DETAILED ACTION
Claims 1-20 are pending.
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
Examiner notes that though election to the restriction has been initially made dated 04/23/2025, an election to the species (see details herein) newly introduced in the most recent Office action (first action on the merits) has not been made, which needs attention.
The most recent specification objection has been withdrawn in light of the current specification amendments.
The most recent drawing objection has been withdrawn in light of the current drawing amendments. However, new drawing objections are presented herein.
Applicant's arguments filed 08/06/2025 have been fully considered but they are not persuasive.
Applicant’s representative’s argues that 35 U.S.C. § 112(a) has sufficient support and satisfies the written description test. However, Examiner respectfully disagrees. Though, Applicant provides some functional and structural support for “annular venturi junk basket”, there is no support for how or where the junk would be stored since by definition a “basket” is always considered as a container for storing. Therefore, the embodiment as for example shown in figures 3 & 5 lack support for this feature and how its function operates (see details in the 35 U.S.C. § 112(a) rejection herein).
Furthermore, in regards to claim 35 U.S.C. § 112(b) arguments by Applicant’s representative, Examiner notes that the term “inline” is confusing as to what the metes and bounds of consists of. Paragraph [0037] of the instant specification cites: “[...] a bottom hole assembly 300 has an annular VJB 112’ rather than an inline VJB.” But, there is no description as to what the compared “inline VJB” is, therefore warranting the rejection.
Lastly, the last of the most recent 35 U.S.C. § 112(b) has been withdrawn in light of the amendment to claim 1.
Examiner suggests electing the species which do not contain the 35 U.S.C. § 112 issues and amending the claim(s) accordingly for purposes of advancing prosecution.
Election/Restrictions
Applicant’s election without traverse of claims 1-13 in the reply filed on 04/23/2025 is acknowledged. Furthermore, claims 14-20 are withdrawn.
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-13, drawn to a bottom hole assembly for milling an obstruction and collecting debris, classified in E21B 31/002.
II. Claims 14-20, drawn to a method for milling an obstruction and collecting debris, classified in E21B 31/002.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the method of milling an obstruction and collecting debris defined in invention Il can be used with another materially different product other than that defined in invention I. For example, the junk basket can comprise of its own separate sub, or can be a reverse circulation-type junk basket, or can be an open or closed bottom junk basket.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions requires a different scope of search as evidenced by their separate classification.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
This application contains claims directed to the following patentably distinct specie, as follows:
Species I: Downhole assembly comprising a side window, as disclosed in figures 1.
Species II: Downhole assembly comprising reverse circulation ports in the mill, as disclosed in figure 2.
Species III: Downhole assembly comprising an “annular venturi junk basket”, reverse circulation ports in the mill and a shroud, as disclosed in figures 3 & 5.
The species are independent or distinct because of the mutually exclusive nature of the relationship between the structural features as introduced in each species. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, no claims are generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
The inventions have acquired a separate status in the art due to their recognized divergent subject matter; the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries); the species are mutually exclusive because they are alternative embodiments to each other; the search results as applicable to one species would not necessarily be relevant to the others.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Drawings
The drawings are objected to because of the following:
The line quality of all the drawings, when zoomed in, illustrate an inconsistent line quality. 37 CFR 1.84 (Standards for Drawings), section L (Character of lines, numbers, and letters) states: “All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined”. The drawings should be viewed in the USPTO’s patent center in order to see this problem.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 do not include the following reference sign(s) mentioned in the description: 128 (paragraph [0023]). 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.
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.
Claims 3-9 are 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 cites: “[...] wherein the junk basket tool is an annular Venturi junk basket tool”. There is a lack of description as to how the “annular Venturi junk basket tool” works in relation to the operation of the tool. Paragraphs [0037-0038, 0052, 0056] provide support for the element in question, along with figures 3 & 5, labeling the “annular Venturi junk basket” as reference numeral (112’). Furthermore, paragraph [0037] discloses a shroud (170) to be positioned “over the motor 116”, “just downhole of the motorhead assembly 120 and an inflow/circ valve sub 172”, and to extend “downhole over the motor 116 to a flow shroud exit 176 near the mill 110”. Moreso, paragraph [0037] cites: “During operation, debris is collected between the flow shroud 170 and the milling assembly”. However, there is a disconnect between the fluid/debris flowing from the mill 110 to within the shroud and the junk basket. And, even though figure 5 shows some arrows conceivably depicting the direction of the fluid flow/debris from the mill, the arrows are leading to an area of the tool which has no description of the “annular Venturi junk basket” (112’), rather just an annular space in which debris flows therethrough. In other words, the instant specification fails to teach/create a nexus between the elements (i.e., mill, parts of 112 detailed in the first embodiment, fluid/debris flow, etc.) disclosed in the embodiments discussing the “annular Venturi junk basket”. “An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved…”. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010). See MPEP 2163.03, subsection V. Due to claim 3 being rejected under 35 U.S.C. § 112(a), the corresponding dependent claims are also rejected.
