DETAILED ACTION
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 30 March 2026 have been fully considered but they are not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a smaller assembly is first used to run and position a whipstock assembly and thereafter is axially re-formed into a combination milling/drilling structure with a larger bit assembly) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claims merely require one of the smaller assembly or larger bit assembly to be removable coupled to the whipstock assembly and the at least one of the smaller assembly or larger bit assembly is configured to decouple from the whipstock assembly and allow the movement of the smaller assembly axially relative to the larger bit assembly to form a combine bit assembly for milling/drilling. The term coupled/decouple is extremely broad. The claim does not require direct coupling to the smaller assembly. Furthermore, the claim does not require the actual acts of the movement of the small assembly relative to the large bit assembly after release from the whipstock since the claims merely require the two part running and drilling tool to be “configured” to perform the function and the combination of references below is capable of performing the function.
The double patenting rejections are withdrawn due to the filing of a terminal disclaimer and claim amendments.
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.
Claims 1-2, 4-7, 12-13, 15-18, 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Haugen (US 2001/040054) in view of Menezes (US 2008/0173481).
With respect to claim 1: Haugen discloses a two part drilling and running tool, comprising:
a conveyance (15);
a bit assembly (20) coupled to the end of the conveyance (¶ [0037]; Fig. 4A), wherein the bit assembly is configured to be removably coupled to a whipstock assembly (30; ¶ [0037]) and function as a running tool for positioning the whipstock assembly within a main wellbore located in a subterranean formation (¶ [0037]; Figs. 4A, 4B), and further wherein after running the whipstock assembly within the main wellbore to a desired depth, the bit assembly is configured to decouple from the whipstock assembly and allow the bit assembly to mill casing or drill the subterranean formation (¶ [0037]; Figs. 4A, 4B).
Haugen does not disclose the bit assembly is a smaller assembly coupled to an end of the conveyance and a larger bit assembly slidably coupled to the conveyance, and wherein the bit assembly is configured to allow the smaller assembly to axially translate relative to the larger bit assembly to form a combined bit assembly.
Menezes teaches a bit assembly is a smaller assembly (203) coupled to an end of a conveyance (201; Fig. 7) and a larger bit assembly (14) slidably coupled to the conveyance (Figs. 2-8), and wherein the bit assembly is configured to allow the smaller assembly to axially translate relative to the larger bit assembly to form a combined bit assembly (¶ [0044-47]; Figs. 4-8). It would be obvious to one having ordinary skill in the art before the effective filing date to substitute the bit assembly of Menezes for the bit assembly of Haugen with a reasonable expectation of success since doing so would perform the same predictable result of allowing a bit to drill into a subterranean formation.
With respect to claim 2: Menezes from the combination of Haugen and Menezes further teaches the smaller assembly is a smaller bit assembly (203 has a cutting surface like 205; Figs. 6-8).
With respect to claim 4: Menezes from the combination of Haugen and Menezes further teaches the smaller bit assembly is configured to have a run-in-hole position that has the smaller bit assembly spaced apart from the larger bit assembly by a distance (Fig. 2) that is selected to allow the smaller bit assembly to be out of the way during initial normal drilling operations (¶ [0040]; Fig. 3) and then closes the distance to allow the smaller bit assembly to be coupled to the larger bit assembly (Fig. 8). The combination of Haugen and Menezes does not explicitly teach the distance is at least 2 meters.
It would have been obvious to one having ordinary skill in the art at the time of filing, to contrive any number of desirable ranges/values for the distance limitation disclosed by Applicant, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges/value involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
With respect to claim 5: Menezes from the combination of Haugen and Menezes further teaches the smaller bit assembly is configured to have a run-in-hole position that has the smaller bit assembly spaced apart from the larger bit assembly by a distance (Fig. 2) that is selected to allow the smaller bit assembly to be out of the way during initial normal drilling operations (¶ [0040]; Fig. 3) and then closes the distance to allow the smaller bit assembly to be coupled to the larger bit assembly (Fig. 8). The combination of Haugen and Menezes does not explicitly teach the distance is at least 4 meters.
