of column 6 states adjacent units have protrusions and spaces with “protrusions of one device are receivable by the other device as the two anti-rotation devices approach each other to co-act, the protrusions and spaces configured and disposed so that after initial misalignment of the two devices and upon initiation of rotation of at least one of them, the protrusion of one device bears against and pivots against a recess inner wall or against a face of a protrusion of the other device to pivot one device with respect to the other to align the two devices and to bring opposing protrusion faces into planar contact.” It would have been obvious to one of ordinary skill in the art at the time of filing to modify the protrusions of Silva by making the protrusions in a sawtooth pattern to assist in the alignment of the adjacent components.
In regard to claim 12, the citation above of Silva states clutch 88 is on shoe 76. In regard to claim 13, the citation also states clutch 61 is on mandrel 34. In regard to claim 15, mandrel 34 of Silva is shown as cylindrical with a passage 35 in figure 9 and described in paragraph 58. Paragraph 62 of Silva describes the contact between the mandrel and the shoe 76. In regard to claim 15, Silva’s mandrel 34 is shown as cylindrical with a passage 35 in figure 9 and described in paragraph 58. Paragraph 62 describes the contact between the mandrel and the shoe 76. In regard to claim 17, the protrusions of Silva allow the parts to align in two configurations 180 degrees different from each other and the projections of Glaser would have many possible relative configurations with the adjacent unit’s projections.. In regard to claims 18-20, paragraphs 35 and 66 of Silva discuss the use of balls to provide a valve in the mandrel. Including in paragraph 35, “Mandrel 34 may optionally have a passage 35 that can be optionally closed with a ball landed on a seat”. Paragraph 58 states that ball diverting pin 60 is in end 37 and end 37 is the top end of the plug. In regard to claims 21-23, Silva’s paragraph 58 states, “clutch 61 is located on the first end 36 of mandrel 34, to facilitate anti rotation between multiple plug assemblies 33 during mill out operations by enabling opposed surfaces 62 and 63 to receive and rotationally lock opposed faces 89 and 90 from shoe 76 clutch 88.”
In regard to claim 24, Silva discloses a wellbore plug (33) comprising a first end (“second end” 37) including a first clutch (88) and a second end (“first end” 36) including a second clutch (61), wherein the first clutch and the second clutch are configured to mate with one another, “clutch 61 is located on the first end 36 of mandrel 34, to facilitate anti rotation between multiple plug assemblies 33 during mill out operations by enabling opposed surfaces 62 and 63 to receive and rotationally lock opposed faces 89 and 90 from shoe 76 clutch 88” (paragraph 35). See also paragraph 58. Glaser shows a self-aligning well apparatus such as a plug (abstract) with figures 3A, 3B, 3C and 3D showing sawtooth teeth 102. Line 61 of column 8 states the, “teeth 102 extend from the side wall 107 (the outer edge of the recess 103) inwardly to the inner edge of an opening 114”. Lines 13 and 14 of column 9 state that the teeth of adjacent units interengage. The paragraph at the top of column 6 states adjacent units have protrusions and spaces with “protrusions of one device are receivable by the other device as the two anti-rotation devices approach each other to co-act, the protrusions and spaces configured and disposed so that after initial misalignment of the two devices and upon initiation of rotation of at least one of them, the protrusion of one device bears against and pivots against a recess inner wall or against a face of a protrusion of the other device to pivot one device with respect to the other to align the two devices and to bring opposing protrusion faces into planar contact.” It would have been obvious to one of ordinary skill in the art at the time of filing to modify the protrusions of Silva by making the protrusions in a sawtooth pattern to assist in the alignment of the adjacent components. In regard to claim 25, the citation of Silva above states clutch 88 is on shoe 76 and clutch 61 is on mandrel 34. In regard to claim 27, Silva’s mandrel 34 is shown as cylindrical with a passage 35 in figure 9 and described in paragraph 58. Paragraph 62 of Silva describes the contact between the mandrel and the shoe 76. In regard to claim 28, both clutches of Silva are round so they will have a circumference and the protrusions on the clutches of Silva are seen to inherently center the entire device (it isn’t clear how the centering could affect anything other than the entire circumference) due to their shape shown in the figures. Further, the first paragraph of column 6 in Glaser teaches aligning the adjacent components due to the protrusions. In regard to claim 29, Silva’s protrusions allow the parts to align in two configurations 180 degrees different from each other and the sawtooth projections of Glaser can be arranged so any projection on one unit can mate with any indentation on the adjacent unit. In regard to claims 30-32-20, paragraphs 35 and 66 of Silva discuss the use of balls to provide a valve in the mandrel. Including in paragraph 35, “Mandrel 34 may optionally have a passage 35 that can be optionally closed with a ball landed on a seat”. Silva’s paragraph 58 states that ball diverting pin 60 is in end 37 and end 37 is the top end of the plug. In regard to claim 33, paragraph 58 of Silva states, “clutch 61 is located on the first end 36 of mandrel 34, to facilitate anti rotation between multiple plug assemblies 33 during mill out operations by enabling opposed surfaces 62 and 63 to receive and rotationally lock opposed faces 89 and 90 from shoe 76 clutch 88.”
