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 .
Election/Restrictions
Applicant’s election without traverse of Species III in the reply filed on May 5, 2026 is acknowledged. As a note, in the Office action mailed March 2, 2026, Species I should have been defined as “A sealing/anchoring subassembly comprising a[[n]] tapered integrated locker ring shown in Figs. 8A-8D.”
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-5, 16 and 18 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-4 and 12 of prior U.S. Patent No. 12,305,458. This is a statutory double patenting rejection.
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 17, 19-21 and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-16 and 24 of U.S. Patent No. 12,305,458. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of pending claims 17, 19-21 and 32 are already required by patented claims 13-16 and 24.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 (or as subject to pre-AIA 35 USC 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 USC 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.
Claims 1, 16 and 32 are rejected under 35 USC 102(a)(1) as being anticipated by Ingram (US 10,590,732 B2).
Referring to claims 1 and 16: Ingram teaches a well system, comprising:
a wellbore located in a subterranean formation (FIG. 2); and
a sealing/anchoring assembly 50 positioned in the wellbore, the sealing/anchoring assembly including:
a mandrel 110;
a sealing/anchoring element 200 positioned about the mandrel, the sealing/anchoring element configured to move between a radially retracted state and a radially expanded state; and
a ratch latch body coupled to the sealing/anchoring element, the ratch latch body configured to hold the sealing/anchoring element in the radially expanded state, the ratch latch body including:
a stroke sleeve 210 having a stroke sleeve outer diameter (ODSS) and a stroke sleeve inner diameter (IDSS), the stroke sleeve inner diameter (IDSS) having a plurality of stroke sleeve teeth 214 disposed thereon; and
a base 170 having a base outer diameter (ODB) and a base inner diameter (IDB), the base outer diameter (ODB) having a plurality of base teeth 174 disposed thereon, the stroke sleeve teeth and the base teeth configured to directly ratchet along one another to hold the sealing/anchoring element in the radially expanded state (column 10, lines 29-39; column 11, lines 26-45).
Referring to claim 32: Ingram teaches a method, comprising:
positioning a sealing/anchoring assembly 50 within a wellbore located in a subterranean formation (FIG. 2), the sealing/anchoring assembly including:
a mandrel 110;
a sealing/anchoring element 200 positioned about the mandrel, the sealing/anchoring element configured to move between a radially retracted state and a radially expanded state; and
a ratch latch body coupled to the sealing/anchoring element, the ratch latch body configured to hold the sealing/anchoring element in the radially expanded state, the ratch latch body including:
a stroke sleeve 210 having a stroke sleeve outer diameter (ODSS) and a stroke sleeve inner diameter (IDSS), the stroke sleeve inner diameter (IDSS) having a plurality of stroke sleeve teeth 214 disposed thereon; and
a base 170 having a base outer diameter (ODB) and a base inner diameter (IDB), the base outer diameter (ODB) having a plurality of base teeth 174 disposed thereon, the stroke sleeve teeth and the base teeth configured to directly ratchet along one another to hold the sealing/anchoring element in the radially expanded state; and
actuating the stroke sleeve or base to move the sealing/anchoring element from the radially retracted state to the radially expanded state (column 10, lines 29-39; column 11, lines 26-45).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 USC 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 USC 102(b)(2)(C) for any potential 35 USC 102(a)(2) prior art against the later invention.
Claim 17 is rejected under 35 USC 103 as being unpatentable over Ingram and in view of McNair et al. (US 5,311,936) (“McNair”).
Referring to claim 17: While Ingram teaches a main wellbore, Ingram does not specifically teach a lateral wellbore extending from the main wellbore. McNair teaches a well system comprising a wellbore 66 located in a subterranean formation; and a sealing/anchoring assembly 72 positioned in the wellbore (FIG. 4A), wherein the wellbore is a main wellbore, and further including a lateral wellbore 70 extending from the main wellbore, the sealing/anchoring assembly positioned proximate an intersection between the main wellbore and the lateral wellbore. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system taught by Ingram to include a lateral wellbore as taught by McNair with a reasonable expectation of success since such a setup is very well known in the art to help reach, treat, produce from, etc., a larger area within the downhole formation, without having to drill multiple wellbores from the surface.
Allowable Subject Matter
Claims 13, 14, 29 and 30 are 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ghamdi et al. (US 2025/0369317 A1) teaches a seal assembly 100 in a wellbore 110, where the assembly comprises a band 175, 180 around the assembly [0036], [0037].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE A LOIKITH whose telephone number is (571)270-7822. The examiner can normally be reached M-F 9am-5:30pm.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Catherine Loikith/Primary Examiner, Art Unit 3674
10 June 2026
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