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
The amendments dated 1/30/26 have been entered. Applicant’s response has resolved the previously presented 112(b) rejection.
Applicant’s arguments with respect to the prior art rejection of the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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) 1-2, 8-10, and 13-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bishop (US 20100071908 A1).
Regarding claim 1, Bishop teaches a backup (see elements below, please note that although reference will be made to Figs 1-3 for convenience, the examiner intends to rely on the embodiment with “wings 26, 28 extending in the same direction”, see Para 0010) comprising:
a gage ring having an axis (Fig 2, 78, axis extending through the bore) and a frustoconical surface (Fig 2, downhole surface indicated at 78) and a groove (Fig 2, Para 0013, element 18/92 is a “slot”) having a relatively shorter dimension (Fig 2, width of the slot 18/92) and a relatively longer dimension in the frustoconical surface (Fig 2, length of the slot 18/92 ), the relatively longer dimension of the groove extending axially of the gage ring (Fig 2, length of the slot 18/92 is in the axial direction);
a segment (Fig 1, segments of 10, detailed in Fig 3) having a nose engaged with the groove by the nose extending into the groove (Para 0013, protrusions 96, see Fig 2-3), the segment having an element portion having a first radially outer surface (Fig 1, bottom portion of segment, 36 including at least 28), and an integral overlap finger extending the from the element portion, coextensively with the first radially outer surface (Fig 1, finger 28) and a finger receptor (Fig 1, receptor 44) and a gage portion having a second radially outer surface (Fig 1, bottom portion of segment, 32 including at least 26), and an integral overlap finger extending from the gage portion (Fig 1, finger 26), coextensively with the second radially outer surface and in the same direction as the element portion overlap finger (“wings 26, 28 extending in the same direction”, see Para 0010) and a finger receptor (Fig 1, 3, space 40);
a wedge ring in contact with the segment (Fig 2, 82); and
a retainer member disposed to retain the segment (Fig 2, springs 22).
Regarding claim 2, Bishop teaches wherein the retainer member is a solid material is disposed about a longitudinal axis of the member (Fig 2, springs 22).
Regarding claim 8, Bishop teaches wherein one or both of the element portion and gage portion overlap finger includes a chamfer (Fig 3, finger 26 has chamfer as seen).
Regarding claim 9, Bishop teaches hold down recesses in the segment (Fig 3, segment has recesses at 31 to accommodate retainer which provide a force to hold the segments down/radially inwardly).
Regarding claim 10, Bishop teaches a downhole tool comprising: an element (Fig 2, 58); a first backup as claimed in claim 1 adjacent the element (see claim 1).
Regarding claim 13, Bishop teaches a borehole system comprising: a borehole in a subsurface formation (Para 002, 0004, downhole tool); a string disposed within the borehole (Para 0002, 0004, deployed on a tubular); a backup as claimed in claim 1 disposed within or as a part of the string (see claim 1; Para 0002, 0004).
Regarding claim 14, Bishop teaches a borehole system comprising: a borehole in a subsurface formation (Para 002, 0004, downhole tool); a string disposed within the borehole (Para 0002, 0004, deployed on a tubular); a tool as claimed in claim 10 disposed within or as a part of the string (see claim 1; Para 0002, 0004).
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) 3 and 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bishop (US 20100071908 A1), in view of Carisella (US 6354372 B1).
Regarding claim 3, Bishop is silent on wherein the retainer member is a garter spring disposed about a longitudinal axis of the retainer member.
Carisella teaches the retainer member is a garter spring disposed about a longitudinal axis of the retainer member (Fig 2, segment retainer 120; Column 4, line 6 “120 may be a garter spring”).
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 Bishop by having retaining member belt and its corresponding hold down and cover as disclosed by Carisella because it would be a simple substitution of one known element (the retainer spring of Bishop) for another (the retainer belt and cover of Carisella) to obtain predictable results (to hold segments together in a contracted state when running into the borehole).
Regarding claim 6, Bishop is silent on a hold down attached to the segment to retain the retainer member to the segment.
Carisella teaches a hold down attached to the segment to retain the retainer member to the segment (Fig 3, segment with 106A has a hold down 106A to hold retainer belt 104).
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 Bishop by having retaining member belt and its corresponding hold down as disclosed by Carisella because it would be a simple substitution of one known element (the retainer spring of Bishop) for another (the retainer belt of Carisella) to obtain predictable results (to hold segments together in a contracted state when running into the borehole).
Regarding claim 7, Bishop as modified teaches wherein the segment includes threaded holes to secure the hold down to the segment (Carisella, Fig 3, Column 3, lines 32-41, segment as seen is a threaded screw, screwed into the segment).
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bishop (US 20100071908 A1), in view of Heiman (US 20190360297 A1).
Regarding claim 11, Bishop teaches in the background “back up the two ends of a single seal”, Bishop is not explicit on a second backup also adjacent the element and spaced from the first backup by the element.
Heiman teaches a second backup also adjacent the element and spaced from the first backup by the element (Fig 11, second back up at downhole 50, not specifically labelled, but generally at 34 which sandwiches the seal 86 to 88).
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 Bishop by having a second backup also adjacent the element and spaced from the first backup by the element as disclosed by Heiman because it would limit extrusion of the seal on its opposing end.
Regarding claim 12, Bishop is silent on a method for managing a borehole system comprising: setting and unsetting the backup as claimed in claim 1 a plurality of times.
Heiman teaches setting and unsetting the backup a plurality of times (Abstract, “backup ring (50) to elastically expand and retract”).
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 Bishop by setting and unsetting the backup a plurality of times as disclosed by Heiman because it would allow for the device to be re-used which would reduce costs over a single-use device.
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 THEODORE N YAO whose telephone number is (571)272-8745. The examiner can normally be reached typically 8am-4pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, TARA SCHIMPF can be reached at (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