DETAILED ACTION
Claim(s) 1 and 3-9, and 15-28 is/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
During a telephone conversation with Barry Blount on 05/19/2025 a provisional election was made without traverse to prosecute the invention of group I, claims 1-9 and species I. Affirmation of this election must be made by applicant in replying to this Office action. Claims 10-23 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Response to Arguments
Applicant's arguments filed 03/03/2026 have been fully considered but they are not persuasive.
Firstly, in regard to Applicant’s representative’s argument citing the following: “Although Foster generally appears to teach a welding surface, Foster is silent as to any grapple, much less that the grapple specifically includes a welding surface, nor any grapple that is more specifically coupled inside of an overshot of a fishing tool. Rather, as pointed out by the Examiner, Foster merely describes a "plug (23) which is inserted into the tubing fish (24)." Office Action, p. 4. However, using a plug that inserts into a tubing fish is very different from using a grapple, which holds an outer portion of a fish”, Examiner respectfully disagrees with Applicant’s representative’s assertion of element 23 of Foster not being a spear. Examiner notes that element 23 of Foster is structured and functions as a “spear” (as claimed), absent specific detail. A reading of the specification provides no evidence to indicate that a specific structural limitation must be importing into the claims to give meaning to the disputed terms. Constant v. Advanced Micro-Devices Inc., 7 USPQ2d 1064. If there is a critical feature in the claims that have a certain degree of importance (e.g., defining specifics as to what a “spear” entails), it is advised to include that language in the claim(s) in keeping with the instant specification for purposes of overcoming the most recent prior art rejection.
Secondly, in regard to Applicant’s representative’s arguments corresponding to the differences between Foster and the instant claims, Examiner notes that though are clearly structural and functional differences between Foster and the details of the invention disclosed in instant specification, the instant claims are broad in nature and not limited in light of the instant specification allowing one skilled in the art to apply a reasonably broad interpretation of the claims. If there is a critical feature in the claims that have a certain degree of importance, it is advised to include that language in the claim(s) in keeping with the instant specification for purposes of overcoming the most recent prior art rejection.
Lastly, in regard to Applicant’s representative’s arguments corresponding to the combination of the references (i.e., Price in view Foster) being improper, Examiner respectfully disagrees. Examiner notes that both Price and Foster are analogous arts as both references teach an overshot fishing tool with a different mode of operation with its fishing mechanism/structure placed in different parts of the respective overshot fishing tools when compared to one another. With that being said, the modification of incorporating the fishing mechanism/structure of Foster (as introduced in the rejection(s) herein) in addition to the fishing grapple mechanism of Price would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), as doing so allows for combining prior art elements according to known methods to yield predictable results of providing additional securement means of the fish in the wellbore for purposes of retrieving the fish from the wellbore (column 1, lines 15-19 & 36-47 — Foster). See MPEP 2143, section I, subsection A. Furthermore, an additional securement means can benefit as being a back-up, secondary mode of securing the fish if/when the primary securement means option (as taught by Price) fails. If Applicant’s representative is stating that the combination of both the references are incompatible due to one teaching away from another (or, something of the like), then detailed arguments need to be presented by the Applicant’s representative, as Examiner respectfully fails to see why the fishing mechanism/structure (as taught by Foster) cannot be used in combination with Price’s fishing tool.
Examiner suggests incorporating more claim language (i.e., structural and/or functional) in light of the specification to overcome the prior art rejection and advance prosecution, preferably towards an allowance.
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.
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) 1, 8-9, 24-26, and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Price (US Patent Number 2,718,427; herein “Price”) in view of Foster (US Patent Number 2,789,004; herein “Foster”).
In regard to claim 1, Price discloses: An apparatus (as shown in figure 1), comprising:
a fishing tool (i.e., comprising 13 and elements coupled uphole thereof) comprising a grapple (i.e., comprising 18, 19, and 21) configured to engage an outer surface of a tubing string or tool assembly (i.e., radial outer surface of 11 — see column 1, line 41- column 2, line 32 and figures 1-2).
However, Price is silent in regard to: wherein the grapple comprises a metal welding surface and is coupled to an inside of an overshot of the fishing tool; and
an electrode coupled to the metal welding surface and a power source.
Nonetheless, Foster teaches a similar type of wellbore overshot fishing tool (see column 1, lines 15-19 & 36-47, column 2, lines 24-36 & 52-59, and figures 1-2) to that of Price. Foster teaches its overshot tool to have a plug (23) which is inserted into tubing fish (24). Thereafter, a power source activates the ignition mechanism (comprising 64) by activating the electrodes or points of the spark plug which is coupled to the thermite welding cartridge (11). The thermite melts about the upper end of the tubing fish (24) and secures it for retrieving purposes (see column 2, lines 24-36 & 52-59, column 5, lines 3-26, and figures 1-2 & 7).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the overshot fishing tool, as taught by Price, to include a metal welding surface inside of the overshot fishing tool and an electrode coupled to the metal welding surface and a power source, as taught by Foster, to allow for combining prior art elements according to known methods to yield predictable results of providing additional securement means of the fish in the wellbore for purposes of retrieving the fish from the wellbore (column 1, lines 15-19 & 36-47 — Foster). See MPEP 2143, section I, subsection A. Furthermore, an additional securement means can benefit as being a back-up, secondary mode of securing the fish if/when the primary securement means option (as taught by Price) fails.
