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 .
Response to Arguments
Applicant’s arguments, filed February 21, 2025, have been fully considered.
Applicant has argued that the amended drawings filed February 21 overcome the objections set forth in the previous Office Action. Examiner asserts that many objections have been overcome and have been withdrawn. However, other objections remain and are set forth below.
With regard to the specification, applicant has argued that the amended abstract overcomes the objection in the previous Office Action. Examiner agrees, and has withdrawn the objection. However, new objections to the specification are set forth below.
With regard to the rejections under 35 U.S.C. 112, applicant has argued the following:
Applicant argues that the amendment replacing the word “selective” with --gripping-- in claims 1 and 11 overcomes the rejections under 112(a) and 112(b). Examiner disagrees, due to the addition of amended language that contradicts the “gripping” limitation. See rejection below.
Applicant argues that claims 13 and 17 do not conflict with claims 11 and 15, respectively, since the connections recited in claims 13 and 17 are “complimentary” to the connections recited in claims 11 and 15. Examiner respectfully disagrees. See rejection below for full reasoning.
Regarding the prior art, applicant has argued that the cited references, Knight, Tilley, and Chau, alone or in combination, fail to teach the limitations added to claims 1, 11, and 15. However, as discussed below in the rejections under 35 U.S.C. 112, the amended language in claims 1, 11, and 15 is not supported in the specification and is also indefinite. Therefore, the claims are being examined as best understood, and remain rejected under the prior art of record.
Drawings
The drawings were received on February 21, 2025. Though the amended drawings overcome some of the previous objections due to the improvement in line quality and the addition of proper cross-hatching, these drawings are not acceptable.
The drawings are objected to because:
Element 240a in Fig. 8 was changed to “204a” in the amended drawings. This numeral is incorrect and should be changed back to “240a.” This change was not indicated in the marked-up copy of the drawings submitted by applicant, and thus is believed to be an inadvertent change.
Elements 240a, 232b, and 840b in Fig. 8 should be provided with cross-hatching, as they are cut by the plane of view, and given the fact that they represent a prominent part of the claims.
Element 245b in Fig. 8 is intended to represent an engagement means “along the tubular outer surface of the connector member 840b” (see Paragraph 0055). However, the lead line for numeral 245b does not point to the connector member.
37 CFR 1.84(h) states that views must be “clearly separated from one another.” Figs. 2A-2C, 3A, and 3B are not clearly separated from one another, as the reference numerals from adjacent figures encroach on each other.
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:
Paragraph 0046, line 8, the phrase “to allow the connector member 240b to be movably supported in the connector member 240b” does not make sense. It appears that the second instance of “connector member 240b” should be changed to --receiver 232b--.
Paragraph 0055, lines 6, numeral 840b is used for the term “grippers.” It appears that “840b” should be changed to --245b-- in this instance.
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, 3-6, and 8-19 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.
With regard to claims 1, 11, and 15, the phrase “a plunger spring receivable in a groove encircling an outer periphery of the connector member” is not supported by the disclosure. The plunger spring 245a in Fig. 3 does not appear to engage any groove. Instead, it is the contact spring 348 that is positioned within a groove.
Claims 3-6, 8-10, 12-14, and 16-19 are rejected based on their dependence upon rejected claims.
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, 3-6, and 8-19 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 recites, in lines 2-3, that the bulkhead and receiver are “positioned in a housing.” In line 4, the bulkhead has a contact member. In line 7, a connector member is in the receiver of the downhole tool. Lines 12-13 state that both the contact member and the connector member are “connected to electronics in the housing.” Thus, it follows that the contact member and the connector member must be at opposite ends of the housing (with the electronics positioned between them), and do not connect to one another. Therefore, when claim 1 states, in lines 14-15, “wherein the receptacle end of the connector member is shaped to electrically receive the contact end of the contact member,” this cannot be correct. It is suggested that this phrase be changed to --…to electrically receive the contact end of [[the]] a contact member of an adjacent component-- or similar. The final clause, “wherein the contact end has connector contacts extending from the contact end, the connector contacts receivable in the receptacle end of the connector member” is confusing for the same reason. It is suggested that “the receptacle end of the connector member” be changed to --[[the]] a receptacle end of [[the]] a connector member of the adjacent component-- or similar.
Note: The same rejection applies to claims 11 and 15, although the line numbers are different.
With regard to claim 1: In lines 9-10, the claim recites “an engager positioned about an outer surface of the connector member to provide gripping engagement of the connector member with the receiver.” Later, in lines 17-18, the claim states that “the engager comprises a plunger spring receivable in a groove encircling an outer periphery of the connector member to provide movable engagement of the plunger connector member about the receiver.” It is unclear how the engager can provide both “gripping engagement” and “movable engagement.”
Note: The same rejection applies to claims 11 and 15, although the line numbers are different.
Additionally, claims 1, 11, and 15 each contain the phrase “to provide movable engagement of the plunger connector member about the receiver,” which is confusing in view of the disclosure. The plunger connector member 240b is inside the receiver 232b. The term “about” implies that the plunger is located outside and around the receiver. Appropriate clarification and/or correction is required.
