Detailed Action
Status of Claims
Claims 1-43 are currently pending and addressed below.
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 .
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, 8, 13-22, 33 is/are rejected under 35 U.S.C. 102(a)(1) as being Anticipated by Kash (US Pub No 20220163298)
Kash et al discloses for claim 1. A tandem sub for a perforating gun system (Kash Abstract describes a tandem sub for a perforating gun), comprising:
a tubular housing (Kash Fig 20; 762) comprising a longitudinal first end, a longitudinal second end opposite the first end (Kash Fig 20; 762 contains a longitudinal first and second end), a central passage (Kash Fig 20; 768) defined by an inner surface that forms a seal bore (Kash Fig 20; 770 and the shoulder 772 comprise the seal bore), an annular receptacle (Kash Fig 20; empty space that generally defined by "internal threads 221" and which is occupied by "threaded connector 792"), and an annular shoulder (Kash Fig 20: the unnumbered shoulder between "annular receptacle" defined by 221 and occupied by 792 and the "seal bore" defined 770 & 772 is clearly shown in fig 20) that divides the seal bore from the annular receptacle (Kash Fig 20, as defined above), the seal bore defining a minimum inner diameter of the central passage such that a minimum inner diameter of the seal bore is less than a minimum inner diameter of the annular receptacle (Kash Fig 20; 770 & 772 define the seal bore, 770 defines a minimum inner diameter of the central passage, with an annular receptacle - defined by "internal threads 221" and which is occupied by "threaded connector 792" - having a larger diameter than the inner diameter of 770), wherein the housing is connectable to an outer housing of a perforating gun (Kash Fig 20; 214 threads);
and an electrical pass-thru assembly (Kash Fig 20; "pressure bulkhead or pass-thru assembly 780" - ¶ 87) configured to electrically connect to the perforating gun and comprising a longitudinal first end, a longitudinal second end opposite the first end (Kash Fig 20; conical ends, 783, on each end of the pass-thru assembly 780), an electrically conductive signal bar (Kash Fig 20; "an electrical connector or signal bar 782…" - ¶ 89), and an electrical insulator ("…which is covered by a generally cylindrical outer insulator 784" - ibid) surrounding a periphery of the signal bar (Kash [0088] discloses an electrical feed-thru assembly with an electrically conductive signal bar, two longitudinal ends, and an insulator around the signal bar);
wherein the signal bar has a longitudinal first end defining a first electrical contact (Kash Fig 20; 783 [0088] are electrically connecting the tandem perforating gun) of the tandem sub and configured to establish an electrical connection with a first electrical component separate from and external the tandem sub (Kash Fig 20; 783 [0088] are electrically connecting the tandem perforating gun via electrical connectors 132 and 142 to transmit electrical signals between perforating guns), and a longitudinal second end opposite the first end and defining a second electrical contact of the tandem sub that is longitudinally opposite and electrically connected to the first electrical contact and configured to establish an electrical connection with a second electrical component separate from and external the tandem sub (Kash Fig 20; 783 [0088] are electrically connecting the tandem perforating gun via electrical connectors 132 and 142 to transmit electrical signals between perforating guns), wherein the signal bar is rigid along the entire longitudinal length thereof extending from the first end to the second end (Kash Fig 20; 782 is a solid electrically conductive material from the first end to the second end);
wherein the insulator has an outer surface sealingly contacting the seal bore of the housing when the pass-thru assembly is installed in the housing (Kash Fig 20 [0089] insulator 784 engages with shoulder 772, which is part of the "seal bore" as defined above while the pass-thru assembly is installed);
wherein one of the first end and the second end of the pass-thru assembly longitudinally overlaps the annular receptacle of the housing when the pass-thru assembly is installed in the housing (the rightmost - as viewed in fig 20 - end 783 overlaps with the annular receptacle, defined above as the space generally defined by "internal threads 221" and which is occupied by "threaded connector 792") whereby a radial gap is formed between the outer surface of the insulator at a longitudinal end of the electrical pass-thru assembly and a portion of the inner surface of the housing defining the annular receptacle (a radial gap is formed between 784 and the inner surface defined by "internal threads 221", occupied by "threaded connector 792" in fig 20).
