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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show the details of the invention, such as the workings of the shear pins, as described in the specification. The reference characters are very hard to discern with the zoomed-out views, such as Figure 3. The claims rely on the workings and movement of the device and how the shear pins rupture in a specific order which is not clear on the drawings at all. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). 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.
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 6-14 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 6 recites “the locking house member” which lacks proper antecedent basis. Claim 6 is dependent on claim 1, instead of claim 5 which would have provided the antecedent basis.
Furthermore, claim 7 recites “the upper setting sleeve” which also lacks antecedent basis because claim 6 depends from claim 1 instead of claim 5. Claims 8-10 also recite elements that are not provided with proper antecedent basis for the same reason.
Therefore, claim 6 is being interpreted as being dependent upon claim 5 to solve these issues.
Claims 11-14 appear to recite method steps without further limiting the apparatus of claim 1 from which they depend which renders the claims unclear. First of all, “movement”, “collapse”, and “thermal expansion” lack proper antecedent basis. Second of all, the relative strength of the shear pins has been claimed, therefore, it is unclear how these claims further limit those structures. For the purposes of examination, the Examiner is interpreting this claim as not further limiting the claim from which it depends.
Claim 13 recites “wherein thermal expansion urges…” which renders this claim indefinite. It is unclear if the claim is attempting to claim a natural phenomenon, thermal expansion which inherently occurs downhole, and furthermore, as noted above, this appears to be a method claim within an apparatus claim which would render the claim indefinite. The claim does not appear to further limit the claim from which is depends because shear pins are always designed to fail after a certain threshold is met particularly after movement occurs. For the purposes of examination, the Examiner is interpreting this claim as not further limiting the claim from which it depends.
Allowable Subject Matter
Claims 1, 4, 5, and 15 are allowed.
Claims 6-14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Reasons for Allowance
The following is an examiner’s statement of reasons for allowance:
Assal US Patent Application Publication 2021/0123321 teaches a slidable mandrel with three sheer pins wherein the first shear pin (9) is weaker than the third shear pin (18) and the cones slide to set slips and a packer. However, Assal fails to teach the inner tubular slick joint that is within the mandrel and the slips are disposed on the mandrel. Assal teaches a slick joint outside of the mandrel.
Owen US Patent 3,542,128 also has similar features of a first, weaker shear pin (20a and 20b) which shears first to then allow the slips to shear their pins (18 and 19) however shear pins (18 and 19) are attached to the slick joint (the inner sleeve/mandrel (11)) and not the mandrel (the outer sleeve/mandrel (Se’)).
George et al US Patent Application Publication 2014/0360717 teaches the claimed shear pins and slick joint with mandrel; however, the first shear pin (not labeled but shown on the cones) is stronger than the third shear pin (92) and therefore fails to teach the claimed invention. There would be no teaching to make it weaker, because the first shear pin is sued to release the tool after setting, and not before the setting process like in the instant invention.
Szarka US Patent 4,669,538 similarly teaches an anchor with the strongest first shear pin (88) and also fails to teach the slick joint and mandrel as claimed (the first shear pin connects the outer ring (86) to mandrel (14)).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TARA SCHIMPF whose telephone number is (571)270-7741. The examiner can normally be reached Monday-Friday 7:30am - 3:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Fristoe can be reached at (571) 272-4926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676