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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 6, 2026 has been entered and the claims filed December 17, 2025 have been considered below.
Response to Amendment
This Action is in response to Applicant’s Reply of February 6, 2026.
Applicant’s amendments to claim 22 overcomes the previously presented objections thereto.
Applicant’s amendment to claims 1, 12, and 21 overcomes the previously presented 35 USC 102(a)(2) rejection thereof as being anticipated by Fuglestad (US 2024/034413) or Sherrill et al. (US 2024/0125189).
Response to Arguments
Applicant's arguments with respect to the Guttormsen et al. reference have been fully considered but they are not persuasive.
Applicant has argued that Guttormsen fails to disclose a drive wheel that can be retracted and extended at the same time, thereby serving as both the drive wheel and the orientation member.
It is first noted that the features upon which applicant relies (i.e., a drive wheel that retracts and extends at the same time to serve as both the drive wheel and the orientation member) are not recited in the rejected claim(s). 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). This phrase implies something that would not technically be possible and is not disclosed in the instant application. That is that a drive wheel is somehow extending and retracting at the same moment in time and acting as two different mechanisms while doing so.
While Guttormsen doesn’t disclose a drive wheel that extends and retracts at the same moment in time, Guttormsen does disclose that the drive units 11’, 12’, 11’’, 12’’ function as both a tractor or drive means and a centralizing means [0054] and that each of these units includes a wheel 17. Thus the drive wheels do serve as both a drive wheel and an orientation member. Further, each of these units is independently controllable [0033], [0037], [0038], [0054] in response to measured conditions and downhole needs including deactivating some units while others orient the tool string to move through curves and past downhole obstructions [0054]. As such, the drive wheels are extendable and retractable to achieve propulsion or orientation as needed.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” and thus is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “propulsion means” in claims 16, 25, and 26.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-27 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 12, and 21 have been amended to require that the tool include a drive section with “at least one drive wheel”. There is no disclosure in the original filed application of the what type of feature is located on the distal end of the drive sections 42 of each drive unit 4 – see at least paragraphs [0081], [0082], [0085], [0087], [0094], and [0096]. While the drive sections are shown in figures like Figure 5, this depiction cannot be used to indicate that the sections include a wheel. The only mention of “wheel” in the originally filed application is in paragraph [0034] (see published application) where the distal end portion of the orientation means is being described as a slick roller that does not require “wheel tracks”.
As the instant application failed to indicate that the drive sections included “at least one drive wheel”, this amendment to claims 1, 12, and 21 is considered new matter.
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 1-11, 13, and 15 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.
Regarding claim 1: Claim 1 has been amended to further limit the “tool” however the preamble recites “An orientation device for orienting a tool within a wellbore” with the tool recited merely as an intended use. The subcombination of the orientation device cannot be further limited by the aspects that are not part of the subcombination itself. Such an amendment makes it so that it cannot be determined whether Applicant intends to claim the subcombination of the orientation device or the orientation device in combination with the tool, i.e. a system claim.
In formulating an evaluation on the merits, the Examiner is considering that the claims are drawn to the combination and the claims will be rejected accordingly. If the applicant indicates by amendment that the combination claim is the intention, the language in the permeable should be made consistent with the language of the body of the claims. If the intent is to claim the subcombination, then the body of the claim must be amended to remove positive recitation of the combination. Applicant’s intentions in the regard must be clearly established by the claim language.
Regarding claims 2-11: These claims are considered indefinite due to their dependence on claim 1.
Regarding claim 13: Claim 12 has been amended to require “a drive section” while claim 13 requires that the orientation device be part of a “tractor”. As a tractor is a drive element, it is unclear if the drive section and the tractor are the same feature. Correction and clarification are required.
Regarding claim 15: Claim 15 is considered indefinite due to its dependence on claim 13.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4, 7, 8, 11-16, 18, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guttormsen et al. (US 2015/0300113, Guttor).
Regarding claims 1 and 12: Guttor discloses an orientation device at least one of 11’, 12’, 11’’, and 12’’ for orientating a tool [0021], [0026], [0054] within a wellbore Abstract, the tool including a drive section at least one of 11’, 12’, 11’’, and 12’’ including at least one drive wheel 17 displaceable between a retracted and extended position [0032], [0033], the orientation device forms a central longitudinal axis Fig 1 from a first orientation device end 30 to a second orientation device end 13, the orientation device comprises:
at least one orientation member 16 displaceable between a retracted position and an extended position [0032], [0033], the extended position has a lateral displacement compared to the retracted position Fig 1; and
wherein, when the at least one drive wheel is in the retracted position, the at least one orientation member comprises a distal end portion 17 where the distal end portion is formed to be displaceable along a curve of an internal wall of the wellbore [0033], [0034], [0037], [0038], [0054]. Each unit 11’, 12’, 11’’, 12’’ are disclosed as being individually controllable independently controllable [0033], [0037], [0038], [0054] in response to measured conditions and downhole needs including deactivating some units while others orient the tool string to move through curves and past downhole obstructions [0054]. As such, the drive wheels are extendable and retractable to achieve propulsion or orientation as needed.
