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 .
Status of Claims
This action is in reply to the Applicant’s claims, filed on 11/25/2025.
Claims 1, 8-9, 15, and 17 have been amended.
Claims 1-20 are currently pending and have been examined.
Response to Amendment
The amendment filed 11/25/2025 has been entered. Claims 1-20 remain pending in the application. Applicant’s amendments to the claims have been considered and partially persuasive.
Applicant’s amendments and/or arguments to claim 1-7 and 15-20 has been considered, is persuasive, and have overcome the rejection previously set forth in the Final Office Action dated 10/01/25.
Applicant’s amendment to claims 8-14 has been considered and are not persuasive. Therefore, the prior art rejections made in Final Office Action dated 10/01/2025 remain and are repeated below with the amended language.
However, upon further consideration, the amendments introduce new issues that a new ground(s) of rejection is made for claims 1-7 and 15-20.
Regarding applicant’s argument that Hampe’s coring bit is too small to surround a device within a wellbore, Examiner respectfully disagrees and is not persuasive. The pending claims do not recite any minimum size or specific structural requirement for a device to be surrounded, nor do the claims require that a device be a particular size. As such, the claims broadly encompass devices having dimensions compatible with a small core bit. Furthermore, devices having outer diameters of 1.375” or less are known in the wellbore art and are routinely deployed in wellbores. Therefore, one of ordinary skill in the art would have reasonably understood that a core bit having an inner diameter of 1.375” is capable of surrounding a suitably sized downhole tool.
Regarding applicant’s argument that Hampe’s chip release grooves or surface at the base of the auger grooves are not smaller than the outer diameter, Examiner respectfully disagrees and is not persuasive. As illustrated in figures 1-3, the surface of the chip release groves and surface at the base of the augur flights is a smaller diameter than the outer diameter where the diamonds are position and the outer diameter of the augur flight. Therefore, the one of ordinary skill in the art would have reasonably understood that surface of the chip release grooves and the surface at the base of the augur is smaller diameter than the outer diameter of the bit.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hampe et al. (US3692127) in view of Henning (US6145593).
Claim 1. Hampe discloses: An apparatus comprising: a first tubular (1: bit, Fig. 1) having a number of radial cutters (d: diamond, Fig. 1) disposed circumferentially along one end (Fig. 1), wherein a cutter slot (g: chip release grooves in the face of the bit; Fig. 1) is formed between each pair of radial cutters; and a plurality of bypass channels (g: chip release grooves along the outer diameter of the bit; Fig. 1) disposed along an outer diameter of the first tubular (g: chip release grooves are located on, at and adjacent to the outer diameter, Fig. 1), wherein each cutter slot leads into a respective bypass channel (Fig. 1 illustrates that each chip release groove on the face of the bit leads into a respective chip release groove along the outer diameter of the bit). Hampe does not disclose: configured to surround a device within a wellbore.
Henning discloses a wash over mill used to surround a whipstock and to mill away structures for subsequent operations. Therefore, Henning teaches: configured to surround a device within a wellbore (Fig. 1, Col. 3, lines 25-29).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to utilized the core bit design of Hampe into the wash over mill of Henning with a reasonable expectation of success in order to wash over the whipstock and mill away structures as taught by Henning (Fig. 1, Col. 3, lines 25-29).
Claim 2. Hampe in view of Henning teaches: The apparatus of claim 1, wherein each bypass channel of the plurality of bypass channels includes a smaller outer diameter than the outer diameter of the first tubular (Hampe: g: chip release outer diameter is smaller than the outer diameter of the major bit diameter; Fig. 1-2), and wherein the plurality of bypass channels allow at least one of a first wellbore fluid (Hampe: wet modes of chip removal; Col. 1, line 65) and cuttings material to flow around the first tubular (Hampe: Col. 3, lines 23-43).
Claim 3. Hampe in view of Henning teaches: The apparatus of claim 1, wherein at least a portion of the bypass channels merge into a larger flow area around the first tubular (Hampe: auger flight, Fig. 1).
Claim 4. Hampe in view of Henning teaches: The apparatus of claim 1, wherein each bypass channel is a helical bypass channel (Hampe: auger flight, Fig. 1).
