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 .
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.
Claims 1-3, 6, 7, 15-17, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent No. 8,657,006 to Mire et al.
In re claim 1, Mire teaches a tubular shear assembly for use with a subterranean well, the tubular shear assembly comprising:
a tubular shear device (20) configured to shear a tubular string (14) that extends into the well, the tubular shear device comprising:
a body (52); a fixed shear jaw (54); and
a rotary shear jaw (55) configured to rotate relative to the body and the fixed shear jaw to shear the tubular string (Col. 3, lines 42-45);
a frame (11, 21) configured to displace laterally relative to the tubular string; and
a tubular handling device (18) secured to the frame (11, 21), the tubular handling device comprising a first actuator (19) configured to displace a section of the tubular string (14) laterally relative to the frame.
Examiner’s note, the first actuator merely has to be capable of being configured to displace a section of the tubular string laterally relative to the frame, in which it is.
In re claim 2, in which the tubular shear device is secured to the frame (as shown in at least figures 7-8).
In re claim 3, in which the tubular shear device (20) is suspended from the frame (21).
In re claim 6, in which the rotary shear jaw (55) is configured to rotate about a pivot (56) secured to the body (52)
In re claim 7, in which the fixed shear jaw (54) is not rotatable relative to the pivot.
In re claim 15, Mire teaches a tubular shear assembly for use with a subterranean well, the tubular shear assembly comprising:
a frame (11, 20) configured to displace laterally relative to a tubular string (14) that extends into the well;
a tubular handling device (18) secured to the frame (11, 21), the tubular handling device comprising a first actuator (19) configured to displace an upper section of the tubular string (14) laterally relative to the frame after the tubular string has been sheared; and
a tubular shear device (20) supported by the frame (11, 21) and configured to shear the tubular string (14), the tubular shear device comprising:
a body (52) configured to displace laterally with the frame;
a fixed shear jaw (54); and
a rotary shear jaw (55) configured to rotate relative to the body and the fixed shear jaw to shear the tubular string.
Note, the first actuator of the tubular handling device has to be capable of displacing an upper section (note, the term upper does not define a specific section of the tubular string and this particular limitation is directed to the workpiece) of the tubular string relative to the frame after the tubular string has been sheared, in which it is.
In re claim 16, in which the tubular shear device (20) is suspended from the frame (as shown in at least Figures 7 and 8).
In re claim 17, in which the tubular handling device (13,18) is secured to the frame (11,21).
In re claim 19, in which the rotary shear jaw (55) is configured to rotate about a pivot (56) secured to the body.
In re claim 20, in which the fixed shear jaw (54) is not rotatable relative to the pivot.
Claims 8-12 and 14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US Patent No. 8,657,006 to Mire et al. in view of YouTube video clip entitled "Rotary Slips Care and Handling."
In re claim 8, Mire teaches a method of retrieving a tubular string from a subterranean well, the method comprising:
displacing a tubular shear device (20), the displacing comprising positioning the tubular string (14) between a fixed shear jaw (54) of the tubular shear device and a rotary shear jaw (55) of the tubular shear device; and
rotating the rotary shear jaw (55) relative to the fixed shear jaw (54), thereby shearing the tubular string (14); and
actuating a tubular handling device (via 19) which is secured to the frame, thereby laterally displacing a sheared section of the tubular string relative to the tubular shear device, after shearing.
In the event one may argue, Mire does not teach actuating a tubular handling device (via 19) which is secured to the frame thereby laterally displacing a sheared section of the tubular string relative to the tubular shear device, after shearing, Rotary Slips Care and Handling teaches actuating a tubular handling device to remove the slip with respect to the tubular string. When the device is removed, a section of the tubular string is laterally displaced (12:57-13:20).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide Mire with a tubular handling device as taught by Rotary Slips Care and Handling to maintain to maintain properly securing of the tubular string to prevent unwanted elongation and surface imperfections. One having ordinary skill in the art would recognize from the teachings of Rotary Slips Care and Handling that the tubular string has a degree of lateral displacement when the tubular handling device is actuated. The degree of lateral displacement leads to laterally displacing the sheared section of the tubular string relative to the tubular shearing device, after shearing.
