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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Shore (US 5,020,591).
In regard to claim 1, Shore discloses a device for connecting a first wellbore tool to a second wellbore tool in a tool string, the device comprising: a receptor assembly (190 as in fig 25) having a first end, a second end, and a receptor groove (192/193), the first end configured to couple with the first wellbore tool (as in col. 9, lines 22-25); a snap assembly (195 as in fig 26) having a first end and a second end, the first end configured to couple with the second end of the receptor assembly (as in fig 24), and the second end of the snap assembly configured to removably couple with the second wellbore tool (as at 19 in fig 1, where lower end of gun assembly); and a snap (182, as in fig 24) included in the snap assembly, the snap configured to at least partially extend into the receptor groove included in the receptor assembly to couple the first end of the snap assembly with the second end of the receptor assembly (as in fig 24).
In regard to claim 2, Shore discloses wherein axial motion of the first end of the snap assembly into the second end of the receptor assembly causes the first end of the snap assembly to couple with the second end of the receptor assembly (as in fig 24 with insertion).
In regard to claim 3, Shore discloses wherein the snap radially extends in a radial direction relative to the axial motion to at least partially extend into the receptor groove (as in fig 24).
In regard to claim 4, Shore discloses a biasing member (130, in embodiment of figs 16-18, with groove 124, snap 126) positioned between the snap and a main body of the snap assembly and configured to bias the snap in the radial direction.
In regard to claim 5, Shore discloses wherein the first wellbore tool comprises a release tool (as may be defined in that it may release the second component).
In regard to claim 6, Shore discloses wherein the second wellbore tool comprises a perforating gun (col. 3, lines 59+).
In regard to claim 7, Shore discloses wherein the second wellbore tool comprises a tandem sub that attaches to the second end of the snap assembly (as in fig 21, with tandem subs 161) between each section.
In regard to claim 8, Shore discloses a tandem sub (161), the tandem sub having a first end and a second end, the first end configured to couple with the second end of the snap assembly, and the second end configured to couple with the second wellbore tool (as in fig 21).
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.
Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shore in view of Knight (US 2020/0256168).
In regard to claim 9, Shore discloses all the limitations of this claim, as applied to claim 1 above, except for wherein an electrical connection is established between the receptor assembly and the snap assembly when the receptor assembly is coupled to the snap assembly. Knight discloses a device for connecting a first wellbore tool to a second wellbore tool in a tool string, the device comprising: wherein an electrical connection is established between the receptor assembly and the snap assembly when the receptor assembly is coupled to the snap assembly (as described in paragraph 118 with 574 as connected to 500). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the device of Shore, with the electrical connection of Knight in order to provide an electrical connection for electrically actuating the downhole tool (i.e. the perforating gun of Shore).
In regard to claim 10, Shore discloses wherein the electrical connection facilitates exchange of electrical signal between the first wellbore tool and the second wellbore tool (inherent as to electrical connection as described).
Claim(s) 11-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Knight et al. (US 2020/0256168) in view of Shore (US 5,020,591).
Knight et al. disclose a connector assembly for connecting a first wellbore tool to a second wellbore tool in a tool string, the connector assembly comprising: a receptor assembly including: a receptor assembly first end (302 in fig 5) configured to couple with the first wellbore tool (as connected with 602), a receptor assembly second end (100 as in fig 3), a receptor assembly main body (302), a receptor assembly interior extending through the receptor assembly main body, the receptor assembly interior including a first receptor assembly portion and a second receptor assembly portion, wherein the first receptor assembly portion is located closer to the receptor assembly first end than the second receptor assembly portion (as may be arbitrarily defined), a first bulkhead conductor (420) disposed in the first receptor assembly portion; and a snap assembly (500) including: a snap assembly first end removably couplable to the receptor assembly second end (504 as in fig 4), a snap assembly second end configured to couple with the second wellbore tool (at 513), a snap assembly main body (502), a snap assembly interior extending through the snap assembly main body (as in fig 4), the snap assembly interior including a first snap assembly portion and a second snap assembly portion, wherein the first snap assembly portion is located closer to the snap assembly first end than the second snap assembly portion (as may be defined in fig 4), a conductor pin (574) disposed in the first snap assembly portion. Knight et al. do not disclose a receptor groove formed in the second receptor assembly portion or a snap coupled to an exterior surface of the snap assembly main body, the snap configured to be at least partially received by the receptor groove of the receptor assembly to couple the first end of the snap assembly to the second end of the receptor assembly.
