DETAILED ACTION
Claims 1-22 are pending.
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 .
Election/Restrictions
Applicant’s election without traverse of species I (i.e., figures 1-3M and 5-25) in the reply filed on 02/03/2026 is acknowledged.
Drawings
The drawings are objected to because of the following:
The line quality of all the drawings, when zoomed in, illustrate an inconsistent line quality. 37 CFR 1.84 (Standards for Drawings), section L (Character of lines, numbers, and letters) states: “All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined”. The drawings should be viewed in the USPTO’s patent center in order to see this problem.
Some of the drawings (e.g., at least figures 2 and 6) have poor line quality and thus do not meet the requirements of 37 CFR 1.84(L). The drawings should be viewed in the USPTO’s patent center in order to see this problem. The drawings likely contain grayscale elements which causes image degradation in the USPTO electronic filing system. The drawings must be entirely bi-tonal, containing only black or white color values.
Some of the figures (e.g., figures 11) are objected to for having the incorrect cross-hatching, as the cement adjacent the casing should be cross-hatched as “concrete”, per MPEP 608.02, section IX. See also 37 CFR 1.84, section "h", subsection "3". Additionally, tubulars with an empty bore therein should have no cross-hatching and any sort of fluid being depicted should be cross-hatched as “liquid”.
Lastly, at least figure 3 shows the cross-hatching of various, distinct elements to be continuous, which is improper. “The various parts of a cross section of the same item should be hatched in the same manner and should accurately and graphically indicate the nature of the material(s) that is illustrated in cross section. The hatching of juxtaposed different elements must be angled in a different way” — see 37 CFR 1.84, section "h", subsection "3".
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-22 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,116,847 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1 and 12 of the instant application corresponds to claim 1 of U.S. Patent Number 12,116,847 B2.
The following are substantial duplicates:
Claim(s) 2/13 of the instant application and claim 2 of U.S. Patent Number 12,116,847 B2.
Claim(s) 3/14 of the instant application and claim 3 of U.S. Patent Number 12,116,847 B2.
Claim(s) 4/15 of the instant application and claim 4 of U.S. Patent Number 12,116,847 B2.
Claim(s) 5/16 of the instant application and claim 5 of U.S. Patent Number 12,116,847 B2.
Claim(s) 6/17 of the instant application and claim 6 of U.S. Patent Number 12,116,847 B2.
Claim(s) 7/18 of the instant application and claim 7 of U.S. Patent Number 12,116,847 B2.
Claim(s) 8/19 of the instant application and claim 8 of U.S. Patent Number 12,116,847 B2.
Claim(s) 9/20 of the instant application and claim 9 of U.S. Patent Number 12,116,847 B2.
Claim(s) 10/21 of the instant application and claim 10 of U.S. Patent Number 12,116,847 B2.
Claim(s) 11/22 of the instant application and claim 11 of U.S. Patent Number 12,116,847 B2.
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 and 12-13 is/are rejected under 35 U.S.C. 102(a) as being anticipated by Steele (US Patent Number 10,472,933 B2; herein “Steele”).
In regard to claim 1, Steele discloses: A downhole rotary slip ring joint (as shown in at least figures 2-5 and 13-14), comprising:
an outer mandrel (186’);
an inner mandrel (180', as shown in figure 13) operable to rotate relative to the outer mandrel (the inner mandrel is inserted into the outer mandrel without regarding to the relative radial orientation and thus is capable of being able to rotate relative to the outer mandrel);
a first outer mandrel communication connection (405a) coupled to the outer mandrel;
a second outer mandrel electrical communication connection (405b) coupled to the outer mandrel;
a third outer mandrel hydraulic communication connection (309a, shown in figure 5 | also, see column 11 lines 40-59) coupled to the outer mandrel, the first outer mandrel communication connection, second outer mandrel electrical communication connection, and third outer mandrel hydraulic communication connection angularly offset and isolated from one another (as shown in figure 4, which shows the hydraulic line, and figure 14 which shows the first and second lines 405a and 405b are isolated and separated by 440 at an offset angle);
a first inner mandrel communication connection (404a) coupled to the inner mandrel;
a second inner mandrel electrical communication connection (404b) coupled to the inner mandrel;
a third inner mandrel hydraulic communication connection (306a) coupled to the inner mandrel, the first inner mandrel communication connection, second inner mandrel electrical communication connection, and third inner mandrel hydraulic communication connection angularly offset and isolated from one another (as shown in figure 4, which shows the hydraulic line, and figure 14 which shows the first and second connections 404a/405a and 404b/405b are isolated and separated by 430 at an offset angle);
a first passageway extending through the outer mandrel and the inner mandrel (groove 414 and bores formed within wall 203 or grooves — see column 11 lines 5-59), the first passageway configured to provide continuous coupling between the first outer mandrel communication connection and the first inner mandrel communication connection regardless of a rotation of the inner mandrel relative to the outer mandrel (connected with slip ring 403);
a second passageway extending through the outer mandrel and the inner mandrel (second groove 414 and bores formed within wall 203 or grooves — see column 11 lines 5-59), the second passageway configured to provide continuous coupling between the second outer mandrel electrical communication connection and the second inner mandrel electrical communication connection regardless of a rotation of the inner mandrel relative to the outer mandrel (connected with slip ring 403); and
a third passageway extending through the outer mandrel and the inner mandrel (306a-308a), the third passageway configured to provide continuous coupling between the third outer mandrel hydraulic communication connection and the third inner mandrel hydraulic communication connection regardless of a rotation of the inner mandrel relative to the outer mandrel (see figure 5 and column 9 lines 55-63), wherein the downhole rotary slip ring joint is operable to be coupled to a wellbore access tool (as shown in figure 14, wherein the slip joint is capable of being coupled to a wellbore access tool, as the tool could be inserted into 182 | also, see column 9 lines 17-26).