Claim(s) 11-13,15-25 and 27-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pre-Grant Publication 2013/0240203 to Frazier (hereinafter “Frazier”) in view of Glaser.
Frazier discloses in paragraph 77 a wellbore plug (1000A) comprising a first end including a first clutch and a second end including a second clutch, wherein the first clutch and the second clutch are configured to mate with one another, “dog clutch surfaces of the upper plug 1000A can interact with, interface with, interconnect, interlock, link with, join, jam with or within, wedge between, or otherwise communicate with a complementary dog clutch surface of the lower plug 1000B”. Paragraph 8 establishes the use of many plugs in series, which would require a clutch on the upper and lower surface. Frazier does not show protrusions forming a sawtooth pattern. Glaser shows a self-aligning well apparatus such as a plug (abstract) with figures 3A, 3B, 3C and 3D showing sawtooth teeth 102. Line 61 of column 8 states the, “teeth 102 extend from the side wall 107 (the outer edge of the recess 103) inwardly to the inner edge of an opening 114”. Lines 13 and 14 of column 9 state that the teeth of adjacent units interengage. The paragraph at the top of column 6 states adjacent units have protrusions and spaces with “protrusions of one device are receivable by the other device as the two anti-rotation devices approach each other to co-act, the protrusions and spaces configured and disposed so that after initial misalignment of the two devices and upon initiation of rotation of at least one of them, the protrusion of one device bears against and pivots against a recess inner wall or against a face of a protrusion of the other device to pivot one device with respect to the other to align the two devices and to bring opposing protrusion faces into planar contact.” It would have been obvious to one of ordinary skill in the art at the time of filing to modify the protrusions of Frazier by making the protrusions in a sawtooth pattern to assist in the alignment of the adjacent components.
In regard to claims 12 and 13, paragraph 54 of Frazier states that the anti-rotation feature (the clutch) can be positioned on a shoe or the mandrel. In regard to claim 14, figure 10 shows the clutches as intermeshing protrusions and valleys. In regard to claim 15, Frazier’s paragraph 45 states that plug 600 can include a mandrel 608 with a passageway or bore therethrough. In regard to claim 17, the multiple protrusions and valleys shown on the clutches in figure 10 of Frazier provide multiple locking positions (each protrusion in each of the clutches can be matched with any of the valleys in the other). The same is true of the indentations and teeth of Glaser. In regard to claims 18-20 Frazier’s figure 6D shows ball 623 at the top of a plug. See paragraphs 46 and 64 for a description of the seat and the blocking of flow. In regard to claims 21-23, Frazier’s figure 10 shows the mating of a first clutch with a second clutch and paragraph 54 describes multiple plugs with clutches contacting each other to prevent rotation of the plugs when one plug contacts a lower plug and the clutches mesh. The paragraph on top of column 6 of Glaser teaches aligning adjacent units using the teeth and indentations on the units.
