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 . The preliminary claims of 04 Dec 2023 have been entered.
Drawings
The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81(c). No new matter may be introduced in the required drawing. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d).
Applicant is given a shortened statutory period of TWO (2) MONTHS to submit a drawing in compliance with 37 CFR 1.81. Extensions of time may be obtained under the provisions of 37 CFR 1.136(a) but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133). Failure to timely submit a drawing will result in ABANDONMENT of the application.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description:
The following critical elements are not found in the submitted drawings:
Drill string (100)
Tool (50)
Bearing Assembly (60)
Guide surfaces (1030 and 1032)
J-Track (1020)
Channel (1010)
Upper part of second member (1034)
Lower part of second member (1036)
Nesting point/gap (1040)
Wall (1060)
Point of contact (1070)
Release Channel (1080)
Split J-Profiles lower should (10b)
Bonnets no-go (###)
The submitted specification begins on page 6 with the first of these elements (not shown), and continues through page 9. Resulting in 30% of the specification not correlated with illustrations and therefore does not result in a comprehensive understanding of the invention.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
Fig 7 #19 is undefined.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be
labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
Page 4 line 26 – recites “RCD”.
Page 4 line 28 – recites “RRT”.
The first use of an abbreviation, should be prefaced with the full meaning of the abbreviation to avoid confusion. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 1-17 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.
Claim 1 line 8 recites “a retaining means extending from said split retainer”.
The submitted drawings illustrate no such element, see below:
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From the drawings, the retaining means (#8 – J-pins) extend from the bonnet, not the split retainer. In fact, the J-pins are the only element that would extend laterally toward the central axis. The examiner is taking the understanding that the retaining means extends from the bonnet. Clarification or correction is requested. Claim(s) 2-17 depend from claim 1 and are therefore also rejected under indefiniteness.
Claim 3 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 3 recites “wherein said track comprises an upper lifting shoulder and a lower shoulder portion … wherein said upper lifting shoulder and lower shoulder portion can be separated from one another upon exertion of pressure onto the lower shoulder portion by said retaining means”.
It is unclear how the upper and lower portions of the track would separate (meaning the distance between the upper and lower portion of the track would change regardless of retaining means force) based on the submitted drawings, the track appears to be formed from one integral element, see below. Clarification or correction is requested.
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Claim 5 depends from claim 3 and recites “wherein plurality of channels”. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 depends from claim 1 and recites “wherein the upper lifting section of the track”. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 depends from claim 1 and recites “the lower shoulder portion of said track” and “said upper lifting shoulder”. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 depends from claim 1 and recites “said lower shoulder portion” and “said upper lifting portion”. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 depends from claim 1 and recites “said lower shoulder portion” and “the lifting should of the track”. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 depends from claim 1 and recites “said first side member” and “said second side member”. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 depends from claim 1 and recites “said upper part of said second side member” and “said upper lifting shoulder of said track and said lower part of said second side member” and “said lower shoulder portion of said track”. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 depends from claim 1 and recites “said nesting gap”. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 depends from claim 1 and recites “said retaining means nesting gap”. There is insufficient antecedent basis for this limitation in the claim.
Claim(s) 16 and 17 depend from claim 1 and recites “said nesting gap”. There is insufficient antecedent basis for this limitation in the claim.
Claim Objections
Claim 11 is objected to because of the following informalities:
Claim 11 line 3 recites “wherein each of member being …”. It would be suggested ‘wherein each of the members being’ or ‘wherein each member is’. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oliver (USP 3,409,085).
Regarding claim 1, as best understood by the examiner in regard to the indefinite rejection(s) above, Oliver discloses a tool comprising:
- a first section (Fig 1a #2,4 and 6) comprising a bonnet (#4 – ‘overshot’) and a split retainer (#6 – ‘central mandrel’), said first section comprising a cavity (Col 3 line 12 – “a portion of the body #10 extends between the overshot and the mandrel”) having an inner diameter (internal diameter of #4) adapted (Fig 1a) to allow the insertion therethrough of a second section (#10 – ‘J-slot body’) and wherein said first section is adapted to be secured to a tool (#40 – ‘packer’); and
- said second section [#10] having an elongated body (Fig 1a) having an external diameter smaller (Fig 1a) than the internal diameter [of #4] of said first section, said second section comprising:
- a track (#12 – ‘J-slot’) adapted to secure a retaining means (#14 – ‘lug’) extending from said
- an entry channel (#88 – ‘open leg’ explained Col 5 line 35) adapted to receive said retaining means [#14] positioned on said first section;
- a release channel (#88 – ‘open leg’) adapted to allow said retaining means to be released from said track;
wherein said second section [#10] being adapted to be mounted (Fig 1a) onto a drillstring (Col 4 line 30 – “a tubing string”) and being releasably insertable (Col 5 line 36 - “when the lug #14 passes out of the top end of the J-slot #12, upward movement of the mandrel #6 is unrestricted”) inside said cavity of said first section through the insertion of said retaining means inside said track.
Regarding claim 18, Oliver discloses a tool comprising:
- a first section (Fig 1 #2,4 and 6) comprising a bonnet (#4 – ‘overshot’) and a split retainer (#6 – ‘central mandrel’), said first section comprising a cavity (Col 3 line 12 – “a portion of the body #10 extends between the overshot and the mandrel”) having an inner diameter adapted to allow the insertion therethrough of a second section (#10 – ‘J-slot body) and wherein said first section is adapted (Fig 1a/b) to be secured to a tool (#40 – ‘packer’); and
- said second section [#10] having an elongated body (Fig 1a) having an external diameter smaller (Fig 1a) than the internal diameter of said first section [#4],
wherein said first and said second section are releasably secured together in operation by a plurality of concentrically directed J-pins (#14) located on said first section [#4 and Col 3 line 14 – “a lug #14 on the overshot #4 extends into the J-slot for controlling relative movement between the mandrel and the body #10”) engaging with a track (#12 – J-slot) located on said second section [#10].
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.
Claim(s) 2 is rejected under 35 U.S.C. 103 as being unpatentable over Oliver in view of Kenneday (US 4,060,131).
Regarding claim 2, Oliver discloses wherein the retaining means [#14 – lug]; however, does not disclose a plurality of J-pins.
Kenneday teaches a ‘Mechanically Set Liner Hanger and Running Tool’ reciting “a plurality of inwardly extending J pins #203 are inserted within the upper most end #204 of the outer housing #201 by means of threads #205” – Col 7 line 8.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed to include a plurality of J pins as taught by Kenneday in the system of Oliver with a reasonable expectation of success, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the combination would result in the predictable result of dividing and distributing the load (weight) among the plurality of pins.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONALD R RUNYAN whose telephone number is (571)270-5400. The examiner can normally be reached Monday-Friday 8:00-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached on (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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/TARAS P BEMKO/Primary Examiner, Art Unit 3672
/R.R.R/Examiner, Art Unit 3672 12 Sep 2024
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