DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claim 5 is objected to because of the following informalities: “eh central flange” should be replaced with “the central flange”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 requires the flanged ends to “substantially prevent movement of each cable insert half within the WCOS.” However, the cable insert halves are part of the WCOS and it is not physically possible for a structure (i.e., the cable insert halves) to be within itself. For the purpose of examination, the limitation will be interpreted as “the flanged ends substantially prevent movement of each cable insert half within the pair of opposed WCSO body halves.”
Claim 4 requires the central flange to “substantially prevent movement of each cable insert half within the WCOS.” However, the cable insert halves are part of the WCOS and it is not physically possible for a structure (i.e., the cable insert halves) to be within itself. For the purpose of examination, the limitation will be interpreted as “the central flange substantially prevent movement of each cable insert half within the pair of opposed WCSO body halves.”
Claim 5 requires the flanged ends and the central flange in combination to “substantially prevent movement of each cable insert half within the WCOS.” However, the cable insert halves are part of the WCOS and it is not physically possible for a structure (i.e., the cable insert halves) to be within itself. For the purpose of examination, the limitation will be interpreted as “the flanged ends and the central flange in combination substantially prevent movement of each cable insert half within the pair of opposed WCSO body halves.”
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.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wheater (US 2012/0031609).
With respect to claim 1: Wheater discloses a wireline cased-hole standoff (WCSO) (1) comprising:
a pair of cable insert halves (3), wherein each cable insert half comprises flanged ends (ends of 3 in Figs. 5-6) disposed on opposing ends of the each cable insert half (Figs. 5-6), and wherein each cable insert half comprises a central flange (21);
a pair of opposing WCSO body halves (2); and
a pair of outer low-friction shells (8; ¶ [0033]) configured to reduce friction between the WCSO and a cased-hole (more than one that form a shell over/around part of 7 and aids in reducing friction; ¶ [0028, 0033]), wherein the pair of cable insert halves, the pair of opposing WCSO body halves, and the pair of outer shells are fastened together onto a wireline cable (11; Figs. 1-2, 4-8; ¶ [0033-34]).
With respect to claim 2: Wheater further discloses the central flange is disposed about a middle portion of the each cable insert half (Figs. 5-6).
With respect to claim 3: Wheater further discloses, in view of the 112(b) rejection above, the flanged ends substantially prevent axial movement of the each cable insert half within the WCSO (Figs. 5-6; ¶ [0025, 0037-38]; the flanged ends perform the function in combination with the central flange).
With respect to claim 4: Wheater further discloses, in view of the 112(b) rejection above, the central flange substantially prevents axial movement of the each cable insert half within the WCSO (Figs. 5-6; ¶ [0025, 0037-38]).
With respect to claim 5: Wheater further discloses, in view of the 112(b) rejection above, the flanged ends and the central flange in combination substantially prevents axial movement of the each cable insert half within the WCSO (Figs. 5-6; ¶ [0025, 0037-38]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,125,025 in view of Wheater (US 2012/0031609). The claims are issue are fully encompassed by the claim of the issued patent except for the flanged ends are on opposite ends of each cable insert, the pair of outer low-friction shells are configured to reduce friction between the WCOS and a cased-hole, and the central flange is disposed about a middle portion of each cable insert half. Wheater teaches it is old and well known in the art for a pair of cable insert halves (3) with flanged ends (ends of 3 in Figs. 5-6) to have the ends be on opposing ends of each cable insert half ( Figs. 5-6), for the pair of outer low-friction shells (8; ¶ [0033]) be configured to reduce friction between the WCOS (2) and a cased-hole (¶ [0028, 0033]), and for the central flange (21) to be disposed about a middle portion of the each cable insert half (Figs. 5-6).
It would be obvious to one having ordinary skill in the art before the effective filing date to substitute the flanged ends on opposing ends of the pair of cable insert halves of Wheater for the generic flanged ends of the current invention since doing so would perform the same predictable result of providing a projection that aids the structures in maintaining position. It would be obvious to one having ordinary skill in the art before the effective filing date to combine the friction reducing relationship between the WCOS and cased-hole of Wheater with the current invention since doing so would allow the casing to perform its intended function of providing support to the wellbore and would provide a more efficient system (Wheater ¶ [0011]).
It would be obvious to one having ordinary skill in the art before the effective filing date to substitute the central flange in the middle position of Wheater for the central flange in a generic position of the current invention since doing so would perform the same predictable result of providing a projection that aids the structures in maintaining position.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTYN A HALL whose telephone number is (571)272-8384. The examiner can normally be reached M-F 9:00-5:00.
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.
/KRISTYN A HALL/Primary Examiner, Art Unit 3672