DETAILED ACTION
This communication is a non-final office action on the merits and in response to amendments filed on 4/23/2026. All currently pending claims have been considered below. 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 Amendments & Arguments
Applicant correctly identifies independent claim 23 having not been previously addressed. The examiner apologizes for this omission & respectfully presents a rejection thereof below. As this was not necessitated by amendment, this action is made non-final.
The amendments to claim 1 & 16 are sufficient to obviate the objections thereto. The amendments to claim 8 are sufficient obviate the 112(b) rejection thereof.
Regarding the 112(b) rejection of claim 11, Applicant argues "that the term 'full-bore' is properly defined in ¶ [0126]" along with citing a quote therefrom. While it is Applicants’ right to be their own lexicographer, an explicit recitation in line with MPEP §2111.01 subsection IV requiring a specific interpretation of the phrase “full-bore” is simply not present. In other words, Applicant has not "defined" "full-bore" as they currently argue. Rather, Applicant extensively disclaims any limiting nature of the specification on the claims in as-filed ¶s [0030], [0083], & [00131]. Applicant evidently understands this lexicography standard, because they use "as used herein" language in as-filed ¶ [00129], which is conspicuously used to only broadening effect (discussed more in the 102 rejection discussed below), again in contrast to the narrowness of their arguments. Present ¶ [00129] even says "the terms 'including', 'having', 'such as', 'for example', 'e.g.', and any similar terms are not intended to limit the disclosure, and may be interpreted as being followed by the words 'without limitation'." Applicant's present ¶ 126 uses "[f]or example" to start same sentence they cite as "defining" a term in the claims.
Further, even with improperly importing Applicant's narrow interpretation of "full-bore" into the claims, such a mapping is indefinite in itself, as the "tubing string that is coupled to the TAC" (and thus the relative bore size between the string and TAC) is not actually required by claim 11. Therefore, Applicant is attempting to import tubing string \limitations into the claims from the specification (the tubing string itself and the relative bore sizes between the tubing and TAC) through arguments rather than reciting the limitations in the claim. This is improper per MPEP 2111.01 and Applicant's own stated intent in ¶s 30, 83, & 131.
Finally, Applicant's arguments are simply not responsive to the second issue in the 112(b) rejection: Claim 11, by virtue of depending from claim 1, recites both "a mandrel that defines an internal channel" and "wherein the mandrel comprises full-bore mandrel". As stated on page 3 of the prior action, "[i]s the 'bore' of claim 11 different than the 'internal channel' of claim 1? Or are they the same feature redundantly recited with differing nomenclature." Applicant simply does not respond to this issue. The examiner respectfully maintains the 112(b) rejection of claim 11.
Regarding the 102 rejection over US 2018/0355689 (Bringham), Applicant's arguments have been fully considered but are respectfully not persuasive. Applicant argues that drawing the present "first" and "second cone[s]" to a respective one of the plurality of "cone pieces 17" of Bringham is improper, saying "At best, cone pieces 17 are mere pieces of a cone, not a cone itself, and a person of skill in the art would not consider any of the cone pieces 17 to be either of the "first cone" or the "second cone." Each cone piece is a block with a single angled side and therefore a person of ordinary skill in the art would necessarily find that cone pieces 17 could not qualify as a cone. Moreover, by definition, a "piece" is merely a portion of an object and, without more, cannot be considered the same as the whole object" (top of page 11 of the as-filed remarks).
The examiner initially notes that the presently disclosed "cones" ("first cone 30" - figs 4A-4E; "second cone 35" - figs 5A-5C of the present specification) both have numerous flats, slots, grooves, protrusions, and non-conical shapes that would, by Applicant's present position, arguably fail the standard they assert should apply to the prior art. Present figures 4E & 5A clearly shows significant planar & non-conical surfaces on "cone 30" & "cone 35". The arguments attempt to exclude such surfaces with respect to the prior art while clearly allowing them in the present case. Therefore the examiner respectfully asserts that if element 35 in present figure 5A (reproduced below) can reasonably be called a "cone" despite being clearly far more "cylindrical", and with all the clearly non-conical surfaces thereon, the same is reasonably true of the prior art under the broadest reasonable interpretation. There is, arguably, no "cone" in either present figures 4 & 5 at the narrowness Applicant present argues, but rather pieces with sloping surfaces, in the same manner they argue against the prior art. Present features 100 in fig 4B & 105 in fig 5C are not "conical", but rather are "frustoconical", and therefore only defines part of a cone. Applicant disparages the prior art element as "not a cone itself". The examiner responds with noting that figs 4 & 5 are not "cones" either in the narrowness Applicant argues against the prior art. A frustoconical surface is only part of a "cone" which, per Applicant's present arguments, is
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not a "cone".
