DETAILED 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 .
Response to Arguments
Applicant's arguments filed 6/8/2026 have been fully considered but they are not persuasive.
Applicant has argued:
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The specification as filed page 28, lines 9-12 state:
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The specification as filed page 29, lines 10-23 state:
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The sections cited by Applicant do not describe the structure of the compliance tool, only its function. For example the citation of page 28, lines 9-12 describes simply spacing the tractor and the vibratory tool a “substantial distance” from each other to provide compliance in the tubular string. It is unclear if Applicant considers the spacing itself the compliance tool. However, the specification also states “A compliance tool is connected between the tractor and the vibratory tool. The compliance tool may allow for lengthening and compression of the tubular string between the tractor and the vibratory tool (e.g., permitting a length of the tubular string between the vibratory tool and the tractor to vary).” Based on the cited sections the compliance tool has no specific structure and is / is not an additional component added to the tool string.
The next cited section, page 29, lines 10-23, describes the compliance tool as similar to the vibration enhancing tools of Fig. 14-15. “The compliance tool in this example may be similar to the FIG. 14 or FIG. 15 vibration enhancing tool. In the compliance tool, the inner mandrel and outer housing can be provided with suitable end connections for connecting the tool in the tubular string. However, other types of compliance tools may be used in other examples.” At most, the specification describes what a compliance tool is not (i.e. a compliance tool is not the specific structure depicted in Figs. 14-15) and the compliance tool has end connections to connect it to the string.
The specification does not describe how similar a compliance tool is to the tools of Fig. 14-15, or describe what structural modifications are required to convert the vibration enhancing tools into compliance tools.
Applicant has argued:
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Applicant has not specifically pointed out the structure of the compliance tool. Applicant has defined compliance, but has not defined/described the structure of a “compliance tool”.
The specification does not directly describe the structure of the compliance tool. The specification only describes that the compliance tool by the desired outcome of using the compliance tool or that the compliance tool is similar to other tools (e.g. The compliance tool 128 in this example may be similar to the FIG. 14 or FIG. 15 vibration enhancing tool 100. In the compliance tool 128, the inner mandrel 102 and outer housing 104 can be provided with suitable end connections for connecting the tool in the tubular string 12). This description does not describe the structure required by the compliance tool. It is unclear if the compliance tool needs all components of the structure shown in Fig. 14-15 plus additional unknown components, only part of the structure shown, or only part of the structure shown with additional unknown and unshown elements. The only structure of the compliance tool described in the specification, noted prior office actions, is the compliance tool has threads similar to the spring sub depicted in Fig. 14.
Additionally, in the prior office actions, the examiner noted “based on the description in the specification defining compliance tool as similar to the structure depicted in the figures, the claim appears to form an indirect omnibus claim. See MPEP 2173.05 (r).” which was not addressed by applicant’s arguments.
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 1-4, 7, 9-13, 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.
Claims 1-4, 7, 9-13 include, or depend from claims that include, the limitation(s): "a compliance tool” and/or “an axially-compliant compliance tool”. It is unclear what a compliance tool is. It is unclear if a vibration tool is a compliant tool. The specification as filed describes compliant / compliance / compliance tool as a mechanically compliant spring sub or vibration enhancing tool as functional alternatives and “The vibration enhancing tool provides for mechanical compliance between the injector assembly and the wellhead.” Based on the specification, it is unclear if a vibration enhancing tool is considered a compliance tool. Additionally, the vibration enhancing tool referenced is not downhole as required by the claims.
The specification states “The downhole tractor may be spaced apart from the downhole vibratory tool a distance sufficient to provide compliance in the tubular string between the downhole tractor and the downhole vibratory tool. A compliance tool may be connected in the tubular string between the downhole tractor and the downhole vibratory tool. The compliance tool permits a length of the tubular string between the downhole tractor and the downhole vibratory tool to vary.” and “Preferably the downhole tractor and vibratory tool are not connected in close proximity to each other in the tubular string… This substantial distance provides compliance in the tubular string between the tractor and the vibratory tool.” It is unclear what compliance in the string refers to.
The specification states “A compliance tool is connected between the tractor and the vibratory tool. The compliance tool may allow for lengthening and compression of the tubular string between the tractor and the vibratory tool (e.g., permitting a length of the tubular string between the vibratory tool and the tractor to vary).” And “The compliance tool in this example may be similar to the FIG. 14 or FIG. 15 vibration enhancing tool. In the compliance tool, the inner mandrel and outer housing can be provided with suitable end connections for connecting the tool in the tubular string. However, other types of compliance tools may be used in other examples.”
It is unclear what structure the compliance tool has; the specification describes the compliance tool in terms of optional functionality without structural description. Fig. 14 and Fig. 15 are described as vibration enhancing tools. The specification describes a compliance tool as similar to the structure depicted in Fig. 14 & Fig. 15. It is unclear what specific structure is considered similar to Fig. 14 & Fig. 15. The examiner notes, based on the description in the specification defining compliance tool as similar to the structure depicted in the figures, the claim appears to form an indirect omnibus claim. See MPEP 2173.05 (r).
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). Here, Applicant used the words “compliance” and “tool” as a single term to describe a structural component, a “compliance tool”. However, the specification does not define the structure of the compliance tool and the specification does not provide a definition of what the compliance tool is. Applicant has defined compliance in the submitted arguments, citing Merriam Webster Dictionary:
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However, it remains unclear what the structure of a compliance tool is. Based on the specification as filed, a compliance tool may not actually be a tool but a spacing pattern between other downhole tools, or a compliance tool may be a distinct structural, yet undefined and structurally undescribed, component that is attached to the tool string.
The examiner is unable to determine what structure is required by the “compliance tool” and/or “axially-compliant compliance tool”.
Clarification and/or correction are required. No new matter may be entered. The claims will be read and examined as best understood.
Prior Art
The Examiner notes that no art rejection has been made for claims 1-4, 7, 9-13, at this time as the prior art of record fails to disclose the claims as written. The Examiner retains the right to reinstate the art rejection made in the previous Office Action or make a new art-based rejection on these claims once the 112 (a) and/or 112 (b) rejection(s) have been resolved by the Applicant.
Allowable Subject Matter
Claim 14-16, 18-23 are allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David Carroll whose telephone number is (571)272-4808. The examiner can normally be reached M-F 2:00-10:00 PM EDT.
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, Doug Hutton can be reached at (571) 272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/David Carroll/Primary Examiner, Art Unit 3674
Prosecution Insights