Prosecution Insights
Last updated: May 29, 2026
Application No. 19/040,059

DOWNHOLE TOOL EMPLOYING A WHIPSTOCK ASSEMBLY, PACKER ASSEMBLY AND DOWNHOLE POWER UNIT

Final Rejection §102§103
Filed
Jan 29, 2025
Priority
Jan 31, 2024 — provisional 63/627,565 +1 more
Examiner
WLODARSKI, NICHOLAS NMN
Art Unit
3672
Tech Center
3600 — Transportation & Electronic Commerce
Assignee
Halliburton Energy Services, Inc.
OA Round
2 (Final)
84%
Grant Probability
Favorable
3-4
OA Rounds
11m
Est. Remaining
95%
With Interview

Examiner Intelligence

Grants 84% — above average
84%
Career Allowance Rate
114 granted / 136 resolved
+31.8% vs TC avg
Moderate +11% lift
Without
With
+11.3%
Interview Lift
resolved cases with interview
Typical timeline
2y 2m
Avg Prosecution
12 currently pending
Career history
156
Total Applications
across all art units

Statute-Specific Performance

§101
0.9%
-39.1% vs TC avg
§103
59.7%
+19.7% vs TC avg
§102
16.6%
-23.4% vs TC avg
§112
20.9%
-19.1% vs TC avg
Black line = Tech Center average estimate • Based on career data from 136 resolved cases

Office Action

§102 §103
Detailed Action Status of Claims This is the first office action on the merits. Claims 1-32 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 . Information Disclosure Statement The information disclosure statements (IDS) submitted on 01/29/2025, 05/27/2025, 06/10/2025, 08/19/2025 has being considered by the examiner. 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) 1-3, 13-15, & 27-28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hosie (US Pub No 20040069496). Hosie discloses in 1. A downhole tool, comprising: a whipstock assembly (Hosie Fig 8a; 802), the whipstock assembly including a whipface (Hosie Fig 8a; 804); a packer assembly (Hosie Fig 8a; [0179] packer (sealing) assembly comprising 828, 870 and 832) coupled to the whipstock assembly (Hosie Fig 8a), the packer assembly including a packer element (Hosie Fig 8a; 870 sealing element) configured to move between a radially retracted state (Hosie Fig 8a and 8b; 870 sits in a radially retracted state) and a radially expanded state (Hosie Fig 8e; [0179] 870 is compressed to a radially expanded state); and a downhole power unit (Hosie Fig 8a; 854 & 850) coupled to the packer assembly (Hosie Fig 8a; 840 is interconnected (coupled) with the packer assembly), the downhole power unit configured to move the packer element between the radially retracted state and the radially expanded state (Hosie [0181]-[0182] pump and battery utilized for compressing packer assembly). Hosie discloses in 2. The downhole tool as recited in Claim 1, further including a ported sub (Hosie Fig 8a; 810) coupled to the downhole power unit (Hosie Fig 8a; [0181] pump and battery are disposed in a pump recess 851 within ported sub 810), the ported sub configured to hydraulically connect activation fluid to the downhole power unit (Hosie fig 8a; [0181] 851 hydraulically connects power unit with activation fluid stored in reservoir 844 in the ported sub 810). Hosie discloses in 3. The downhole tool as recited in Claim 2, wherein the ported sub is configured to hydraulically connect activation fluid from an annulus of a wellbore to the downhole power unit (Hosie Fig 8a; 806 [0188]-[0189] vent allows wellbore pressure to act to reduce pressure on the hydraulic system utilized to radially expand the packer assembly). Hosie discloses in 13. The downhole tool as recited in Claim 1, wherein the downhole power unit is configured to receive an activation signal along wired drill string (Hosie [0151] & [0182] acoustic signal delivered by drill string). Hosie discloses in 14. The downhole tool as recited in Claim 13, wherein the activation signal is an acoustic signal (Hosie [0151] & [0182] acoustic signal delivered by drill string). Hosie discloses in 15. A well system, comprising: a main wellbore (Hosie Fig 8B main wellbore) located in a subterranean formation (Hosie Fig 8b; 860); a lateral wellbore (Hosie Fig 8b; 12) extending from the main wellbore (Hosie Fig 8b); and a downhole tool (Hosie Fig 8b; 10) positioned proximate an intersection between the main wellbore and the lateral wellbore (Hosie Fig 8b tool positioned in a proximate intersection between the two wellbores), the downhole tool including: a whipstock assembly (Hosie Fig 8a; 802), the whipstock assembly including a whipface (Hosie Fig 8a; 804); a packer assembly (Hosie Fig 8a; [0179] packer (sealing) assembly comprising 828, 870 and 832) coupled to the whipstock assembly (Hosie Fig 8a), the packer