Broadness is a two-way street, and Applicant clearly allows a substantial amount of broadness for themselves and the "cone" nomenclature in present claims relative to the actual structure of the "cone 30 / 35", but argues for only a narrow interpretation of "cone" in the prior art. In other words, the examiner respectfully asserts that if present figure 5A can be a "cone" at the level of broadness currently claimed, when the disclosed structure has zero truly "conical" surfaces thereon (but rather merely pieces with slopes / tapers), the same is true of the examiner's mapping for the prior art. Features 100 & 105 are only "frustoconical" at best.
Finally, Applicant's disclosure expressly defines the "singular forms… and other singular references include plural referents [sic, "references"], and plural references include the singular" (as-filed ¶ [00129]). Therefore, regarding Applicant's arguments about "cone pieces 17 are mere pieces of a cone, not a cone itself", the prior art clearly teaches three of 17 spaced about the circumference (fig 12) in the same manner as the present case (present figures 4D & 5D). The examiner is merely using Applicant's "as used herein" lexicography definition for singular and plural, and Applicant argues against it in contrast to their own specification. The present "cones" are not circumferentially / truly conical either, but rather merely have cone-like pieces, and the specification explicitly describes the examiner's mapping as encompassing the circumferentially arranged "pieces 17", even if the examiner used singular phrasing. This is Applicant's own "as used herein" lexicography definition.
The claims are worded broadly on their own. The specification further intentionally and expressly broadens the interpretations of the claims. And the examiner has interpreted them accordingly. But Applicant argues narrowly, attempting to improperly narrow the claims through arguments rather than limitations. And again, Applicant expressly disclaims such narrowing in as-filed ¶s 30, 83, & 131.
The examiner respectfully maintains the prior art rejections.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the present "cones" must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Per Applicant's present arguments and the above discussion, the examiner respectfully holds that the present figures do not reasonably disclose a "cone" commensurate with the structure they apparently regard as being required by the claims. While present figures 4A-4E purport to show "cone 30", element 30 is, on its face, not conical (figs 4D & 4E), and surface 100 thereon is merely frustoconical, which is structurally distinct from "a cone".
Similarly, present figures 5A-5C purport to show "cone 35" but the element is clearly cylindrical (fig 5C), not conical. And, similar to figs 4A-4E, surface 105 thereon is merely "frustoconical", which is structurally distinct from "a cone".
The drawings are objected to because element number 105 in fig 5B is not used in the specification.
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 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.
Claims 1-23 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Independent claims 1, 12, 17, & 23 all recite a "first cone" and a "second cone". While the present specification purports to disclose "cone 30" and "cone 35", these structures are not conical, as discussed above. Surface 100 in fig 4B is "frustoconical" rather than "a cone" and the same is similarly true of surface 105 in fig 5B. "Frustoconical" is less than "a cone". And both 30 & 35 are clearly shown as having numerous non-conical surfaces features thereon. Element 35 is clearly cylindrical, for example, not conical. Cones have points at which sloping sides meet. There is no such structure in present figures 4-5.
Therefore, the examiner is respectfully obliged to hold Applicant's use of "cone" as indefinite in light of the specification because the disclosed elements are not conical. Put simply, where are the "cones" in figs 4-5? Rather Applicant appears to be using "cone" is some non-traditional & broad manner in light of the specification. If Applicant is using "cone" in a more abstract sense (i.e. "anything that expands something else"), and does not regard it as literally requiring a fully conical surface, this conflicts with how they argue against the prior art rejections, thus further illustrating the lack of clarity of the claim limitation in light of the specification. Each dependent claim depends from one of the above independent claims.
Claim 11 recites "the mandrel comprises a full-bore mandrel". As similarly discussed in the Response section above, the structural metes and bounds of this are unclear in light of the specification. This feature is only discussed in as-filed ¶ 126, and there in the same language as claimed. It is unclear how or if this further limits parent claim 1, which already requires "a mandrel that defines an internal channel". Is the "bore" of claim 11 different than the "internal channel" of claim 1? Or are they the same feature redundantly recited with differing nomenclature? Applicant disclaims any limiting nature of the specification on the claims in as-filed ¶s [0030], [0083], & [00131].
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, 8, & 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2018/0355689 (Bringham).