It would have been obvious to one having ordinary skill in the art at the time of filing, to contrive any number of desirable ranges/values for the distance limitation disclosed by Applicant, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges/value involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
With respect to claim 6: Menezes from the combination of Haugen and Menezes further teaches the smaller bit assembly includes one or more first profiles (part that engages with 207; ¶ [0047]; Fig. 8) and the larger bit assembly includes one or more second profiles (207), and further wherein the one or more first profiles are configured to engage with the one or more second profiles to rotationally fix the smaller bit assembly with the larger bit assembly when the two are slidingly engaged together (¶ [0047]; Fig. 8).
With respect to claim 7: Menezes from the combination of Haugen and Menezes further teaches the one or more first profiles are one or more internal profiles (recess that receives 207; ¶ [0047]; Fig. 8) and the one or more second profiles are one or more external profiles (207). The combination of Haugen and Menezes does not teach the reverse where the one or more first profiles are one or more external profiles and the one or more second profiles are one or more external profiles. It would have been obvious to one having ordinary skill in the art at the time of filing to reverse the internal and external profiles, since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955).
With respect to claims 12 and 28: Haugen discloses a well system, comprising:
a main wellbore (10) located within a subterranean formation (Fig. 4A);
a whipstock assembly (30) positioned within the subterranean formation (Fig. 4A); and
a drilling and running tool comprising a conveyance (15) and a bit assembly (20) positioned within the main wellbore (Fig. 4A), wherein the bit assembly is configured to be removably coupled to the whipstock assembly (30; ¶ [0037]) and function as a running tool for positioning the whipstock assembly within a main wellbore located in a subterranean formation (¶ [0037]; Figs. 4A, 4B), and further wherein after running the whipstock assembly within the main wellbore to a desired depth, the bit assembly is configured to decouple from the whipstock assembly and allow the bit assembly to mill casing or drill the subterranean formation (¶ [0037]; Figs. 4A, 4B).
Haugen does not disclose the drilling and running tool is a conveyance; a smaller assembly coupled to an end of the conveyance and a larger bit assembly slidably coupled to the conveyance, and wherein the bit assembly is configured to allow the smaller assembly to axially translate relative to the larger bit assembly to form a combined bit assembly.
Menezes teaches a drilling and running tool is a conveyance (201); a smaller assembly (203) coupled to an end of a conveyance (Fig. 7) and a larger bit assembly (14) slidably coupled to the conveyance (Figs. 2-8), and wherein the bit assembly is configured to allow the smaller assembly to axially translate relative to the larger bit assembly to form a combined bit assembly (¶ [0044-47]; Figs. 4-8). It would be obvious to one having ordinary skill in the art before the effective filing date to substitute the drilling and running tool of Menezes for the drilling and running tool of Haugen with a reasonable expectation of success since doing so would perform the same predictable result of allowing a bit to drill into a subterranean formation.
Haugen further discloses a method for forming a well system, comprising:
forming a main wellbore (10) located within a subterranean formation (Fig. 4A);
positioning a drilling and running tool (15, 20) within the main wellbore (Fig. 4A), the drilling and running tool coupled to a whipstock assembly (30) using a coupling mechanism (25).
With respect to claims 13 and 29: Menezes from the combination of Haugen and Menezes further teaches the smaller assembly is a smaller bit assembly (203 has a cutting surface like 205; Figs. 6-8).
With respect to claim 15: Menezes from the combination of Haugen and Menezes further teaches the smaller bit assembly is configured to have a run-in-hole position that has the smaller bit assembly spaced apart from the larger bit assembly by a distance (Fig. 2) that is selected to allow the smaller bit assembly to be out of the way during initial normal drilling operations (¶ [0040]; Fig. 3) and then closes the distance to allow the smaller bit assembly to be coupled to the larger bit assembly (Fig. 8). The combination of Haugen and Menezes does not explicitly teach the distance is at least 2 meters.