assembly including a packer element (Hosie Fig 8a; 870 sealing element) configured to move between a radially retracted state (Hosie Fig 8a and 8b; 870 sits in a radially retracted state) and a radially expanded state (Hosie Fig 8e; [0179] 870 is compressed to a radially expanded state); and a downhole power unit (Hosie Fig 8a; 854 & 850) coupled to the packer assembly (Hosie Fig 8a; 840 is interconnected (coupled) with the packer assembly), the downhole power unit configured to move the packer element between the radially retracted state and the radially expanded state (Hosie [0181]-[0182] pump and battery utilized for compressing packer assembly). Hosie discloses in 27. The well system as recited in Claim 15, wherein the downhole power unit is coupled to wired drill string (Hosie [0152] describes the process for running in the working tool on a drill string for Fig 7 [0183] defines that the run in process is the same in the embodiment of Fig 8), and further wherein the downhole power unit is configured to receive an activation signal along the wired drill string (Hosie [0151] & [0182] acoustic signal delivered by drill string). Hosie discloses in 28. The well system as recited in Claim 27, wherein the activation signal is an acoustic signal (Hosie [0151] & [0182] acoustic signal delivered by drill string). Claim(s) 1-3, 9-12, 13, 15-17, 23-25, 27, 29-32 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sonnier (US Pat No 6684953). Sonnier discloses in claim 1. A downhole tool, comprising: a whipstock assembly (Sonnier Fig 1; 14), the whipstock assembly including a whipface (Sonnier Fig 1; 15); a packer assembly (Sonnier Fig 1; 10) coupled to the whipstock assembly (Sonnier Fig 1 10 is coupled to whipstock assembly), the packer assembly including a packer element (Sonnier Col 4 line 13-15 packer/slip unit) configured to move between a radially retracted state and a radially expanded state (Sonnier Col 4 line 28-32 setting of the packer against the wellbore wall to secure the whipstock); and a downhole power unit (Sonnier Fig 3; 59 motor chamber) coupled to the packer assembly (Sonnier Fig 1), the downhole power unit configured to move the packer element between the radially retracted state and the radially expanded state (Sonnier col 4 line 23-32 downhole packer actuator operates to set the packer against the wellbore wall to secure the whipstock). Sonnier discloses in claim 2. The downhole tool as recited in Claim 1, further including a ported sub (Sonnier Fig 3; 50 ported shaft mandrel) coupled to the downhole power unit (Sonnier Fig 3 col 4 line 12-14 shaft mandrel is connected to the motor chamber), the ported sub configured to hydraulically connect activation fluid to the downhole power unit (Sonnier Col 4 line 25-32 wellbore fluid pressure drives the setting piston and cylinder against the pressure shoulder to se the packer/slip). Sonnier discloses in claim 3. The downhole tool as recited in Claim 2, wherein the ported sub is configured to hydraulically connect activation fluid from an annulus of a wellbore to the downhole power unit (Sonnier Col 4 line 25-32 wellbore fluid pressure drives the setting piston and cylinder against the pressure shoulder to se the packer/slip). Sonnier discloses in claim 9. The downhole tool as recited in Claim 1, wherein the downhole power unit is positioned between the whipstock assembly and the packer assembly (Sonnier Fig 1 power unit is between the whipstock and the packer assembly). Sonnier discloses in claim 10. The downhole tool as recited in Claim 1, further including a milling assembly removably coupled to the whipface (Sonnier Fig 5 through 7 col 4 line 55-65 shearable fastener 18 between whipstock and drill string is sheared). Sonnier discloses in claim 11. The downhole tool as recite in Claim 10, wherein the milling assembly is removably coupled to the whipface using a shear feature (Sonnier Fig 5 through 7 col 4 line 55-65 shearable fastener 18 between whipstock and drill string is sheared). Sonnier discloses in claim 13. The downhole tool as recited in Claim 1, wherein the downhole power unit is configured to receive an activation signal along wired drill string (Sonnier col 4 line 22-32 signal microprocessor for activation signal for setting operations of the packer/slips). Sonnier discloses in claim 15. A well system, comprising: a main wellbore (Sonnier Fig 5; 40) located in a subterranean formation (Sonnier Fig 5; subterranean wellbore col 3 line 43-45); a lateral wellbore (Sonnier Fig 7; 42) extending