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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 6, 2026 has been entered.
Response to Arguments
Applicant’s arguments, filed January 6, 2026, have been fully considered.
Applicant has argued that the objections to the drawings and claims set forth in the previous Office Action have been overcome by amendment. Examiner agrees, and has withdrawn the objections.
Applicant has argued that the claim amendments overcome the rejections under 35 U.S.C. 112. Examiner agrees, and has withdrawn the rejections.
Finally, applicant has argued that the amendments to the claims have overcome the prior art grounds of rejection set forth in the previous Office Action. Examiner agrees, and has withdrawn the previous grounds of rejection. However, the amended claims stand rejected under new grounds of rejection, set forth below.
Drawings
The drawings were received on January 6, 2026. These drawings are acceptable.
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.
Claims 9, 10, 19, and 20 are 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.
Claims 9, 10, 19, and 20 recite that “the detonator does not require the field user to make any wire-to-wire or wire-to-contact connections during the arming process” or “the cavity tool does not require the field user to make any wire-to-wire or wire-to-contact connections during assembly.” These limitations are confusing because claims 9, 10, 19, and 20 are all apparatus claims, yet they each refer to process steps, such as “the arming process” and “assembly.” It is unclear what structure within the apparatus is implied by referring to the process steps of “arming” and “assembly.” Additionally, it is unclear whether the apparatus can “require” a field user to do anything. For example, a robot could theoretically be used to perform the arming and assembly processes. In that case, nothing has changed about the apparatus itself, but a “field user” is no longer required to arm or assemble the device. In the same way, a device may be capable of assembly in a factory, rather than in the “field.” Thus, a field user would not be required to do any arming or assembly. The claims will be interpreted as requiring that a method can be conceived in which no wire-to-wire or wire-to-contact connections would be required to be made by a field user during arming or assembly.
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, 2, 9, and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oag et al. (US 2022/0307351, hereinafter Oag).
With regard to claim 1, Oag discloses a downhole cavity shot tool (Fig. 1) comprising:
a housing (4);
a reactive propellant material contained within the housing (“the fuel and oxidant mixture may be carried within the tool,” paragraph 0024);
an initiator assembly including a firing head (18) coupled to the housing (see Fig. 1), the firing head having a high explosive initiator therein (i.e. a “primer composition” as mentioned in paragraph 0043);
wherein initiation of the high explosive initiator via electrical current (“ignition may be by electrical discharge” as mentioned in paragraph 0043) ignites the reactive propellant material, creating an explosive shockwave (a “combustion jet” is created, which “can attack and perforate the walls of a tubular 30,” and “allows a well-controlled attack on the target material,” see paragraphs 0094-0095), wherein the reactive propellant material is a liquid propellant mixture of fuel and oxidizer (paragraph 0026, “a monopropellant or mixture of fuel and oxidant might be a solid, liquid, slurry, gel or gas”).
With regard to claim 2, Oag teaches that the detonation and resulting shockwave forms a cavity in the downhole well bore by collapsing one or more of the casings, wellbore and surrounding formation (a “combustion jet” is created, which “can attack and perforate the walls of a tubular 30,” and “allows a well-controlled attack on the target material,” see paragraphs 0094-0095).
With regard to claims 9 and 10, as best understood, Oag fails to teach any wire-to-wire or wire-to-contact connections within the device, thus Oag’s device does not “require” a field user to make any wire-to-wire or wire-to-contact connections. Additionally, Oag's device is capable of being assembled robotically, which would not require a field user to make any connections.
Claim Rejections - 35 USC § 103
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oag as applied to claim 1 above, and further in view of Kenny et al. (US 5,525,010, hereinafter Kenny).
With regard to claim 4, Oag fails to disclose that the liquid explosive is contained within a flexible bag.
Kenny teaches a downhole explosive tool for severing tubulars (similar to that of Oag), in which an explosive is housed within a flexible bag (84).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Oag by providing the flexible bag of Kenny to house the propellant, in order to contain the explosive material and provide a “clean cut” of the pipe (see Kenny, column 5, lines 1-7).
Claim(s) 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oag as applied to claim 1 above, and further in view of Rogman et al. (US 2015/0330192, hereinafter Rogman).
With regard to claims 6-8, Oag discloses at least that the initiator is immune to RF (paragraph 0045, “a known RF safe oilfield igniter system”).
However, Oag fails to disclose that the initiator is also immune to stray voltages or electrostatic discharge (ESD).
Rogman discloses a downhole perforating gun that is “protected from inadvertent firing due to RF signals, electrostatic discharge (ESD), or stray currents” (Paragraph 0031).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Oag such that the initiator was immune to ESD or stray currents, as taught by Rogman, in order to decrease the danger to rig personnel of inadvertent explosion of the device.
Allowable Subject Matter
Claims 11, 12, and 14-18, and 21 are allowed.
Claim 5 is 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.
Claims 19 and 20 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 an examiner’s statement of reasons for allowance:
Regarding claim 11, Oag fails to teach a detonating cord within the housing that is surrounded by the reactive propellant material. Also, Oag fails to teach that the high explosive detonator is “coupled to the detonating cord when the firing head is installed onto the housing.” In order to render the claimed invention obvious, Oag would need to be modified to use a detonating cord that was surrounded by the propellant material, and this detonating cord would be required to become coupled to the detonator upon installation of the firing head onto the housing. This would involve modifying multiple elements of Oag’s device and would constitute a significant redesign.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT E FULLER whose telephone number is (571)272-6300. The examiner can normally be reached M-F 8:30AM - 5:30PM.
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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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/ROBERT E FULLER/Primary Examiner, Art Unit 3676