DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s Amendment, filed 9/22/2025, has been entered. Claims 1-15 are pending.
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 of this title, 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 1-6 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Sihler et al. (US 20080135292) in view of Mahmoodi (US 20210404533).
Regarding claim 1: Sihler discloses a downhole wireline tool for performing an operation downhole in a well tubular metal structure in a well containing well fluid (Fig. 1; [0013]-[0016], [0035]). Sihler discloses the downhole wireline tool having an axial extension and a front face facing away from a top of the well (Fig. 1). Sihler discloses the downhole wireline tool comprising a wireline connection unit for connection to a wireline (Fig. 1; [0035] – line 121 connects at module 107). Sihler discloses an electric motor powered by the wireline for rotating a rotatable shaft at a first rotational speed Fig. 3A; [0042]). Sihler discloses an operational tool part 113, 115 for performing the operation by means of electricity and/or hydraulic fluid (Figs. 1, 3A; [0035], [0042]).
Sihler discloses a gearing system ([0042]) and that the gearing system has a channel through which an electric and/or a fluid line extends to provide electricity and/or fluid power for operating the operational tool part (Fig. 3A; [0049]). But Sihler does not explicitly discloses a pericyclic gear arranged between the electric motor and the operational tool part, the pericyclic gear being driven by the rotatable shaft of the electric motor for rotation of the operational tool part by an output rotatable shaft at a second rotational speed, that the pericyclic gear has a channel through which an electric and/or a fluid line extends to provide electricity and/or fluid power for operating the operational tool part. Mahmoodi discloses a pericyclic gear arranged between the electric motor and an operational tool part and the pericyclic gear being driven by the rotatable shaft of the electric motor for rotation of the operational tool part by an output rotatable shaft at a second rotational speed (Figs. 1A-3C; abstr.; [0072]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured Sihler to include a pericyclic gear arranged between the electric motor and an operational tool part and the pericyclic gear being driven by the rotatable shaft of the electric motor for rotation of the operational tool part by an output rotatable shaft at a second rotational speed as taught by Mahmoodi. As Sihler and Mahmoodi teach gear systems, as various gear systems are very well known in that art, and as Mahmoodi explicitly teaches using a pericyclic gear system, it would have been within routine skill to select a specific gearing system configuration from a finite selection of known gearing systems. Such a simple substitution (one gearing system for another gearing system) and configuration would have been predictable with a reasonable expectation for success and no unexpected results. Sihler, as modified by Mahmoodi, discloses that the pericyclic gear has a channel through which an electric and/or a fluid line extends to provide electricity and/or fluid power for operating the operational tool part (Sihler – discloses a channel through the gearing system and Mahmoodi teaches that the gearing system is a pericyclic gear).
Regarding claim 2: Sihler, as modified by Mahmoodi, discloses that the pericyclic gear is a nutating pericyclic gear such as a wobbling or nutating bevel gear (Mahmoodi – Figs. 2A-2C; [0055]-[0061]).
Regarding claim 3: Sihler, as modified by Mahmoodi, discloses that the channel is provided by a through-bore in the rotatable shaft and the output rotatable shaft (Sihler – Figs. 3A, 3B; [0049]).
Regarding claim 4: Sihler, as modified by Mahmoodi, discloses that the pericyclic gear is a reduction gear for reducing the rotational speed of the rotatable shaft (Mahmoodi – title, abstr.; [0002]).
Regarding claim 5: Sihler, as modified by Mahmoodi, discloses that the pericyclic gear comprises a reaction control member driven by the rotatable shaft, a pericyclic motion converter driven by the reaction control member, and an output gear driven by the pericyclic motion converter for driving an output rotatable shaft connected to the operational tool part (Mahmoodi – [0008]-[0013]).
Regarding claim 6: Sihler, as modified by Mahmoodi, discloses that the operational tool part comprises a drilling bit or a machining bit (Sihler – Figs. 1, 3A, 3B; [0035]).
Regarding claim 14: Sihler, as modified by Mahmoodi, discloses that the pericyclic gear comprises bearings arranged between the rotatable shaft and the reaction control member, the pericyclic motion converter and the output gear (Mahmoodi – [0008]-[0013]).