Claim 3 cites: “[...] wherein the junk basket tool is an annular Venturi junk basket tool”. Claim 6 (and, similarly claim 7), which are dependent from claim 3 cites: “[...] a fill indicator comprising a poppet valve”. In virtue of the preceding 35 U.S.C. § 112(a) rejection, the instant specification fails to provide support as to how the poppet valve would be incorporated with the “annular Venturi junk basket” (112’), as there is a lack of written description. Furthermore, the fact that the figures do not teach the fluid/debris from the mill to be flowing or have the capability of the flowing in the inner tube of 112’ (similar to that of 112, as shown in figure 1A), it appears maybe the poppet valve would have to be placed in the annular section of the tool between the shroud the radially inner tubular, thus failing to have support for the both the elements operating together in a single embodiment. “An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved…”. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010). See MPEP 2163.03, subsection V. Due to claim 6 being rejected under 35 U.S.C. § 112(a), the corresponding dependent claims are also rejected.
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 1-13 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 2 cites: “[...] wherein the junk basket tool is an inline Venturi junk basket tool”. Examiner has confusion as to what the metes and bounds of the term “inline” in light of the instant specification. Though paragraphs [0037, 0051-0052, 0056] disclose the term in the instant specification, there is a lack of clarity as to what the term requires from a structural and/or functional aspect. For example, does to term mean for having the Venturi junk basket tool elements arranged in a line in relation to one another, or some other elements of the tool? For examination purposes, the Examiner will give its broadest reasonable interpretation and will assume for “inline Venturi junk basket tool” to mean having its elements arranged in a line.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-2 and 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vander Velde (US Publication Number 2018/0283118 A1; hereinafter “Vander Velde”) in view of Messa et al. (US Publication Number 2018/0179844 A1; hereinafter “Messa”).
In regards to claim 1, Vander Velde discloses: A bottom hole assembly (comprising 100) for milling obstructions in sub-hydrostatic wells (abstract and paragraphs [0027-0031] | Examiner notes that the preamble is being read as intended use and is given little patentable weight — see MPEP 2111.02. Given that Vander Velde teaches the structure required by the claim, it is deemed that Vander Velde has the capability for milling obstructions in sub-hydrostatic wells), the bottom hole assembly comprising:
a milling tool (as shown in figures 1-2) comprising a primary bit (60) and a side window or a reverse circulation port (paragraphs [0027-0031]);
a junk basket tool (100/200) rotatably attached to the milling tool (figures 1-2); and
a downhole high-pressure coiled tubing coupled to the milling tool and operable to rotate the primary bit of the milling tool (paragraphs [0027-0031]).
However, Vander Velde is silent in regards to: a downhole high-pressure coiled tubing motor or electric motor coupled to the milling tool and operable to rotate a bit of the milling tool.
Nonetheless, Messa teaches a downhole coiled drilling tubular (abstract and figures 1-3), similar to that of Vander Velde. Messa teaches that the coiled drilling tubing (1) to be coupled to a motor — paragraphs [0033, 0036].
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the coiled tubing drilling tool, as taught by Vander Velde, to include for a motor, as taught by Messa, to allow for moving fluid (or, mud) downhole through the downhole drilling assembly to conduct drilling/boring operations.
In regards to claim 2, Vander Velde further discloses: wherein the junk basket tool is an inline Venturi junk basket tool (as shown in figures 1-2).
In regards to claim 12, Vander Velde in view of Messa discloses claim 1 above.
However, the modification of Vander Velde in view of Messa are silent in regards to: a fill indicator comprising a poppet valve.
Nonetheless, Messa also teaches having a poppet valve (7/8) in the coiled drilling tubing (paragraphs [0027-0031]).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the assembly of Vander Velde to include a poppet valve, as taught by Messa, to allow for “[...] an iteration of fluid hammer or hydraulic shock, which provides a beneficial effect to drilling or other operations underway” (paragraph [0032] of Messa). Furthermore, the modification also provides the end-result of indicating when the coiled drilling tubing is filled with debris, as the poppet valve wouldn’t function after obstruction is introduced in the coiled drilling tubing.
In regards to claim 13, in view of the modification of the preceding claim(s), Vander Velde further discloses: wherein the poppet valve (as taught by Messa) is disposed inside the Venturi junk basket tool at an uphole end of the Venturi junk basket tool (Examiner notes that the “Venturi junk basket tool” can be considered as any arbitrary section of the BHA, absent specific detail in the instant specification. Therefore, one skilled in the art could include for the “poppet valve”, as taught by Messa, to be included with and at an uphole end section of “Venturi junk basket tool”).
Allowable Subject Matter
Claims 10-11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 NEEL PATEL whose telephone number is (469)295-9168. The examiner can normally be reached M-F, 9:00AM-5:00PM CST.
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/NEEL GIRISH PATEL/Patent Examiner, Art Unit 3676