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 .
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, 11, 12 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Church, U.S. 1,571,931.
Regarding claim 1, Church discloses in figures 1-5 a two-part drilling (p. 1, lines 11-24) and running tool (fig 1, 23; p. 1, lines 100-112) having a conveyance (a cable, p. 1, lines 100-105); a smaller assembly (fig 2, drill bit 12, p. 1, lines 72-76) coupled to an end of the conveyance (coupled via 23, grappling tool and cable); a larger bit assembly (fig 1, reamer 21; p. 1, lines 92-99) slidably coupled (p. 2, lines 6-18; the upward and/or downward movement of the expandable reamer and blades) to the conveyance (via the grappling tool), the smaller assembly (12) and larger bit (21) assembly configured to slidingly engage one another downhole (via shank 11, p. 1, lines 72-76 and 92-96) to form a combined bit assembly (fig 2, 21 in the expanded position forming the combined assembly); and a one way mechanism (locking jaws 19 and threads 17; p. 1, lines 86-91), coupled between (via shank 11) the smaller assembly (12) and the larger bit assembly (21), the one way mechanism configured to allow the smaller assembly and larger bit assembly to axially slide in one direction relative (the downward direction) to one another and prevent the smaller assembly and larger bit assembly from axially sliding (in the upward direction in use, p. 2, lines 6-32) in an opposite direction relative to one another.
Re: claims 2 and 12, Church discloses the one-way mechanism (19, 17) is a wedge feature (fig 1, dovetail grooves 18, p. 1, lines 86-91).
Regarding claim 11, Church discloses a wellbore extending through one or more subterranean formations (p. 1, lines 9-15); and a two-part drilling (21, 12) and running tool (23, grappling tool and cable) located in the wellbore, the two-part drilling and running tool having all the elements of claim 1 as noted above.
Regarding claim 21, Church discloses forming a wellbore (forming the wellbore with a drilling and reaming tool, p. 1, lines 9-15) through one or more subterranean formations; positioning a two-part drilling and running tool in the wellbore, the two-part drilling and running tool having all the elements of claim 1 as noted above.
Claims 1-4, 11-14 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Davey, Sr., et al., U.S. 3, 190, 378.
Regarding claim 1, Davey, Sr., et al. discloses in figures 3-5 a two-part drilling (a 21, 25; col. 4, line 74 - col. 5, line 16) and running tool (drill string 14), comprising: a conveyance (14, 14a); a smaller assembly (bit 21, fig 3) coupled to an end of the conveyance; a larger bit assembly (casing 23, shoe 24 and cutters 25; fig 5) slidably coupled (slidable along projection 31; col. 4, lines 1-13) to the conveyance, the smaller assembly and larger bit assembly configured to slidingly engage (via 30, 31, 31a; col. 3, lines 46-58) one another downhole to form a combined bit assembly; and a one way mechanism (30, 31, 31a) coupled between the smaller assembly and the larger bit assembly, the one way mechanism configured to allow the smaller assembly and larger bit assembly to axially slide in one direction (the downward direction of the L-shape) relative to one another and prevent the smaller assembly and larger bit assembly from axially sliding in an opposite direction (the upward direction when projections 30 engage with the L-shaped protrusion 31 while drilling) relative to one another.
Re: claims 2 and 12, the reference discloses the one-way mechanism (projections 30, legs 31a and L-shaped members 31 engagements) is a wedge feature (the projection and L-shaped protrusions have a frictional or wedging cooperative relationship feature in use).
Re: claims 3 and 13, the reference discloses the wedge feature (30, 31, 31a) is located in an annular space (fig 3, 35) between the smaller assembly and the larger bit assembly (col. 3, lines 64-72).
Re: claims 4 and 14, the reference discloses the wedge feature (30, 31, 31a) is configured to allow the smaller assembly to slide uphole (col. 4, lines 25-29) relative to the larger bit assembly but prevent the smaller assembly from sliding downhole (during drilling; col. 3, lines 46-58) relative to the larger bit assembly.
Regarding claims 11 and 21, the reference discloses a well system having a formed wellbore extending through one or more subterranean formations (col. 1, lines 9-15) and method of drilling the same; and a two-part drilling and running tool located in the wellbore having all the limitations of claim 1 as noted above.
Double Patenting
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 1-21 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-19 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 of the following.
Patented claim 1 includes all the limitations of pending claims 1 and 10.
Patented claims 2, 3, 4, 5, 6, 7, 8 and 9 includes all the limitations of pending claims 2-9 respectively and verbatim.
Patented claim 10 includes all the limitations of pending claims 11 and 20.
Patented claims 11, 12, 13, 14, 15, 16, 17 and 18 includes all the limitations of pending claims 12-19 respectively and verbatim.
Patented claim 19 includes all the limitations of pending claim 21.
Conclusion
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22 January 2026
/KENNETH L THOMPSON/ Primary Examiner, Art Unit 3676