Kash et al disclose in claim 8. The tandem sub of claim 1, wherein the annular receptacle (Kash Fig 20; empty space that generally defined by "internal threads 221" and which is occupied by "threaded connector 792") of the housing is located directly adjacent to the seal bore (Kash Fig 20 annular receptacle as defined above is located directly adjacent to the seal bore 770).
Kash et al disclose in claim 13. The tandem sub of claim 1, wherein the first end of the pass-thru assembly (783, on each end of the pass-thru assembly 780) corresponds to an uphole end of the pass-thru assembly when the pass-thru assembly is installed in the housing (Kash Fig 3 shows tandem sub 200 with pass-thru assembly 240 with an uphole and downhole end. One of ends 783 will be on the "uphole end" when in use).
Kash et al disclose in claim 15. The tandem sub of claim 1, wherein the signal bar is positioned in the central passage of the housing (Kash Fig 20; "signal bar" 782 is positioned within the "central passage" 768 of the housing).
Kash et al disclose in claim 16. The tandem sub of claim 15, wherein the central passage of the housing (768) comprises a longitudinal first end, a longitudinal second end opposite the first end (clearly shown in fig 20), and wherein the pass-thru assembly ("pressure bulkhead or pass-thru assembly 780" - ¶ 87) creates a pressure seal between the first end and the second end of the central passage (Kash[0089] Fig 20; 780 is positioned within the central passage of the housing and a pressure seal is formed between each end by the o-ring system represented by element 786).
Kash et al disclose in claim 17. The tandem sub of claim 1, wherein the insulator of the pass-thru assembly comprises a molded insulator sealably adhered to an outer surface of the signal bar (Kash [0089] "outer insulator 784 may be overmolded").
Kash et al disclose in claim 18. The tandem sub of claim 1, wherein the insulator ("outer insulator 784") extends continuously across the entire longitudinal length of the signal bar (Kash Fig 20 [0088] outer insulator 784 covers the entire signal bar along the longitudinal length).
Kash et al disclose in claim 19. A method for forming a tandem sub for a perforating gun system, comprising:
(a) forming a tubular housing (Kash Fig 20; 762) comprising a longitudinal first end, a longitudinal second end opposite the first end (Kash Fig 20; 762 contains a longitudinal first and second end), a central passage (Kash Fig 20; 768) defined by an inner surface (Kash Fig 20; 770 and the shoulder 772) that forms a seal bore (Kash Fig 20; 770), an annular receptacle (Kash Fig 20; empty space that generally defined by "internal threads 221" and which is occupied by "threaded connector 792"), and an annular shoulder (Kash Fig 20; 772) that divides the seal bore from the annular receptacle (Kash Fig 20; seal bore 770 is separated from the annular receptacle defined by "internal threads 221" by the annular shoulder 772), the seal bore (770) defining a minimum inner diameter of the central passage such that a minimum inner diameter of the seal bore is less than a minimum inner diameter of the annular receptacle (Kash Fig 20; 770 defines a seal bore, 770 defines a minimum inner diameter of the central passage that is less than the minimum diameter of the "annular receptacle" defined by "internal threads 221 as clearly shown in fig 20), wherein the housing is connectable to an outer housing of a perforating gun (Kash Fig 20; 214 threads); and
(b) installing a pass-thru assembly (Kash Fig 20; 780 - ¶ 89) comprising an electrically conductive signal bar (Kash Fig 20; "an electrical connector or signal bar 782" - ¶ 88) and a surrounding electrical insulator (Kash Fig 20; "outer insulator 784 may be overmolded or otherwise coated (e.g., anodized, etc.) onto an outer surface of signal bar 782" - ¶ 89) in the central passage of the housing (fig 20) whereby a radial gap is formed (discussed below) between an outer surface of the insulator of the pass-thru assembly at a longitudinal end of the pass-thru assembly (right end as viewed in fig 20) and a portion of the inner surface of the housing defining the annular receptacle (Kash Fig 20: empty space that generally defined by "internal threads 221" and which is occupied by "threaded connector 792" is radially spaced from the outer surface of 784).