Regarding claim 15: Sihler, as modified by Mahmoodi, discloses a driving unit 107, 203 , such as a downhole tractor, for propelling the downhole system forward in the well (Sihler – Figs. 1, 2; [0035], [0039]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Sihler et al. (US 20080135292) and Mahmoodi (US 20210404533), as applied to claim 6 above, and further in view of Russell et al. (US 20210040808).
Sihler and Mahmoodi disclose the invention substantially as claimed and as discussed above.
Regarding claim 7: Sihler, as modified by Mahmoodi, does not explicitly disclose that the operational tool part comprises a vibration-generating unit for providing vibration force on the first drilling bit. Russel discloses that an operational tool part can comprise a vibration-generating unit for providing vibration force on the drilling bit (abstr.; [0007]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured Sihler, as modified by Mahmoodi, to include a vibration-generating unit for providing vibration force on the drilling bit as taught by Russell. As Sihler and Mahmoodi are silent regarding vibration and thus do not preclude vibration generating devices, as vibration devices are known in the art to aid drilling, and as Russell explicitly teaches the use of a vibration generating unit, it would have been within routine skill to select a specific drilling aid from a finite selection of known drilling aids (such as vibration or percussion). Such a simple addition and configuration would have been predictable with a reasonable expectation for success and no unexpected results.
Allowable Subject Matter
Claims 8-13 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.
The following is a statement of reasons for the indication of allowable subject matter.
Downhole wireline tools including various structure associated therewith are very well known in the art of drilling and completions. Representative art which appears close to the claimed invention includes Sihler et al. (US 20080135292), Mahmoodi (US 20210404533), Russell et al. (US 20210040808), Andersen (US 20230175320), Wang et al. (US 20210285289), Andersen et al. (US 20160215564), and Grabek (US 20180058146). In general, this art, alone or in combination, discloses various recited features and operational steps, including but not limited to a downhole wireline tool, the tool having an axial extension and front face, a wireline connection, an electric motor, an operational tool, and a pericyclic reduction gear. However, this art fails to disclose or fairly suggest the specific combination including a vibration unit powered through a line through the gear channel, a separate pump for providing rotation fluid and being powered by the wireline powered electric motor, and a fluid line running alongside a power line through the channel. It could be argued that these additional structures are well known and one could just combine the different structures in the art to disclose the claimed invention. However, the instant invention clearly and specifically recites structural relationships and combinations, which require a greater effort than just cobbling together known structures. Further, the claimed structures are sufficiently detailed to be distinguishable when configured as claimed. The examiner can find no motivation to combine or modify the references which would define a fully functioning apparatus as claimed in the instant application. The examiner finds that, at the time that the invention was made, it would not have been within routine skill to glean the specifically combined limitations of the instant invention, from the art, without the benefit of hindsight reasoning or extensive experimentation.
Response to Arguments
Applicant’s amendments and arguments, filed 9/22/2025, with respect to the previous rejections of claims 1-15 have been fully considered and they are at least partially persuasive. The objections/rejections that have been withdrawn are not repeated herein.
The examiner appreciates the applicant’s thorough discussion of the cited art. Applicant argues that a simple replacement of one type of gearbox (planetary gear box) of Sihler with a pericyclic gear box of Mahmoodi is possible, as the gearbox in Mahmoodi is incompatible with the gearbox of Sihler. Thus, applicant concludes that Sihler and Mahmoodi are directed to mutually exclusive arrangements that the skilled artisan would not have thought to combine without the use of impermissible hindsight guided by the present disclosure as a road map. The examiner disagrees with applicant’s analysis and conclusion.
Applicant presents a very complex and cumbersome argument regarding why Sihler and Mahmoodi are not combinable. The examiner believes that the applicant focuses too much on the detailed structure of Sihler and Mahmoodi and not on the reason for the combination. Applicant is remined that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Further, applicant is reminded that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the instant case, Mahmoodi teaches the claimed type of gearing which is not disclosed by Sihler. There is no preclusion, disclosed by Sihler, that would prevent the skilled artisan from reconfiguring/adapting Sihler to use the gearing of Mahmoodi.
Conclusion
THIS ACTION IS MADE FINAL. 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 TARAS P BEMKO whose telephone number is (571)270-1830. The examiner can normally be reached on Monday-Friday 8:00-5:00 (EDT/EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached on 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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/Taras P Bemko/
Primary Examiner, Art Unit 3672
5/14/2025