Claim 5. Hampe in view of Henning teaches: The apparatus of claim 1, wherein each bypass channel is a straight bypass channel (Hampe: g: chip release groove along the outer diameter of the bit is illustrated in Fig. 1 as straight channels).
Claim 6. Hampe in view of Henning teaches: The apparatus of claim 1, wherein each cutter slot includes a first side and a second side (Hampe: opposing surfaces of g: chip release groove in the face of the bit; Fig. 1), and wherein at least one of the first side and the second side are substantially oriented with a longitudinal axis of the first tubular (Hampe: one surface of g: chip release groove in the face of the bit is illustrated in Fig. 3 as substantially oriented with the longitudinal axis of the bit; Col. 3, lines 26-27).
Claim 7. Hampe in view of Henning teaches: The apparatus of claim 6, wherein at least one of the first side and the second side of each cutter slot are oriented at a lead angle (Hampe: one surface of g: chip release groove in the face of the bit is illustrated in Fig. 3 is oriented at an angle).
Claims 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over Lalande et al. (US5402850) in view of Hampe et al. (US3692127).
Claim 8. Lalande discloses: A system comprising: a casing string cemented within at least one wellbore formed in one or more subsurface formations (Col. 1, line 7); a first tubular (18 shoe, Fig. 1). Laland does not disclose: a number of radial cutters disposed circumferentially along one end, wherein a cutter slot is formed between each pair of radial cutters; and a plurality of bypass channels disposed along an outer diameter of the first tubular, wherein each cutter slot leads into a respective bypass channel, and wherein each bypass channel of the plurality of bypass channels includes a smaller outer diameter than the outer diameter of the first tubular.
Hampe discloses a rotary core bit with cutters disposed circumferentially along the face of the bit and plurality of bypass channels disposed along the outer diameter of bit. Therefore, Hampe teaches: a number of radial cutters disposed circumferentially along one end, wherein a cutter slot is formed between each pair of radial cutters; and a plurality of bypass channels disposed along an outer diameter of the first tubular, wherein each cutter slot leads into a respective bypass channel and wherein each bypass channel of the plurality of bypass channels includes a smaller outer diameter (outer diameter of surface g, Fig. 1) than the outer diameter of the first tubular (outer diameter of surface g is smaller than the outer surface diameter where d: diamonds are positioned and smaller than the outer diameter of auger flights, Fig. 1; see previously rejected claim 1).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the burning shoe of Lalande with the rotary diamond core bit of Hampe for a shoe that is more effective, has increased service life, and improved chip lifting capability due to the straight and helical bypass channels for rotary cutting as suggested by Hampe (Col. 1, lines 16-17 and 65-67; Col. 3, line 55).
Claim 9. Lalande in view of Hampe teach: The system of claim 8, wherein the plurality of bypass channels allow at least one of a first wellbore fluid and cuttings material to flow within an annulus between the casing string and the first tubular (see previously rejected claim 2).
Claim 10. Lalande in view of Hampe teach: The system of claim 8, a portion of the bypass channels merge into a larger flow area around the first tubular (see previously rejected claim 3).
Claim 11. Lalande in view of Hampe teach: The system of claim 8, each bypass channel is a helical bypass channel (see previously rejected claim 4).
Claim 12. Lalande in view of Hampe teach: The system of claim 8, each bypass channel is a straight bypass channel (see previously rejected claim 5).
Claim 13. Lalande in view of Hampe teach: The system of claim 8, wherein each cutter slot includes a first side and a second side, and wherein at least one of the first side and the second side are substantially oriented with a longitudinal axis of the first tubular (see previously rejected claim 6).
Claim 14. Lalande in view of Hampe teach: The system of claim 13. at least one of the first side and the second side of each cutter slot are oriented at a lead angle (see previously rejected claim 7).
Claims 15-17 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable by Clayton (US2577605) in view of Hampe et al. (US3692127).