Guttor does not disclose that the distal end portion of the orientation member is formed to be displaced sideways or that, when the at least one orientation member displaces from the retracted position to the extended position, the distal end portion displaces sideways along the curve to different clock positions and an orientation of the tool changes within the wellbore. However, Guttor discloses the same structure as that recited in claims 1 and 12 and the sideways displacement recited in the claims is considered a results of the structure and functionality thereof. As such, it can be said that the structure of Guttor would function the same as that in the claims. “When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” See MPEP 2112.01.
Regarding claim 2: Wherein the distal end portion is further formed to be displaceable along the central longitudinal axis along the internal wall [0035].
Regarding claim 3: Wherein the at least one orientation member comprises an arm 16.
Regarding claim 4: Wherein the distal end portion comprises a roller 17.
Regarding claim 7: Wherein the at least one orientation member comprises a propulsion motor 21, the at least one orientation member and the propulsion motor are configured to provide a propulsion force along the central longitudinal axis [0030], [0031].
Regarding claim 8: Wherein the at least one orientation member comprises a propulsion motor 21, the at least one orientation member and the propulsion motor are configured to provide a propulsion force perpendicular to the central longitudinal axis [0035], [0037].
Regarding claims 11 and 14: Wherein the orientation device is a modified drive section 10.
Regarding claim 12: Guttor discloses a tool string Fig 1comprising the above described orientation device and a tool [0026], [0054] to be orientated centered – [0021] within a wellbore relative to an imaginary vertical line, the tool to be orientated within the wellbore is rotationally stiff connected at 13 to the orientation device.
Regarding claim 13: Wherein the orientation device is a part of a tractor Abstract.
Regarding claim 15: Wherein the tractor comprises a plurality of orientation devices 16.
Regarding claim 16: Wherein the orientation device is adapted to be operated independent via hydraulic cylinder 18 – [0034], [0035] of a propulsion means 21.
Regarding claim 18: Wherein the orientation device is adapted to control the a lateral distance the orientation member displaces via hydraulic cylinder 18 – [0032]-[0036], [0054].
Regarding claim 20: Wherein the tool string is wireline operated 26.
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.
Claim(s) 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guttor in view of Parrott et al. (US 2003/0188867, Parrott).
Guttor discloses all of the limitations of the above claim(s) except the distal end portion of the orientation device comprising slick rollers or balls instead of wheels.
Parrott discloses a downhole tool that includes a roller adapter 150 to centralize the tool. The adapter includes a series of wheels 152 that can be replaced by rollers or balls [0115]. While this paragraph does not indicate that the rollers are slick rollers, it does not indicate that any of the features include traction features thereon and thus would be considered slick.
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 modified Guttor to replace the distal end of the orientation device with slick rollers or balls, as suggested by Parrott, since the examiner notes the equivalence of wheels and slick rollers or balls for their use in the downhole tool centralizing art and the selection of any of these known equivalents to use on the centralizing portion of Guttor would be within the level of ordinary skill in the art, as taught by Parrott.
Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guttor in view of Fuglestad (US 2021/0140253, Fuglestad2).
Guttor discloses all of the limitations of the above claim(s) except the orientation device including a lateral displacement sensor or a rotation sensor.
Fuglestad2 discloses an orientation device similar to that of Guttor. The device of Fuglestad2 can include a variety of sensors including rotation sensors 57 – [0069] and displacement sensors [0032], [0046], [0069] – tension sensors indirectly measure lateral displacement of wheel sections as they will not register tension if the wheel sections are not fully displaced, [0069].
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 modified the system of Guttor to include various sensors, as taught by Fuglestad2, in order to have been able to motor the system and its surroundings so as to allow for the control of the system in the well [0069], [0074].
Claim(s) 17 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guttor in view of Fuglestad (US 2024/0344413).
Regarding claim 17: Guttor discloses that the orientation device is rotational stiff connected to a part of the tool string but fails to disclose that another part of the tool string is adapted to rotate freely relative to the orientation device.
Fuglestad discloses an orientation device similar to that of Guttor. The orientation device is rotationally stiffly connected to a first part 12 of the tool string and free to rotate relative to a second part 8/58 of the tool string.
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 modified Guttor so that a second part of the tool string was free to rotate relative to the orientation device, as taught by Fuglestad, in order to have allowed the tool string to free rotate within the well relative to the wireline thus allowing it to be reoriented in the well [0013].
Regarding claim 19: Guttor discloses all of the limitations of the above claim(s) except the tool string including one orientation sensor.
Fuglestad discloses a tool string similar to that of Guttor. The tool string includes an orientation sensor gravity sensor 60 – [0035], [0039].
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 modified Guttor so that the tool string includes orientation sensor, as taught by Fuglestad, in order to have provided a means for controlling the orientation of the tool string [0035].
Claim Rejections – Prior Art
While the prior art of record fails to disclose the subject matter of claims 21-27, due to the 35 USC 112(a) rejection of claim 21, the allowability of claims 21-27 cannot be determined at this time.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER H GAY whose telephone number is (571)272-7029. The examiner can normally be reached Monday through Thursday, 6-3:30 and every other Friday 6-11.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Y Coupe can be reached at (571)270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER H GAY/Primary Examiner, Art Unit 3619
JHG
3/10/2026