DETAILED CORRESPONDENCE
Claims 1-20 are pending. Claims 1, 2, 4-7 and 10 are examined herein. Claims 3, 8, 9, and 11-20 have been withdrawn.
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
Applicant's election with traverse of Group I and Species A in the reply filed on 8/4/2026 is acknowledged.
Beginning at Section 1, the applicant argues that the Group 1, Group 2, and Group 3 inventions have unity. The examiner respectfully disagrees.
At Section 1.A., the applicant argues that Howitt’s scraper inserts 210,215 are not affixed to a cleaning tool that is affixed to the outer diameter of a work string 165,200 but is instead threaded into a work string. The examiner respectfully disagrees. Howitt paragraph [0022] clearly describes retainers 280,290 preventing cleaning tool motion relative to the work string, thus the work string and its outer surface extend through the tool. Threading as an inline tool is merely an option. It is also noted that the “work string” about which the applicant’s tool is placed is also disclosed as a separate structure from the work string that is separated from the brush tool and cement retainer/packer and pulled, as shown in at least Fig. 6C, and claimed at claim 10. Thus, the applicant has arguably disclosed what is essentially a mandrel option for the claim 1 work string.
At Section 1.B., the applicant argues that Howitt’s cement is not used for the claimed plugging, adding that the claimed plugging is for plugging and abandonment, while Howitt’s plug is a temporary plug. The examiner respectfully disagrees that the claimed plug is not disclosed by Howitt. Claim 1 only requires “plug the well”, with no requirement that it be associated with a permanent plugging and abandonment. In this regard, the features upon which applicant relies (i.e., plugging and abandonment) are not recited in the rejected claim(s) – only in the specification. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
At Section 1.C., the applicant argues against the motivation to combine Howitt and Winn and attempts to distinguish between the uses of the Howitt and Winn tools. The examiner respectfully disagrees. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, both tools are used against the inside of casing, with Winn noting at paragraph [0029] that brushes and scrapers are both useable. Claim 1 does not describe any function that would preclude such a choice.
The requirement is still deemed proper and is therefore made FINAL. As a result, claims 3, 8, 9, and 11-20 are withdrawn.
Drawings
The drawings are objected to because the reference number 126b should be removed from Fig. 1B (it is used correctly in Fig. 1A), the line for reference number 510 on Fig. 5 should terminate on the work string structure, the reference number 660 is improperly used twice (Figs. 6A-6E) in that no second annular filter is described in the specification, a second annular filter requiring a different reference number, and all appearances of cement currently labeled with reference number 652, should be replaced with either 652a or 652b, as was done correctly on Fig. 6E. 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.
Specification
The specification is objected to because it appears from Figs. 6A-6E that two separate and different structures are intended to be identified as annular filters 660, yet the specification only refers to one, thus conflicting with the drawings. Correction is required. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1, 2, 4-7, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Howitt (US20200332625), in view of Knobloch et al. (US20100186962) [Knobloch].
Claim 1 Howitt discloses a method [Figs. 1,2,5-6C; abstract; para. 0030-0035], comprising:
affixing a cleaning tool 195 [e.g., at least the scraper inserts 210,215 positioned on tool mandrel 205] to an outer diameter of a work string 165,200 [Figs. 1-2C; para. 0018-0020; this includes affixing in any manner, which would include sliding the brush tool onto the outer diameter, as well as, securing a brush tool around the outer diameter];
advancing the work string to a first predetermined depth in a wellbore of a well [para. 0032];
retracting the cleaning tool to a second predetermined depth in the wellbore further uphole than the first predetermined depth [either once or repeatedly; para. 0032]; and
injecting a sealing medium through the work string into the wellbore at the first predetermined depth to plug the well [e.g., the cement 441; Figs. 2A-2C,6A-6C; para. 0035; the well being plugged by cementing the casing scraper 195 into the casing 175; para. 0020].
Howitt otherwise discloses all the limitations of this claim but does not explicitly disclose that the cleaning tool is a brush tool.
Knobloch discloses a tool for scraping, brushing, and/or scraping and brushing the interior of a casing [Figs. 1-7; abstract; para. 0058], wherein slot 54,56,16,50,102,104 mounted brush inserts 105,107,178, scraper inserts 2,4,51, and/or a combination of both are affixed to a tool [Figs. 1-7; abstract; para. 0035,0036,0038,0040,0045-0047,0050-0054,0058,0066].
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 configured the apparatus and methods of Howitt to have substituted brushes for at least some of the scrapers, as disclosed by Knobloch. One of ordinary skill in the art would reasonably have expected that this combination/substitution of prior art elements and techniques would have been within the skill of the art and would successfully yield and achieve the expected and predictable result that the cleaning would be accomplished by a known, effective casing debris cleaner tool, i.e., a brush.
Claim 2 Howitt, as discussed with respect to claim 1, discloses that the brush tool is affixed by sliding the brush tool onto the outer diameter of the work string 165,200 [Figs. 2A,2B; retainers 280,290 being required to maintain this relative position of the separated structures; para. 0022].
Claim 4 Howitt, as discussed with respect to claim 1, discloses securing the brush tool in place along a length of the work string via an end ring 280,290 [such rings retaining the brush tool along the length of the work string; para. 0022].
Claim 5 Howitt, as discussed with respect to claim 1, discloses securing the brush tool in place along a length of the work string via a coupling 280,290 between a first section 220a of the work string 165,200 and a second section 220b of the work string having a greater diameter than the outer diameter of the work string [retainers 280,290 can be “rings, clips, pins, screws, other types of retainers, or any combination thereof” any of which provides such coupled securement by fixing the position of the toll with respect to the first and second work string sections and presenting at enlarged diameter; Figs. 2A,2B; para. 0022].
