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 .
Applicants’ Amendment, filed 11/7/2025, has been entered. Claims 21-40 are currently pending with claims 1-20 being previously cancelled.
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: 66
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 21-40 are rejected under 35 U.S.C. 103 as being unpatentable over Watson et al. (US 4858687) in view of Booth (US 20130008671).
Regarding claim 21: Watson discloses a well plug 12, 14 comprising a cylindrical body having a plurality of cylindrical fins 26, 48 encircling the cylindrical body (Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24). Watson discloses that the cylindrical body forms an interior space (Fig. 1). Watson discloses a solid core 16, 28, 36, 58 disposed within the cylindrical body and filling the interior space (Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24). Watson discloses a locking feature 30, 52, 60 partially disposed in the core and partially extending from the cylindrical body and the locking feature configured to lock with an adjacent well plug (Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24).
Watson does not explicitly disclose that the core is concrete. Watson discloses that the core may be formed of any suitable, easily drillable material, such as plastic, aluminum, etc. (Fig. 1; col. 2, lines 2-36; col. 2, lines 50-55).
Booth discloses that an easily drillable material can be concrete and teaches moving from plastic cores to concrete cores (abstr.; [0013], [0015], [0016], [0038]; claim 2). 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 substituted the drillable material core of Watson with concrete as taught by Booth. As both Watson and Booth teach the use of an easily drillable material and as Booth explicitly teaches that concrete is an easily drillable material, it would have been within routine skill to select a specific type of drillable material from a finite list of well-known drillable materials taught in the downhole plug art. Such a selection and such a simple substitution would have been predictable with a reasonable expectation for success and no unexpected results.
Regarding claim 22: Watson, as modified by Booth, discloses that the locking feature further comprises a plurality of locking sub-features on a first end that partially extends from the cylindrical body (Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24).
Regarding claim 23: Watson, as modified by Booth, discloses that the locking feature further comprises a plurality of locking sub-features on a first end that partially extends from the cylindrical body and a second end that is flat and which terminates in the concrete core (Watson - Fig. 1; Booth – discloses concrete material).
Regarding claim 24: Watson, as modified by Booth, discloses that the locking feature further comprises shapes disposed around a circumference of a cavity (Watson - Fig. 1).
Regarding claim 25: Watson, as modified by Booth, discloses the locking feature comprises a uniform cylindrical bore that extends from a first end that partially extends from the cylindrical body and a second end that terminates in the concrete core (Watson - Fig. 1; Booth – discloses concrete material).
Regarding claim 26: Watson, as modified by Booth, discloses that the locking feature comprises a uniform cylindrical bore that extends from a first end that partially extends from the cylindrical body and a second end that terminates in the concrete core and that the cylindrical bore continues into the concrete core (Watson - Fig. 1; Booth – discloses concrete material).
Regarding claim 27: Watson, as modified by Booth, discloses that the locking feature comprises a uniform cylindrical bore that extends from a first end that partially extends from the cylindrical body and a second end that terminates in the concrete core, and wherein the cylindrical bore continues through the concrete core to a second end of the cylindrical body (Watson - Fig. 1; Booth – discloses concrete material).
Regarding claim 28: Watson, as modified by Booth, discloses a well plug (Watson - 12, 14) comprising a cylindrical body having a first end and a second end and forming an interior cylindrical chamber (see above; Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24). Watson, as modified by Booth, discloses a plurality of cylindrical fins (Watson - 26, 48) encircling the cylindrical body (see above; Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24). Watson, as modified by Booth, discloses a solid concrete core (Watson - 16, 28, 36, 58) disposed within the interior cylindrical chamber of the cylindrical body from the first end to the second end of the cylindrical body (see above; Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24; Booth - abstr.; [0013], [0015], [0016], [0038]; claim 2; Booth – discloses concrete material). Watson, as modified by Booth, discloses a locking feature disposed at a first end of the cylindrical body extending partially into the concrete core and partially outside of the concrete core through the cylindrical body (see above; Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24; Booth – discloses concrete material).
Regarding claim 29: Watson, as modified by Booth, discloses a second locking feature (Watson – 58, 60) disposed at the second end of the cylindrical body and extending into the concrete core (Watson - Fig. 1; col. 2, lines 26-36; Booth – discloses concrete material).
Regarding claim 30: Watson, as modified by Booth, discloses that the locking feature further comprises a plurality of locking sub-features (Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24).
Regarding claim 31: Watson, as modified by Booth, discloses that the locking feature comprises a plurality of radially-disposed locking sub-features (Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24).
Regarding claim 32: Watson, as modified by Booth, discloses that the locking feature comprises a uniform cylindrical bore that extends from a first end that partially extends from the cylindrical body and a second end that terminates in the concrete core (Watson - Fig. 1; Booth – discloses concrete material).
