DETAILED ACTION
The amendment filed 5/11/2026 has been entered.
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 .
Response to Amendment
The previously indicated allowable subject matter has been reconsidered in view of newly identified references as applied below. Further, the previously applied obviousness double patenting rejection has been reconsidered and is reapplied below.
Claim Objections
Claim 19 is objected to because “a elongated flexible member” in line 4 appears grammatically awkward and should apparently recite – an elongated flexible member --.
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 18-21 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 18 lacks antecedent basis for “the downhole device” and is therefore indefinite.
Claim 19 lacks antecedent basis for “the collecting device” in line 7, where “a collecting device” is in line 17.
Claims 20-21 are indefinite as being dependent on an indefinite claim.
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.
Claim(s) 1, 3, 13, and 15 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Whiteley et al. (US 5,107,927).
In regard to claim 1, Whiteley et al. disclose a collecting device for collecting debris within a wellbore, the collecting device comprises: a leading portion (16 right end of fig 3), a trailing portion (left end of 16 fig 3), a wall (16) connecting the leading portion to the trailing portion, a collecting chamber (34U) on an inside of the wall, an inlet at the leading portion (with slits within 16 as being slotted liner, col. 5, lines 67+), an outlet (at 46 fig 4 as leading to 22 in fig 3) at the trailing portion, and an elongated filter (S), the collecting device forms a device longitudinal central axis between the leading portion and the trailing portion, the elongated filter extends along the device longitudinal central axis in an offset position from the device longitudinal central axis (as in figs 3, 4, 6) and forms a first end portion and a second end portion; the second end portion is positioned closest to the inlet (as in fig 3); the elongated filter forms a retentate side (outside of S) and a permeate side (inside of S); and the permeate side of the elongated filter being fluidly connected with the outlet (as in figs 3, 4, 6), an annular collecting space is formed between the retentate side of the elongated filter and the wall (as in fig 6 around S).
In regard to claim 3, Whiteley et al. disclose wherein the collecting device comprises a support (48 or 42), the support being adapted to maintain the offset position of the elongated filter and/or to adjust the offset position of the elongated filter from the device longitudinal central axis (as in fig 6).
In regard to claim 13, Whiteley et al. disclose wherein the elongated filter is replaceable (as threaded with 22 at 46 as in fig 4).
In regard to claim 15, Whiteley et al. disclose a downhole toolstring for collecting debris within a wellbore, the downhole toolstring is adapted to connect to a surface equipment via an elongated flexible member (as connected with 22, which is flexible as shown in fig 3), the downhole toolstring comprises: a collecting device comprising: a leading portion (16 right end as in fig 3), a trailing portion (16 left end as connected with 22), a wall (16) connecting the leading portion to the trailing portion; a collecting chamber (34U) on an inside of the wall, an inlet at the leading portion (with slots as within 16, col. 5, lines 67+), an outlet at the trailing portion (at 46 fig 4 as leading to 22 in fig 3), and an elongated filter (S), the collecting device forms a device longitudinal central axis between the leading portion and the trailing portion; the elongated filter extends along the device longitudinal central axis in an offset position from the device longitudinal central axis and forms a first end portion and a second end portion (as in figs 3, 4, 6); the second end portion is positioned closest to the inlet; the elongated filter forms a retentate side (outside of S) and a permeate side (inside of S); and the permeate side of the elongated filter being fluidly connected with the outlet (as in fig 4); and an annular collecting space is formed between the retentate side of the elongated filter and the wall (as in fig 6).
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.
Claim(s) 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Whiteley et al. in view of Flores Perez et al. (US 2022/0341296).
In regard to claim 4, Whiteley et al. disclose all the limitations of this claim, as applied to claim 1 above, except for wherein the elongated filter at the first end portion is formed with a first permeability and the elongated filter at the second end portion is formed with a second permeability.
Flores Perez et al. disclose an elongated filter (as in fig 2), wherein the elongated filter at the first end portion is formed with a first permeability and the elongated filter at the second end portion is formed with a second permeability (as in paragraph 30 at least where multiple variations are shown as in fig 2). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the device of Whiteley et al. with the varying permeability as taught by Flores Perez et al. since combining prior art element according to known techniques to yield predictable results is considered obvious to one of ordinary skill.