Kash et al disclose in claim 20. The method of claim 19, wherein a magnitude of the radial gap is selected based on one or more parameters of an electrical circuit formable using the signal bar of the pass-thru assembly (Kash [0088]-[0089] outer insulator overmolded onto the signal bar based on the parameter of fully coating the signal bar longitudinally).
Kash et al disclose in claim 21. The method of claim 19, further comprising: (c) positioning one or more annular seal assemblies along the outer surface of the insulator of the pass-thru assembly ("a pair of annular seal assemblies or O-rings 786 are positioned in corresponding grooves formed on the outer surface of outer insulator 784" - ¶ 89) whereby the one or more seal assemblies seal against a portion of the inner surface of the housing defining the seal bore when the pass-thru assembly is installed in the central passage of the housing (Kash [0089] Fig 20; 782 is positioned within the central passage of the housing thereby forming a pressure seal between each end by the o-ring system represented by element 786 for preventing fluid migration between 784 & 770).
Kash et al disclose in claim 22. The method of claim 19, wherein (b) comprises longitudinally sliding the pass-thru assembly into and through the central passage of the housing (Kash Fig 20 [0085] pass-thru assembly is inserted through the central passage and retained by endplate 728. Examiners note: Fig 20 pass-thru assembly has no threads similar to applicants Fig 4 and secured in place with endplate) whereby the end of the pass-thru assembly longitudinally overlaps the annular receptacle of the housing (Kash Fig 20 one end of the pass-thru assembly contains a gap between the insulator and inner surface of the housing defining the annular receptacle).
Kash et al disclose in claim 33. A method for operating a perforating gun system, comprising:
(a) connecting a tandem sub of the perforating gun system to a perforating gun of the perforating gun system (Kash: Abstract & ¶ 27 disclose connecting a tandem sub to two perforating guns subs in a perforating gun system), the tandem sub comprising a tubular housing (Kash Fig 20; 762 - ¶ 87) having a central passage (Kash Fig 20; 768) and a pass-thru assembly (Kash Fig 20; "a pressure bulkhead or pass-thru assembly 780" - ¶ 87) comprising an electrically conductive signal bar (Kash Fig 20; 782 - ¶ 88) and a surrounding electrical insulator (Kash Fig 20; 784 - ¶ 88), the pass-thru assembly installed in the central passage of the housing (fig 20) whereby a radial gap is formed between an outer surface of the insulator of the pass-thru assembly at a longitudinal end of the pass-thru assembly (right side as viewed in fig 20) and a portion of an inner surface of the housing forming an annular receptacle (Kash Fig 20; empty space that is occupied by end piece 786 defined by "internal threads 221" and which is occupied by "threaded connector 792"), wherein the inner surface forms a seal bore (Kash Fig 20; 770), the annular receptacle (Kash Fig 20; empty space that generally defined by "internal threads 221" and which is occupied by "threaded connector 792"), and an annular shoulder (Kash Fig 20; the unnumbered shoulder between "annular receptacle" defined by 221 and occupied by 792 and the "seal bore" defined 770 & 772 is clearly shown in fig 20) that divides the seal bore from the annular receptacle (Kash Fig 20; the unnumbered shoulder between "annular receptacle" defined by 221 and occupied by 792 and the "seal bore" defined 770 & 772 is clearly shown in fig 20 divides the shoulder and the annular receptacle) such that a minimum inner diameter of the seal bore is less than a minimum inner diameter of the annular receptacle (Kash Fig 20; 770 & 772 define the seal bore, 770 defines a minimum inner diameter of the central passage, with an annular receptacle - defined by "internal threads 221" and which is occupied by "threaded connector 792" - having a larger diameter than the inner diameter of 770);
(b) conveying a tool string comprising the tandem sub and the perforating gun connected therewith into a wellbore (Kash [0027] conveying the tandem sub down into a wellbore);
(c) establishing an electrical signal path extending through the signal bar of the pass-thru assembly of the tandem sub (Kash Fig 20; 783 [0088] are electrically connecting the tandem perforating gun via electrical connectors 132 and 142 to transmit electrical signals between perforating guns); and
(d) establishing an electrical ground path extending through the housing of the tandem sub and spaced from the signal path by the radial gap (Kash [0032] electrical ground path away from signal path of the signal bar and pass-thru).
