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 .
Election/Restrictions
Claims 8-10, 24, 27, and 28 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 15, 2026.
Drawings
The drawings were received on May 13, 2024. These drawings are accepted.
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.
Claim 4 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.
The phrase “to allow abutting an end of the bore to be compressed” is considered generally confusing. While it is understood that this is referring to the “resiliently deformable body” in line 2, it is unclear what this is allowing to be compressed. The phrase currently reads as the bore being compressed. Correction is required.
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) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aumann (US 4,186,569).
Regarding claim 1: Aumann discloses a shock absorber A for a downhole data acquisition tool configured for wireline retrieval (The use of the shock absorber for “a downhole data acquisition tool configured for wireline retrieval” is considered intended use. It has been held that the recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).), the shock absorber including:
a downhole portion 25 defining a bore 40;
an uphole portion 22 configured for connection to the downhole data acquisition tool drill bit B, connection to the acquisition tool is considered intended use, the uphole portion having a stanchion 29 extending from one end, the stanchion carrying a piston 30 and at 53 slidably engaged with the bore to allow relative axial movement of the uphole portion and downhole portion 5:46-62;
a first resiliently deformable member 23 arranged between the uphole portion and the downhole portion Fig 3b to be compressed when the uphole portion and downhole portion move axially relative to each other in a first direction 5:30-45, 6:27-56; and
a second resiliently deformable member 26 arranged between an end of the bore and the piston Fig 3b to be compressed by the piston when the uphole portion and downhole portion move axially relative to each other in a second direction opposed to the first direction 6:57-7:12,
the downhole portion having one or more abutment surfaces at 51, 52 arranged at a specific position along the bore to abut the piston to limit relative axial movement of the uphole portion and the downhole portion in the second direction and, as a result, limit compression of the second resiliently deformable member 6:57-7:12,
the downhole portion arranged to collide, directly or indirectly, with a static object borehole bottom when lowered downhole by wireline drill pip P, use with wireline is considered intended use to cause the relative axial movement of the uphole portion and the downhole portion, and consequently cause compression of at least the first resiliently deformable member 8:3-45.
Regarding claim 2: Wherein the one or more abutment surfaces are defined by an annular shoulder 51, 52 arranged to extend into the bore and at least partially surround the second resiliently deformable member the outer extent of 51 is beyond the spring 26, Fig 2d.
Regarding claim 3: Wherein the shoulder is defined by a collar lower end of 22 – Fig 2d mounted at a defined location along the bore.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Aumann in view of Lagrange et al. (US 6,412,614, Lagrange).
Regarding claim 5: Aumann discloses that the shock absorber includes ports at 39 – Fig 2b, 2c cut fails to disclose that there is at least one first flush port adjacent each end of the bore of the downhole portion, each first flush port arranged to convey fluid from within the bore to outside of the downhole portion.
Lagrange discloses a shock absorber that is similar to that of Aumann. The shock absorber of Lagrange includes a downhole portion 16 that includes a first flush port upper 56 located at a first end of the portion Fig 1C and a second flush port 132 located a second end of the portion Fig 1D, 4:10-14, 4:67-5:6.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Aumann so that the downhole portion included a flush port located at each end of the bore thereof, as taught by Lagrange, in order to have allowed movement of the resiliently deformable member within the downhole portion 4:10-14, 4:67-5:6.
Regarding claim 6: Wherein the downhole portion defines at least one second flush port lower 56 – Fig 1C of Lagrange arranged partway along the bore between the first flush ports, the, or each, second flush port arranged to convey fluid from within the bore to outside of the downhole portion Fig 1C of Lagrange.
Regarding claim 7: Aumann, as modified, discloses all of the limitations of the above claim(s) except the at least one second flush port comprising a slot extending axially along the bore.
However, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Aumann so that the at least one second flush port was a slot extending axially along the bore, since such a modification would have involved a mere change in the shape of a component. Changes in size or shape without special functional significance are not considered patentable. Research Corp. v. Nasco Industries, Inc., 501 F2d 358; 182 USPQ 449 (CA 7), cert. Denied 184 USPQ 193; 43 USLW 3359 (1974) Further, absent some showing, which is convincing of some significance of a particular configuration, the claimed configuration is nothing more than one of numerous configurations a person of ordinary skill in the art would find obvious.
The test for obviousness of a result-effective variable is not whether or not this variable is recognized in the art applied. Such recognition would potentially lead to the variable being rejected as being anticipated by the reference. The test for obviousness of a result-effective variable is whether or not one or ordinary skill in the art would recognize that this variable could be changed or altered, and the results of this change, without deviating from the intended purpose of the reference. Further, the variable must not have any associated criticality in the instant application.
In this case, paragraphs [0015] and [0064] of the instant specification gives no criticality to the shape of the flush port. Paragraph [0064] indicates that flush port could be a variety of shapes. Therefore, the shape of the flush port can be said to be obvious.
Allowable Subject Matter
Claim 4 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.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record fails to disclose or suggest a shock absorber that includes a piston that carries a resiliently deformable body arranged across a downhole end of the piston to allow abutting an end of the bore to be compressed as recited in the claimed combination.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER H GAY whose telephone number is (571)272-7029. The examiner can normally be reached Monday through Thursday, 6-3:30 and every other Friday 6-11.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Y Coupe can be reached at (571)270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER H GAY/Primary Examiner, Art Unit 3619
JHG
5/11/2026
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