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 .
Election/Restrictions
Applicant’s election without traverse of Invention I, claims 1-7, in the reply filed on 8/20/2025 is acknowledged.
Claims 1-14 are pending with claims 8-14 being withdrawn from consideration.
Information Disclosure Statement
The information disclosure statement filed 3/18/2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
The listed Saudi Arabian Office Action has not been considered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 5 and 7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 5 does not appear to be supported by the disclosure. It is not clear what engagement points are and it is not clear how the number of such points is determined.
Claim 7 recites “an operating intensity”. The disclosure does not identify or define an operating intensity.
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 5 and 7 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.
Claim 5 recites “a number of engagement points” in line 1. This recitation is indefinite as it is not clear what engagement points are, where they are located, and how they function.
Claim 7 recites “an operating intensity”. This recitation is indefinite as it is not clear what an operating intensity is.
It should be noted that claims 5 and 7 are not currently rejected under art. However, this does not indicate allowable subject matter. Claims 5 and 7 cannot be properly examined until the claims are clear and the metes and bounds can be ascertained.
Claim Rejections - 35 USC § 102
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 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.
Claims 1 and 3-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by MacDougall (US 20200173258).
Regarding claim 1: MacDougall discloses a stuck object retrieval method (abstr.; [0035]). MacDougall discloses conveying a downhole vibration tool 200 222 to a point of interest in a wellbore (Figs. 2, 3; [0041]). MacDougall discloses deploying an engagement system 234, 232 to anchor the downhole vibration tool and determine a position and orientation of the downhole vibration tool relative to the wellbore ([0031], [0036]). MacDougall discloses activating the downhole vibration tool, having at least one vibration module, according to a configuration and iteratively and repetitively ([0041]). MacDougall discloses measuring data using a sensor module, determining a position and an orientation change of the downhole vibration tool relative to the wellbore ([0031]). MacDougall discloses adjusting an operational parameter of the vibration module ([0041], [0042]), vibrating the downhole vibration tool continuously or in pulses ([0041]), exerting a pulling or pushing force through a wireline or a tractor section until the stuck object is freed ([0043]) and retrieving the stuck object engaged with the downhole vibration tool ([0044] – the examiner finds that “move” or “dislodge” would disclose “retrieving” as there is no specific limitation as to where the object is retried to).
Regarding claim 3: MacDougall discloses that the downhole vibration tool is conveyed downhole on the wireline ([0028]).
Regarding claim 4: MacDougall discloses that the position of interest for deploying the engagement system is predetermined based, at least in part, on a depth at a sticking point and a distance between the sticking point and a free end of the stuck object ([0007, [0031], [0034]).
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 2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over MacDougall (US 20200173258) in view of Li (US 20190301258).
MacDougall discloses the invention substantially as claimed and as discussed above.
Regarding claim 2: MacDougal does not explicitly disclose that the stuck object comprises a drill pipe. Li discloses that a drill pipe can become a stuck object and can be retrieved with a downhole retrieval tool ([0024]). 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 the tool of MacDougal so as to retrieve a stuck drill pipe as taught by Li. As MacDougal and Li both disclose retrieving a stuck object and as Li explicitly teaches that drill pipes can become stuck and can be retrieved, it would have been within routine skill to have selected a specific retrieval device capable of retrieving a desired stuck object (i.e. a drill pipe) from a finite list of retrieval devices. Such a simple substitution/addition would have been obvious to one having ordinary skill in the art and such a simple substitution/addition would have been predictable with a reasonable expectation for success and with no unexpected results.
Regarding claim 6: MacDougal, as modified by Li, discloses that engaging the stuck object comprises attaching a fishing attachment to a leading tractor section configured to engage the stuck object (Li - Fig. 1; [0033]).
Conclusion
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
9/3/2025