In regard to claim 24, Frazier discloses in paragraph 77 a wellbore plug (1000A) comprising a first end including a first clutch and a second end including a second clutch, wherein the first clutch and the second clutch are configured to mate with one another, “dog clutch surfaces of the upper plug 1000A can interact with, interface with, interconnect, interlock, link with, join, jam with or within, wedge between, or otherwise communicate with a complementary dog clutch surface of the lower plug 1000B”. Paragraph 8 establishes the use of many plugs in series, which would require a clutch on the upper and lower surface. Paragraph 55 states that the anti-rotation features are designed to “engage, connect, or otherwise contact an adjacent plug, whether above or below the adjacent plug, to prevent or otherwise retard rotation therebetween”. Glaser shows a self-aligning well apparatus such as a plug (abstract) with figures 3A, 3B, 3C and 3D showing sawtooth teeth 102. Line 61 of column 8 states the, “teeth 102 extend from the side wall 107 (the outer edge of the recess 103) inwardly to the inner edge of an opening 114”. Lines 13 and 14 of column 9 state that the teeth of adjacent units inter-engage. The paragraph at the top of column 6 states adjacent units have protrusions and spaces with “protrusions of one device are receivable by the other device as the two anti-rotation devices approach each other to co-act, the protrusions and spaces configured and disposed so that after initial misalignment of the two devices and upon initiation of rotation of at least one of them, the protrusion of one device bears against and pivots against a recess inner wall or against a face of a protrusion of the other device to pivot one device with respect to the other to align the two devices and to bring opposing protrusion faces into planar contact.” It would have been obvious to one of ordinary skill in the art at the time of filing to modify the protrusions of Frazier by making the protrusions in a sawtooth pattern to assist in the alignment of the adjacent components.
In regard to claim 25, paragraph 54 of Frazier states that the anti-rotation feature (the clutch) can be positioned on a shoe or the mandrel. In regard to claim 27, Frazier’s paragraph 45 states that plug 600 can include a mandrel 608 with a passageway or bore therethrough. In regard to claim 28, figure 10 of Frazier shows the first and second clutches extending around the entire circumference. The clutches are seen to inherently self-center. Glaser’s paragraph at the top of column 6 teaches the self-alignment provided by the projections. In regard to claim 29, the multiple protrusions and valleys shown on the clutches in Frazier’s figure 10 provide multiple locking positions (each protrusion in each of the clutches can be matched with any of the valleys in the other). The same is true of the teeth of Glaser. In regard to claims 30-32 figure 6D of Frazier shows ball 623 at the top of a plug. See paragraphs 46 and 64 for a description of the seat and the blocking of flow. In regard to claim 33, Frazier’s figure 10 shows the mating of a first clutch with a second clutch and paragraph 54 describes multiple plugs with clutches contacting each other to prevent rotation of the plugs when one plug contacts a lower plug and the clutches mesh. Further, the paragraph at the top of column 6 of Glaser states adjacent units have protrusions and spaces with “protrusions of one device are receivable by the other device as the two anti-rotation devices approach each other to co-act, the protrusions and spaces configured and disposed so that after initial misalignment of the two devices and upon initiation of rotation of at least one of them, the protrusion of one device bears against and pivots against a recess inner wall or against a face of a protrusion of the other device to pivot one device with respect to the other to align the two devices and to bring opposing protrusion faces into planar contact.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Watson (US 5,095,980) shows a plug for a wellbore with mating sawtooth projections on adjacent units to prevent relative rotation.
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 WILLIAM C DOERRLER whose telephone number is (571)272-4807. The examiner can normally be reached M-F, 7-5.
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 Engle can be reached on (571) 272-6660. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM C DOERRLER whose telephone number is (571)272-4807. The examiner can normally be reached M-F, 7-5.
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 Engle can be reached on (571) 272-6660. 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.
/WILLIAM C DOERRLER/Reexamination Specialist, Art Unit 3993
Conferees: /WILLIAM E DONDERO/ /Patricia L Engle/ Reexamination Specialist, AU 3993 SPRS, AU 3993