DETAILED ACTION
The amendment filed 12/22/2025 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
The amendment filed 12/22/2025 has overcome the previously applied claim objection and claim rejections under 112.
Applicant’s arguments regarding the 102 rejections under Watkins et al. have been fully considered but are not persuasive. Applicant argues that the valve seat 138 (i.e. the claimed sealing interface) is shown below (downhole) from the annular passage rather than uphole (as claimed). The examiner respectfully disagrees as the rejection does not rely on valve seat 138 as the claimed sealing interface but rather the sealing interface 152, which is positioned as claimed. Therefore claims 46-52 remain rejected under Watkins et al.
Applicant’s arguments regarding the obviousness double patenting rejections of all claims have been fully considered but are unpersuasive. Applicant argues that ‘793 does not claim "while seating, of the untethered apparatus, within the wellbore string, is established: [] a defeating of the sealing interface is with effect that the untethered apparatus transitions from the flow control-effective configuration to the flow control-ineffective configuration, such that flow communication, between the downhole space and the uphole space, is established." The examiner agrees this language is not explicitly found within the claims of ‘793, but as best understood, the claims of ‘793 do provide limitations which overlap with this claim as recited. ‘793, in claim 1, recites “a ball releasably receivable in the ball seat, wherein when the ball is received in the ball seat, the ball blocks fluid communication between the one or more inlets and the outlet, and when the ball is released from the ball seat, fluid communication is permitted between the one or more inlets and the outlet”. ‘793 further recites that the outlet is at “a trailing end”, where as best understood this would provide the outlet as uphole of the sealing interface. Therefore, when the ball is released, as claimed, fluid communication is necessarily provided between a downhole space and an uphole space, as instantly claimed. Applicant further argues that the ability of the claimed apparatus to operate in both a seating-ineffective mode (passing seats) and a seating-effective mode (engaging and sealing) is another feature not found in the '793 patent claims. This argument is not persuasive as the claims of ‘793 do recite different seating effective “modes” in that the ball is claimed as “releasably receivable” and is explicitly recited as being released (as in claim 1 of ‘793). ‘793 further recites an “inactivated configuration” and an “activated configuration” which appear to provide a seating-effective mode and a seating-ineffective mode as claimed.
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 includes an opening of the valve (col. 5, lines 65+).
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 appear to be allowable if rewritten or amended 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 filings to overcome the non-statutory double patenting rejection.
Claims 53-59 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 and filings to overcome the non-statutory double patenting rejection.
Conclusion
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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/D. ANDREWS/Primary Examiner, Art Unit 3672 1/12/2026