DETAILED ACTION
Notice of 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
Claim Objections
The objection to claim 1 is withdrawn in light of the amendments.
Claim Rejections - 35 USC § 102
Applicant’s arguments regarding the rejection of claim 1 has been considered but is not persuasive.
Regarding claim 1, the Applicant argues that “claim 1 now positively recites that the compressible sleeve is configured to be positioned radially inward of a collar of the downhole tool, axially between the insert and the rotary connection, and configured to apply a portion of the preload force to restrain the insert that is at least partially within the collar. Support for the amendment can be found in at least FIG. 2 and para. [0021] of the instant specification. Logan discloses a compressible collar that itself forms the collar of the downhole tool', rather than a compressible sleeve positioned radially FIG. 2 and Para [0062] inward of a collar and axially between an insert and a rotary connection.”
The Examiner respectfully disagrees with the above arguments. Claim 1 only positively requires “a compressible sleeve” and the structural components of the compressible sleeve itself. The limitations of “an insert of a downhole tool” and “a collar of a downhole tool” are NOT positively required by the claim. The amended limitation of “wherein the compressible sleeve is configured to be positioned radially inward of a collar of the downhole tool and axially between the insert and the rotary connection” is a product-by-process limitation because the claim only requires that the “compressible sleeve” is capable of being positioned radially inward of a collar structure of the downhole tool. In a product-by-process claim the patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. Logan teaches all of the claimed structural features of the compressible sleeve (compressible collar 40 which comprises rings 41, 42 and spheres 45; pp[0068], Figs. 2, 3, 5) such as the “first shoulder”, “second shoulder” and “a plurality of rows of discreet slots”. Therefore, Logan already meets the limitations of claim 1. Additionally, Logan discloses that “sleeve is configured to be positioned radially inward of a collar of the downhole tool and axially between the insert and the rotary connection” in Fig.18 which illustrates that sleeve (45) can be positioned radially inward of a collar structure (31) of the downhole tool and axially sandwiched between insert (23) and rotary connection (30). For at least the above reasons, the rejection to claim 1 will be maintained. See MPEP 2113 Product-by-Process Claims.
Claim Rejections - 35 USC § 103
The rejection to claims 8 and 9 will be maintained because Logan still reads on the limitations of claim 1 from which claims 8 and 9 depend from.
Claim Rejections - 35 USC § 102
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 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) 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Logan et al. (U.S. Publication No. 20150330155).
Regarding claim 1, Logan teaches a compressible sleeve (compressible collar 40 which comprises rings 41, 42 and spheres 45; pp[0068], Figs. 2, 3, 5), comprising:
a first shoulder (upper 42; Fig.3) configured to press against an insert of a downhole tool (the upper shoulder 42 is configured to press against shoulder 27 of insert 23. Therefore, upper shoulder 42 is configured to press against “an insert” as claimed; pp[0068].
Note that the claim does not positively require “an insert” and “downhole tool” because the claim is directed to the “compressible sleeve” only. As such, “an insert of a downhole tool” is not required by the claim.);
a second shoulder (lower 42; Fig. 3) positioned along an opposite end of the first shoulder (upper 42), and configured to receive a pin of a rotary connection (lower 42 is configured to receive “a pin of a rotary connection” because it receives mating section 23; pp[0098], Fig. 3. The claim does not positively require “a pin of a rotary connection”; therefore, this limitation is not required by the claim.), wherein a rotation of the pin of the rotary connection to insert the rotary connection into a collar of the downhole tool is configured to apply a preload force to the second shoulder (The claim does not require this limitation because “an insert of a downhole tool”, “a collar” and “a pin of a rotary connection” are not positively required by the claim. The claim only positively requires “a compressible sleeve”; The lower 42 (second shoulder) receives a preload because the entire collar 40 is subject to compressive preloading; pp[0068],[0096], [0102]).
