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 § 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “the steps’ in line 3 and “the step of anchoring” in line 15. There is insufficient antecedent basis for these limitations in the claim.
Claim 2 recites “the order of (a) to (g)” that is confusing. It should be --order of the steps (a) to (g)--.
Claim 3 recites “step (b) is performed at any point between steps (a) and (f)” that conflict with claim 2 since claim 2 recites “the steps are performed in the order (a) to (g)”.
Claim 7 recites “the section of casing is not free, the method includes selecting a second length of the section of casing” that is not clearly defined. It is not clear if the second length of the section is located within the first section, on top of it or on the bottom of it or at a certain distance away from the first section. Similar arguments apply to claim 8 and to claims 12 and 13 where the direction in which the sequence is considered is not defined.
Claim 13 recites “if” that is unclear. Use of the term “if” creates a lack of clarity as to the scope of the claim by framing elements of the claim as optional.
Claims 2-16 are rejected as being dependent on claim 1.
Claims 4-6 are rejected as being dependent on claim 3.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 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 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, 9-10 and 14-16 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Goa et al. (WO 2015105427 – Goa)
Goa discloses a method, comprising:
Re claim 1:
(a) determining a casing cutting target depth (CCTD) (i.e., at cutting tool 3, fig. 4) to provide a section of casing for removal;
(b) cutting the casing O at the casing cutting target depth (CCTD);
(c) perforating the section of casing Op perforation length thereof (i.e., fig. 2);
(d) washing (via washing tool 2) the annulus along a first length of the section of casing by passing fluid through the perforations (i.e., page 2:31-33, 3:9-11), the first length being shorter than the perforation length to clear at least a portion of the debris (i.e., fig. 3, page 3:9-11, the Op is washed during the downward run of the washing tool, meaning the successive segments (shorter than the Op) are washed at a time, from its top to its bottom while the wash tool is lowered).
(e) gripping the section of casing (i.e., figs. 4-7);
(f) pulling the section of casing (i.e., figs. 5-7);
(g) in the event that the section of casing is free, pulling the section of casing from the well (i.e., fig. 8),
wherein the method includes the step of anchoring a downhole power tool 41 to the surrounding downhole body (i.e., wall of wellbore above the cut section) at a position uphole of the cut section of casing and in step (f) pulling is by exerting a force from the downhole power tool on the section of casing (i-e., fig. 8; 4, 41 - grip/pulling tool active holding top of free washed-out selection and pulling perforated, washed-out casing to surface).
Re claim 9, the perforation length is a majority of the section of casing (i.e., the perforation length is pulled to surface, thus it is considered a majority section of the casing that is pulled to surface).
Re claim 10, the perforation length is a length between a free casing depth (i.e., fig. 1, 0: a casing above section have been removed) and the CCTD (i.e., fig. 4, at cutting tool).
Re claim 14, a circulation test (via washing tool 2 ) is performed during or after step (b) to provide an indication of the level of debris in the annulus (i.e., it is performed after perforation step (c)).
Re claim 15, step (d) a wash tool 2 is moved along the perforated casing Op (i.e., fig. 3, page:9-11).
Re claim 16, step (f) includes vibrating the section of casing to assist in freeing the section of casing (i.e., pulling the section of casing in freeing the section of casing produces certain degree of vibration).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 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 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) 2-8 and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goa.
Re claim 2, Goa discloses steps (a) to (g), but is silent on the steps are performed in the order (a) to (g). However, Goa teaches the steps can be planned and conducted by the operator (i.e., page 4:20-24). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to arrange the steps of Goa in certain order by the operator as desired. This also applies to claims 3-6 and 13 since they directed to order of the steps.
Re claim 7, Goa discloses in the event that the section of casing is free, pulling the section of casing from the well using the steps (d) to (g), but is silent on in the event that the section of casing is not free, the method includes selecting a second length of the section of casing and repeating steps (d) to (g) on the second length. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to try the method of Goa with selecting a second length of the section of casing and repeating steps (d) to (g) on the second length in the event that the section of casing is not free, to pull out the section of casing from the well by repeating/duplicating steps (d) to (g), since it has been held that mere duplication of essential steps involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Goa further discloses,
Re claim 8, selecting subsequent lengths Op of the section of casing until the section of casing is free and can be pulled from the well (i.e., fig. 8, Op: perforated, washed-out casing pulled to surface).
Re claim 11, the first and second lengths are sequentially located along the perforation length (i.e., fig. 2 depicts 5 perforating guns that can be considered the first, second, third, fourth, and fifth lengths sequentially located).
Re claim 12, the first and second lengths overlap by at least a portion (i.e., the first gun sits on top of the second gun).
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 1-16 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,338,701. Although the claims at issue are not identical, they are not patentably distinct from each other because the listed calms of the present application are fully encompassed by the listed claims of the reference patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Alan (20200072009) teaches a method and apparatus for single-trip casing cutting and pulling for well abandonment and slot recovery.
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/YONG-SUK (PHILIP) RO/ Primary Examiner, Art Unit 3676