DETAILED ACTION
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 30 September 2025 have been fully considered but they are not persuasive.
Applicant argues that neither Nitis nor McGlothern teach a bore sensor that dynamically transitions between radially extended and compressed states based on casing size and that directly controls axial movement between a mandrel and collet body. Applicant argues that Nitis does not teach bore sensor integrated into both the collet body and the mandrel slot and McGlothern does not teach the sensor physically prevents or allows movement based on casing size. Applicant further argues that Nitis does not teach a bore sensor that determines engagement based on casing size. Examiner respectfully disagrees. While Nitis does not teach the bore sensor integrated into both the collet body and the mandrel slot McGlothern does as discussed below. McGlothern further teaches the sensor physically prevents or allows movement based on casing size (i.e., size of exterior tubing) as discussed below. If the outer tubing (i.e., casing) is too large then it will not contact the bore sensor and prevent movement (see McGlothern Fig. 8A). The fact that the outer tubing is casing is taught by Nitis as discussed below. Thus, the combination of references teaches all limitations.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, having a tool configured to deploy only under specific conditions is within the ordinary skill in the art.
In response to applicant's argument that the proposed combination would require substantial redesign, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant's argument that the claimed invention solves the specific problem of automatically controlling axial movement between tool components based on casing size through the claimed structures/functions, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
The provisional double patenting rejections are withdrawn due to the filing and approval of terminal disclaimers.
Claim Objections
Applicant is advised that should claim 9 be found allowable, claim 25 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claims 1-8, 11-18, and 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Nitis (US 6,012,527) in view of McGlothern (US 2012/0160521).
With respect to claim 1: Nitis discloses a downhole tool (Figs. 8-9), comprising:
a latch collet (28, 23), in a casing (16, 18), including a collet body (28) and a plurality of collet fingers (23; Col. 9, lines 9-60);
a mandrel (88, 154) positioned within the collet body (Figs. 8-9); and
a bore sensor (114, 116) configured to prevent the collet body and the mandrel from sliding relative to one another in a first state (Fig. 8) and not prevent the collet body and the mandrel from sliding relative to one another in a second state (Fig. 9).
Nitis does not disclose the structural details of the bore sensor.
McGlothern teaches a mandrel (202) having a mandrel slot (slot containing 220 in Figs. 8A-8C) therein; an outer body (206) having a body opening (218) extending through a thickness (Figs. 8A-8C) thereof; a bore sensor (220, 222, 224) positioned within the collet body opening and the mandrel slot (Fig. 8A), the bore sensor configured remain in a radially extended state when the latch collet is in too large size casing (Fig. 8 shows 222, 224 and 220 extended) and thereby prevent the collet body and the mandrel from sliding relative to one another (Fig. 8A shows 220 preventing sliding movement between 202 and 206) and configured to be pushed to a radially compressed state when the latch collet is in the correct size casing (Fig. 8B shows 222, 224 and 220 compressed when an outer tubular is the correct size to contact 222, 224) and thereby not prevent the collet body and the mandrel from sliding relative to one another (Figs. 8B and 8C show 220 fully seated in the slot formed at 204 in 202 and allowing sliding movement between 202 and 206).
It would be obvious to one having ordinary skill in the art before the effective filing date to combine the bore sensor of McGlothern with the invention of Nitis since doing so would aid in preventing the tool of Nitis from setting until desired (as being placed within a proper sized casing).
With respect to claim 2: McGlothern from the combination of Nitis and McGlothern further teaches the bore sensor includes a radially exterior push key (222, 224) and a snap feature (220) positioned between the radially exterior push key and the mandrel (Figs. 8A, 8B), the radially exterior push key configured to sense for the too large size casing or the correct size casing (Figs. 8A-9C; ¶ [0070-73]).
With respect to claim 3: McGlothern from the combination of Nitis and McGlothern further teaches the bore sensor is configured such that when it is in the too large size casing the snap feature is positioned within a shear plane between the collet body and the mandrel to prevent the collet body and the mandrel from sliding relative to one another (Fig. 8A) and configured such that when it is in the correct size casing the snap feature is positioned outside of the shear plane between the collet body and the mandrel to not prevent the collet body and the mandrel from sliding relative to one another (Figs. 8B, 8C).
