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 .
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,486,119 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
The amendments made in the November 30, 2023 preliminary are not in accordance with 37 CFR 1.173(b)(c) or (d). The deletions in the claims are shown in double brackets. Single brackets should be used in all amendments to show deletions relative to the patent claims. The substitute specification submitted November 30, 2023 contains changes (in at least paragraphs 7 and 8) and additional paragraphs with no indication of changes or additions. See 37CFR 1.173((b)(1)(i) and MPEP 1453. If paragraphs 7 and 8 remain, applicant should establish on the record why these and any other additions are not new matter.
Claims 8-20 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
MPEP 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Proposed claims 1-20 are broader than patented claims 1-20. Claim 1 removes, “a processor, a selector arm, and a selector arm window that defines a path for movement of the selector arm” and the “processor is configured to activate the selector arm to engage and electrically communicate with the drone”. Claim 8 removes, “a drone magazine positioned on the mobile platform”, “drones positioned in the drone magazine”, the transfer unit being “, the transfer unit being “secured to the mobile platform”, the ramp moving a “selected drone of the plurality of drones from the mobile platform to a wellbore; a conveyor secured to the ramp; and a sled positioned on the conveyor, wherein the sled is configured to engage the selected drone and moves the selected drone from the mobile platform to the wellbore”. Independent claim 16 eliminates the drone magazine, changes the rotating platform to a moveable platform, eliminates “a plurality of drones positioned in the drone magazine”, and “a lower receiving section; and an upper receiving section disposed above the lower receiving section, wherein the rotation of the rotating platform aligns the selected drone with the lower receiving section”.
Therefore step 1 of the three-step test is met for claims 1-20.
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by applicant in the original prosecution to make the claims allowable over the art.
MPEP 1412.02(I)(B)(1)(A) states “[w]ith respect to whether applicant surrendered any subject matter, it is to be noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). As pointed out by the court, ‘[i]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made.’ Id.”
During the prosecution of the ‘219 patent, the Examiner rejected claims 1,3,7,10-12 and 14-16 over prior art and claims 1-3 under obvious type double patenting over claims 1 and 5 of patent 10,844,684 (which is from the same patent chain as the ‘219 patent). Claims 2,4-6,8,9,13 and 17-20 were indicated as being allowable (if a clarity problem was overcome for claims 2 and 4-6). The Applicant responded with arguments and amendments. The Applicant amended claim 1 by adding the subject matter of claim 4, specifically, “a mobile platform; and
A drone transfer unit secured to the mobile platform, the drone unit comprising a ramp configured for receiving and moving a drone from the selector unit to a wellbore”.
Claim 8 was incorporated into claim 7 (which was renumbered as claim 8 of the patent) and claim 16 was incorporated into claim 14 (renumbered as claim 16). Claim 7 (claim 8 of the patent) was allowed after incorporating, “a conveyor secured to the ramp; and
a sled positioned on the conveyor,
wherein the sled is configured to engage the selected drone and moves the selected drone from the mobile platform to the wellbore.”
Claim 14 (16 of the patent) was amended to add, “wherein the drone transfer unit comprises;
a platform receiver, wherein the platform receiver comprises;
a lower receiving section; and
an upper receiving section disposed above the lower receiving section;
wherein the rotation of the rotating platform aligns the selected drone with lower receiving section; and
a drone conveyance extending between the platform receiver and a wellhead receiver,” and the rotation of the rotating platform aligns a selected drone of the plurality of drones with ”the lower receiving section of the platform receiver.”
The remarks submitted with the amendment stated that the claims were allowable due to the incorporation of this objected to claim language.
Therefore, the Patent Owner amended claims 1-20 to add the limitations of claim 4,7 or 16 and argued that the prior art did not include the limitations cited immediately above. Therefore, the newly presented claims must include the limitations added in the July 14, 2022 amendment, which are stated above.
Claims 1-20 fail to disclose the limitations added to the claims to make them allowable. The original claims without these limitations have been surrendered.
