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 .
Response to Arguments
Applicant’s arguments with respect to claims 1, 11, and 23 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The previous double patenting rejections are withdrawn due to amendments. However, a new non-statutory double patenting rejection is made regarding claim 33 as discussed below. Examiner notes that there is no terminal disclaimer regarding U.S. Patent No. 12,065,911.
The 112(b) rejections are withdrawn due to amendments.
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.
Claims 1-4, 11-13, 15-17, 23, and 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over Honekamp (US 2015/0027708) in view of Menezes (US 2008/0173481) and Nygardsvoll (US 2013/0319666).
With respect to claims 1 and 11: Honekamp discloses a well system (Fig. 1), comprising:
a main wellbore (101) located within a subterranean formation (102);
a drilling and running tool (120, 130) positioned within the main wellbore (Fig. 1);
a whipstock assembly (140) coupled to the drilling and running tool using a coupling mechanism (149; ¶ [0014, 0018]); and
a hydraulically actuated anchoring assembly (142; ¶ [0014, 0018]) coupled from a downhole end of the whipstock assembly (¶ [0014, 0018]; Fig. 1). Honekamp does not disclose the details of the drilling and running tool or the lower mainbore completion assembly.
Menezes discloses a drilling and running tool is a two part drilling and running tool, comprising:
a conveyance (201);
a smaller assembly (203) coupled to an end of the conveyance (Fig. 7); and
a larger bit assembly (14) slidably coupled to the conveyance (Figs. 2-8), the smaller assembly and larger bit assembly configured to slidingly engage one another downhole to form a combined bit assembly (¶ [0044-47]); Figs. 4-8). It would be obvious to one having ordinary skill in the art before the effective filing date to substitute the drilling and running tool of Menezes for that of Honekamp since doing so would perform the same predictable result of allowing a wellbore to be drilled.
The combination of Honekamp and Menezes does not disclose the lower mainbore completion assembly having one or more screens coupled from a downhole end of the hydraulically actuated anchoring assembly.
Nygardsvoll teaches a whipstock assembly (26) with an anchoring assembly (24) coupled from a downhole end of the whipstock assembly (Fig. 1) and a lower mainbore completion assembly (20) having one or more screens (20; ¶ [0016]) coupled from a downhole end of the anchoring assembly (Fig. 1). It would be obvious to one having ordinary skill in the art before the effective filing date to combine the lower mainbore completion assembly Nygardsvoll with the invention of Honekamp and Menezes with a reasonable expectation of success since doing so would allow the screen of the lower mainbore completion assembly to perform its designed function of acting as a filter during production of fluids.
With respect to claims 2 and 15: Menezes from the combination of Honekamp, Menezes, and Nygardsvoll further teaches the smaller assembly is a smaller bit assembly (203 has a cutting surface like 205; Figs. 6-8).
With respect to claims 3 and 16: Menezes from the combination of Honekamp, Menezes, and Nygardsvoll further teaches the smaller bit assembly includes one or more first profiles (part that engages with 207; ¶ [0047]; Fig. 8) and the larger bit assembly includes one or more second profiles (207), and further wherein the one or more first profiles are configured to engage with the one or more second profiles to rotationally fix the smaller bit assembly with the larger bit assembly when the two are slidingly engaged together (¶ [0047]; Fig. 8).
With respect to claims 4 and 17: Menezes from the combination of Honekamp, Menezes, and Nygardsvoll further teaches the one or more first profiles are one or more internal profiles (recess that receives 207; ¶ [0047]; Fig. 8) and the one or more second profiles are one or more external profiles (207). The combination of Honekamp and Menezes does not teach the reverse where the one or more first profiles are one or more external profiles and the one or more second profiles are one or more external profiles. It would have been obvious to one having ordinary skill in the art at the time of filing to reverse the internal and external profiles, since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955).
With respect to claim 12: Honekamp from the combination of Honekamp, Menezes, and Nygardsvoll further teaches the hydraulically actuated anchoring assembly is in a radially collapsed state (¶ [0014, 0018]).
With respect to claim 13: Honekamp from the combination of Honekamp, Menezes, and Nygardsvoll further teaches the hydraulically actuated anchoring assembly is in a radially expanded state engaged with a wall of the main wellbore (¶ [0014, 0018]).
With respect to claim 23: Honekamp discloses a method for forming a well system (Fig. 1), comprising:
forming a main wellbore (101) within a subterranean formation (102; ¶ [0014]);
positioning a drilling and running tool (120, 130) within the main wellbore (Fig. 1), the drilling and running tool coupled to a whipstock assembly (140) using a coupling mechanism (149; ¶ [0014, 0018]), the whipstock assembly having a hydraulically actuated anchoring assembly (142; [0014, 0018]) coupled to a downhole end thereof (¶ [0014, 0018]; Fig. 1); and
applying fluid pressure to the hydraulically actuated anchoring assembly to set the hydraulically actuated anchoring assembly in the main wellbore (¶ [0014, 0018]). Honekamp does not disclose the details of the drilling and running tool or the lower mainbore completion assembly.