Regarding claim 33: Watson, as modified by Booth, discloses that the locking feature comprises a uniform cylindrical bore that extends from a first end that partially extends from the cylindrical body and a second end that terminates in the concrete core and that the cylindrical bore continues into the concrete core (Watson - Fig. 1; Booth – discloses concrete material).
Regarding claim 34: Watson, as modified by Booth, discloses a well plug system (Watson - 12, 14), comprising a solid concrete core (Watson - 16, 28, 36, 58) well plug (see above; Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24; Booth - abstr.; [0013], [0015], [0016], [0038]; claim 2; Booth – discloses concrete material). Watson, as modified by Booth, discloses a cylindrical body having a plurality of cylindrical fins (Watson - 26, 48) encircling the cylindrical body (see above; Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24). Watson, as modified by Booth, discloses that the cylindrical body forms an interior space (see above; Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24). Watson, as modified by Booth, discloses a solid concrete core disposed within the cylindrical body and filling the interior space (see above; Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24; Booth - abstr.; [0013], [0015], [0016], [0038]; claim 2; Booth – discloses concrete material). Watson, as modified by Booth, discloses a locking feature partially disposed in the concrete core and partially extending from the cylindrical body and the locking feature configured to lock with an adjacent well plug (see above; Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24; Booth – discloses concrete material). Watson, as modified by Booth, discloses a hollow concrete core well plug (Watson – 14) with a locking feature (Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24; Booth – discloses concrete material). Watson, as modified by Booth, discloses that the locking feature of the solid concrete core well plug interlocks with the locking feature of the hollow concrete core well plug (Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24; Booth – discloses concrete material).
Regarding claim 35: Watson, as modified by Booth, discloses that the hollow concrete core well plug comprises a cylindrical body (Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24; Booth – discloses concrete material).
Regarding claim 36: Watson, as modified by Booth, discloses that the hollow concrete core well plug comprises a plurality of cylindrical fins (Watson – 48) encircling the cylindrical body (Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24; Booth – discloses concrete material).
Regarding claim 37: Watson, as modified by Booth, discloses that the hollow concrete core well plug comprises a concrete core (Watson – core 36, 58) disposed within the cylindrical body (Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24; Booth – discloses concrete material).
Regarding claim 38: Watson, as modified by Booth, discloses that the hollow concrete core well plug comprises a cavity disposed in the concrete core along an axis of the cylindrical body (Watson - Fig. 1; Booth – discloses concrete material).
Regarding claim 39: Watson, as modified by Booth, discloses that the hollow concrete core well plug comprises a second locking feature (Watson 52, 62) disposed at a second end in the concrete core (Watson - Fig. 1; col. 1, line 64-col. 2, line 2; col. 2, lines 14-24; Booth – discloses concrete material).
Regarding claim 40: Watson, as modified by Booth, discloses that the locking feature of the solid concrete core well plug and the locking feature of the hollow concrete core well plug each comprise a plurality of locking sub-features (Watson - Fig. 1; Booth – discloses concrete material).
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 §§ 706.02(I)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eT D-info-l.jsp.
Claims 21-40 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-20 of US Pat. Appl. No. 16840000. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 21-40 of the instant application fully encompass claims 11-20 of US Pat. Appl. No. 16840000.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicants’ arguments, filed 11/7/2025, with respect to the previous rejections of claims 21-40 have been fully considered and they are at least partially persuasive. The objections/rejections that have been withdrawn are not repeated herein.
Applicants argue that the examiner is engaging in impermissible hindsight when modifying the Watson core with a concrete material as disclosed by Booth. Applicants attempt to support this argument by asserting that Booth does not disclose a concrete core. The examiner disagrees with applicants’ analysis and conclusion and believes that the applicants misunderstand the examiner’s rejection.
Watson discloses that the core may be formed of any suitable, easily drillable material, such as plastic, aluminum, etc. (Fig. 1; col. 2, lines 2-36; col. 2, lines 50-55). Booth discloses that an easily drillable material can be concrete and teaches moving from plastic cores to concrete cores (abstr.; [0013], [0015], [0016], [0038]; claim 2). Thus, Watson and Booth both teach the use of an easily drillable material and Booth explicitly teaches that concrete is an easily drillable material. Therefore, the rejection is substituting Booth’s easily drillable material (concrete) for the easily drillable material used by Watson. This rejection is not based on any structure of Booth but only the teaching of what can comprise and easily drillable material.
Applicants specifically assert that the examiner’s obviousness statement, regarding the combination of Watson and Booth, is nothing more than impermissible hindsight, because Booth does not disclose a core. The examiner disagrees because as explained above, Booth is not being cited for disclosing a concrete core. Applicants are reminded 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).
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
11/21/2025