from the main wellbore (Sonnier Fig 7; 42 extends from 40); and a downhole tool (Sonnier Fig 7 elements 14, 12 and 10) positioned proximate an intersection between the main wellbore and the lateral wellbore (Sonnier Fig 7), the downhole tool including: a whipstock assembly (Sonnier Fig 1; 14), the whipstock assembly including a whipface (Sonnier Fig 1; 15); a packer assembly (Sonnier Fig 1; 10) coupled to the whipstock assembly (Sonnier Fig 1 10 is coupled to whipstock assembly), the packer assembly including a packer element (Sonnier Col 4 line 13-15 packer part of the packer/slip unit) configured to move between a radially retracted state and a radially expanded state (Sonnier Col 4 line 28-32 setting of the packer against the wellbore wall to secure the whipstock); and a downhole power unit (Sonnier Fig 3; 59 motor chamber) coupled to the packer assembly (Sonnier Fig 1 59 is a component of element 12 as shown in fig 3), the downhole power unit configured to move the packer element between the radially retracted state and the radially expanded state (Sonnier col 4 line 23-32 downhole packer actuator operates to set the packer against the wellbore wall to secure the whipstock). Sonnier discloses in claim 16. The well system as recited in Claim 15, further including a ported sub (Sonnier Fig 3; 50 ported shaft mandrel) coupled to the downhole power unit (Sonnier Fig 3 col 4 line 12-14 shaft mandrel is connected to the motor chamber), the ported sub configured to hydraulically connect activation fluid to the downhole power unit (Sonnier Col 4 line 25-32 wellbore fluid pressure drives the setting piston and cylinder against the pressure shoulder to set the packer/slip).. Sonnier discloses in claim 17. The well system as recited in Claim 16, wherein the ported sub is configured to hydraulically connect activation fluid from an annulus of the main wellbore to the downhole power unit (Sonnier Col 4 line 25-32 wellbore fluid pressure drives the setting piston and cylinder against the pressure shoulder to set the packer/slip). Sonnier discloses in claim 23. The well system as recited in Claim 15, wherein the downhole power unit is positioned between the whipstock assembly and the packer assembly (Sonnier Fig 1 power unit is between the whipstock and the packer assembly). Sonnier discloses in claim 24. The well system as recited in Claim 15, further including a milling assembly removably coupled to the whipface (Sonnier Fig 5 through 7 col 4 line 55-65 shearable fastener 18 between whipstock and drill string is sheared). Sonnier discloses in claim 25. The well system as recite in Claim 24, wherein the milling assembly is removably coupled to the whipface using a shear feature (Sonnier Fig 5 through 7 col 4 line 55-65 shearable fastener 18 between whipstock and drill string is sheared). Sonnier discloses in claim 27. The well system as recited in Claim 15, wherein the downhole power unit is coupled to wired drill string (Sonnier Fig 7; 32 drill string with telemetry unit), and further wherein the downhole power unit is configured to receive an activation signal along the wired drill string (Sonnier Fig 4; 31 col 4 line 40-50 signal sequence for activation). Sonnier discloses in claim 29. A method, comprising: positioning a downhole tool proximate an intersection between a main wellbore and where a lateral wellbore is to be located, the downhole tool including: a packer assembly (Sonnier Fig 1; 10) coupled to the whipstock assembly (Sonnier Fig 1l 10 is coupled to whipstock assembly), the packer assembly including a packer element (Sonnier Col 4 line 13-15 packer/slip unit) configured to move between a radially retracted state and a radially expanded state (Sonnier Col 4 line 28-32 setting of the packer against the wellbore wall to secure the whipstock); and a downhole power unit (Sonnier Fig 3; 59 motor chamber) coupled to the packer assembly (Sonnier Fig 1 59 is a component of element 12 as shown in fig 3), the downhole power unit configured to move the packer element between the radially retracted state and the radially expanded state (Sonnier col 4 line 23-32 downhole packer actuator operates to set the packer against the wellbore wall to secure the whipstock). and moving the packer element from the radially retracted state to the radially expanded state to fix the downhole tool within the main wellbore (Sonnier Col 4 line 28-32 setting of the packer against the wellbore wall to secure the whipstock). Sonnier discloses in claim 30. The method as recited in Claim 