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
Claims 18, 22-27, 29-30, and 34-36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and/or species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 1/21/26.
Applicant's election with traverse of the species identified by the examiner in the reply filed on 1/21/26 is acknowledged. Applicant’s traversal proposes an alternative grouping of species. The grouping identified by applicant on Page 5 of the response of 1/21/26 is accepted by the examiner and is therefore made FINAL.
Drawings
The drawings are objected to because:
Figures 11-13 and 17-30 have poor line quality such that they would result in unsatisfactory reproduction characteristics. See 37 CFR 1.84(L). The figures impermissibly use gray scale and/or have faint lines.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1, 4, 17, 19-20, 28, and 31 are objected to because of the following informalities:
Claim 1 recites “insert base is at least twice […]”. The appropriate antecedent term is missing.
Claim 4 recites “a slip pocket and an insert”. However, these elements appear to be in the parent claim. The appropriate antecedent term should be used.
Claim 17 recites “the insert base which second groove”. There appears to be a typographical error.
Claim 19 recites “the wider end of the cone”. This element has not yet been introduced. The appropriate antecedent term should be used.
Claim 20 recites “the widest portion of the cone”. This element has not yet been introduced. The appropriate antecedent term should be used.
Claim 28 recites “the wider end of the cone”. This element has not yet been introduced. The appropriate antecedent term should be used.
Claim 31 recites “The insert base is at least twice […]”. “The” is improperly capitalized.
Appropriate correction is required.
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 1-17, 19-21, 28, and 31-33 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 slip assembly comprising a slip body and at least one insert” and later “an insert”. It is unclear if these are intended to be the same or different components in view of the antecedent term used for the later recitation of “an insert”.
Claim 5 recites “the slip assembly comprising a slip body and at least one insert”, “the slip pocket sided and shaped to accept […] an object” and later “an insert”. It is unclear if these are intended to be the same or different components in view of the antecedent term used for the later recitation of “an insert” and the use of varying terminology e.g. “an object” for what appears to be the insert, when read in view of the specification.
Claims 2-4 , 18, and 22-27 are rejected for depending from a rejected claim.
Claim 31 recites “An insert for use in a settleable downhole tool for use within a casing, the downhole tool comprising a mandrel and a cone mounted about the mandrel, the cone having an incline relative to the mandrel, a slip assembly mounted about the mandrel and adjacent to the cone, the slip assembly comprised of a slip body the slip body has a slip body outer surface for facing toward the casing when the downhole tool is within the casing and a slip body inner surface for facing the cone”. The preamble of the invention appears to direct the claim to an insert merely intended for use with a settable tool. However, the claim then goes on, in the preamble, to recite substantial details of the settable downhole tool, rendering it unclear what, if anything, is required of the tool and its recited particulars.
If the downhole tool is not required, it is unclear how limitations which require the interaction between the insert and specific structural sub-elements of these a non-required element e.g. “parallel to the cone's inclined outer surface so the cone-facing portion will directly abut the cone”.
Claims 32-33 are rejected for depending from a rejected claim.
Claim 15 recites “the parallel portion of the insert inner end”. There are two parallel portions which have been introduced in the claim (one in the parent claim and one in claim 15). There is a lack of antecedent basis for the limitation.
Claim 21 recites “a similar insert”. It is unclear what this limitation is intended to mean i.e. whether it is a part of the downhole tool or whether it is an unrequired claim element.
