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 .
Response to Amendment
The Amendment filed 9/24/25 has been entered. Claims 2-8 remain pending in the application. Claim 1 has been canceled. Applicant’s amendments to the claims have overcome every 112(b) rejections previously set forth in the Non-Final Office Action mailed 7/30/25.
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, 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 2-6 are rejected under 35 U.S.C. 103 as being unpatentable over Fairweather (US 2020/0173249- cited previously).
With respect to independent claim 2, Fairweather discloses a bottom hole assembly for use in a plug and abandon operation in an oil or gas well having a casing ([0008] and [0020]), the assembly comprising:
a generally cylindrical wash tool having a plurality of wash fluid nozzles and, axially connected to the wash tool, a generally cylindrical cementing tool having one or more cement nozzles, wherein the diameters of the wash tool and the cementing tool are sized for the diameter of the casing ([0018] and [0025]-[0027]). Regarding claim 2, Fairweather discloses a bottom hole assembly for use in a plug and abandon operation comprising a wash tool and a cementing tool, wherein the diameters of the tools are “sized for the diameter of the conduit” and “sized so that ports lie close to the wall of the casing” ([0025]-[0027] and [0038]). Although silent to wherein the diameter of the wash tool is “less than the outer diameter of the cementing tool,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for the diameters as claimed insofar as because it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) Moreover, selecting the dimension as claimed would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention since the claimed dimension amounts to nothing more than scaling up or down of the disclosed device and a device having the claimed dimensions would not perform differently than the prior art device In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955).
Further regarding claim 2, Fairweather discloses a bottom hole assembly comprising a wash tool and a cementing tool, wherein the diameter is “sized for the diameter of the conduit” ([0025]). Fairweather also discloses a cementing tool that has a length (see Figs. 1a-1f). Although silent to the overall length of the cementing tool, as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for the length as claimed insofar as because it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) Moreover, selecting the dimension as claimed would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention since the claimed dimension amounts to nothing more than scaling up or down of the disclosed device and a device having the claimed dimensions would not perform differently than the prior art device. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955)
Further regarding claim 2, Fairweather discloses a bottom hole assembly comprising a wash tool and a cementing tool, wherein the cementing tool comprises a plurality of radial and non-radial nozzles ([0025]). Although silent to the specific placement of the “nozzle nearest the upper end of the cementing tool,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to consider the position of the nozzles as claimed since shifting the position of a nozzle amounts to nothing more than an obvious matter of design choice. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) Furthermore, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed diameter ranges as critical and it is unclear if any unexpected results are achieved by using such. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
With respect to depending claim 3, Fairweather discloses a bottom hole assembly comprising a wash tool and a cementing tool, wherein the cementing tool comprises a plurality of radial and non-radial nozzles ([0025]). Although silent to the specific placement of “two nozzles... spaced apart axially...” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to consider the position of the nozzles as claimed since shifting the position of a nozzle amounts to nothing more than an obvious matter of design choice. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). Furthermore, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed diameter ranges as critical and it is unclear if any unexpected results are achieved by using such. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
With respect to depending claims 4 and 5, Fairweather discloses a bottom hole assembly comprising a wash tool and a cementing tool, wherein the wash tool comprises a plurality of radial nozzles ([0026]-[0027]). Although silent to the specific angle placement of the nozzles, as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to consider the direction of the nozzles as claimed since shifting the direction of a nozzle amounts to nothing more than an obvious matter of design choice. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). Furthermore, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed diameter ranges as critical and it is unclear if any unexpected results are achieved by using such. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
With respect to depending claim 6, Fairweather discloses wherein the cementing tool is connected to the wash tool ([0018] and [0026]). However, Fairweather fails to expressly recite wherein the connection is at “the upper end” of the wash tool. It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to consider connecting the cementing tool and wash tool at the point claimed since it amounts to nothing more than choosing from a finite number of possible and predictable solutions, as it has been taught "When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person having ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR at 1397
Allowable Subject Matter
Claims 7 and 8 are 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.
The following is an examiner’s statement of reasons for allowance of the subject matter of depending claims 7 and 8:
As noted in the Notice of Allowance for parent application 18/316,030 (mailed 9/3/24), and as the Applicant argues persuasively in the Arguments for said parent application filed 5/14/24, the closest prior art fails to recite the specific tool structure, arrangement, and relative sizing (e.g. the outer diameter of the wash tool is 1.0 inch to 4.0 inches smaller than the drift diameter of the casing) as claimed.
Response to Arguments
Applicant's arguments filed 9/24/25 have been fully considered but they are not persuasive. Applicant argues that in Fairweather “the wash and cementing tool are in fact the same element (reference 22) and therefore the diameter of the wash and cement tools are necessarily the same since they are one and the same tool.” The Examiner finds this argument unpersuasive. The washing tool and the cementing tool are distinct components, each located on the same string in order to perform both actions on a single trip. The presence of both components on the same string does not preclude one from considering different diameters for these different components.
Applicant argues that paragraphs [0017], [0018], and [0055] of the instant Specification provide an unexpected benefit of the instant invention over that of Fairweather. The Examiner notes that these features upon which applicant relies 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).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 AVI T. SKAIST whose telephone number is (571)272-9348. The examiner can normally be reached M-F 9:30-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at (571) 272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AVI T SKAIST/Examiner, Art Unit 3674
/WILLIAM D HUTTON JR/Supervisory Patent Examiner, Art Unit 3674