29, wherein the downhole tool further includes a ported sub (Sonnier Fig 3; 50 ported shaft mandrel) coupled to the downhole power unit (Sonnier Fig 3 col 4 line 12-14 shaft mandrel is connected to the motor chamber), the ported sub configured to hydraulically connect activation fluid to the downhole power unit (Sonnier Col 4 line 25-32 wellbore fluid pressure drives the setting piston and cylinder against the pressure shoulder to set the packer/slip). Sonnier discloses in claim 31. The method as recited in Claim 30, wherein the ported sub is configured to hydraulically connect activation fluid from an annulus of the main wellbore to the downhole power unit (Sonnier Col 4 line 25-32 wellbore fluid pressure drives the setting piston and cylinder against the pressure shoulder to set the packer/slip). . Sonnier discloses in claim 32. The method as recited in Claim 30, wherein moving the packer element from the radially retracted state to the radially expanded state includes hydraulically connecting the activation fluid to the downhole power unit using the ported sub (Sonnier Col 4 line 25-32 wellbore fluid pressure drives the setting piston and cylinder against the pressure shoulder to set the packer/slip). 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 Non-obviousness. Claim(s) 4, 6-7, 18, 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sonnier (US Pat No 6684953) in view of Hosie (US Pub No 20040069496). Sonnier discloses in claim 4. The downhole tool as recited in Claim 2, wherein the downhole power unit has a pre-determined depth (Sonnier col 4 line 34-36 positioning of the tool at a desired depth) the downhole power unit configured to initiate a setting sequence of the packer assembly after receiving activation fluid having at least the pre-determined activation depth from the ported sub (Sonnier Col 4 line 33-54 the whipstock is positioned at a predetermined depth the down hole tool receives as signal and the downhole power unit is configured to initiate a setting sequence of the packer and slip system to anchor the whipstock into the desired location). Sonnier discloses the downhole power unit (Sonnier Fig 3; 59 motor chamber) is controlled by a microprocessor (Sonnier Fig 3; 36) which is operated by a mud pulse telemetry (Sonnier Fig 4; 31 Abstract, col 4 line 3-11) to operate a solenoid valve (Sonnier col 2 line 44-46) to begin the setting sequence. However, Sonnier does not disclose the use of a predetermined activation pressure to initiate the setting sequence. However, Hosie discloses a valve system initiated by: a predetermined activation pressure (Hosie [0160] a rupture disc is broken at a designated pressure) As both Sonnier and Hosie both disclose a valve system, 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 solenoid valve of Sonnier for the rupture disc of Hosie with a reasonable expectation of success to achieve the predictable result of stopping fluid flow until a predetermined activation pressure is achieved. Sonnier in view of Hosie disclose in claim 6. The downhole tool as recited in Claim 4, wherein the ported sub (Sonnier Fig 3; 50 ported shaft mandrel) has a burst disc (Hosie [0160] a rupture disc is broken at a designated pressure), the burst disc configured to burst upon receiving at least the pre-determined activation pressure before initiating the setting sequence (Hosie [0160] a rupture disc is broken at a designated pressure) (Sonnier col 3 line 6-9 when the valve is ruptured wellbore pressure causes the motor chamber to set the packer). Sonnier in view of Hosie disclose in claim 7. The downhole tool as recited in Claim 4, wherein the downhole power unit is configured to immediately initiate the setting sequence of the packer assembly after receiving the activation fluid having at least the pre-determined activation pressure from the ported sub (Sonnier col 3 line 6-9 when the valve is ruptured wellbore pressure causes the motor chamber to set the packer). Sonnier discloses in claim 18. The well system as recited in Claim 16, wherein the downhole power unit has a pre-determined depth (Sonnier col 4 line 34-36 positioning of the tool at a desired depth) the downhole power unit configured to initiate a setting sequence of the packer assembly after receiving activation fluid having at least the pre-determined activation depth from the ported sub (Sonnier Col 4 line 33-54 the whipstock is positioned at a predetermined depth the down hole tool receives as signal and the downhole power unit is configured to initiate a