In regard to claim 5, Flores Perez et al. disclose wherein the elongated filter is formed with a plurality of permeabilities between the first end portion and the second end portion (as in fig 2, 22/24/26, paragraphs 13/18/30).
In regard to claim 6, Flores Perez et al. disclose wherein the first permeability is larger compared to the second permeability (as in paragraphs 13/18/30, where at least one is larger as being varied).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Whiteley et al. in view of Stephenson et al. (US 2014/0151065).
In regard to claim 7, Whiteley et al. disclose all the limitations of this claim, except for a duckbill valve in the inlet. In a similar field of endeavor, Stephenson et al. disclose duckbill valves (paragraph 24). Therefore it would have been obvious to one of ordinary skill in the art to include a duckbill valve as taught by Stephenson et al. with the inlet of Whiteley et al. in order to prevent flow back out of the device (as known as a check valve as in Stephenson et al. paragraph 24).
Claim(s) 8-10, 12 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Whiteley et al. in view of Toge et al. (US 11,236,566).
In regard to claim 8, Whiteley et al. disclose all the limitations of this claim, as applied to claim 1 above, except for a pumping system.
In a similar field of endeavor, Toge et al. disclose a collecting device comprising a pumping system (6) configured to form a fluid flow from the wellbore and into the collecting chamber via the inlet. It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the device of Whiteley et al. with a pumping system, as taught by Toge et al. in order to better motivate fluid through the device.
In regard to claim 9, Toge et al. disclose wherein the collecting device comprises a motor (31) adapted to energise the pumping system.
In regard to claim 10, Toge et al. disclose wherein the collecting chamber is positioned on a suction side of the pumping system (as in fig 1).
In regard to claim 12, Toge et al. disclose wherein the collecting chamber is positioned on a discharge side of the pumping system (col. 8, lines 4-9 as in fig 3).
In regard to claim 14, Whiteley et al. disclose all the limitations of this claim, as applied to claim 1 above, except for wherein the collecting device comprises a fluid sensor adapted to measure performance data during use. Toge et al. disclose a collecting device comprising a fluid sensor (col. 9, lines 4-9) adapted to measure performance data during use. It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the device of Whiteley et al. with a sensor, as taught by Toge et al. in order for an operator to monitor the filling of the collection chamber (col. 9, lines 4-25).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Whiteley et al. in view Toge et al., as applied to claim 8 above, and further in view of Krug (US 8,844,626).
Whiteley et al. and Toge et al. disclose all the limitations of this claim, as applied above, except for wherein the pumping system comprises a jet pump. Krug discloses that downhole systems for pumping fluids may include jet pumps (col. 2, lines 5-10). It would have been obvious to one of ordinary skill to one of ordinary skill in the art before the time of effective filing to substitute the pumping system of Whiteley et al. as modified by Toge et al. for a jet pump, as taught by Krug, since simple substitution of one known element for another to obtain predictable results is considered obvious to one of ordinary skill.
Claim(s) 16, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Whiteley et al. alone.
In regard to claim 16, Whiteley et al., as applied to claim 15 above, discloses all the limitations of this claim, except for at least one of a swivel providing rotational freedom between the elongated flexible member and the downhole toolstring, a release tool for disconnecting a portion of the downhole toolstring, a tension and compression sensor adapted for measuring forces along the device longitudinal central axis, an orientation device for rotating and orientating the collecting device around the device longitudinal central axis, and a propulsion device for providing a propulsive force. Whiteley et al. in another embodiment, disclose a swivel providing rotational freedom between an elongated flexible member and a downhole tool string (82, col. 8, lines 38-41). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the toolstring of the embodiment of fig 3 of Whiteley et al. with a swivel, as in the embodiment of fig 12, in order to provide flexure and articulation of the tubing string as it is run through deviated sections (as in Whiteley et al. col. 8, lines 38-41).
