CTNF 19/071,168 CTNF 84186 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 07-29-01 AIA Claim s 1, 9 and 11 are objected to because of the following informalities: (claim 1, lines 4-5) “a second angled portion and second straight portion” should be changed to “a second angled portion and a second straight portion”. (claim 9, line 3) “the coiled tubing string” should be changed to “the coiled tubing”. (claim 11, lines 6-7) “a second angled portion and second straight portion” should be changed to “a second angled portion and a second straight portion” . Appropriate correction is required. 07-30-03-h AIA Claim Interpretation 07-30-03 AIA The following is a quotation of 35 U.S.C. 112(f): (f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 07-30-05 The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked. As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph: (A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function; (B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and (C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function. Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function. Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. 07-30-06 This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a deployment mechanism for moving the first alignment housing and the second alignment housing” in claims 4 and 19, “a coiled tubing alignment guide” in claims 9 and 12, “a bottom hole assembly alignment guide” in claims 10 and 13, and “a second coiled tubing alignment guide” in claim 16. Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1 and 4-6 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Adams et al. (US 7,287,598) . As concerns claim 1, Adams shows an alignment apparatus (70), comprising: a first alignment housing (44), the first alignment housing having a first angled portion (62) and a first straight portion (Fig. 34 & 35: cylindrical portion below shoulder 62); and a second alignment housing (44), the second alignment housing having a second angled portion (62) and a second straight portion (Fig. 34 & 35: cylindrical portion below shoulder 62), wherein the first alignment housing and the second alignment housing are configured to move between a first state having the first and second alignment housings separated from one another (Fig. 34) and a second state having the first and second alignment housings coupled to one another to form an alignment cone and an alignment cylinder (Fig. 35). As concerns claim 4, Adams shows a deployment mechanism (50) for moving the first alignment housing and the second alignment housing between the first state and the second state (Fig. 34 & 35). As concerns claim 5, Adams shows wherein the deployment mechanism axially moves the first alignment housing and the second alignment housing between a radially outward state and a radially inward state (Fig. 34 & 35). As concerns claim 6, Adams shows wherein the deployment mechanism is a hydraulic deployment mechanism (50) . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. 07-20-aia AIA 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. 07-21-aia AIA Claim s 2, 3, 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Adams et al. alone . As concerns claims 2 and 3, Adams discloses the claimed invention except for a third alignment housing, the third alignment housing having a third angled portion and a third straight portion, wherein the second state has the first, second and third alignment housings coupled to one another to form the alignment cone and the alignment cylinder. It has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have utilized a third alignment housing such that in the second state, the first, second and third alignment housings are coupled to one another to form the alignment cone and the alignment cylinder for the expected benefit of increasing the overall force of the alignment apparatus by providing a third deployment mechanism for moving the third alignment housing. Thus, one of ordinary skill in the art would have recognized that using a third alignment housing such that in the second state, the first, second and third alignment housings are coupled to one another to form the alignment cone and the alignment cylinder would have provided predictable results and a reasonable expectation of success. Therefore, it would have been obvious to modify Adams to obtain the invention as specified in the claim. As concerns claims 7 and 8, Adams discloses the claimed invention except for wherein the deployment mechanism is an electric deployment mechanism, and wherein the deployment mechanism is a mechanical deployment mechanism. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have utilized an electric deployment mechanism or a mechanical deployment mechanism in place of a hydraulic deployment mechanism, since the examiner takes Official Notice of the equivalence of various types of deployment mechanisms for their use in the art and the selection of any of these known equivalents would be within the level of ordinary skill in the art. Thus, one of ordinary skill in the art would have recognized that using an electric deployment mechanism or a mechanical deployment mechanism for the deployment mechanism in place of a hydraulic deployment mechanism would have provided predictable results and a reasonable expectation of success. Therefore, it would have been obvious to modify Adams to obtain the invention as specified in the claim . Allowable Subject Matter Claims 11-20 are allowed over the prior art of record. 12-151-08 AIA 07-43 12-51-08 Claim s 9 and 10 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. 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: the prior art of record does not appear to anticipate and/or render obvious: a) a method for deploying/retrieving coiled tubing, comprising: providing a coiled tubing alignment apparatus, the coiled tubing alignment apparatus including: a first alignment housing, the first alignment housing having a first angled portion and a first straight portion; and a second alignment housing, the second alignment housing having a second angled portion and second straight portion, wherein the first alignment housing and the second alignment housing are configured to move between a first state having the first and second alignment housings separated from one another and a second state having the first and second alignment housings coupled to one another to form an alignment cone and an alignment cylinder; feeding coiled tubing string through the alignment cone and the alignment cylinder of the coiled tubing alignment apparatus that is formed when the first and second alignment housings are positioned in the second state; coupling the coiled tubing string with other tubing while the first and second alignment housings are positioned in the second state; and moving the first and second alignment housings from the second state to the first state after coupling the coiled tubing string with the other tubing . b) a coiled tubing alignment apparatus, comprising: a first alignment housing, the first alignment housing having a first angled portion and a first straight portion; and a second alignment housing, the second alignment housing having a second angled portion and second straight portion, wherein the first alignment housing and the second alignment housing are configured to move between a first state having the first and second alignment housings separated from one another and a second state having the first and second alignment housings coupled to one another to form an alignment cone and an alignment cylinder, a coiled tubing alignment guide, the coiled tubing alignment guide configured to attach to an end of coiled tubing to align the coiled tubing string within the alignment cone and the alignment cylinder . c) a coiled tubing alignment apparatus, comprising: a first alignment housing, the first alignment housing having a first angled portion and a first straight portion; and a second alignment housing, the second alignment housing having a second angled portion and second straight portion, wherein the first alignment housing and the second alignment housing are configured to move between a first state having the first and second alignment housings separated from one another and a second state having the first and second alignment housings coupled to one another to form an alignment cone and an alignment cylinder, a bottom hole assembly alignment guide, the bottom hole assembly alignment guide configured to attach to an end of a bottom hole assembly to align the bottom hole assembly within the alignment cylinder . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Penisson (US 5,042,601) shows a triple alignment apparatus . Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R BUCK whose telephone number is (571)270-3653. The examiner can normally be reached Monday-Thursday 6:30-5. 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. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MATTHEW R BUCK/Primary Examiner, Art Unit 3672 Application/Control Number: 19/071,168 Page 2 Art Unit: 3672 Application/Control Number: 19/071,168 Page 3 Art Unit: 3672 Application/Control Number: 19/071,168 Page 4 Art Unit: 3672 Application/Control Number: 19/071,168 Page 5 Art Unit: 3672 Application/Control Number: 19/071,168 Page 6 Art Unit: 3672 Application/Control Number: 19/071,168 Page 7 Art Unit: 3672 Application/Control Number: 19/071,168 Page 8 Art Unit: 3672 Application/Control Number: 19/071,168 Page 9 Art Unit: 3672 Application/Control Number: 19/071,168 Page 10 Art Unit: 3672 Application/Control Number: 19/071,168 Page 11 Art Unit: 3672
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