setting sequence of the packer and slip system to anchor the whipstock into the desired location). Sonnier discloses the downhole power unit (Sonnier Fig 3; 59 motor chamber) is controlled by a microprocessor (Sonnier Fig 3; 36) which is operated by a mud pulse telemetry (Sonnier Fig 4; 31 Abstract, col 4 line 3-11) to operate a solenoid valve (Sonnier col 2 line 44-46) to begin the setting sequence. However, Sonnier does not disclose the use of a predetermined activation pressure to initiate the setting sequence. However, Hosie discloses a valve system initiated by: a predetermined activation pressure (Hosie [0160] a rupture disc is broken at a designated pressure) As both Sonnier and Hosie both disclose a valve system, 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 solenoid valve of Sonnier for the rupture disc of Hosie with a reasonable expectation of success to achieve the predictable result of stopping fluid flow until a predetermined activation pressure is achieved. Sonnier in view of Hosie disclose in claim 20. The well system as recited in Claim 18, wherein the ported sub (Sonnier Fig 3; 50 ported shaft mandrel) has a burst disc (Hosie [0160] a rupture disc is broken at a designated pressure), the burst disc configured to burst upon receiving at least the pre-determined activation pressure before initiating the setting sequence (Hosie [0160] a rupture disc is broken at a designated pressure) (Sonnier col 3 line 6-9 when the valve is ruptured wellbore pressure causes the motor chamber to set the packer). Sonnier in view of Hosie disclose in claim 21. The well system as recited in Claim 18, wherein the downhole power unit is configured to immediately initiate the setting sequence of the packer assembly after receiving the activation fluid having at least the pre-determined activation pressure from the ported sub (Sonnier col 3 line 6-9 when the valve is ruptured wellbore pressure causes the motor chamber to set the packer). Claim(s) 4-5, 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sonnier in view of Maher (Maher US Pub No 20230069763) Sonnier discloses in claim 4. The downhole tool as recited in Claim 2, wherein the downhole power unit has a pre-determined depth (Sonnier col 4 line 34-36 positioning of the tool at a desired depth) the downhole power unit configured to initiate a setting sequence of the packer assembly after receiving activation fluid having at least the pre-determined activation depth from the ported sub (Sonnier Col 4 line 33-54 the whipstock is positioned at a predetermined depth the down hole tool receives as signal and the downhole power unit is configured to initiate a setting sequence of the packer and slip system to anchor the whipstock into the desired location). Sonnier discloses the downhole power unit (Sonnier Fig 3; 59 motor chamber) is controlled by a microprocessor (Sonnier Fig 3; 36) which is operated by a mud pulse telemetry (Sonnier Fig 4; 31 Abstract, col 4 line 3-11) to operate a solenoid valve (Sonnier col 2 line 44-46) to begin the setting sequence. However, Sonnier does not disclose the use of a predetermined activation pressure to command the microprocessor/electronic control device to initiate the setting sequence. However, Maher discloses a setting control system initiated by: a predetermined activation pressure (Maher Fig 6; 602 [0016] [0024] setting system operated by predetermined activation pressure changes detected by sensors) As both Sonnier and Maher both disclose an electronic control device, 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 microprocessor of Sonnier for the Electronics assembly of Maher with a reasonable expectation of success to achieve the predictable result of setting the packer downhole to a predetermined pressure. Sonnier in view of Maher discloses in claim 5. The downhole tool as recited in Claim 4, wherein the downhole power unit has a pressure sensor (Maher [0016] pressure sensor apart of electronics assembly can detect minor differences in pressure), the pressure sensor configured to sense for at least the pre-determined activation pressure before initiating the setting sequence (Maher [0016] pressure sensor apart of electronics assembly can detect minor differences in pressure to initiate the setting sequence). Sonnier discloses in claim 18. The well system as recited in Claim 16, wherein the downhole power unit has a pre-determined depth (Sonnier col 4 line 34-36 positioning of the tool at a desired depth) the downhole power unit configured to initiate a