Therefore, the limitations of the originally filed claims 1,7 and 14 which became claims 1,8 and 16 are limitations which are considered surrendered subject matter and the additions are seen as surrender generating limitations.
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitation(s) are directed to limitations relied upon by applicant in the original application to make the claims allowable over the art.
Claims 1-20 are being broadened to omit the surrender generating limitations. Claim 1 retains the mobile platform and the transfer unit, but omits the transfer unit being secured to the mobile platform. Claim 8 omits the selection of a plurality of drones from the mobile platform, the conveyor and the sled, all of which are included in the surrender generating limitation. Claim 16 eliminates the platform receiver having a lower receiving section and an upper receiving section wherein the rotation of the rotating platform aligns the selected drone with the lower receiving section.
Therefore step 2 of the three-part test is met.
MPEP 1412.02(I)(B)(1)(B) states “[w]ith respect to the “second step” in the recapture analysis, it is to be noted that if the reissue claim(s), are broadened with respect to the previously surrendered subject matter, then recapture will be present regardless of other unrelated narrowing limitations. In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated:
[T]he recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. Id. at 1361.”
Therefore, the third step of the analysis does not need to be performed for claims 1-20. It is noted that all of the claims change “drone” to “tool”. This is seen as permissible as lines 30 and 31 of column 7 establish that the drone is “a downhole tool not connected to a physical wire/cable”.
Therefore, claims 1-20 improperly recapture surrendered subject matter.
Claims 1-20 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.
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.
Claims 10,11 and 19 are 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.
In regard to claim 10, it is unclear how a mobile platform can be a stationary support structure. In regard to claim 11, “the bed” lacks antecedent basis. In regard to claim 19, “the drone conveyance” in line 1 lacks antecedent basis.
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) 8,10,12,14-16,18 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pre-Grant Publication 2006/0054326 to Alves et al. (hereinafter “Alves”).
Alves discloses a downhole tool preparation and delivery system comprising a mobile platform (10), a plurality of downhole tools (S) located at a first position on the mobile platform, a selector unit (14) positioned on the mobile platform, the selector unit configured for moving (through 16 and 18) a downhole tool of the plurality of downhole tools and a transfer unit comprising a ramp (100, see fig 4).
In regard to claim 10, the cabinet 10 has legs and can be mounted on the ground, while the cabinet is able to be moved, meeting the mobile platform limitation, it could also be made a “stationary support structure”.
In regard to claim 12, selector unit 14 transfers the selected tool S from a first position on wheel 40 (immediately before the unit S rolls into catcher 48).
In regard to claim 14, figure 2 shows the belt aspect of conveyor 16, with the chain elements visible in figure 3.
In regard to claim 15, conveyor 16 form a continuous loop.
In regard to claim 16, Alves discloses a tool transfer apparatus comprising a plurality of downhole tools S positioned on a movable platform 16, a transfer unit 18,48 adjacent to the moveable platform, with the transfer unit comprising a platform receiver with a receiving section 48 and a conveyance 100 extending between the platform receiver receiving section 48 and a downhole tool receiver 204 positioned above the platform receiver receiving section. See figures 4 and 5 for 48 being positioned below 204 with ramp 100 connecting the two.
In regard to claim 18, the tools S are fed to wellhead WH, which is shown higher than receiving section 48 in figure 5 (as 100 would keep going down outside the figure to 48 shown at the bottom of 100 in figure 4).
In regard to claim 19, transfer cylinder 50 conveys the tools S up ramp 100, so it is a conveyor.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kilgore (US 6,182,765) shows a system for selecting tools for a subterranean well. Moss (US 2002/0134552) and Skjaerseth et al (US 2004/0094305) show carousel tool caddies for selecting tools for an undersea wells.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM C DOERRLER whose telephone number is (571)272-4807. The examiner can normally be reached M-F, 7-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached at (571) 272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM C DOERRLER/Reexamination Specialist, Art Unit 3993
Conferees: /WILLIAM E DONDERO/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993