Claim 15. Clayton discloses: A method comprising: performing an equipment retrieval operation of a device in at least one wellbore formed in one or more subsurface formations (fishing operation; Col. 4, lines 1-19), the equipment retrieval operation including, cutting, via rotation of a first tubular (11 - drill bit rotates to perform cutting/drilling operation), one or more support structures (the debris in the well) of the device (Col. 4, lines 6-12; where debris is supporting the device in the wellbore and the drill bit cuts away at the debris), wherein the first tubular (11: body, Fig. 1) includes a number of radial cutters disposed circumferentially along one end (14: teeth Fig. 1), and wherein a cutter slot is formed between each pair of radial cutters (recess between each 14 teeth along the face of the 11 body); and cooling, via fluid flow (pumping of fluid will cool and flush; Col. 4, lines 9-19) through one or more bypass channels disposed along an outer diameter of the first tubular (channels between 15: teeth on the outer diameter of the 11 body; Fig. 1-2), the first tubular during the cutting (Col. 4, lines 6-12). Clayton does not disclose: wherein each cutter slot leads into a respective bypass channel and wherein each bypass channel has a smaller outer diameter than an outer diameter of the first tubular.
Hampe discloses a rotary diamond core bit comprising of radial cutters disposed circumferentially along the outer diameter with cutter slots formed between each cutter and a plurality of bypass channels. Therefore, Hampe teaches: each cutter slot leads into a respective bypass channel and wherein each bypass channel has a smaller outer diameter than an outer diameter of the first tubular (see previously rejected claim 1 and 2).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the drill bit geometry of Clayton with the rotary diamond core bit geometry of Hampe with a reasonable expectation of success for a bit that is more effective, has increased service life, and improved chip lifting capability due to the straight and helical bypass channels for rotary cutting as suggested by Hampe (Col. 1, lines 16-17 and 65-67; Col. 3, line 55).
Claim 16. Clayton in view of Hampe teaches: The method of claim 15, further comprising: altering a quantity of cutter slots disposed on the first tubular; altering a depth of each cutter slot; and altering a width of each cutter slot, wherein each cutter slot feeds into a bypass channel of the one or more bypass channels (Clayton: varying size and number of teeth will alter quantity, depth, width; Col. 2, Line 2). Hampe is silent on altering the bit geometry, however; it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to alter the bit geometry as instantly claimed based on choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claim 17. Clayton in view of Hampe teaches: The method of claim 15, determining a geometry of the one or more bypass channels, wherein a portion of the bypass channels include helical bypass channels (Hampe: augur grooves are helical; Fig. 1) and at least a portion of the bypass channels include straight bypass channels (Hampe: chip release groove on outer diameter of bit includes a straight channel, Fig. 1); and moving, via the rotation of the first tubular, at least a wellbore fluid and cuttings material through the one or more bypass channels (Hampe: inherent to rotation of the bit, the fluid and cutting will move through the bypass channels; Col. 1, lines 16-17 and 65-67; Col. 3, line 55).
Claim 18. Clayton in view of Hampe teaches: The method of claim 17, wherein moving, via the rotation of the first tubular, at least the wellbore fluid and the cuttings material through the one or more bypass channels includes moving at least the wellbore fluid and the cuttings material through a larger annular flow area formed by merging two or more of the bypass channels around the first tubular (Hampe: the area where the chip release grooves on the outer diameter of the bit meet the augur grooves is a larger bypass area around the bit, Fig. 1).
Claim 19. Clayton in view of Hampe teaches: The method of claim 15, further comprising: determining a cutter slot profile of at least one of a first side and a second side of each cutter slot (Hampe: adjacent surfaces of the recess between chip release grooves along the face of the bit, Fig. 1 and 3), wherein at least a portion of the cutter slots include a side substantially oriented with a longitudinal axis of the first tubular (Hampe: one surface of the recess on the OD is substantially oriented with longitudinal axis of the tubular as illustrated in Fig. 1), and wherein at least a portion of the cutter slots include a side oriented at a lead angle (Hampe: adjacent surfaces of the recess between chip release grooves along the face of the bit, Fig. 1 and 3 is at an angle as illustrated in Fig. 3).
Claim 20. Clayton in view of Hampe teaches: The method of claim 19, further comprising: determining a cutting angle of at least one of the first side and the second side of each cutter slot (Hampe: adjacent surfaces of the recess between chip release grooves along the face of the bit, Fig. 1 and 3 is at an angle as illustrated in Fig. 3).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Davis et al. (CA2329429) discloses a wash over shoe used to mill down around a whipstock, frees the upper end and retrieves the whipstock
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/DANIEL T CRAIG/Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676