Shore discloses a connector assembly comprising: a receptor groove (192/193), fig 25) formed in a second receptor assembly portion and a snap (182) coupled to an exterior surface of the a assembly main body, the snap configured to be at least partially received by the receptor groove of the receptor assembly to couple the first end of the snap assembly to the second end of the receptor assembly (as in fig 24). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the assembly of Knight et al. with the snap connection of Shore in order to more quickly couple tools together at the wellsite (as in Shore, col. 1, lines 29-40).
In regard to claim 12, Knight et al. disclose wherein the first end of the receptor assembly comprises a first end of the connector assembly (as may be defined).
In regard to claim 13, Knight et al. disclose wherein the second end of the snap assembly comprises a second end of the connector assembly (as may be defined).
In regard to claim 14, as combined, the receptor groove comprises an annular recess formed in the receptor assembly interior of the second receptor assembly portion (as in fig 24/25 of Shore, where annular recesses 192/193 are in interior).
In regard to claim 15, Shore discloses wherein the snap is moveably coupled to the snap assembly main body (as radially moveable into groove as in fig 24).
In regard to claim 16, Shore discloses a biasing member (130, as in fig 18) positioned between the snap and a main body of the snap assembly and configured to bias the snap in the radial direction (where embodiment as in fig 16-18 may be combined as above).
In regard to claim 17, Knight et al. disclose wherein an electrical connection is established between the first bulkhead conductor and the second bulkhead conductor when the snap assembly is coupled to the receptor assembly (as connected electrical connection is established, paragraph 118).
In regard to claim 18, Knight et al. disclose a system for connecting a first wellbore tool to a second wellbore tool in a tool string, the system comprising: a receptor assembly including: a first receptor assembly end (302 as in fig 5) configured to couple with the first wellbore tool (as connected with 602), a second receptor assembly end (100 as in fig 3), a first receptor assembly electrical contact (160) exposed via the first receptor assembly end (prior to connection with 602), the first receptor assembly electrical contact configured to electrically connect with the first wellbore tool when the first receptor assembly end is coupled with the first wellbore tool (as connected with 160), and a second receptor assembly electrical contact exposed via the second receptor assembly end (574) and electrically connected with the first receptor assembly electrical contact; and a snap assembly (500) including: a first snap assembly end (504 as in fig 4) configured to couple with the second receptor assembly end, a second snap assembly end configured to couple with the second wellbore tool (at 513), a first snap assembly electrical contact configured to establish an electrical connection with the second receptor assembly electrical contact when the first snap assembly end is coupled with the second receptor assembly end (paragraph 118), and a second snap assembly electrical contact (340 as in fig 4, prior to connection with 500) exposed via the second snap assembly end.
Knight et al. do not disclose a receptor groove positioned interiorly of the second receptor assembly end or a snap positioned on an exterior of the snap assembly and configured to at least partially extend into the receptor groove to couple the first end of the snap assembly to the second end of the receptor assembly.
Shore discloses a connector assembly comprising: a receptor groove (192/193), fig 25) positioned interiorly of a second receptor assembly end (as in fig 24/25) and a snap (182) positioned on an exterior of the snap assembly and configured to at least partially extend into the receptor groove to couple the first end of the snap assembly to the second end of the receptor assembly (as in fig 24). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the assembly of Knight et al. with the snap connection of Shore in order to more quickly couple tools together at the wellsite (as in Shore, col. 1, lines 29-40).
In regard to claim 19, Shore discloses wherein the snap includes a bevel and is moveably coupled to the snap assembly (181 as in fig 24).
In regard to claim 20, Knight et al. disclose a tandem sub (100 as in fig 3) attached to the second end of the snap assembly and configured to couple with the second wellbore tool (as coupled in figs 2-5).
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 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 4 of U.S. Patent No. 12,421,809. Although the claims at issue are not identical, they are not patentably distinct from each other because the examined 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). Although the conflicting claims are not identical, they are not patentably distinct from each other because instant claim 1 appears generic to all that is recited in claim 1 of U.S. Patent No. 12,421,809. In other words, claim 1 of ‘809 fully encompasses the subject matter of instant claim 1 and therefore anticipates claim instant 1. Since instant claim 1 is anticipated by claim 1 of the patent, it is not patentably distinct. Thus the invention of claim 1 of the patent is in effect a “species” of the “generic” invention of instant claim 1. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since instant claim 1 is anticipated (fully encompassed) by claim 1 of the patent, instant claim 1 is not patentably distinct from claim 1 of ‘809, regardless of any additional subject matter present in claim 1 of ‘809.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Preiss et al. (US 10,844,697) and Goyeneche (US 2019/0153827) also disclose devices for connecting downhole tools.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to D Andrews whose telephone number is (571)272-6558. The examiner can normally be reached M-F, 7-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at 571-272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D. ANDREWS/Primary Examiner, Art Unit 3672
2/2/2026