With respect to claim 4: McGlothern from the combination of Nitis and McGlothern further teaches the radially exterior push key is configured to allow the snap feature to be in a radially outward state and positioned within the shear plane when the bore sensor is in the too large size casing (Fig. 8A) and is configured to push the snap feature to a radially inward state and positioned outside of the shear plane when the bore sensor is in the correct size casing (Figs. 8B, 8C).
With respect to claim 5: McGlothern from the combination of Nitis and McGlothern further teaches the snap feature is a snap ring (220; Fig. 8D).
With respect to claim 6: McGlothern from the combination of Nitis and McGlothern further teaches the bore sensor is a first bore sensor (¶ [0070-71]; Figs. 8A-8C), and further including a second bore sensor (Figs. 8A-8C; ¶ [0070-71]; the number of release keys 222 perforable corresponds to the number of windows 218” and “one or more windows 218”) positioned within a second collet body opening (Figs. 8A-8C; ¶ [0070-71]; “one or more windows 218”) in the collet body and a second mandrel slot in the mandrel (¶ [0070-71]; Figs. 8A-8C), the second bore sensor configured to remain in a second radially extended state when the latch collet is in too large size casing and thereby prevent the collet body and the mandrel from sliding relative to one another and configured to be pushed to a second radially compressed state when the latch collet is in the correct size casing and thereby not prevent the collet body and the mandrel from sliding relative to one another (Figs. 8A-8C; see rejection of claim 1 above).
With respect to claim 7: McGlothern from the combination of Nitis and McGlothern further teaches one or more additional bore sensors (Figs. 8A-8C; ¶ [0070-71]; the number of release keys 222 perforable corresponds to the number of windows 218” and “one or more windows 218”) positioned within additional collet body openings in the collet body (Figs. 8A-8C; ¶ [0070-71]; “one or more windows 218”) and additional mandrel slots in the mandrel (¶ [0070-71]; Figs. 8A-8C) the first, second, and additional bore sensors substantially equally circumferentially placed about the latch collet (¶ [0070-71]; Figs. 8A-8C).
With respect to claim 8: McGlothern from the combination of Nitis and McGlothern further teaches the collet body opening and the mandrel slot are axially aligned when the bore sensor is in the radially extended state (Fig. 8A).
With respect to claim 11: Nitis discloses a well system, comprising:
a wellbore (Col. 3, lines 35-67) extending through one or more subterranean formations (Col. 1, lines 59-66; Col. 3, lines 35-67);
wellbore casing (16, 18) located in the wellbore (Col. 3, lines 35-67), the wellbore casing including a latch coupling (20; Col. 11, lines 38-Col. 12, line 26; Figs. 8, 9); and
a downhole tool (Figs. 8, 9) located in the wellbore and configured to engage with the latch coupling, the downhole tool (Col. 11, lines 38-Col. 12, line 26; Figs. 8, 9), including:
a latch collet (28, 23), in a casing (16, 18), including a collet body (28) and a plurality of collet fingers (23; Col. 9, lines 9-60);
a mandrel (88, 154) positioned within the collet body (Figs. 8-9); and
a bore sensor (114, 116) configured to prevent the collet body and the mandrel from sliding relative to one another in a first state (Fig. 8) and not prevent the collet body and the mandrel from sliding relative to one another in a second state (Fig. 9).
Nitis does not disclose the structural details of the bore sensor.
McGlothern teaches a mandrel (202) having a mandrel slot (slot containing 220 in Figs. 8A-5C) therein; an outer body (206) having a body opening (218) extending through a thickness (Figs. 8A-5C) thereof; a bore sensor (220, 222, 224) positioned within the collet body opening and the mandrel slot (Fig. 8A), the bore sensor configured remain in a radially extended state when the latch collet is in too large size casing (Fig. 8 shows 222, 224 and 220 extended) and thereby prevent the collet body and the mandrel from sliding relative to one another (Fig. 8A shows 220 preventing sliding movement between 202 and 206) and configured to be pushed to a radially compressed state when the latch collet is in the correct size casing (Fig. 8B shows 222, 224 and 220 compressed when an outer tubular is the correct size to contact 222, 224) and thereby not prevent the collet body and the mandrel from sliding relative to one another (Figs. 8B and 8C show 220 fully seated in the slot formed at 204 in 202 and allowing sliding movement between 202 and 206).
It would be obvious to one having ordinary skill in the art before the effective filing date to combine the bore sensor of McGlothern with the invention of Nitis since doing so would aid in preventing the tool of Nitis from setting until desired (as being placed within a proper sized casing).