With regard to claim 17, as amended, this claim adds confusion by stating “the receptacle end of the connector member in an another receiver of the another downhole component.” It is suggested that this phrase be changed to --the receptacle end of [[the]] a connector member in a receiver of the another downhole component.” Note that any dependent claims must be corrected accordingly.
Claims 3-6, 8-10, 12-14, 16, 18, and 19 are rejected based on their dependence upon rejected claims.
Claim Interpretation
In view of the rejections under 35 U.S.C. 112 set forth above, the limitation in claims 1, 11, and 15 that the engager provides “gripping engagement of the connector member with the receiver” will essentially be ignored, because the limitation contradicts the later recitations in the claims that the connector member has “movable engagement…about the receiver.”
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) 1, 3, 5, 6, 8-12, and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Knight et al. (US 2020/0256166, hereinafter Knight) in view of Chau (US 2003/0075319).
With regard to claim 1, as best understood, Knight discloses a component connector (Fig. 4) for a downhole tool positionable in a wellbore penetrating a subterranean formation, the downhole tool comprising a bulkhead (502) and a receiver (330) positioned in a housing (300A), the component connector comprising:
a contact member (220) positionable in the bulkhead of the downhole tool, the contact member comprising an elongate body with a coupling end (i.e. the uphole end) and a contact end (proximate 226); and
a connector member (342) positionable in the receiver (330) of the downhole tool, the connector member having another elongate body having a coupler end (i.e. the downhole end) and a receptacle end (i.e. the uphole end), the connector member having an engager (344) positioned about an outer surface of the connector member to provide gripping engagement of the connector member with the receiver (note that this limitation is not understood in view of the rejection under 35 U.S.C. 112 above);
wherein the coupling end of the contact member and the coupler end of the connector member are connected to electronics (at least 524) in the housing and wherein the receptacle end of the connector member is shaped to electrically receive the contact end of the contact member whereby electronics in adjacent components of the downhole tool are electrically coupled (see Figs. 3-5, it is noted that, due to the presence of the electrical connector, all of the electronics within the entire tool string are electrically coupled to each other);
wherein the connector member is a plunger connector member (element 342 moves as a plunger) and wherein the engager comprises a plunger spring (344) receivable in a groove encircling an outer periphery of the connector member (note that this limitation is not supported in the specification) to provide movable engagement of the plunger connector member about the receiver (the plunger 342 moves relative to the receiver 330); and
Knight discloses that the contact end has a connector contact (226) extending from the contact end, the connector contacts receivable in the receptacle end of the connector member. In other words, Knight teaches only a single contact 226, rather than plural contacts.
Chau teaches a downhole electrical connection, where the male element has plural contacts (148).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Knight by providing the multiple contact fingers of Chau on the male electrical connector, in order to provide a stronger physical connection due to the outward bias of the fingers (Chau, paragraph 0072, “finger arms 146 are resiliently biased towards one another in a way which maintains electrical contact between contacts 148 and electrical contact surface 123”).
With regard to claim 3, Knight teaches that the connector member (342) is a tube connector member (see tubular female end which engages with contact end 226) and wherein the engager comprises a raised gripper (i.e. the shoulder that abuts spring 344) to provide fixed engagement of the tube connector member in the receiver (the bias force of the spring holds the connector member fixed in the position shown in Fig. 4).
With regard to claim 5, Knight in view of Chau fails to disclose that the connector member (342 of Knight) further comprises at least one of an insulated layer, a non-insulated layer, and combinations thereof disposed about the outer surface thereof. However, Knight does teach an insulated layer (230) around the contact member (220).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Knight in view of Chau such that the insulated layer was also placed on the connector member, in addition to the contact member, in order to provide further insulation between the electrical components and the housing (see Knight, paragraph 0066).
With regard to claim 6, Knight teaches that the contact member has a non-conductive contact coating (230) disposed about an outer surface thereof.
With regard to claim 8, Knight, as modified by Chau, discloses dual connector contacts (see two connector elements 148 in Fig. 2 of Chau, for example).