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) 2-4, 23-25, 34-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kash (US Pub No 20220163298)
With respect to claims 2-4, Kash et al. discloses that the radial gap between the outer surface of the insulator and a portion of the inner surface of the housing, but is silent as to the exact dimensions. However, Kash et al. teaches that the radial gap between the outer surface of the insulator and a portion of the inner surface of the housing is useful for a variety of purposes including protecting the signal bar from being inadvertently damaged or broken off during operation of the tandem sub [0081]. As shown in Kash et al paragraph 0081, the radial gap is disclosed to be a result effective variable in that changing the thickness of the insulation effects the ability to achieve the desired radial gap. Further, it appears one of ordinary skill in the art would have had a reasonable expectation of success in modifying Kash et al. to have a radial gap within the claimed range, as it involves only adjusting the dimension of a component disclosed to require adjustment. Therefore, it would have been to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Kash et al. by making the radial gap greater than .040, .050, or .060 as required for claims 2-4 as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not invention to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, applicant appears to have placed no criticality on the claimed range as the claim language is unbounded on the upper end and the specification does not place criticality on the dimensions.
Kash et al disclose in claim 14. The tandem sub of claim 1, wherein the pass-thru assembly comprises one or more annular seal assemblies (Kash Fig 20; 786 o-ring seal assemblies) positioned along the outer surface of the insulator (Kash Fig 20; 784). Kash however, does not disclose that the O-rings would seal against the seal bore in the exemplary embodiment (Kash Fig 20).
However, Kash teaches an alternative embodiment (Kash Fig 14 [0063] an alternative embodiment of the tandem sub) where the pass-thru assembly comprises one or more annular seal assemblies (Kash Fig 14; 534 “O-Ring Seals” [0066]) positioned along the outer surface of the insulator (Kash Fig 14; 534 is positioned within grooves formed on the outer surface of the insulator 532)for sealing against the seal bore (Kash [0066] “o-rings” sealingly engage the inner surface of the outer housing “seal bore”) of the housing when the pass-thru assembly is installed in the outer housing (Kash [0066] “o-rings” sealingly engage the inner surface of the outer housing “seal bore”).
As Kash discloses both embodiments of an electrical pass-thru device with sealing elements (i.e. “o-rings”), it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to substitute the embodiment of the sealing arrangement of Fig 20 of Kash for the embodiment of the sealing arrangement of Fig 14 as Kash discloses they are equivalent and to achieve the predictable result of creating a seal arrangement in a tandem sub electrical pass-thru.
With respect to claims 23-25, Kash et al. discloses that the radial gap between the outer surface of the insulator and a portion of the inner surface of the housing, but is silent as to the exact dimensions. However, Kash et al. teaches that the radial gap between the outer surface of the insulator and a portion of the inner surface of the housing is useful for a variety of purposes including protecting the signal bar from being inadvertently damaged or broken off during operation of the tandem sub [0081]. As shown in Kash et al paragraph 0081, the radial gap is disclosed to be a result effective variable in that changing the thickness of the insulation effects the ability to achieve the desired radial gap. Further, it appears one of ordinary skill in the art would have had a reasonable expectation of success in modifying Kash et al. to have a radial gap within the claimed range, as it involves only adjusting the dimension of a component disclosed to require adjustment. Therefore, it would have been to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Kash et al. by making the radial gap greater than .040, .050, or .060 as required for claims 23-25 as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not invention to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, applicant appears to have placed no criticality on the claimed range as the claim language is unbounded on the upper end and the specification does not place criticality on the dimensions.
