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 5/8/2026 have been fully considered but they are not persuasive.
With respect to claim 1, Applicant argues that Peter does not disclose at least the features of "wherein the first portion includes a housing defining an outer housing surface of the first portion and wherein the second portion includes an inner mandrel and a lock nut fixedly connected to the inner mandrel, wherein the lock nut secures the electrically nonconductive material to the housing," or "wherein the lock nut is fixedly connected to the inner mandrel by a first thread disposed on a body of the lock nut."
Examiner respectfully disagrees.
Peter in pgh. 20 clearly stated that “the upper retaining portion 42 features an annular plug member 46 and a central tubular portion 48” and “a lower conducting portion 44 that is affixed to the retaining portion 42 by a threaded connection 43” - Fig. 3 clearly depicts that the tubular portion 48 of the lock nut 42 connected to the inner mandrel 44 by a first thread/the thread of the threaded connection 43 disposed on a body/the central tubular portion 48 of the lock nut 42.
The rejection of claims 1-4, 6-8, 10-12
With respect to claim 5, Applicant’s argument has been considered but are moot in view of the new ground(s) of rejection since the claim 5 is amended. 103 rejection has been changed to 102 rejection
With respect to claim 9, Applicant’s argument has been considered but are moot in view of the new ground(s) of rejection. The claim dependency has been changed to the amended claim 1 and the 103 rejection has been changed to 102 rejection.
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) 1-3, 5-6, 10-12, 21 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Peter (20040104047).
Peter discloses a downhole tool, comprising:
Re claim 1:
a voltage source comprising a first pole electrically connected to a first portion 34 (i.e., fig. 3) of the bottomhole assembly and a second pole electrically connected to a second portion 36 of the bottomhole assembly (i.e., abstract, "The central conductor assembly (40, i.e., fig. 2) is used to transmit electrical power and data across the gap sub assembly (33) between the upper portions (34) of the drill string and transmitter components housed within the MWD tool (36) disposed below the gap sub assembly" - electric power = current X voltage
https://www.bing.com/search?q=electrical%20powe%20has%20voltage&qs=n&form=QBRE&sp=-1&ghc=1&lq=0&pq=electrical%20powe%20has%20voltage&sc=12-27&sk=&cvid=4A201F6CABE440ECA3657C122B6D36FC
wherein the first portion 34 and the second 36 portion are electrically separated by electrically nonconductive material 84 between the first portion and the second portion (i.e., pgh. 24, "one or both of the threaded connectors 78, 80 are coated with an insulative material, shown schematically at 84 to provide electrical isolation between the gap sub 34 and MWD sub 36. Suitable insulative materials for this application include ceramic oxide or a plastic epoxy mix, preferably containing small ceramic particles to transmit compressive forces")
wherein the first portion 34 includes a housing defining an outer housing surface of the first portion (i.e., fig. 3) and wherein the second portion 36 includes an inner mandrel and a lock nut 42 fixedly connected to the inner mandrel, wherein the lock nut secures the electrically nonconductive material 64 (i.e., pgh. 22, "The insulative ring member 64 formed of an insulative material such as ceramic or a plastic polymer, such as PEEK (PolyEtherEtherKeytone)") to the housing, wherein the lock nut is fixedly connected to the inner mandrel by a first thread disposed on a body of the lock (i.e., pgh. 20, “the upper retaining portion 42 features an annular plug member 46 and a central tubular portion 48” and “a lower conducting portion 44 that is affixed to the retaining portion 42 by a threaded connection 43” - Fig. 3 clearly depicts that the tubular portion 48 of the lock nut 42 connected to the inner mandrel 44 by a first thread/the thread of the threaded connection 43 disposed on a body/the central tubular portion 48 of the lock nut 42.
Re claim 2, the lock nut 42 has an outer lock nut diameter and the outer housing surface has an outer housing surface diameter that is larger than the outer lock nut diameter (i.e., fig. 3).
Re claim 3, least one friction shim 35 disposed axially between the housing 34 and the second portion 36 (i.e., fig. 3, 35 creates certain degree of friction when it contacts 36).
