DETAILED ACTION
The amendment filed 4/13/2026 has been entered.
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
Applicant's arguments filed 4/13/2026 have been fully considered but they are not persuasive. Applicant argues that Crews et al. do not anticipate claim 46 because defeating the shearable threads (i.e. the sealing interface) would cause the valve element 142 to be pulled down into the seat 138 and result in flow not being established through the device, where the claim requires flow communication between the downhole space and the uphole space once the sealing interface is defeated. The examiner respectfully disagrees because although the examiner agrees that with the application of pressure from above, the valve element would act as described, it is also found that with application of pressure from below the valve element, the valve element would be removed from the sealing interface and flow communication would be established as claimed. The claim does not specify where or how the pressure differential is established and therefore Crews et al. remain considered to anticipate this limitation. Applicant also argues that “opening of the valve” as in Crews et al. would result in closing the passage and not opening of the valve. The examiner respectfully disagrees because, as above, with application of pressure from below the valve, the valve would be removed from the passage and “open” allowing flow communication as claimed. Applicant further argues that claim 52 as containing limitations similar to claim 46 is not anticipated by Crews. The examiner respectfully disagrees because the claim only requires the device to be “co-operable” to perform as recited, where the device as disclosed by Crews et al. would be operable to perform as recited, and the examiner finds that Crews et al. is capable as performing as claimed.
Applicant’s arguments against the obviousness type double patenting rejections have also been considered but are not persuasive. Applicant argues that since the instant application and the ‘793 patent have the same effective filing date, that no double patenting rejection is necessary. The argument is not persuasive because as noted in the MPEP 804 “The doctrine of nonstatutory double patenting also seeks to prevent the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention. In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982) (citing Chisum, Patents, § 9.04(2)(b) (1981) ).” Applicant further argues that the double patenting rejection is based on “domination” which is “not, per se, double patenting”. The argument has been considered but is not persuasive as the rejection sets forth how the ‘793 patent is considered to encompass the instant claims. Applicant also argues that the obviousness double patenting rejection does not set forth reasons why a person of ordinary skill in the art would conclude the invention defined in the claim at issue would have been an obvious variation of the invention defined in the claim in the patent. The examiner respectfully disagrees as the rejection does provide reasons why one of ordinary skill would conclude the invention defined in the claim at issue would have been an obvious variation of the invention defined in the claim in the patent (as in the rejection below).
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 46-52 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Crews et al. (US 11,891,877, with an effective filing date of at least 3/16/2021 vs the effective filing date of claims 46-52 as 1/27/2022).
In regard to claim 46, Crews et al. disclose an apparatus for deployment through a wellbore string that is disposed within a wellbore (apparatus as in fig 3 deployed within 204 as in fig 1, 2), wherein the apparatus is configurable in a seating-effective configuration for co-operating with the wellbore string for establishing seating of the apparatus within the wellbore string (with sealing assembly 118 and anchoring assembly 120), and the apparatus comprises: a body (134); a body-defined passage configuration, defined by the body (as in fig 3, with passage 140/146); a sealing interface (at least as in fig 9, as sealed at 152) emplaced within the body-defined passage configuration, such that flow communication within the wellbore, via the body-defined passage configuration, is sealed (sealed as described col. 5, lines 65 – col. 6, line 12); wherein: the apparatus is co-operable with the wellbore string such that, while the seating of the apparatus, within the wellbore string, is established; a spatial configuration is established within the wellbore string, wherein the spatial configuration includes a downhole space, disposed downhole relative to the body, an annular passage (140), disposed between the body and the wellbore string, and an uphole space, disposed uphole relative to the body, wherein the downhole space is disposed in fluid communication with the body-defined passage configuration via the annular passage (as would be with fig 3 within wellbore as in fig 1 and 2); and in response to an application of a fluid pressure differential across the sealing interface, the sealing interface is defeated, such that flow communication, within the wellbore string, via the body-defined passage configuration, between the downhole space and the uphole space, is established (col. 5, lines 38-45).
In regard to claim 47, Crews et al. disclose wherein: the sealing interface is defined by a valve (142); and the establishing of flow communication includes an opening of the valve (with valve removed with pressure from below, flow communication would be established).
In regard to claim 48, Crews et al. disclose wherein: the valve includes a closure configuration (as in fig 9) and a valve seat (threads 152) for receiving seating of the closure configuration such that the closure configuration is seated on the seat; and the opening of the valve includes a displacement of the closure configuration relative to the valve seat (col 5, lines 38-45).
In regard to claim 49, Crews et al. disclose wherein: the closure configuration is an untethered plug (142); and the apparatus is co-operable with the wellbore string such that, while the seating of the apparatus is established within the wellbore string, and the valve is closed, the application of a fluid pressure differential is with effect that the untethered plug is displaced, relative to the valve seat, such that the untethered plug becomes spaced apart from the valve seat, and such that the defeating of the sealing interface is effected (col. 5, lines 38-45).
