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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-12, in the reply filed on 12/2/2025 is acknowledged.
Claim Rejections - 35 USC § 112
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.
Claim 10 is 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 10 recites “the housing and/or the second portion” that is unclear whether it indicates all of the limitations in the claim or only some. Is it referring “the housing” or “the second portion” or both?
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, 6, 10-12 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Peter (20040104027).
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.
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 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 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).
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) 5 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peter.
Re claim 5, Peter discloses the lock nut is fixedly connected to the inner mandrel, but is silent on the lock nut is fixedly connected to the inner mandrel by a thread. However, a thread is well known to connect elements and Peter clearly teaches threaded connector 78, 80 (i.e., fig. 3, pgh. 23). 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 the lock nut fixedly connected to the inner mandrel by a thread for cost savings and sustainability (https://www.bing.com/search?q=benefoit+of+threaded+connctor&cvid=ebab3201af124209bf62a29603283fba&gs_lcrp=EgRlZGdlKgYIABBFGDkyBggAEEUYOTIGCAEQABhAMgYIAhAAGEAyBggDEAAYQDIGCAQQABhAMgYIBRAAGEAyBggGEAAYQDIGCAcQABhAMgYICBAAGEAyCAgJEOkHGPxV0gEIOTY3N2owajGoAgCwAgA&FORM=ANAB01&PC=U531).
Re claim 7, 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.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peter in view of Bargach et al. (10822884 – Bargach)
Peter teaches the thread comprises two mating surfaces, but is silent on the two mating surfaces are in electrical contact. Bargarh teaches thread with two mating surfaces 156, 152 in electrical contact (i.e., fig. 3) (they are metallic as shown by the cross-hatching: MPEP §608.02, subsection IX). Metals are conductor of electricity thus conductor touching conductor are in electrical contact. It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to modify the thread of Peter by having the two mating surfaces in electrical contact for better electricity flow (i.e. no separate conductor needed between the metals since the metals are direct conductor) between the mating surfaces.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Derkacz et al. (10156102) and Minosyan (9810028) teach dowhole gap assembly for EM data telemetry.
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/YONG-SUK (PHILIP) RO/ Primary Examiner, Art Unit 3676