a plurality of rows of discrete slots (rows of gaps between the spheres 45 are “slots” between the rows of rings 41, 42; Fig. 5, 15A), each row extending along a curved surface in an azimuthal direction (the outer curved surface of collar 40 as shown; Fig. 5, 15A);
wherein the compressible sleeve is a unitary body including the plurality of rows of discrete slots (40 is a “unitary body” because it is a combination of rings 41, 42 and spheres 45 that are all coupled together to form a single unit, i.e. collar 40; Fig. 5),
wherein each of the discrete slots in the respective rows are circumferentially spaced by the unitary body of the compressible sleeve (the gaps are circumferentially spaced by spheres 45 (body) of the compressible collar 40; Fig. 5) and do not extend around the entire circumference of the compressible sleeve (each gap between the spheres 45 do not extend around the entire circumference of the compressible collar because the spheres interrupt the gaps; Fig. 5); and
wherein the compressible sleeve (40 comprising rings 41, 42 and spheres 45) is configured to be positioned radially inward of a collar of the downhole tool (Fig. 18 illustrates that sleeve (45) is configured to be to be positioned radially inward of a collar structure 31 of the downhole tool) and axially between the insert and the rotary connection (the sleeve is configured to be positioned axially between the insert 23 and rotary 30; pp[0127], Fig. 3) and is configured to apply a portion of the preload force to the insert to restrain the insert in place at least partially within the collar of the downhole tool (Fig. 18 illustrates that sleeve 40 can be sandwiched between insert 23 and collar 31. Compressive preloading is applied to the sleeve and therefore the insert 23 will be subject to this preload; pp[0126]).
Regarding claim 2, Logan teaches the compressible sleeve of claim 1, wherein the preload force is applied to the second shoulder (Compressive preloading is applied to the entire collar 40. As such, the lower 42 (second shoulder) receives a preload force; pp[0102]) and wherein the portion of the preload force is axially applied to the insert to lock the insert to restrain the insert to the collar of the downhole tool (Not required by the claim because these elements, as noted above, are not positively recited; However, the sleeve 40 is capable of this function because Fig. 18 illustrates that sleeve 40 can be sandwiched between insert 23 and collar 31. Compressive preloading is applied to the sleeve and therefore the insert 23 will be subject to this preload; pp[0126]).
Regarding claim 3, Logan teaches the compressible sleeve of claim 2, wherein the compressible sleeve (40) is configured to restrain the insert to the collar while the downhole tool experiences downhole vibrations (Not required by the claim; however, collar 40 is configured to restrain the insert to the collar while downhole tool experiences downhole vibrations because compressive preloading is applied to the collar 40 which will prevent or reduce flexure of the gap section 22, i.e. restraining 22; pp[0102], Fig. 3).
Regarding claim 4, Logan teaches the compressible sleeve of claim 1, wherein the plurality of slots (gaps between the spheres 45; Fig. 5) are configured to reduce a stiffness of the compressible sleeve (the gaps will reduce stiffness of 40 because there is nothing in the gaps from preventing the gapped sections of the 40 from bending; Fig. 5, pp[0104]).
Regarding claim 5, Logan teaches the compressible sleeve of claim 1, wherein the plurality of slots are configured to reduce a rigidity of the compressible sleeve (The gaps between the spheres 45 will reduce the rigidity of 40 and will cause 40 to bend more. Increasing the number of spheres 45, i.e. reducing the gaps, will increase the rigidity of 40; Fig. 5, pp[0104]).
Regarding claim 6, Logan teaches the compressible sleeve of claim 1, wherein the plurality of slots (gaps between sphere 45; Fig. 5, 15A) extend from the curved surface (curved outer surface of 40) inward toward a central axis of the compressible sleeve (gaps extend inward to the central axis of 40; Fig. 9).
Regarding claim 7, Logan teaches the compressible sleeve of claim 6, wherein the plurality of slots are staggered from each other (the gaps are axially staggered because the spheres 45 are staggered between each ring; Fig. 5, 15A).
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) 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Logan et al. (U.S. Publication No. 20150330155) in view of Oliphant (U.S. Patent No. 4428443).
Regarding claim 8, Logan teaches the compressible sleeve of claim 1.
Logan does not teach that the one or more of the plurality of slots are oval shaped.
Oliphant, drawn to a shock absorbing tool comprising a compressible sleeve, discloses the one or more of the plurality of slots (56 and 60) on the compressible sleeve (10) are oval shaped (slots 56 are oval shaped; Figs. 3, 4).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the slots of Logan such that the one or more slots are oval-shaped, as taught by Oliphant, with a reasonable expectation of success, in order to further facilitate dampening of the axial compressive forces (Col. 2, lines 39-43, Oliphant).
Regarding claim 9, Logan teaches the compressible sleeve of claim 1.
Logan is silent regarding wherein one or more of the plurality of slots have ends that are wider than a center portion.
Oliphant, drawn to a shock absorbing tool comprising a compressible sleeve, discloses one or more of the plurality of slots (56 and 60) have ends that are wider than a center portion (ends 56 are wider than center 60; Fig. 3, 4).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify slots of Logan such that the slot have ends that are wider than a center portion, with a reasonable expectation of success, because this shape further facilitates dampening of the axial compressive forces (Col. 2, lines 39-43, Oliphant).
Conclusion
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.
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/LAMIA QUAIM/Examiner, Art Unit 3676
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