setting sequence of the packer assembly after receiving activation fluid having at least the pre-determined activation depth from the ported sub (Sonnier Col 4 line 33-54 the whipstock is positioned at a predetermined depth the down hole tool receives as signal and the downhole power unit is configured to initiate a setting sequence of the packer and slip system to anchor the whipstock into the desired location). Sonnier discloses the downhole power unit (Sonnier Fig 3; 59 motor chamber) is controlled by a microprocessor (Sonnier Fig 3; 36) which is operated by a mud pulse telemetry (Sonnier Fig 4; 31 Abstract, col 4 line 3-11) to operate a solenoid valve (Sonnier col 2 line 44-46) to begin the setting sequence. However, Sonnier does not disclose the use of a predetermined activation pressure to command the microprocessor/electronic control device to initiate the setting sequence. However, Maher discloses a setting control system initiated by: a predetermined activation pressure (Maher Fig 6; 602 [0016] [0024] setting system operated by predetermined activation pressure changes detected by sensors) As both Sonnier and Maher both disclose an electronic control device, 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 microprocessor of Sonnier for the Electronics assembly of Maher with a reasonable expectation of success to achieve the predictable result of setting the packer downhole to a predetermined pressure. Sonnier in view of Maher discloses in claim 19. The well system as recited in Claim 18, wherein the downhole power unit has a pressure sensor (Maher [0016] pressure sensor apart of electronics assembly can detect minor differences in pressure), the pressure sensor configured to sense for at least the pre-determined activation pressure before initiating the setting sequence (Maher [0016] pressure sensor apart of electronics assembly can detect minor differences in pressure to initiate the setting sequence). Claim(s) 8 & 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sonnier & Maher as applied to claims 4 & 18 above, and further in view of Wood (US Pub No 20150122493). Sonnier & Maher disclose in claim 8. The downhole tool as recited in Claim 4, wherein the downhole power unit is configured to start a pre-determined sequence to initiate the setting sequence of the packer assembly after receiving the activation fluid having at least the pre-determined activation pressure from the ported sub (Maher Fig 6; 602 [0016] [0024] setting system operated by predetermined activation pressure changes detected by sensors). Sonnier in view of Maher does not teach the setting procedure would involve a countdown timer. However, Wood discloses the packer actuation signal could be incorporated with: a countdown (Wood [0043] “If desired, a delay could be incorporated into the programming of the actuator of the e-trigger 60 such that a predetermined period of time elapses between the time the triggering signal is received by the e-trigger 60 and the setting piston 63 is exposed to the hydrostatic pressure 62”) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a countdown as in Wood in the system operating the downhole tool of Sonnier in view of Maher. As in Wood, it is within the capabilities of one of ordinary skill in the art to include a countdown to Sonnier in view of Maher’s invention with a reasonable expectation of success of the predictable result of incorporating a delay as needed in Sonnier in view of Maher. Sonnier & Maher disclose in claim 22. The well system as recited in Claim 18, wherein the downhole power unit is configured to start a pre-determined sequence to initiate the setting sequence of the packer assembly after receiving the activation fluid having at least the pre-determined activation pressure from the ported sub (Maher Fig 6; 602 [0016] [0024] setting system operated by predetermined activation pressure changes detected by sensors). Sonnier in view of Maher does not teach the setting procedure would involve a countdown timer. However, Wood discloses the packer actuation signal could be incorporated with: a countdown (Wood [0043] “If desired, a delay could be incorporated into the programming of the actuator of the e-trigger 60 such that a predetermined period of time elapses between the time the triggering signal is received by the e-trigger 60 and the setting piston 63 is exposed to the hydrostatic pressure 62”) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a countdown as in Wood in the system operating the downhole tool of Sonnier