Allowable Subject Matter
Claims 1-17, 19-21, 28, and 31-33 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 1, Lovslett (US 20150090441 A1) is the best available reference. Lovslett teaches a settleable downhole tool for use within a casing, comprising:
a mandrel (Para 0031, mandrel, not shown) and a cone mounted about the mandrel (Fig 9, cone e.g. 4/5), the cone having an outer surface which has an incline relative to the mandrel (Fig 9, inclined face 46);
a slip assembly mounted about the mandrel and adjacent to the cone (Fig 9, assembly 2 and 3), the slip assembly comprising a slip body (Fig 9, body 2) and at least one insert in the slip body (Fig 9, insert 3);
the slip body has a slip body outer surface for facing toward the casing when the downhole tool is within the casing (Fig 9, outer surface of 2) and a slip body inner surface, at least a portion of the slip body inner surface facing toward the cone (Fig 9, inner surface of 2);
the cone’s inclined outer surface and the slip body’s inner surface are located and configured so setting the downhole tool will move the slip body over the cone and outward toward the casing (Fig 9, cone face 46/56 will move the slip body relative to the body and cause radial expansion);
at least one slip pocket located in the slip body (Fig 9, opening in 2 accommodating insert 3), the slip pocket comprising:
a cavity which extends through the slip body from an outer slip pocket which opens in the slip body’s outer surface to an inner slip pocket which opens in the slip body’s inner surface Fig 9, opening in 2 accommodating insert 3);
the slip pocket is sized and shaped to accept an insert which is capable of extending from the slip body’s inner surface to the slip body’s outer surface Fig 9, opening in 2 accommodating insert 3); and
at least a portion of the outer slip pocket (Fig 2, portion indicated at 25) is wider than a portion of the inner slip pocket that opens in the slip body inner surface (Fig 2, wider than portion indicated at approx. 28);
the insert is in the slip pocket (Fig 9, insert 3 in pocket of 2 as defined), the insert being sized and shaped to fit in the slip pocket and extending from at least the slip body’s inner surface, through the slip body and at least to the slip body’s outer surface (Fig 9, insert 3 in pocket of 2 as defined from the inside to the outside), the insert comprising:
an insert outer end located in the outer slip pocket and extending at least to the slip body’s outer surface (Fig 9, insert 3 extends to outside the pocket, outer face; see also, Para 0032, slips engage the casing);
a set of at least three outward-facing teeth located at the insert outer end (Fig 4, teeth 33, 33’), the at least three outward-facing teeth being serially axially located with respect to each other and configured to engage the casing when the downhole tool is set within the casing (Fig 4, teeth 33, 33’, see Para 0032);
a tooth shelf located in the outer slip pocket and beneath and connected to the teeth (Fig 3, shelf 34, at least indirectly connected to the teeth);
an insert base located in the inner slip pocket and beneath and connected to the tooth shelf (Fig 4, base 37);
an insert inner end at the inner end of the base (Fig 4, 9, inner facing face of base 37).
The claim additionally recites additional limitations concerning the sizing and dimensionality of the tool/insert e.g., “at or outside of the slip body’s inner surface, and at least 25% of the axial length of the insert inner end is located and configured to be parallel to and directly abutting the inclined outer surface of the cone when the downhole tool is set within the casing; at least some of the teeth are at least 5% wider than some portions of the insert inner end are wide, and at least some portions of the tooth shelf are at least 5% wider than a portion of the insert inner end is wide; insert base is at least twice as long as the insert inner end is wide; and the slip assembly is configured so when the downhole tool is set in the casing, at least 25% of the insert inner end will directly abut the cone, and setting the downhole tool will force at least some of the teeth outward to engage the casing.
While it is noted that, the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (see In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)), it is noted that the limitation regarding “the tooth shelf is at least twice as long as the insert inner end is wide” would have a functional relationship in a way that the modification to arrive at the recited dimensionality would likely not be rendered obvious based on the art available to the examiner, either individually or in combination (see relevant prior art considered and discussed, below).
Regarding independent claims 5 and 31, Lovslett teaches a majority of the claimed invention, as discussed in claim 1. The specifics of the mapping are not repeated for the sake of brevity. However, Lovslett does not teach the recited dimensionality of the insert. Please also see the discussions surrounding the common limitation of “the tooth shelf is at least twice as long as the insert inner end is wide” which is present in each of those independent claims as well.
Greenlee (US 4750559 A) teaches a slip insert (see e.g. Fig 4, insert 36), however, Greenlee does not teach the recited particulars. While, Greenlee teaches an element which could read on a recited shelf (86 and 88), Greenlee does not teach or render obvious the required dimensionality relative to other components.
Rochen (US 20150027737 A1) teaches a slip insert (see e.g. Figs 10-12 for a variety of embodiments of inserts), however, Rochen does not teach the recited particulars. In particular, Rochen does not teach the recited shelf, let alone the required dimensionality relative to other components.
Treadaway (US 20120012306 A1) teaches a slip insert (see e.g. Figs 5 and 1-3 for a variety of embodiments of inserts, including prior art inserts), however, Treadaway does not teach the recited particulars. In particular, Treadaway does not teach the recited shelf, let alone the required dimensionality relative to other components.
Wyatt (US 4813486 A) teaches a slip insert (see e.g. Fig 5-6, insert 52), however, Wyatt does not teach the recited particulars. In particular, Wyatt does not teach the recited shelf, let alone the required dimensionality relative to other components.
Keller (US 20170260824 A1) teaches a slip insert (see e.g. Fig 9-10, insert 300), however, Keller does not teach the recited particulars. While, Keller teaches an element which could read on a recited shelf (350), however, if considered the shelf, the other recited particulars of the insert would be missing e.g. the base, engagement with the cone, etc.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See discussion of allowable subject matter above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THEODORE N YAO whose telephone number is (571)272-8745. The examiner can normally be reached typically 8am-4pm ET.
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/THEODORE N YAO/Primary Examiner, Art Unit 3676