Menezes discloses a drilling and running tool is a two part drilling and running tool, comprising:
a conveyance (201);
a smaller assembly (203) coupled to an end of the conveyance (Fig. 7); and
a larger bit assembly (14) slidably coupled to the conveyance (Figs. 2-8), the smaller assembly and larger bit assembly configured to slidingly engage one another downhole to form a combined bit assembly (¶ [0044-47]); Figs. 4-8). It would be obvious to one having ordinary skill in the art before the effective filing date to substitute the drilling and running tool of Menezes for that of Honekamp since doing so would perform the same predictable result of allowing a wellbore to be drilled.
The combination of Honekamp and Menezes does not disclose the lower mainbore completion assembly coupled from a downhole end of the hydraulically actuated anchoring assembly.
Nygardsvoll teaches a whipstock assembly (26) with an anchoring assembly (24) coupled from a downhole end of the whipstock assembly (Fig. 1) and a lower mainbore completion assembly (20) having one or more screens (20; ¶ [0016]) coupled from a downhole end of the anchoring assembly (Fig. 1). It would be obvious to one having ordinary skill in the art before the effective filing date to combine the lower mainbore completion assembly Nygardsvoll with the invention of Honekamp and Menezes with a reasonable expectation of success since doing so would allow the screen of the lower mainbore completion assembly to perform its designed function of acting as a filter during production of fluids.
With respect to claim 27: All aspects of the claimed invention are taught as discussed in the rejections of claims 2 and 15 above.
With respect to claim 28: Honekamp from the combination of Honekamp, Menezes, and Nygardsvoll further teaches the smaller bit assembly is coupled to the whipstock assembly using the coupling mechanism (¶ [0014, 0018]; 149 indirectly couple all of the bit assembly structures to the whipstock).
Claims 5-6 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Honekamp, Menezes, and Nygardsvoll as applied to claims 2 and 15 above, and further in view of Cronley (US 2015/0361764).
With respect to claims 5 and 18: Menezes from the combination of Honekamp, Menezes, and Nygardsvoll further teaches connection profiles as discussed in the rejection of claim 3 above. The combination of Honekamp, Menezes, and Nygardsvoll does not teach the connection profiles are such that the smaller bit assembly includes one of a lock ring profile or a lock ring, and the larger bit assembly includes another of the lock ring or the lock ring profile, the lock ring profile and lock ring configured to engage with one another to slidingly fix the smaller bit assembly with the larger bit assembly when the two are slidingly engaged together. Cronley teaches one part of a downhole tool (54) includes one of a lock ring profile or a lock ring (98), and a second part of a downhole tool (32) includes another of the lock ring or the lock ring profile (100), the lock ring profile and lock ring configured to engage with one another to slidingly fix the first part of the downhole tool with the second part of the downhole tool when the two are slidingly engaged together (¶ [0034]). It would be obvious to one having ordinary skill in the art before the effective filing date to substitute the locking ring configuration of Cronley for the connection profiles of Honekamp, Menezes, and Nygardsvoll since doing so would perform the same predictable result of connecting the smaller bit assembly to the larger bit assembly.
With respect to claims 6 and 19: Cronley from the combination of Honekamp, Menezes, Nygardsvoll, and Cronley further teaches the larger bit assembly includes the lock ring profile (100) and the smaller bit assembly includes the lock ring (98). The combination of Honekamp, Menezes, Nygardsvoll, and Cronley does not teach the reverse where the smaller bit assembly includes the lock ring profile and the larger bit assembly includes the lock ring. It would have been obvious to one having ordinary skill in the art at the time of filing to reverse the lock ring and lock ring profile, since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955).
Claims 21 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Honekamp, Menezes, and Nygardsvoll as applied to claims 15 and 23 above, and further in view of Ford (US 2018/0305994).
With respect to claims 21 and 31: The combination of Honekamp, Menezes, and Nygardsvoll teaches all aspects of the claimed invention except for a seal assembly coupled between the whipstock assembly and the hydraulically actuated anchoring assembly. Ford teaches it is known in the art for an anchoring assembly top have multiple inflatable packers (¶ [0059]). Therefore, the upper packer would be a seal assembly and the lower packer would be the anchoring assembly. It would be obvious to one having ordinary skill in the art before the effective filing date to combine the multiple packers of Ford with the invention of Honekamp, Menezes, and Nygardsvoll since Honekamp teaches the anchor can be any suitable type (Honekamp ¶ [0014]) and Ford teaches having multiple packers is advantageous when conditions do not permit full inflation of one of the packers (Ford ¶ [0059]).
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.
Claim 33 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,065,911. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim of the current application is fully encompassed by the claims of the issued patent. The claim of the issued patent has the additional elements of a multilateral junction assembly, the smaller bit assembly, and the fluid ports. However, al of the elements of the claim in the current application are present in the claim of the issued patent. The claim of the issued patent is merely narrower.
Allowable Subject Matter
Claim 34 is allowed.
Claims 7-10, 14, 20, 22, 24-26,29-30,32 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.
Claim 33 would be allowable if a terminal disclaimer was filed to overcome the non-statutory double patenting rejections as discussed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 KRISTYN A HALL whose telephone number is (571)272-8384. The examiner can normally be reached M-F 9:00-5:00.
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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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/KRISTYN A HALL/Primary Examiner, Art Unit 3672
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