in view of Maher. As in Wood, it is within the capabilities of one of ordinary skill in the art to include a countdown to Sonnier in view of Maher’s invention with a reasonable expectation of success of the predictable result of incorporating a delay as needed in Sonnier in view of Maher. Claim(s) 12 & 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sonnier in view of Szescila (US Pat No 4153109) Sonnier discloses in claim 12. The downhole tool as recited in Claim 1, and a packer with slips and appears to show a pair of slips above and below the sealing element in Fig 5 element 10 but is silent as to the specific construction of the packer assembly. However, Szescila teaches a packer assembly: includes an inner mandrel (Szescila Fig 2; 22), upper slips (Szecila Fig 2; 39) positioned about the inner mandrel (Szecila Fig 2; 39 is positioned around inner mandrel 22), lower slips (Szecila Fig 2; 27) positioned about the inner mandrel (Szecila Fig 2; 27 is positioned around inner mandrel 22), and the packer element positioned about the inner mandrel between the upper slips and the lower slips (Szecila Fig 2 33 packer element positioned between the upper and lower slips around the inner mandrel), wherein the inner mandrel is configured to axially slide to move the upper slips and lower slips toward one another to compress the packer element from its radially retracted state to its radially expanded state (Szecila col 4 line 30-35 packer is compressed and radially expanded) for the purpose of anchoring a whipstock in a wellbore. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to have modified Sonnier to include an inner mandrel and slips as taught by Szecila for the purpose of anchoring a whipstock in a wellbore. Sonnier discloses in claim 26. The well system as recited in Claim 15, and a packer with slips and appears to show a pair of slips above and below the sealing element in Fig 5 element 10 but is silent as to the specific construction of the packer assembly. However, Szescila teaches a packer assembly: includes an inner mandrel (Szescila Fig 2; 22), upper slips (Szecila Fig 2; 39) positioned about the inner mandrel (Szecila Fig 2; 39 is positioned around inner mandrel 22), lower slips (Szecila Fig 2; 27) positioned about the inner mandrel (Szecila Fig 2; 27 is positioned around inner mandrel 22), and the packer element positioned about the inner mandrel between the upper slips and the lower slips (Szecila Fig 2 33 packer element positioned between the upper and lower slips around the inner mandrel), wherein the inner mandrel is configured to axially slide to move the upper slips and lower slips toward one another to compress the packer element from its radially retracted state to its radially expanded state (Szecila col 4 line 30-35 packer is compressed and radially expanded) for the purpose of anchoring a whipstock in a wellbore. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to have modified Sonnier to include an inner mandrel and slips as taught by Szecila for the purpose of anchoring a whipstock in a wellbore. Conclusion 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. 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, Nicole Coy can be reached at (571) 272-5405. 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. /NICHOLAS D WLODARSKI/Examiner, Art Unit 3672 /Nicole Coy/Supervisory Patent Examiner, Art Unit 3672
Read full office action

Prosecution Timeline

Jan 29, 2025
Application Filed
Sep 03, 2025
Non-Final Rejection mailed — §102, §103
Jan 26, 2026
Response Filed
May 27, 2026
Final Rejection mailed — §102, §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12637916
DEBRIS RESISTANT KEYED RUNNING TOOL AND METHOD
1y 5m to grant Granted May 26, 2026
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INTEGRATED COMPOSITE SEALS FOR RAM BODY
2y 5m to grant Granted May 12, 2026
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Forming High-Efficiency Geothermal Wellbores
1y 6m to grant Granted May 12, 2026
Patent 12618308
METHOD AND DEVICE FOR HORIZONTAL BORE MINING
2y 2m to grant Granted May 05, 2026
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INFLATABLE ACTIVE PACKER
2y 4m to grant Granted Apr 28, 2026
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
84%
Grant Probability
95%
With Interview (+11.3%)
2y 2m (~11m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 136 resolved cases by this examiner. Grant probability derived from career allowance rate.

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