In regard to claim 22, Whiteley et al. disclose a downhole toolstring for collecting debris within a wellbore, the downhole toolstring comprising: a collecting device comprising: a leading portion (16 right end as in fig 3), a trailing portion (16 left end as connected with 22), a wall (16) connecting the leading portion to the trailing portion; a collecting chamber (34U) on an inside of the wall, an inlet at the leading portion (with slots as within 16, col. 5, lines 67+), an outlet at the trailing portion (at 46 fig 4 as leading to 22 in fig 3), and an elongated filter (S), the collecting device forms a device longitudinal central axis between the leading portion and the trailing portion; the elongated filter extends along the device longitudinal central axis in an offset position from the device longitudinal central axis and forms a first end portion and a second end portion (as in figs 3, 4, 6); the second end portion is positioned closest to the inlet; the elongated filter forms a retentate side (outside of S) and a permeate side (inside of S); and the permeate side of the elongated filter being fluidly connected with the outlet (as in fig 4). Whiteley et al. in this embodiment do not disclose at least one of a swivel providing rotational freedom between the elongated flexible member and the downhole toolstring, a release tool for disconnecting a portion of the downhole toolstring, a tension and compression sensor adapted for measuring forces along the device longitudinal central axis, an orientation device for rotating and orientating the collecting device around the device longitudinal central axis, and a propulsion device for providing a propulsive force and the orientation device being configured to be controlled by an operator via the elongated flexible member or to autonomously orient the collecting device to a predetermined orientation around the device longitudinal central axis. Whiteley et al. in another embodiment, disclose a swivel providing rotational freedom between an elongated flexible member and a downhole tool string (82, col. 8, lines 38-41). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the toolstring of the embodiment of fig 3 of Whiteley et al. with a swivel, as in the embodiment of fig 12, in order to provide flexure and articulation of the tubing string as it is run through deviated sections (as in Whiteley et al. col. 8, lines 38-41).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Whiteley et al., as applied to claim 16, in view of Toge et al.
In regard to claim 17, Whiteley et al. discloses all the limitations of this claim, as applied to claim 16, above except for the downhole toolstring includes the propulsion device and the propulsion device is at least one of a wireline operated tractor and a wireline operated stroker.
Toge et al. disclose a collection device including a propulsion device, wherein the propulsion device is at least one of a wireline operated tractor (col. 2, lines 36-45) and a wireline operated stroker. It would have been obvious to one of ordinary skill in the art before the time of effective filing to substitute the placement means of the toolstring of Whiteley et al. with the tractor as taught by Toge et al. since simple substitution of one known element for another to obtain predictable results is considered obvious to one of ordinary skill.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Whiteley et al., as applied to claim 16 in view of Hall (US 7,866,384).
In regard to claim 18, Whiteley et al., as applied to claim 16 above, discloses all the limitations of this claim, except for wherein the downhole device includes the orientation device is configured to be controlled by an operator via the elongated flexible member, or to autonomously orient the collecting device to a predetermined orientation around the device longitudinal central axis. In a similar field of endeavor, Hall discloses a downhole device includes an orientation device and is configured to be controlled by an operator via the elongated flexible member (col. 1, lines 55-56), or to autonomously orient the collecting device to a predetermined orientation around the device longitudinal central axis. It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the toolstring of Whiteley et al., with an orientation device, as taught by Hall, in order to more precisely orient the device downhole as desired.
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, 3-6 and 14-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7 and 23 of copending Application No. 19/173,267 (hereinafter ‘267). Although the claims at issue are not identical, they are not patentably distinct from each other because, e.g., instant claim 1 is generic to all that is recited in claim 6 of ‘267. In other words, claim 6 of ‘267 fully encompasses the subject matter of claim 1 and therefore anticipates claim 1. Since claim 1 is anticipated by claim 6 of the ‘267, it is not patentably distinct from claim 6. Thus the invention of claim 6 of ‘267 is in effect a “species” of the “generic” invention of claim 1. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 1 is anticipated (fully encompassed) by claim 6 of ‘267, claim 1 is not patentably distinct from claim 6, regardless of any additional subject matter present in claim 6. Claims 3-6, and 14-22 also appear generally encompassed by claims 6-7 and 23.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/D. ANDREWS/Primary Examiner, Art Unit 3672
9/29/2026