In regard to claim 50, Crews et al. disclose wherein: the body is also configurable in a seating-ineffective configuration (as in fig 3 with 118/120 unactuated); the apparatus is co-operable with the wellbore string, such that: the seating of the apparatus, within the wellbore string, is establishable at a wellbore string seat while: (i) the apparatus is being deployed through the wellbore (as shown), and (ii) the apparatus is disposed in the seating-effective configuration (as in fig 3); and while the apparatus is disposed in the seating-ineffective configuration, the apparatus is deployable through the wellbore such that the apparatus traverses the wellbore string seat, without an establishment of seating of the apparatus, within the wellbore string, at the wellbore string seat (as may be performed with or without 142 in place); while the apparatus is emplaced within the wellbore string, a transitioning of the apparatus from the seating-ineffective configuration to the seating-effective configuration is with effect that the apparatus becomes disposed in a spatial configuration-establishing configuration (with actuation of 118/120); while: (i) the apparatus is disposed in the spatial configuration-establishing configuration, and (ii) the seating of the apparatus, within the wellbore string, is established, the spatial configuration is established within the wellbore string (as would occur as within wellbore); and while: (i) the apparatus is disposed in the spatial configuration-establishing configuration, (ii) the seating of the apparatus, within the wellbore string, is established, such that the spatial configuration is established within the wellbore string, and (iii) pressurized fluid is disposed within the downhole space, the displacement of the untethered plug, relative to the valve seat, is urged by the pressurized fluid (col. 5, lines 38-45).
In regard to claim 51, Crews et al. disclose wherein: the apparatus is untethered (as in figs 1-3, where 104 is shown as untethered as deployed).
In regard to claim 52, Crews et al. disclose an apparatus for deployment through a wellbore string that is disposed within a wellbore (apparatus as in fig 3 as deployed within 204 as in fig 1,2), wherein the apparatus is configurable in a seating-ineffective configuration, and also configurable in a seating-effective configuration, wherein, in the seating-effective configuration, the apparatus is co-operable with the wellbore string for establishing seating, of the apparatus, within the wellbore string (with sealing assembly 118 and anchoring assembly 120), and the apparatus comprises: a body (134); a body-defined passage configuration, defined by the body, and extending from an uphole fluid communicator (146), defined within an uphole outermost surface portion of the body, to a downhole fluid communicator (140), defined within a downhole outermost surface portion of the body, wherein the downhole outermost surface portion is disposed downhole relative to the uphole outermost surface portion (as in fig 3); a sealing interface (152 as within in fig 9), emplaced within the body-defined passage configuration, such that flow communication within the wellbore, via the body-defined passage configuration, is sealed; wherein: the apparatus is co-operable with the wellbore string such that: while the seating of the apparatus, within the wellbore string, is established, a spatial configuration is established within the wellbore string, wherein the spatial configuration includes a downhole space disposed in fluid communication with the sealing interface, and an uphole space, disposed uphole relative to the body, wherein the downhole space is disposed downhole relative to the uphole space (as would occur with fig 3 as in place as in fig 1 or 2); while the apparatus is disposed in the seating-ineffective configuration: fluid communication, between the downhole space and the sealing interface, via the downhole fluid communicator, is sealed (as in fig 3 and fig 9); and the apparatus is deployable through the wellbore string such that the apparatus traverses a wellbore string seat, without an establishment of seating of the apparatus, within the wellbore string, at the wellbore string seat (as would occur without actuation of sealing and anchoring assembly); while the apparatus is disposed in the seating-effective configuration, and the apparatus is being deployed though the wellbore string, the seating of the apparatus, within the wellbore string, is establishable at the wellbore string seat (as in fig 1 and 2); while the apparatus is disposed within the wellbore string, a transitioning of the apparatus from the seating-ineffective configuration to the seating-effective configuration is with effect that: the sealing of fluid communication, between the downhole space and the sealing interface, via the downhole fluid communicator, is defeated (col. 5, lines 38-45); such that the downhole space becomes disposed in fluid communication with the sealing interface via the downhole fluid communicator; and the apparatus becomes disposed in a spatial configuration establishing configuration; while: (i) the apparatus is disposed in the spatial configuration establishing configuration, and (ii) the seating of the apparatus, within the wellbore string, is established, the spatial configuration is established within the wellbore string (as would occur); and while: (i) the apparatus is disposed in the spatial configuration establishing configuration, (ii) the seating of the apparatus, within the wellbore string, is established, such that the spatial configuration is established within the wellbore string, and (iii) a pressurized fluid is disposed within the downhole space, a defeating of the sealing interface is urged by the pressurized fluid for establishing flow communication, within the wellbore string, via the body-defined passage configuration, between the downhole space and the uphole space (col 5. lines 38-45).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21, 25-30, 32-35, and 45-59 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,006,793. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims appear to be encompassed by the claims of ‘793 as reciting, for example, an untethered apparatus (“dart” as in ‘793 implies untethered) for deployment through a passage defined by a wellbore string (wellbore flow conductor of ‘793) disposed in a wellbore, the apparatus comprising: a body defining a body defined passage configuration (body with inlet as in ‘793) and configurable in a flow control-effective configuration (inactivated configuration as in ‘793) and a flow-control ineffective configuration (activated configuration as in ‘793), a sealing interface (ball as within the seat of ‘793) and including that while seated, a downhole space below the body is in fluid communication with sealing interface through an annular passage (“and flow communication between the passage, downhole from the stop, and the one or more inlets at the respective circumferential locations..” as in ‘793), where the functionality instantly recited would be necessarily encompassed by the dart of ‘793 functioning similarly. The remaining claims appear to all be encompassed the claims of ‘793 including the “valve” as in instant claim 25 as the “ball” of claim 1 of ‘793.
Allowable Subject Matter
Claims 21, 25-30, 32-35, and 45 are allowable over the prior art of record, except as rejected only under non-statutory double patenting. With a filing to overcome the non-statutory double patenting of these claims, these claims would be allowed.
Claim 53-59 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 and with a filing to overcome the non-statutory double patenting rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 D Andrews whose telephone number is (571)272-6558. The examiner can normally be reached M-F, 7-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at 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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/D. ANDREWS/ Primary Examiner, Art Unit 3672
6/8/2026
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