With respect to claims 34-36, Kash et al. discloses that the radial gap between the outer surface of the insulator and a portion of the inner surface of the housing, but is silent as to the exact dimensions. However, Kash et al. teaches that the radial gap between the outer surface of the insulator and a portion of the inner surface of the housing is useful for a variety of purposes including protecting the signal bar from being inadvertently damaged or broken off during operation of the tandem sub [0081]. As shown in Kash et al paragraph 0081, the radial gap is disclosed to be a result effective variable in that changing the thickness of the insulation effects the ability to achieve the desired radial gap. Further, it appears one of ordinary skill in the art would have had a reasonable expectation of success in modifying Kash et al. to have a radial gap within the claimed range, as it involves only adjusting the dimension of a component disclosed to require adjustment. Therefore, it would have been to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Kash et al. by making the radial gap greater than .040, .050, or .060 as required for claims 34-36 as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not invention to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, applicant appears to have placed no criticality on the claimed range as the claim language is unbounded on the upper end and the specification does not place criticality on the dimensions.
Claim(s) 5-7, 26-28, and 37-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kash (US Pub No 20220163298)
In regards to claims 5-7, 26-28, and 37-39, as best understood, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the ratio of the radial gap to an outer diameter of the pass-thru assembly of Kash et al. from the unknown ratio (wherein the radial gap is taught as noted above) to be between a designated percentage range; 5% and 25%, 6% and 18%, and 7.5% and 12% as applicant appears to have placed no criticality on the claimed range as the claim language is ambiguous on the points of measurement for the outer diameter and the specification does not place criticality on the dimensions and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. In re Wertheim, 541F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 9-12, 29-32, and 40-43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kash (US Pub No 20220163298)
In regards to claims 9-12 and 29-32 it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the Shoulder to seal bore radius ratio of Kash et al. from the unknown ratio to at least 20%, 40%, 50%, 100% as applicant appears to have placed no criticality on the claimed range as the claim language is unbounded on the upper end and the specification does not place criticality on the dimensions and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. In re Wertheim, 541F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16USPQ2d 1934 (Fed. Cir. 1990).
In regards to claims 40-43 it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the radius of the annular receptacle is at least 20% greater than a radius of the seal bore of Kash et al. from the unknown ratio to at least 20%, 40%, 50%, 100% as applicant appears to have placed no criticality on the claimed range as the claim language is unbounded on the upper end and the specification does not place criticality on the dimensions and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. In re Wertheim, 541F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
Applicant’s arguments and amendments, filed 03/20/2026, with respect to the 112 rejection of claims 1-33 and 37-43 have been fully considered and are persuasive. The 35 USC 112b rejection of claims 1-33 and 37-43 has been withdrawn.
Applicant's arguments and amendments filed 03/20/2026 respect to the prior art have been fully considered but they are not persuasive.
Examiner thanks applicant for the amendments and the interview. However, Examiner respectfully disagrees that the amendments and arguments overcome the current rejections. As shown in the above rejection, Examiners position is that Kash teaches all the limitations of claim 1, 19, and 33 based on broadest reasonable interpretation on the definition of seal bore.
As Examiner reads the claims and Kash, the seal bore is roughly only defined by a central passage with an inner surface and no further structural limitations are required for the seal bore other than a central passage with an inner surface. Furthermore, the claim language does not require the pass-thru assembly to seal against the seal bore in claims 1, 19, and 33 as that is not claimed within the claim language. 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).
However, Applicant’s arguments, see pg 14, with respect to the rejection(s) of claim(s) 14 under 35 USC 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of an alternate embodiment of Kash under 35 USC 103.
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 Nicholas D Wlodarski whose telephone number is (571)272-3970. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm.
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/NICHOLAS D WLODARSKI/Examiner, Art Unit 3672
/BLAKE MICHENER/Primary Examiner, Art Unit 3676
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