In re claim 9, in which in the shearing of the tubular string (14), the fixed shear (54) jaw does not rotate.
In re claim 10, in which the tubular shear device (20) being secured to the frame (21).
In re claim 11, in which the tubular shear device being suspended from the frame (as shown in at least Figures 7 and 8).
In re claim 12, further comprising closing a gate (18) of a tubular handling device (13,18) prior to the shearing, thereby retaining the tubular string (14) with the tubular handling device.
In re claim 14, in which the rotating comprises rotating the rotary shear jaw (55) about a pivot (56) in a body of the tubular shear device, and in which the fixed shear jaw does not rotate about the pivot.
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 5 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Mire in view of US Patent Application Publication No. 20110271805 to Abadie et al.
In re claims 5 and 18, Mire teaches the tubular handling device, but does not teach the tubular handling device further comprises a gate configured to retain the tubular string section with the tubular handling device, and a second actuator configured to displace the gate between open and closed positions (claims 5 and 18).
Abadie teaches a tubular assembly having a tubular handling device (40) comprises a gate (45) configured to retain the tubular string section with the tubular handling device, and a second actuator (47) configured to displace the gate between open and closed positions, further comprising actuating the tubular handling device
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide Mire with a tubular handling device arrangement (gripping device arrangement) as taught by Abadie to maintain unwanted lateral movement during cutting. One having ordinary skill in the art would recognize Mire teaches one type of gripping device and Abadie teaches another type of gripping device; therefore, modifying Mire to have a gripping device as taught by Abadie is an obvious design choice, based on the intended cut and in order to maintain stability of various size tubular strings during cutting.
Response to Arguments
Applicant's arguments filed December 8, 2025 have been fully considered but they are not persuasive. Applicant argues Mire does not teach or suggest a tubular handling device secured to the frame, the tubular handling device comprising an actuator configured to displace an upper section of the tubular string relative to the frame after the tubular string has been sheared.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Regarding claims 1 and 15, the limitation preamble is directed to an apparatus. The claimed limitation “a tubular handling device secured to the frame, the tubular handling device comprising an actuator configured to displace an upper section of the tubular string relative to the frame after the tubular string has been sheared” has been analyzed as follows:
“a tubular handling device” is a positive recitation and taught by Mire as shown in at least Figure 1 and shown via reference characters 18 (tubular handling device) and 11,21 (frame).
“secured to the frame” is an intended use limitation; however, Mire teaches this limitation in at least Figure 1.
“the tubular handling device comprising a first actuator” is a positive limitation and the tubule handling device is shown via reference character 19
“configured to displace a section of the tubular string laterally relative to the frame” is an intended use limitation. The tubular handling device merely has to be capable of being configured to displace a section of the tubular string laterally relative to the frame, in which it is.
Regarding claim 8, the claim is directed to a method and is analyzed as set forth in the above rejection. The amendments to claim 8 changed the scope of claim 8; therefore, Applicant’s arguments with respect to claim 8 have been considered but are moot because the new ground of rejection does not rely the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
There are structural differences between the instant application and the claimed invention. Applicant claims “the tubular handling device comprises a first actuator,” which is a relatively phrase in the instant Application. Per Merriam Webster Dictionary, the term actuate is defined as “to put into mechanical action or motion.” This definition has a very broad scope. The structure of actuator has not been specifically defined nor has the structural relationship between the actuator and the tubular handling device been established.
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 JENNIFER S MATTHEWS whose telephone number is (571)270-5843. The examiner can normally be reached Monday-Thursday 8am-4pm.
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/JENNIFER S MATTHEWS/Primary Examiner, Art Unit 3724