5DETAILED 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 .
Drawings
The drawings are objected to because all reference numbers are hand drawn. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 2-7 are objected to because of the following informalities: They must start with “The wellbore fishing tool” not “A wellbore fishing tool”. 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.
Claim 2-7 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 2 recites “the respective actuation links”. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites “the respective actuation links” and “the respective gripping elements”. There is insufficient antecedent basis for these limitations in the claim.
Claim 5 recites “the respective first inclined guide faces”, “the respective first sliding faces” are “the respective second inclined guide faces”. There is insufficient antecedent basis for these limitations in the claim.
Claim 6 recites “the respective first inclined guide faces”. There is insufficient antecedent basis for these limitations in the claim.
Claims 4 and 7 are rejected as being dependent on claim 3.
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 1-5 and 7 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Sheiretov (20070227736).
Sheiretov discloses a wellbore fishing tool, comprising:
Re claim 1:
an actuation motor 14 (i.e., fig. 1, pgh. 16) and
an actuation member 20 operated in an axial direction by the actuation motor 14 (i.e., pghs. 16-18), and further comprising
an engagement assembly 16A+18A, 16B+18B wherein the engagement assembly comprises
a main body 26
gripping elements 18B configured to be moved between a non-engaged state and an engaged state (i.e., figs. 3C-3F), and
said actuation member 20 between the actuator motor 14 and the gripping elements 18B, wherein the gripping elements connect to the actuation member via a connection hinge (i.e., hinge implicitly present from at least fig. 1 which shows he extended/engaged configuration).
Re claim 2 (as best understood -112 issue), the engagement assembly further comprises actuation links (i.e., multiple arms), wherein the respective actuation links (i.e., one of arms 18B) connect to the actuation member 20 with a first connection hinge and to the gripping element (i.e., other of 18B, for example middle arms of multiple arms 18B) with a second connection hinge (i.e., hinge implicitly present from at least fig. 1).
Re claim 3 (as best understood – 112 issue), the engagement assembly further comprises a first inclined guide face and a second inclined guide face (i.e., they have internal and external guide surface) , that the respective gripping elements comprises a first sliding face sliding (i.e., first external surface) against (i.e., opposite direction to) the first inclined guide face (i.e., first internal surface) and a second sliding face sliding (i.e., second external surface of second arm) against (i.e., opposite direction to) the second inclined guide face (i.e., second internal surface of second arm) .
Re claim 4, the first inclined guide faces (i.e., lower arms 18B) face forward and radially outwards, that the second inclined guide faces (i.e., upper arms 18B) face rearward and radially inwards, and that the second inclined guide faces extend along a respective flat plane (i.e., it connected to flat middle arms 18B).
Re claim 5 (as best understood - 112 issue), the respective first inclined guide faces (i.e., internal surface of upper left arm) and the respective first sliding faces (i.e., external surface of upper left arm) are flat and parallel with the respective second inclined guide faces (internal surface of lower right arm).
Re claim 7, the engagement assembly further comprises two pairs of landing faces (external surface of upper left and lower right arms, and upper right and lower left rams), wherein each pair comprises parallel landing faces arranged on opposite sides (i.e., axially opposite) of a force-transmitting bar (i.e., fig.1, four arms inside the multiple arms - they connected to the arms 18B – a force transmitter) that is arranged between the first inclined guide face (i.e., external surface of upper left arm) and the second inclined guide face (i.e., internal surface of lower right arm)..
Claim Rejections - 35 USC § 103
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.
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) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sheiretov.
Sheiretov discloses the actuation member and the main body 20, but is silent on the actuation member comprises two actuation arms, the main body comprises arm slots receiving the actuation arms. However, Sheiretov teaches multiple arms and arm slot is well known. Thus, it would have been obvious to one of ordinary skill in the art before the effective fig date of the present application to try the actuation member of Sheiretov with two actuation arms and arm slots receiving the actuation arms for a predictable performance of the actuation member, since it has been held to be within the general skill of a worker in the art to select a know material on the basis of its suitability for the intended use as matter of obvious design choice. In re Leshin, 125 USPQ 416.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The reference in the PTO-892 all show similar features to those of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YONG-SUK (PHILIP) RO whose telephone number is (571)270-5466. The examiner can normally be reached Monday-Friday 8:00-4:30.
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/YONG-SUK (PHILIP) RO/ Primary Examiner, Art Unit 3676
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