With regard to claims 9 and 10, Knight, as modified by Chau, fails to disclose triple or quadruple connector contacts, however, It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Knight in view of Chau by providing triple or quadruple contacts, in order to increase the surface area of the electrical connection and thus decrease the chance of failure of the connection, and furthermore because it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
With regard to claim 11, Knight discloses a downhole tool positionable in a wellbore penetrating a subterranean formation, the downhole tool comprising:
adjacent components (300A, 300B, Fig. 2), each of the adjacent components comprising a bulkhead (502+560+592 in the upper component, and 102+160+240+200 of the lower component) and a receiver (330) positioned in a housing (300B + 500 of the upper component, 300B + 100 of the lower component), the housing having a pin end (upper component: threads 513; lower component: threads proximate numeral 118) and a box end (upper component: threads proximate numeral 118 at the female end of housing 300A; lower component: threads proximate numeral 613 at the lower end of housing 300B) at each end thereof, the pin end of a first of the adjacent components connectable to the box end of a second of the adjacent components (see Figs. 3-5, if considering the lower component to be the “first component” and the upper component to be the “second component”); and
a component connector (Figs. 3-5 and described in more detail below) positioned in each of the adjacent components, each of the component connectors comprising:
a contact member (220) positionable in the bulkhead, the contact member comprising an elongate body with a coupling end (224) and a contact end (226); and
a connector member (342) positionable in the receiver, the connector member having another elongate body having a coupler end (346) and a receptacle end (proximate 226), the connector member having an engager (344) positioned about an outer surface of the connector member to provide gripping engagement of the connector member with the receiver (note that this limitation is not understood in view of the rejection under 35 U.S.C. 112 set forth above);
wherein the coupling end of the contact member and the coupler end of the connector member are connected to electronics (at least elements 124, 524, 400A, 400B) in the housing and wherein the receptacle end of the connector member is shaped to electrically receive the contact end of the contact member (Figs. 2-5) whereby electronics in the adjacent components of the downhole tool are electrically coupled (note that, due to the presence of the electrical connector, all the electronics within the entire tool string are electrically coupled together);
wherein the connector member is a plunger connector member (element 342 moves as a plunger) and wherein the engager comprises a plunger spring (344) receivable in a groove encircling an outer periphery of the connector member (note that this limitation is not supported in the specification) to provide movable engagement of the plunger connector member about the receiver (the plunger 342 moves relative to the receiver 330); and
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Knight discloses that the contact end has a connector contact (226) extending from the contact end, the connector contacts receivable in the receptacle end of the connector member. In other words, Knight teaches only a single contact 226, rather than plural contacts.
Chau teaches a downhole electrical connection, where the male element has plural contacts (148).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Knight by providing the multiple contact fingers of Chau on the male electrical connector, in order to provide a stronger physical connection due to the outward bias of the fingers (Chau, paragraph 0072, “finger arms 146 are resiliently biased towards one another in a way which maintains electrical contact between contacts 148 and electrical contact surface 123”).
With regard to claim 12, Knight teaches that each of the adjacent components comprises one of a setting tool, a top sub, a release tool, a perforating gun (300A, 300B), and a collar locator.
With regard to claim 14, Knight teaches that at least one of the adjacent components is electrically connected to the surface by a conveyance (see element 24 in Fig. 1).
With regard to claim 15, Knight discloses a method of assembling a downhole tool, the method comprising:
providing a downhole component (300A) comprising a bulkhead (102+160+240+200) and a receiver (330) positioned in a housing (300A+100);
positioning a contact member (220) in the bulkhead, the contact member comprising an elongate body with a coupling end (540) and a contact end (226);
positioning a connector member (342) in the receiver such that an engager (344) along an outer surface of the connector member is in gripping engagement with the receiver (note that this limitation is not understood in view of the rejection under 35 U.S.C. 112 set forth above), the connector member having another elongate body having a coupler end (proximate numeral 346 in Fig. 4) and a receptacle end (proximate numeral 226 in Fig. 4); and
electrically connecting the coupling end of the contact member and the coupler end of the connector member (see Fig. 3) to electronics (124, 524, 400A, 400B, etc.) in the housing;
wherein the connector member is a plunger connector member (element 342 moves as a plunger) and wherein the engager comprises a plunger spring (344) receivable in a groove encircling an outer periphery of the connector member (note that this limitation is not supported in the specification) to provide movable engagement of the plunger connector member about the receiver (the plunger 342 moves relative to the receiver 330); and
Knight discloses that the contact end has a connector contact (226) extending from the contact end, the connector contacts receivable in the receptacle end of the connector member. In other words, Knight teaches only a single contact 226, rather than plural contacts.
Chau teaches a downhole electrical connection, where the male element has plural contacts (148).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Knight by providing the multiple contact fingers of Chau on the male electrical connector, in order to provide a stronger physical connection due to the outward bias of the fingers (Chau, paragraph 0072, “finger arms 146 are resiliently biased towards one another in a way which maintains electrical contact between contacts 148 and electrical contact surface 123”).
With regard to claim 16, Knight discloses connecting the downhole component (300A) to another downhole component (300B) by threadedly connecting a pin end of the housing of the downhole component (i.e. the threads 118 on the outer surface of the pin end shown in Fig. 3) to a box end (i.e. threads 110 on the inner surface of element 300A of the upper component) of the another downhole component.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Knight in view of Chau as applied to claim 1 above, and further in view of Tilley et al. (US 2016/0230477, hereinafter Tilley).
With regard to claim 4, Knight in view of Chau fails to disclose a connection spring positioned about the contact end of the contact member.
Tilley teaches a downhole electrical connection in which a contact member (203) is received within a connector member (103), and connection springs (230) transfer current between the contact and connector members.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Knight in view of Chau by providing the connector springs of Tilley around Knight’s contact member, as the springs allow “for longitudinal and rotational movement” of the contact member with respect to the connector member, “while making electrical contact and providing for transmission of electrical power” (see Tilley, paragraph 0022).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT E FULLER whose telephone number is (571)272-6300. The examiner can normally be reached M-F 8:30AM - 5:30PM.
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/ROBERT E FULLER/ Primary Examiner, Art Unit 3676