With respect to claims 12-18: All aspects of the claimed invention are taught as discussed in the rejections of claims 2-8 above.
With respect to claim 21: Nitis discloses a method for forming a well system, comprising:
forming a wellbore (Col. 3, lines 35-67) through one or more subterranean formations (Col. 1, lines 59-66; Col. 3, lines 35-67);
positioning wellbore casing (16, 18) in the wellbore (Col. 3, lines 35-67), the wellbore casing including a latch coupling (20; Col. 11, lines 38-Col. 12, line 26; Figs. 8, 9); and
positioning a downhole tool (Figs. 8, 9) in the wellbore and configured to engage with the latch coupling Col. 11, lines 38-Col. 12, line 26; Figs. 8, 9, the downhole tool, including:
a latch collet (28, 23), in a casing (16, 18), including a collet body (28) and a plurality of collet fingers (23; Col. 9, lines 9-60);
a mandrel (88, 154) positioned within the collet body (Figs. 8-9); and
a bore sensor (114, 116) configured to prevent the collet body and the mandrel from sliding relative to one another in a first state (Fig. 8) and not prevent the collet body and the mandrel from sliding relative to one another in a second state (Fig. 9).
Nitis does not disclose the structural details of the bore sensor.
McGlothern teaches a mandrel (202) having a mandrel slot (slot containing 220 in Figs. 8A-8C) therein; an outer body (206) having a body opening (218) extending through a thickness (Figs. 8A-8C) thereof; a bore sensor (220, 222, 224) positioned within the collet body opening and the mandrel slot (Fig. 8A), the bore sensor configured remain in a radially extended state when the latch collet is in too large size casing (Fig. 8 shows 222, 224 and 220 extended) and thereby prevent the collet body and the mandrel from sliding relative to one another (Fig. 8A shows 220 preventing sliding movement between 202 and 206) and configured to be pushed to a radially compressed state when the latch collet is in the correct size casing (Fig. 8B shows 222, 224 and 220 compressed when an outer tubular is the correct size to contact 222, 224) and thereby not prevent the collet body and the mandrel from sliding relative to one another (Figs. 8B and 8C show 220 fully seated in the slot formed at 204 in 202 and allowing sliding movement between 202 and 206).
It would be obvious to one having ordinary skill in the art before the effective filing date to combine the bore sensor of McGlothern with the invention of Nitis since doing so would aid in preventing the tool of Nitis from setting until desired (as being placed within a proper sized casing).
With respect to claim 22: McGlothern from the combination of Nitis and McGlothern further teaches the bore sensor includes a snap feature (220) positioned radially between a radially exterior push key (222, 224) and the mandrel (Figs. 8A, 8B).
With respect to claim 23: McGlothern from the combination of Nitis and McGlothern further teaches the snap feature is configured to be positioned within a shear plane between the collet body and the mandrel when the bore sensor is in the radially extended state (Fig. 8A).
With respect to claim 24: McGlothern from the combination of Nitis and McGlothern further teaches the snap feature is a snap ring (220; Fig. 8D).
Claims 9-10, 19-20, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Nitis and McGlothern as applied to claims 1 and 11 above, and further in view of Melenyzer (US 5,433,275).
With respect to claims 9, 19, and 25: The combination of Nitis and McGlothern does not teach a torque button located on a radial exterior of each of the plurality of collet fingers.
Melenyzer teaches a latch collet (collet mechanism; Col. 4, lines 42-46), the latch collet including: a collet body (38, Fig. 1), the collet body having a plurality of collet fingers (16, Fig. 1); and a torque button located on a radial exterior of each of the plurality of collet fingers (21, Fig. 1). It would be obvious to one having ordinary skill in the art before the effective filing date to substitute the latch collet of Melenyzer for that of Nitis and McGlothern since doing so would perform the same predictable result of latching the tool in place as suggested by Melenyzer (Col. 3, lines 55-58).
With respect to claims 10 and 20: Melenyzer from the combination of Nitis, McGlothern, and Melenyzer further teaches a width (WTB) of each of the torque buttons is within 10% of each other (any directional width of the bifurcated, threaded, longitudinally spaced, connectible portions or threads of the fingers appears to be identically dimensioned within the claimed range as needed for the intended use).
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 KRISTYN A HALL whose telephone number is (571)272-8384. The examiner can normally be reached M-F 9:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at (571) 272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISTYN A HALL/Primary Examiner, Art Unit 3672