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 .
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.
Claims 1-2 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Menezes (US 2008/0173481).
With respect to claim 1: Menezes discloses a two part drilling and running tool, comprising:
a conveyance (201);
a smaller assembly (203) coupled to an end of the conveyance (Fig. 7); and
a larger bit assembly (14) slidably coupled to the conveyance (Figs. 2-8), the smaller assembly and larger bit assembly configured to slidingly engage one another downhole to form a combined bit assembly (¶ [0044-47]); Figs. 4-8).
With respect to claim 2: Menezes further discloses the smaller assembly is a smaller bit assembly (203 has a cutting surface like 205; Figs. 6-8).
With respect to claim 6: Menezes further discloses 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).
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 4-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Menezes alone.
With respect to claim 4: Menezes further discloses 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). Menezes does not explicitly disclose 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 further discloses 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). Menezes does not explicitly disclose 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 7: Menezes further discloses 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). Menezes does not disclose 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).
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Menezes as applied to claim 2 above, and further in view of Cronley (US 2015/0361764).
With respect to claim 8: Menezes further teaches connection profiles as discussed in the rejection of claim 6 above. Menezes does not disclose 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 Menezes since doing so would perform the same predictable result of connecting the smaller bit assembly to the larger bit assembly.
With respect to claim 9: Cronley from the combination of 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 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).
Claims 12-13, 15-18, and 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Swadi (US 2012/0261193) in view of Menezes.
With respect to claims 12 and 28: Swadi discloses a well system, comprising:
a main wellbore (¶ [0037]) located within a subterranean formation (¶ [0037]);
a whipstock assembly (26) positioned within the subterranean formation (¶ [0037]); and
a drilling and running tool (22) positioned within the main wellbore (¶ [0037]). Swadi does not disclose the details of the drilling and running tool.
Menezes discloses a drilling and running tool is a two part drilling and running tool, comprising:
a conveyance (201);
a smaller assembly (203) coupled to an end of the conveyance (Fig. 7); and
a larger bit assembly (14) slidably coupled to the conveyance (Figs. 2-8), the smaller assembly and larger bit assembly configured to slidingly engage one another downhole 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 that of Swadi since doing so would perform the same predictable result of allowing a wellbore to be drilled.
Swadi further discloses a method for forming a well system, comprising:
forming a main wellbore (¶ [0037]) located within a subterranean formation (¶ [0037]);
positioning a drilling and running tool (22) within the main wellbore (¶ [0037]), the drilling and running tool coupled to a whipstock assembly (26) using a coupling mechanism (28).
With respect to claims 13 and 29: Menezes from the combination of Swadi 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 Swadi 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 Swadi 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 Swadi 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 Swadi 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 Swadi 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 Swadi 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 Swadi 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 Swadi 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 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Swadi and Menezes as applied to claim 13 above, and further in view of Cronley.
With respect to claim 19: Menezes from the combination of Swadi and Menezes further teach connection profiles as discussed in the rejection of claim 6 above. The combination of Swadi 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 Swadi and Menezes since doing so would perform the same predictable result of connecting the smaller bit assembly to the larger bit assembly.
With respect to claim 20: Cronley from the combination of Swadi, 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 Swadi, 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).
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 3, 10-11, and 14 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 10, and 32-33 of prior U.S. Patent No. 12,312,869. 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 1-2, 4-13, and 15-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-31 of U.S. Patent No. 12,312,869. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim at issue is fully encompassed by the claim of the issued patent.
Claims 1-2, 6-9, 12-13, 17-20, 28-33, and 35-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 11, 15-19, 23-26, 30, and 32-34 of U.S. Patent No. 12,065,911. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at issue are fully encompassed by the claims of the issued patent.
Claims 1-2, 6-9, 12-13, 17-20, 28-32, and 35-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 10, 14-18, and 21-27 of U.S. Patent No. 12,276,160. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at issue are fully encompassed by the claims of the issued patent.
Claims 1, 12, and 28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, and 19-20 of U.S. Patent No. 12,338,697. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at issue are fully encompassed by the claims of the issued patent.
Claims 1 and 28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8 and 19 of U.S. Patent No. 12,448,848. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at issue are fully encompassed by the claims of the issued patent.
Claims 1-2, 6-9, 12-13, 17-20, and 28-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 12, 15-19, 23, and 27-28 of copending Application No. 19/096,269 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at issue are fully encompassed by the claims of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/KRISTYN A HALL/Primary Examiner, Art Unit 3672