Prosecution Insights
Last updated: April 19, 2026
Application No. 19/015,337

COMPACT DOWNHOLE TOOL

Final Rejection §103
Filed
Jan 09, 2025
Examiner
STEPHENSON, DANIEL P
Art Unit
3676
Tech Center
3600 — Transportation & Electronic Commerce
Assignee
Nine Downhole Technologies LLC
OA Round
2 (Final)
86%
Grant Probability
Favorable
3-4
OA Rounds
2y 5m
To Grant
61%
With Interview

Examiner Intelligence

Grants 86% — above average
86%
Career Allow Rate
1083 granted / 1252 resolved
+34.5% vs TC avg
Minimal -26% lift
Without
With
+-25.9%
Interview Lift
resolved cases with interview
Typical timeline
2y 5m
Avg Prosecution
9 currently pending
Career history
1261
Total Applications
across all art units

Statute-Specific Performance

§101
2.3%
-37.7% vs TC avg
§103
39.0%
-1.0% vs TC avg
§102
32.4%
-7.6% vs TC avg
§112
14.4%
-25.6% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1252 resolved cases

Office Action

§103
DETAILED ACTION 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 § 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) 14-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harris et al. (US 2017/0130553, hereafter Harris) in view of Yuan et al. (US 5984007, hereafter Yuan) and Graham et al. (US 2020/0157914, hereafter Graham). With regards to claim 14, Harris a method for using a downhole tool comprising a single frustoconical member (38), a mandrel collar (22) affixed (48) to a first end of the single frustoconical member, a single set of slips (112) in contact with the mandrel collar. The method comprises running the downhole tool into a wellbore to a desired location; and applying a setting force to shear screws (106) disposed in the single set of slips (112) such that the slips engage a casing of the wellbore (inherently as slips move along surface 78 of the wedge element 62). Harris shows all the limitation of the present invention except, it fails to explicitly disclose an elastomeric element disposed around the single set of slips and a plurality of interlocking members disposed around the single set of slips. Yuan discloses a slot (36) on the slip members (18) for an elastomeric element (col. 6:63-7:11). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the elastomeric element disclosed in Yuan with the apparatus and method taught in Harris with a reasonable expectation of success. This would be done to retain the slips in position as taught by Yuan (col. 6:63-7:11). Graham discloses a fracture plug for downhole use that has set of slips (40) and a plurality of interlocking (56) members (52,54) disposed around the single set of slips (40). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the interlocking members disclosed in Graham with the slip taught in Harris with a reasonable expectation of success. This would be done to allow for backup retention to prevent premature activation. With regards to claim 15, Harris discloses introducing into the wellbore a sealing element (76) configured to engage a central opening in the downhole tool. With regards to claim 16, Harris discloses causing the sealing element to dissolve in the wellbore (para 112); and producing hydrocarbons from the wellbore through the central opening after the sealing element has dissolved (para 112). With regards to claim 17, Harris discloses the step of applying a setting force is performed using a wireline adapter kit (14). With regards to claim 18, Harris discloses the single set of slips is formed using a composite material (para 23, 60, 204). Response to Arguments Applicant's arguments filed 12/9/25 have been fully considered but they are not persuasive. It is the assertion of the applicant that Graham does not disclose “a plurality of interlocking members disposed around the single set of slips” and merely discloses rings 52 and 54 “adjacent an upper end of slip ring 40” (Graham para 36). The examiner respectfully traverses this assertion. I Graham both statements are true. As seen below: PNG media_image1.png 268 597 media_image1.png Greyscale The interlocking rings 52 and 54 are both adjacent the slip 40 and disposed around the slip 40, as the end of the slip is between the cone 34 and the ring 54. Thus is meets the broadest reasonable interpretation of the claimed limitation of “a plurality of interlocking members disposed around the single set of slips”. Therefore, the previously presented rejection is maintained. Allowable Subject Matter Claims 1-13 are allowed. 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 DANIEL P STEPHENSON whose telephone number is (571)272-7035. The examiner can normally be reached M-F 10am-6pm. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /DANIEL P STEPHENSON/Primary Examiner, Art Unit 3676
Read full office action

Prosecution Timeline

Jan 09, 2025
Application Filed
Sep 24, 2025
Non-Final Rejection — §103
Dec 09, 2025
Response Filed
Mar 20, 2026
Final Rejection — §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

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Patent 12571284
APPARATUS, SYSTEM AND PROCESS FOR REGULATING A CONTROL MECHANISM OF A WELL
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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
86%
Grant Probability
61%
With Interview (-25.9%)
2y 5m
Median Time to Grant
Moderate
PTA Risk
Based on 1252 resolved cases by this examiner. Grant probability derived from career allow rate.

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