Claim 6 Howitt, as discussed with respect to claim 1, discloses reducing a freedom of rotation of the brush tool relative to the work string by engaging a first anti-rotation structure of the brush tool with a second anti-rotation structure of the work string [para. 0021; “… as shown in FIG. 2B, the base pipe 200 includes an outer spline 270 and the mandrel 205 includes an inner spline 275 that matingly engages the outer spline 270 of the base pipe 200 to prevent, or at least reduce, relative rotation between the mandrel 205 and the base pipe 200”].
Claim 7 Howitt, as discussed with respect to claim 1, discloses
securing at least one bristle cartridge 210 into at least one slot 310 defined circumferentially about an outer diameter of a base of the brush tool [Figs. 2A-2C; para. 0024; the Howitt blade cartridge having been replaced by a brush cartridge in the claim 1 combination herein, a brush necessarily having bristles];
pushing the at least one bristle cartridge 210 radially outward from the base via a spring 215 in the bristle cartridge that pushes against the at least one slot [Figs. 2A-2C; para. 0020,0024] and
contacting an inner diameter 176 of the wellbore via a bristle of the bristle cartridge 210 [Fig. 1; abstract; para. 0017,0023];
and removing debris from the inner diameter of the wellbore via brushing the debris from the inner diameter with the bristle while advancing to the first predetermined depth [para. 0023,0032].
Claim 10 Howitt, as discussed with respect to claim 1, discloses an isolation tool/packer/cement retainer 190 RIH above the brush tool 195, such tool being optionally separable from the brush tool, drilling of the cemented brush tool [Fig. 1; para. 0018-0020], and using drillable “EZ Drill®, Fas Drill®, and/or Obsidian® plugs and packers,” as the isolation tool/packer/cement retainer, and otherwise discloses all the limitations of this claim, but does not explicitly disclose, in the claim 1 combination thus far, (1) catching debris in the wellbore using an annular filter installed on the outer diameter of the work string between the brush tool and the isolation tool/packer/cement retainer when advancing the work string in the wellbore, nor (2) that the isolation tool/packer/cement retainer 190 remains in the hole with the brush tool 195, to also be drilled.
Knobloch further discloses catching debris in the wellbore using an annular filter [e.g., magnetic filters 200 catching metallic debris; Fig. 11; para. 0072-0074] installed on the outer diameter of the work string [e.g., in the cutaway portions 70,150; Figs. 1,2,5; para. 0006,0035, 0043,0050] between the brush tool and a cement retainer [between at least the lower Knobloch brush inserts and any tool above such lower brush inserts, e.g., when positioned intermediate “various other tools”; para. 0034,0074], when advancing the work string in the wellbore [e.g., magnetic filtration occurring while RIH with respect to metallic debris dislodged by at least the lower Knobloch brush insert].
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 configured the apparatus and methods of Howitt, as modified at claim 1, to also incorporate an annular filter about, e.g., the Howitt work string portion 220a, and to use a drillable packer/cement retainer for remaining in the well to be drilled with the brush tool, the annular filter being disclosed by Knobloch, the drillable isolation tool/packer/cement retainer being suggested by Howitt, such that, in combination, Howitt, as further modified, includes catching debris in the wellbore using an annular filter installed on the outer diameter of the work string between the brush tool and a cement retainer when advancing the work string in the wellbore; detaching, down bore, the packer/cement retainer with the brush tool from the work string; and removing the work string, without the cement retainer and the brush tool, from the wellbore. One of ordinary skill in the art would reasonably have expected that this combination of prior art elements and techniques would have been within the skill of the art and would successfully yield and achieve the expected and predictable result that the annular filter would reduce/eliminate the debris dislodged by the brush tool while RIH from interfering with the isolation tool/packer/cement retainer function and that the isolation tool/packer/cement retainer being released from the setting tool and remaining with the brush tool, would simplify the release and insure/enhance the integrity of the plug configuration by supplementing the seal provided by the cemented brush tool.
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 1, 2, 4-7, and 10 are all rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent Application No. 18/716,377 in view of Knobloch. Claim 1 of the referenced application recites all the elements of claim 1 of the present application with the exception that the referenced claim 1 recites a scraping tool and the present application recites a brush tool. As indicated above, Knobloch discloses a tool for scraping, brushing, and/or scraping and brushing the interior of a casing [Figs. 1-7; abstract; para. 0058], wherein slot 54,56,16,50,102,104 mounted brush inserts 105,107,178, scraper inserts 2,4,51, and/or a combination of both are affixed to a tool [Figs. 1-7; abstract; para. 0035,0036,0038,0040,0045-0047,0050-0054,0058,0066].
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 configured the apparatus and methods of the referenced application claim 1 to have substituted brushes for scrapers and/or to include both, as disclosed by Knobloch. One of ordinary skill in the art would reasonably have expected that this combination/substitution of prior art elements and techniques would have been within the skill of the art and would successfully yield and achieve the expected and predictable result that the cleaning would be accomplished by a known, effective casing debris cleaner tool, i.e., a brush, or a combination of a brush and a scraper.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Coyle, Jr. (US20160669158) discloses a tubular cleaning tool with brush elements affixed by insertion in circumferential slots [Figs. 1,9]. Bonny (US20210079735) discloses a tubular cleaning tool with brush elements affixed by insertion in circumferential slots [Figs. 3-5]. Penisson (US20150027713) discloses spring-biased cleaning tool scrapers [Figs. 1-4].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE STERLING GRAY whose telephone number is (313)446-4820. The examiner can normally be reached 7-4 Eastern - M-F.
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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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/GEORGE S GRAY/ Primary Examiner, Art Unit 3676
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