Independent claim 1. The examiner initially notes that Bringham discloses both a hydraulically set embodiment (figs 1-9A, ¶s 13-27, 82 & 83) and a rotationally set embodiment (figs 10-15A, ¶s 28-38, 82, & 85). Less of the features are numerically identified in figs 10-15A relative to figs 1-9A. When necessary, the examiner cites element numbers from figs 1-9A that are clearly shown in figs 10-15A, but which are not numbered in figs 10-15A.
Bringham discloses a tubing anchor catcher ("The anchor, which also serves as a catcher" - ¶ 80) comprising:
a mandrel ("inner mandrel 12" fig 10) that defines an internal channel (clearly shown in figs 11A-13A, inter alia);
a first cone (left "cone pieces 17" - clearly shown in figs 1-3, 8B [not individually numbered], 10, 11A-15A; this is discussed in more detail in the Response section above, respectfully not repeated again here. Applicant's "as used herein" lexicography in as-filed ¶ [00129] includes plural when speaking in the singular and the lexicography in ¶ [00130] allows any number of intervening objects between "connected" elements. For the purposes of the eventual recitation of "a first slip protector" in claim 2, the "first cone" is drawn to the left "cone pieces 17" in combination with their respective "slip protectors 30". There is nothing improper about having relatively moveable elements drawn to the same larger element together. Applicant does this themselves in the present specification in as-filed ¶ [00107] teaches "one or both of the first 30 and second 35 cones… comprise one or more drag springs 45" which are clearly separate from, and movable relative to, elements 30 & 35 as shown in fig 2. In other words, the present case discloses the "cones" 30 & 25 as "comprising" additional elements that fig 2 shows to be movable and separable from 30 & 35);
a second cone (right "cone pieces 17" clearly shown, as cited above. For the purposes of the eventual recitation of "a second slip protector" in claim 3, the "second cone" is drawn to the right "cone pieces 17" in combination with their respective "slip protectors 30");
a cone coupler ("slip cage 19" - ¶ 88 & figs 3 & 10) that extends between the first cone and the second cone (cones 17 are mounted in 19 and 19 extends between 17 / spans the gap between 17 - figs 3, 8A, & 10) and that is configured to lock a rotational movement of the first cone to a rotational movement of the second cone (due to being mounted thereon); and
a slip that is at least partially disposed between the first cone and the second cone ("slip 20" - fig 10 & ¶ 55);
wherein the first cone and the second cone are coupled to the mandrel (fig 10) such that when the mandrel is rotated in a first direction with respect to at least one of the first cone and the second cone ("drag blocks 70" hold the outer assembly stationary relative to the internal setting rotation, as is well understood - ¶ 86; " rotationally set anchors" - ¶ 80; "In rotational embodiments, a J-slot (“Jay”) design may be used for easy setting and releasing with quarter-turn right-hand set, right-hand release... During setting and releasing, a setting mechanism, which may be in the form of a sleeve, moves axially toward a slip cage between a run-in or unset position and a set position" - ¶ 82), the at least one of the first cone and the second cone [are] configured to move to reduce a distance between the first cone and the second cone (transition between figs 11A-13A. "Setting sleeve 16" is attached to "cone 17 at 32 & 33 - ¶ 89. "Setting sleeve 16" attaches to 17 via "thru-slot 49" in "slip cage 19" because 16 is radially inside 19 - ¶s 11 & 89, figs 2, 3, & 10 [also shown in figs 11A-13A without 16 & 19 being numbered]. Axial movement of 16 brings the cones closer together: transition between figs 11A-13A) to force the slip to move laterally from the tubing anchor catcher (transition between figs 11A-13A), and
wherein the tubing anchor catcher lacks a cylindrical outer housing that extends around a circumference of, and that receives, the first cone and the second cone (no element "that extends around a circumference of, and that receives, the first and second cones" is taught).
2. The tubing anchor catcher of claim 1, wherein the first cone comprises a first slip protector that is coupled to and that extends laterally from the first cone (The raised "slip protector 30" on the left - ¶s 59 & 84, figs 3 & 10. This can be included as part of the "first cone" as there is nothing in the claims to exclude this interpretation, nor is relative movement between the cone and slip protector excluded).
3. The tubing anchor catcher of claim 1, wherein the second cone comprises a second slip protector that is coupled to and extends laterally from the second cone (the raised "slip protector 30" on the right - ¶s 59 & 84 - as similarly described for claim 2 above).