It would have been obvious to one having ordinary skill in the art at the time of filing, to contrive any number of desirable ranges/values for the distance limitation disclosed by Applicant, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges/value involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
With respect to claim 16: Menezes from the combination of Haugen and Menezes further teaches the smaller bit assembly is configured to have a run-in-hole position that has the smaller bit assembly spaced apart from the larger bit assembly by a distance (Fig. 2) that is selected to allow the smaller bit assembly to be out of the way during initial normal drilling operations (¶ [0040]; Fig. 3) and then closes the distance to allow the smaller bit assembly to be coupled to the larger bit assembly (Fig. 8). The combination of Haugen and Menezes does not explicitly teach the distance is at least 4 meters.
It would have been obvious to one having ordinary skill in the art at the time of filing, to contrive any number of desirable ranges/values for the distance limitation disclosed by Applicant, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges/value involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
With respect to claim 17: Menezes from the combination of Haugen and Menezes further teaches the smaller bit assembly includes one or more first profiles (part that engages with 207; ¶ [0047]; Fig. 8) and the larger bit assembly includes one or more second profiles (207), and further wherein the one or more first profiles are configured to engage with the one or more second profiles to rotationally fix the smaller bit assembly with the larger bit assembly when the two are slidingly engaged together (¶ [0047]; Fig. 8).
With respect to claim 18: Menezes from the combination of Haugen and Menezes further teaches the one or more first profiles are one or more internal profiles (recess that receives 207; ¶ [0047]; Fig. 8) and the one or more second profiles are one or more external profiles (207). The combination of Haugen and Menezes does not explicitly teach the reverse where the one or more first profiles are one or more external profiles and the one or more second profiles are one or more external profiles. It would have been obvious to one having ordinary skill in the art at the time of filing to reverse the internal and external profiles, since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955).
With respect to claim 30: The combination of Haugen and Menezes further teaches the smaller bit assembly is coupled to the whipstock assembly using the coupling mechanism since the whipstock is coupled to the entire drilling and running tool as discussed in the rejection of claim 28 above and the claim does not require the whipstock to be directly coupled to the smaller bit assembly by the coupling mechanism.
Claims 8-9 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Haugen and Menezes as applied to claims 2 and 13 above, and further in view of Cronley (US 2015/0361764).
With respect to claims 8 and 19: Menezes from the combination of Haugen and Menezes further teaches connection profiles as discussed in the rejection of claim 6 above. The combination of Haugen and Menezes does not teach the connection profiles are such that the smaller bit assembly includes one of a lock ring profile or a lock ring, and the larger bit assembly includes another of the lock ring or the lock ring profile, the lock ring profile and lock ring configured to engage with one another to slidingly fix the smaller bit assembly with the larger bit assembly when the two are slidingly engaged together. Cronley teaches one part of a downhole tool (54) includes one of a lock ring profile or a lock ring (98), and a second part of a downhole tool (32) includes another of the lock ring or the lock ring profile (100), the lock ring profile and lock ring configured to engage with one another to slidingly fix the first part of the downhole tool with the second part of the downhole tool when the two are slidingly engaged together (¶ [0034]). It would be obvious to one having ordinary skill in the art before the effective filing date to substitute the locking ring configuration of Cronley for the connection profiles of Haugen and Menezes with a reasonable expectation of success since doing so would perform the same predictable result of connecting the smaller bit assembly to the larger bit assembly.
With respect to claims 9 and 20: Cronley from the combination of Haugen, Menezes, and Cronley further teaches the larger bit assembly includes the lock ring profile (100) and the smaller bit assembly includes the lock ring (98). The combination of Haugen, Menezes, and Cronley does not teach the reverse where the smaller bit assembly includes the lock ring profile and the larger bit assembly includes the lock ring. It would have been obvious to one having ordinary skill in the art at the time of filing to reverse the lock ring and lock ring profile, since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955).
Allowable Subject Matter
Claims 3, 10-11, 14, 21-27, and 31-36 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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTYN A HALL whose telephone number is (571)272-8384. The examiner can normally be reached M-F 9:00-5:00.
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/KRISTYN A HALL/Primary Examiner, Art Unit 3672
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