In regard to claim 2, Steele further discloses: wherein the first outer mandrel communication connection is a first outer mandrel electrical communication connection and the first inner mandrel communication connection is a first inner mandrel electrical communication connection (see column 11 lines 5-39, electrical lines extend).
In regard to claim 12, Steele discloses: A well system (see abstract and at least figures 2-5 and 13-14), comprising:
a wellbore (13);
a wellbore access tool positioned near the wellbore with a conveyance (strings or workover tools are conveyed into 182 — see column 9 lines 27-38);
a downhole rotary slip ring joint (403) positioned between the conveyance and the wellbore access tool (tool inserted into 182, as shown in figure 14), the downhole rotary slip ring joint including:
an outer mandrel (186’);
an inner mandrel (180’, as shown in figure 13) operable to rotate relative to the outer mandrel (wherein the inner mandrel is inserted into the outer mandrel without regarding to the relative radial orientation and thus is capable of being able to rotate relative to the outer mandrel);
a first outer mandrel communication connection (405a) coupled to the outer mandrel;
a second outer mandrel electrical communication connection (405b) coupled to the outer mandrel;
a third outer mandrel hydraulic communication connection (309a — see figure 5 and column 11 lines 40-59) coupled to the outer mandrel, the first outer mandrel communication connection, second outer mandrel electrical communication connection, and third outer mandrel hydraulic communication connection angularly offset and isolated from one another (as shown in figure 4, which shows the hydraulic line, and figure 14 which shows the first and second lines 405a and 405b are isolated and separated by 440 at an offset angle);
a first inner mandrel communication connection (404a) coupled to the inner mandrel;
a second inner mandrel electrical communication connection (404b) coupled to the inner mandrel;
a third inner mandrel hydraulic communication connection (306a) coupled to the inner mandrel, the first inner mandrel communication connection, second inner mandrel electrical communication connection, and third inner mandrel hydraulic communication connection angularly offset and isolated from one another (as shown in figure 4, which shows the hydraulic line, and figure 14 which shows the first and second connections 404a/405a and 404b/405b are isolated and separated by 430 at an offset angle);
a first passageway extending through the outer mandrel and the inner mandrel (groove 414 and bores formed within wall 203 or grooves — see column 11 lines 5-59), the first passageway configured to provide continuous coupling between the first outer mandrel communication connection and the first inner mandrel communication connection regardless of a rotation of the inner mandrel relative to the outer mandrel (connected with slip ring 403);
a second passageway extending through the outer mandrel and the inner mandrel (second groove 414 and bores formed within wall 203 or grooves — see column 11 lines 5-59), the second passageway configured to provide continuous coupling between the second outer mandrel electrical communication connection and the second inner mandrel electrical communication connection regardless of a rotation of the inner mandrel relative to the outer mandrel (connected with slip ring 403); and
a third passageway extending through the outer mandrel and the inner mandrel (306a-308a), the third passageway configured to provide continuous coupling between the third outer mandrel hydraulic communication connection and the third inner mandrel hydraulic communication connection regardless of a rotation of the inner mandrel relative to the outer mandrel (see figure 5 and column 9 lines 55-63), wherein the downhole rotary slip ring joint is operable to be coupled to a wellbore access tool (as shown in figure 14, wherein the slip joint is capable of being coupled to a wellbore access tool, as the tool could be inserted into 182 — also, see column 9 lines 17-26); and
a first communication line (408a) coupled to the first outer mandrel communication connection, a second communication line (406a) coupled to the first inner mandrel communication connection, a third communication line (408b) coupled to the second outer mandrel electrical communication connection, a fourth communication line (406b) coupled to the second inner mandrel electrical communication connection, a fifth communication line (320a) coupled to the third outer mandrel hydraulic communication connection, a sixth communication line (308a) coupled to the third inner mandrel hydraulic communication connection.
In regard to claim 13, Steele further discloses: wherein the first outer mandrel communication connection is a first outer mandrel electrical communication connection and the first inner mandrel communication connection is a first inner mandrel electrical communication connection (see column 11 lines 5-39, electrical lines extend).
Claim Rejections - 35 USC § 103
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 3-11 and 14-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Steele (US Patent Number 10,472,933 B2; herein “Steele”).