In regard to claim 8, in view of the modification of the preceding claim, Foster further discloses: wherein the power source comprises a power line (column 5, lines 3-26).
In regard to claim 9, in view of the modification of the preceding claim, Foster further discloses: a second electrode coupled to a spear (Examiner notes that the “second electrode” of the plurality of electrodes is coupled both functionally and indirectly structurally to the “spear”, absent specific detail).
In regard to claim 24, Price discloses: An apparatus (as shown in figure 1), comprising:
a fishing tool (i.e., comprising 13 and elements coupled uphole thereof) comprising a grapple (i.e., comprising 18, 19, and 21) configured to engage an outer surface of a tubing string or tool assembly (i.e., radial outer surface of 11 — see column 1, line 41- column 2, line 32 and figures 1-2);
However, Price is silent in regard to: wherein the grapple comprises a metal welding surface and is coupled to an inside of an overshot of the fishing tool;
a first electrode coupled to the metal welding surface and a power source; and
a second electrode coupled to a spear.
Nonetheless, Foster teaches a similar type of wellbore overshot fishing tool (see column 1, lines 15-19 & 36-47, column 2, lines 24-36 & 52-59, and figures 1-2) to that of Price. Foster teaches its overshot tool to have a spear plug (23) which is inserted into tubing fish (24). Thereafter, a power source activates the ignition mechanism (comprising 64) by activating the plurality of electrodes or points of the spark plug which is coupled to the thermite welding cartridge (11). The thermite melts about the upper end of the tubing fish (24) and secures it for retrieving purposes (see column 2, lines 24-36 & 52-59, column 5, lines 3-26, and figures 1-2 & 7). Examiner notes that the “second electrode” of the plurality of electrodes is coupled both functionally and indirectly structurally to the “spear”, absent specific detail.
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the overshot fishing tool, as taught by Price, to include a metal welding surface inside of the overshot fishing tool, a first electrode coupled to the metal welding surface and a power source, and a second electrode coupled to a spear, as taught by Foster, to allow for combining prior art elements according to known methods to yield predictable results of providing additional securement means of the fish in the wellbore for purposes of retrieving the fish from the wellbore (column 1, lines 15-19 & 36-47 — Foster). See MPEP 2143, section I, subsection A. Furthermore, an additional securement means can benefit as being a secondary mode of securing the fish if when the other securement means option fails.
In regard to claim 25, in view of the modification of the preceding claim, Foster further discloses: wherein the second electrode is coupled to a terminal of the power source (column 5, lines 3-26 | also, see claim 24 rejection herein).
In regard to claim 26, in view of the modification of the preceding claim, Foster further discloses: wherein the spear is surrounded by the metal welding surface (as shown in figures 1-2 in light of the cross-hatching).
In regard to claim 28, in view of the modification of the preceding claim, Foster further discloses: wherein the power source comprises a power line (column 5, lines 3-26).
Claim(s) 7 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Price (US Patent Number 2,718,427; herein “Price”) in view of Foster (US Patent Number 2,789,004; herein “Foster”) in further view of Alqahtani et al. (US Publication Number 2023/0265728 A1; herein “Alqahtani”).
In regard to claim 7, Price in view of Foster teaches claim 1 above.
However, Price in view of Foster is/are silent in regards to: wherein the power source comprises a battery in the apparatus.
Nonetheless, Alqahtani teaches for fishing tools via welding in the borehole (abstract), similar to that of Foster. Alqahtani teaches that its power source can be a battery to electrically initiate the welding operation in the wellbore (abstract and paragraphs [0030-0033, 0040-0041]).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to simply substitute the power source, as taught by Price in view of Foster, with a battery, as taught by Alqahtani, to yield the predictable result of remotely controlling the release of stored energy for the purposes of welding the fishing tool and fish in the wellbore, meeting the same end-result (abstract and paragraph [0005] - Alqahtani). See MPEP 2143, section I, subsection B.
In regard to claim 27, Price in view of Foster teaches claim 1 above.
However, Price in view of Foster is/are silent in regards to: wherein the power source comprises a battery in the apparatus.
Nonetheless, Alqahtani teaches for fishing tools via welding in the borehole (abstract), similar to that of Foster. Alqahtani teaches that its power source can be a battery to electrically initiate the welding operation in the wellbore (abstract and paragraphs [0030-0033, 0040-0041]).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to simply substitute the power source, as taught by Price in view of Foster, with a battery, as taught by Alqahtani, to yield the predictable result of remotely controlling the release of stored energy for the purposes of welding the fishing tool and fish in the wellbore, meeting the same end-result (abstract and paragraph [0005] - Alqahtani). See MPEP 2143, section I, subsection B.
Allowable Subject Matter
Claim(s) 3-6 is/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.
Conclusion
THIS ACTION IS MADE FINAL. 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 NEEL PATEL whose telephone number is (469)295-9168. The examiner can normally be reached M-F, 9:00AM-5:00PM CST.
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/NEEL GIRISH PATEL/Primary Patent Examiner, Art Unit 3676
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