Re claim 5, thread the first portion 34 further includes a sub 26 (i.e., fig. 2) that is fixedly connected to the housing 34 by a second thread 27, the second thread includes two mating surfaces, and the two mating surfaces are in electrical contact (i.e., each thread has two mating surfaces,
https://www.bing.com/search?q=does+thraed+have+two+mating+surface%3F&cvid=ad41426952c84946b283b7e64ccacb0a&gs_lcrp=EgRlZGdlKgYIABBFGDkyBggAEEUYOTIGCAEQABhAMggIAhDpBxj8VTIHCAMQ6wcYQNIBCTExMjc5ajBqN6gCALACAA&FORM=ANAB01&adppc=EDGEINJP&PC=EDGEINJP
and the first portion 34 and the sub 26 are metallic as shown by the cross-hatching: MPEP 608.02, subsection IX). Metals are conductor of electricity thus conductor touching conductor is electrical contact).
Re claim 6, the lock nut 42 secures the electrically nonconductive material 64 at least partially by clamping (i.e., fig. 3 depicts the but 42 closes up to the material securely).
Re claim 9, first thread comprises two mating surfaces and wherein the two mating surfaces are in electrical contact (i.e., each thread has two mating surfaces,
https://www.bing.com/search?q=does+thraed+have+two+mating+surface%3F&cvid=ad41426952c84946b283b7e64ccacb0a&gs_lcrp=EgRlZGdlKgYIABBFGDkyBggAEEUYOTIGCAEQABhAMggIAhDpBxj8VTIHCAMQ6wcYQNIBCTExMjc5ajBqN6gCALACAA&FORM=ANAB01&adppc=EDGEINJP&PC=EDGEINJP
and the central tubular portion 48 and the mandrel 44 are metallic as shown by the cross-hatching: MPEP 608.02, subsection IX). Metals are conductor of electricity thus conductor touching conductor is electrical contact).
Re claim 10, the housing and/or the second portion are in direct contact with a drilling fluid in an annulus between a wall of the wellbore and the downhole tool (i.e., pgh. 20).
Re claim 11, a sleeve (i.e., fig. 3 depicts 84 forms sleeve), wherein the inner mandrel is disposed within the sleeve and wherein the sleeve is electrically isolated from the inner mandrel (i.e., pgh. 24, "electrical isolation").
Re claim 12, the electrically nonconductive material comprises one or more insulating rings 64 (i.e., fig. 3).
Peter discloses a downhole tool, comprising:
Re claim 21:
a voltage source comprising a first pole electrically connected to a first portion of the bottomhole assembly and a second pole electrically connected to a second portion of the bottomhole assembly, wherein the first portion and the second portion are electrically separated by electrically nonconductive material between the first portion and the second portion (pertinent to claim 1 above),
wherein:
the electrically nonconductive material comprising a shoulder ring 84, placed between adjacent shoulders of the first portion 34 and the second portion 36;
the second portion includes an inner mandrel 44 and a lock nut 42 fixedly connected to the inner mandrel (i.e., fig. 3); and
the lock nut 42 applies compressive load (i.e., weight of 34 and 36 since the lock nut connected to them) to the shoulder ring 84 and the adjacent shoulders of at least one of the first portion 34 and the second portion 36 to transfer drilling torque between the first portion and the second portion (i.e., figs 1-2, the first and second portion are part of drill string) of the bottomhole assembly.
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) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peter.
Peter discloses the friction shim, but is silent on comprising one or more microparticles at one or more surfaces of the friction shim. However, the friction shim produces certain size of particles upon the friction. It would have been obvious to one of ordinary skill in the art before the effective filing date of present application to try the tool of Peter with friction shim that produces microparticles for a smooth surface of the shim, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Claim(s) 4 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peter in view of Dopf et al. (20050068703 - Dopf).
Re claim 4, Peter discloses the lock nut and the electrically nonconductive material as described above, but is silent on a torque sleeve disposed axially between the lock nut and the electrically nonconductive material, the torque sleeve including an anti-rotation element that prevents rotation of the torque sleeve relative to the inner mandrel. Dopf teaches (i.e., figs 2-3, pgh. 44) a second sleeve 151 is disposed between the housing 103 and the mandrel 104, wherein torsion sleeve 150 (fig. 3A) are constructed and arranged to ensure that no relative rotation between the mandrel 104 and housing 103 may occur. It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to try the tool of Peter with torque sleeve as taught by Dopf to transmit power and torque effectively while accommodating misalignment and reducing shock and vibration https://www.bing.com/search?q=benefit+of+torque+sleeve&FORM=AWRE
An anti- rotation element of Dopf also applies to claim 8 since it is directed to an anti-rotation element.
Conclusion
THIS ACTION IS MADE FINAL. 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 YONG-SUK (PHILIP) RO whose telephone number is (571)270-5466. The examiner can normally be reached Monday-Friday 8:00-4:30.
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/YONG-SUK (PHILIP) RO/Primary Examiner, Art Unit 3676
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