8. The tubing anchor catcher of claim 1, further comprising a slip retention mechanism ("thru-slot 49" - fig 11A) that is configured to limit a proximal movement of the slip towards a proximal end of the mandrel (one end of the channel) and a distal movement of the slip towards a distal end of the mandrel (the other end of the channel) where the tubing anchor catcher lacks the cylindrical outer housing (no outer housing is taught).
11. The tubing anchor catcher of claim 1, wherein the mandrel comprises a full-bore mandrel (fig 11A; the bore passes entirely through the mandrel and has no constrictions therein).
Independent claim 12. A tubing anchor catcher ("The anchor, which also serves as a catcher" - ¶ 80) comprising:
a mandrel ("inner mandrel 12" fig 10) that defines an internal channel (clearly shown in figs 11A-13A, inter alia);
a first cone (left "cone pieces 17" - clearly shown in figs 1-3, 8B [not individually numbered], 10, 11A-15A; this is discussed in more detail in the Response section above, respectfully not repeated again here. Applicant's "as used herein" lexicography in as-filed ¶ [00129] includes plural when speaking in the singular and the lexicography in ¶ [00130] allows any number of intervening objects between "connected" elements. For the purposes of the eventual recitation of "a first slip protector", the "first cone" is drawn to the left "cone pieces 17" in combination with their respective "slip protectors 30". There is nothing improper about having relatively moveable elements drawn to the same larger element together. Applicant does this themselves in the present specification in as-filed ¶ [00107] teaches "one or both of the first 30 and second 35 cones… comprise one or more drag springs 45" which are clearly separate from, and movable relative to, elements 30 & 35 as shown in fig 2. In other words, the present case discloses the "cones" 30 & 25 as "comprising" additional elements that fig 2 shows to be movable and separable from 30 & 35);
a second cone (right "cone pieces 17" clearly shown, as cited above);
a cone coupler ("slip cage 19" - ¶ 88 & figs 3 & 10) that extends between the first cone and the second cone (cones 17 are mounted in 19 and 19 extends between 17 / spans the gap between 17 - figs 3, 8A, & 10) and that locks a rotational movement of the first cone to a rotational movement of the second cone (due to being mounted thereon); and
a slip that is at least partially disposed between the first cone and the second cone ("slip 20" - fig 10 & ¶ 55);
wherein the first cone and the second cone are coupled to the mandrel (fig 10) such that when the mandrel is rotated in a first direction with respect to at least one of the first cone and the second cone ("drag blocks 70" hold the outer assembly stationary relative to the internal setting rotation, as is well understood - ¶ 86; " rotationally set anchors" - ¶ 80; "In rotational embodiments, a J-slot (“Jay”) design may be used for easy setting and releasing with quarter-turn right-hand set, right-hand release... During setting and releasing, a setting mechanism, which may be in the form of a sleeve, moves axially toward a slip cage between a run-in or unset position and a set position" - ¶ 82), the at least one of the first cone and the second cone moves to reduce a distance between the first cone and the second cone (transition between figs 11A-13A. "Setting sleeve 16" is attached to "cone 17 at 32 & 33 - ¶ 89. "Setting sleeve 16" attaches to 17 via "thru-slot 49" in "slip cage 19" because 16 is radially inside 19 - ¶s 11 & 89, figs 2, 3, & 10 [also shown in figs 11A-13A without 16 & 19 being numbered]. Axial movement of 16 brings the cones closer together: transition between figs 11A-13A) to force the slip to move laterally from the tubing anchor catcher (transition between figs 11A-13A), and wherein the first cone comprises a first slip protector that is coupled to and that extends laterally from the first cone (the raised "slip protector 30" on the left - ¶s 59 & 84, figs 3 & 10. This can be included as part of the "first cone" as there is nothing in the claims to exclude this interpretation, nor is relative movement between the cone and slip protector excluded).
13. The tubing anchor catcher of claim 12, wherein the tubing anchor catcher lacks a cylindrical outer housing that extends around a circumference of the first cone and a circumference of the second cone and that receives the first cone and the second cone (no element "that extends around a circumference of, and that receives, the first and second cones" is taught).
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) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0355689 (Bringham) in view of US 5,038,859 (Lynde).
