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 .
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
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) 21, 22, 24-27, 32, 33, 37 and 40 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Obrejanu (US 2009/0114400).
With regards to claim 21, Obrejanu discloses a self-orienting swivel of a downhole tool, comprising: a top sub (12) having a first end and a second end with a sub ring therebetween, the second end having a receptacle extending therein; a bottom sub (40); and a bearing assembly (22), comprising: a bearing housing (24) having an uphole end operatively connectable (15) to the second end of the top sub and a passage therethrough shaped to receive a bearing end (portion of 40 surrounded by bearings 22) of the bottom sub; bearings (22) rotatably positioned in the passage of the bearing housing between the bottom sub and an inner surface of the bearing housing; and a lock member (21) positioned in the passage of the bearing housing, the lock member fixedly connectable (it is integral with the bottom sub) about a bearing end of the bottom sub, the lock member receivably positionable in the receptacle and rotatably movable therein whereby the bottom sub is rotatably positioned about the top sub.
With regards to claim 22, Obrejanu discloses the first end of the top sub (12) is fixedly connectable to a fixed portion of the downhole tool (para 33, it is connected to a production string) and a downhole end of the bottom sub (40) is fixedly connectable to a rotating portion of the downhole tool (para 35, mandrel 40 is connected to a downhole pump).
With regards to claim 24, Obrejanu discloses the bearing housing (24) is threadedly connectable (15) to the second end of the top sub and advanceable thereon until positioned against the sub ring (14).
With regards to claim 25, Obrejanu discloses the sub ring has a larger outer diameter than the first end and the second end (where 14 is located is a larger diameter than the ends of 12).
With regards to claim 26, Obrejanu discloses the bearings (22) comprise circular bearings with holes therethrough.
With regards to claim 27, Obrejanu discloses the bearings (22) are axially stacked within the bearing housing (24) about the bearing end of the bottom sub (40).
With regards to claim 32 and 37, Obrejanu discloses a downhole tool, comprising: a fixed portion; a rotating portion; and the self-orienting swivel as in claim 21, the first end of the top sub connected to the fixed portion (para 33) and the bottom sub connected to the rotating portion (para 35).
With regards to claim 33, Obrejanu discloses the fixed portion and the rotating portion comprise at least one downhole component (para 33-35).
With regards to claim 40, Obrejanu discloses self-orienting portions of the downhole tool by allowing the downhole tool to rotate such that heavier portions of the downhole tool gravitationally fall to a bottom of the wellbore (this is inherent in the fact that when free of constraint the heaviest portion will always rotate towards to bottom of the wellbore).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 23, 34, 36 and 39 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Obrejanu in view of Mauldin et al. (US 2020/0284126, hereafter Mauldin).
With regards to the claims, Obrejanu shows all the limitation of the present invention except, the bottom sub comprises orientable weight bars, each of the orientable weight bars having a mass that is offset with respect to a longitudinal axis of the downhole tool or that the bottom sub is attached to a perforating gun. Mauldin discloses a perforating gun which is placed downhole and is able to rotate around a bearing (26). It includes a weight bar (124a, b) which keeps the gun gravitationally oriented. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the weight bar disclosed in Mauldin with the swivel and tool taught in Obrejanu with a reasonable expectation of success. This would be done to allow directional perforation of a downhole system.
Allowable Subject Matter
Claims 28-31, 35 and 38 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art cited all show similar features to those of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL P STEPHENSON whose telephone number is (571)272-7035. The examiner can normally be reached M-F 10am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tara Schimpf can be reached at 571-270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL P STEPHENSON/Primary Examiner, Art Unit 3676