In regard to claims 3 and 14, Steele does not disclose the angular positions of
the communication connections.
However, it appears in figure 14 that Steele discloses two electrical lines next to one another and hydraulic lines around the circumference of the inner and outer mandrels.
Thus, as Steele teaches that each electrical communication connection is in its own groove, and there are also hydraulic communications around the circumference of the outer mandrel, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to try different arrangements around the circumference of the outer mandrel, as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp.
In regard to claims 4 and 15, Steele does not disclose the angular positions of
the communication connections.
However, it appears in figure 14 that Steele discloses two electrical lines next to one another and hydraulic lines around the circumference of the inner and outer mandrels.
Thus, as Steele teaches that each electrical communication connection is in its own groove, and there are also hydraulic communications around the circumference of the inner mandrel, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to try different arrangements around the circumference of the inner mandrel, as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp.
In regard to claims 5 and 16, Steele further discloses including: a fourth outer mandrel hydraulic communication connection (309b, shown in figure 5, see column 11 lines 40-59) coupled to the outer mandrel; a fourth inner mandrel hydraulic communication connection (306b) coupled to the inner mandrel; and a fourth passageway (306b-308b) extending through the outer mandrel and the inner mandrel, the fourth passageway configured to provide continuous coupling between the fourth outer mandrel hydraulic communication connection and the fourth inner mandrel hydraulic communication connection regardless of a rotation of the inner mandrel relative to the outer mandrel (see figure 5 and column 9 lines 55-63).
In regard to claims 6 and 17, Steele does not disclose the angular positions of the communication connections.
However, it appears in figure 14 that Steele discloses two electrical lines next to one another and hydraulic lines around the circumference of the inner and outer mandrels.
Thus, as Steele teaches that each electrical communication connection is in its own groove, and there are also hydraulic communications around the circumference of the outer mandrel, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to try different arrangements around the circumference of the outer mandrel, as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp.
In regard to claims 7 and 18, Steele does not disclose the angular positions of the communication connections.
However, it appears in figure 14 that Steele discloses two electrical lines next to one another and hydraulic lines around the circumference of the inner and outer mandrels.
Thus, as Steele teaches that each electrical communication connection is in its own groove, and there are also hydraulic communications around the circumference of the inner mandrel, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to try different arrangements around the circumference of the inner mandrel, as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp.
In regard to claims 8 and 19, Steele further discloses including: a fifth outer
mandrel hydraulic communication connection (309c, shown in figure 5, see column 11 lines 40-59) coupled to the outer mandrel; a fifth inner mandrel hydraulic communication connection (306c) coupled to the inner mandrel; and a fifth passageway (306c-308c) extending through the outer mandrel and the inner mandrel, the fifth passageway configured to provide continuous coupling between the fifth outer mandrel hydraulic communication connection and the fifth inner mandrel hydraulic communication connection regardless of a rotation of the inner mandrel relative to the outer mandrel (see figure 5 and column 9 lines 55-63).
In regard to claims 9 and 20, Steele does not disclose the angular positions of the communication connections.
However, it appears in figure 14 that Steele discloses two electrical lines next to one another and hydraulic lines around the circumference of the inner and outer mandrels.
Thus, as Steele teaches that each electrical communication connection is in its own groove, and there are also hydraulic communications around the circumference of the outer mandrel, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to try different arrangements around the circumference of the outer mandrel, as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp.
In regard to claims 10 and 21, Steele does not disclose the angular positions of the communication connections.
However, it appears in figure 14 that Steele discloses two electrical lines next to one another and hydraulic lines around the circumference of the inner and outer mandrels.
Thus, as Steele teaches that each electrical communication connection is in its own groove, and there are also hydraulic communications around the circumference of the inner mandrel, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to try different arrangements around the circumference of the inner mandrel, as a person with ordinary skill has good reason to pursue the known options within his or her technical grasp.
In regard to claims 11 and 22, Steele further discloses including a sealing element on either side of each of the first (430 is on both sides of the passageway), second (430 is on both sides of the passageway), third (sealing elements 188, see figure 5), fourth (sealing elements 188, see figure 5), and fifth passageways (sealing elements 188, see figure 5)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Rountree et al. (US Patent Number 6,050,349 A) disclose a hydraulic system for mud pulse generation.
D'Silva et al. (US Patent Number 9,284,793 B2) disclose an externally serviceable slip ring apparatus.
Liess (US Patent Number 10,527,104 B2) disclose a combined multi-coupler for top drive.
Kirkhope (US Patent Number 10,364,617 B2) disclose a slip ring with a tensioned contact element.
Wolters et al. (US Patent Number 7,487,830 B2) disclose a method and apparatus to facilitate wet or dry control line connection for the downhole environment.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NEEL PATEL whose telephone number is (469)295-9168. The examiner can normally be reached M-F, 9:00AM-5:00PM CST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/NEEL GIRISH PATEL/Primary Patent Examiner, Art Unit 3676
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