Independent claim 23. Bringham discloses a tubing anchor catcher ("The anchor, which also serves as a catcher" - ¶ 80) comprising:
a mandrel ("inner mandrel 12" fig 10) that defines an internal channel (clearly shown in figs 11A-13A, inter alia);
a first cone (left "cone pieces 17" - clearly shown in figs 1-3, 8B [not individually numbered], 10, 11A-15A; this is discussed in more detail in the Response section above, respectfully not repeated again here. Applicant's "as used herein" lexicography in as-filed ¶ [00129] includes plural when speaking in the singular and the lexicography in ¶ [00130] allows any number of intervening objects between "connected" elements), with a slip protector being coupled thereto (the raised "slip protector 30" on the left - ¶s 59 & 84, figs 3 & 10. This can be included as part of the "first cone" as there is nothing in the claims to exclude this interpretation, nor is relative movement between the cone and slip protector excluded. There is nothing improper about having relatively moveable elements drawn to the same larger element together. Applicant does this themselves in the present specification in as-filed ¶ [00107] teaches "one or both of the first 30 and second 35 cones… comprise one or more drag springs 45" which are clearly separate from, and movable relative to, elements 30 & 35 as shown in fig 2. In other words, the present case discloses the "cones" 30 & 25 as "comprising" additional elements that fig 2 shows to be movable and separable from 30 & 35) and extending laterally from the first cone (fig 1 shows that "slip protector 30" extends to the left and right of each "cone piece 17" - i.e. "extending laterally");
a second cone (right "cone pieces 17" clearly shown, as cited above);
a cone coupler ("slip cage 19" - ¶ 88 & figs 3 & 10) that extends between the first cone and the second cone (cones 17 are mounted in 19 and 19 extends between 17 / spans the gap between 17 - figs 3, 8A, & 10) and that locks a rotational movement of the first cone to a rotational movement of the second cone (due to being mounted thereon); and
a slip being at least partially disposed between the first cone and the second cone ("slip 20" - fig 10 & ¶ 55);
wherein the first cone and the second cone are coupled to the mandrel (fig 10) such that when the mandrel is rotated in a first direction with respect to at least one of the first cone and the second cone ("drag blocks 70" hold the outer assembly stationary relative to the internal setting rotation, as is well understood - ¶ 86; " rotationally set anchors" - ¶ 80; "In rotational embodiments, a J-slot (“Jay”) design may be used for easy setting and releasing with quarter-turn right-hand set, right-hand release... During setting and releasing, a setting mechanism, which may be in the form of a sleeve, moves axially toward a slip cage between a run-in or unset position and a set position" - ¶ 82), the at least one of the first cone and the second cone [are] configured to move to reduce a distance between the first cone and the second cone (transition between figs 11A-13A. "Setting sleeve 16" is attached to "cone 17 at 32 & 33 - ¶ 89. "Setting sleeve 16" attaches to 17 via "thru-slot 49" in "slip cage 19" because 16 is radially inside 19 - ¶s 11 & 89, figs 2, 3, & 10 [also shown in figs 11A-13A without 16 & 19 being numbered]. Axial movement of 16 brings the cones closer together: transition between figs 11A-13A) to force the slip to move laterally from the tubing anchor catcher (transition between figs 11A-13A), and
wherein the tubing anchor catcher lacks a cylindrical outer housing that extends around a circumference of, and that receives, the first cone and the second cone (no element "that extends around a circumference of, and that receives, the first and second cones" is taught).
Bringham discloses that the tubing anchor may be extracted by shearing certain elements with an upward pulling force (¶s 82 & 92) rather than cutting the slips and slip protector as currently claimed.
However Lynde discloses a method for extracting downhole tools (title, abstract) that have become jammed downhole (col 1:16-26) comprising cutting ("milling") them out (2nd full ¶ of col 2 & the ¶ bridging cols 4 & 5). This is also taught as being done on tools with slips ("slips 15" - fig 1) Milling out the tool taught by Bringham as taught by Lynde will naturally result in "cutting the slip protector of the first cone" and "cutting the slip" of Bringham. Fig 1 of Lynde clearly shows the milling tool cutting though the tool to restore the full diameter of the wellbore. This forms "turnings or chips for removal from the well by drilling fluid" (second ¶ of col 1).
Therefore it would have been obvious to PHOSITA at the time of filing to cut the tool taught by Bringham as taught by Lynde. While Bringham discloses a retrieval mechanism (as cited above), such mechanisms are not fool proof and tools can still be caught and jammed in the wellbore. Further, the anchor taught by Bringham could become jammed before being set, and therefore could not be conventionally removed. Finally, the cutting / milling of stuck or jammed tools from the wellbore is replete and extremely well understood.
Allowable Subject Matter
Claims 4-7, 9, 10, & 14-16 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 17-22 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blake Michener whose telephone number is (571)270-5736. The examiner can normally be reached Approximately 9:00am to 6:00pm CT.
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/BLAKE MICHENER/
Primary Examiner, Art Unit 3676
Prosecution Insights