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 .
Response to Arguments and Amendments
Applicant’s arguments, see pages 10-15, filed 05/08/2026, with respect to the rejection(s) of claim(s) 1-20 under 35 USC § 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Massey et al. (US 2020/0217148 A1), hereinafter Massey.
The 112 (b) rejections have been withdrawn.
The double patenting rejection is maintained, since the office has rejected the terminal disclaimer due to quality that has rendered the terminal disclaimer illegible. Appropriate correction is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4, 8-9, 11-13, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Clemens et al. (US 2015/0247368 A1), hereinafter Clemens in view of Massey et al. (US 2020/0217148 A1), hereinafter Massey.
Regarding claim 1, Clemens discloses a release tool (202 fig. 1 and 2A-C, [0056]) for releasably securing a workstring (116, fig. 1 and 2A-C, [0056]) to a downhole tool (226 fig. 1 and 2A-C, [0056 and 0059]) deployable into a wellbore (104, fig. 1, [0007 and 0047]) extending through a subterranean earthen formation (110, fig. 1, [0007 and 0047]), the release tool (see below) comprising:
a downhole housing (224, fig. 2a-c, [0057-0060]) having a downhole end for connecting to the downhole tool (226, fig. 2a-c, [0059]) and an uphole end opposite the downhole end (fig. 2a-c); and
an uphole assembly (see below), comprising:
an uphole housing (208, fig. 2a-c, [0056-0058]) having a proximal end connectable to the workstring (204, fig. 2a-c, [0056-0058]) and a distal end connectable to the downhole housing (224, fig. 2a-c, [0056-0058]);
a lock ring (216, fig. 2a-c, [0060-0062 and 0067-0068]) configured to releasably secure the uphole housing to the downhole housing (224 [0060-0062 and 0067-0068]), wherein the lock ring has a locked state (fig. 2a) in which the lock ring is pressed outwardly towards a locking groove of the downhole housing (shoulder of 224, fig. 2a-c, [0060-0061]) whereby the lock ring is prevented from deflecting radially inwards (fig. 2a-c, [0060-0061]), and an unlocked state (fig. 2c) in which the lock ring is allowed to deflect radially inwards away from the locking groove whereby the uphole housing may disconnect from the downhole housing (fig. 2a-c, [0061-0062]));
a movable wedge (210, fig. 2a-c, [0062], wherein mandrel 210 is ramped) moveable between an uphole position preventing the lock ring from transitioning from the locked state to the unlocked state and a longitudinally spaced downhole position permitting the lock ring to transition from the locked state to the unlocked state (fig. 2a-c, [0060-0062]); and
a combustion element ([0061 and 0072]) located longitudinally between the movable wedge and the uphole end of the uphole housing (fig. 2a-c) and configured to propel the movable wedge in a downhole direction from the uphole position to the downhole position to release the downhole housing from the uphole housing ([0061-0062) in response the release tool receiving a release signal ([0063-0069]).
Clemens teaches the above, and further teaches that actuation of the tool can be achieved via electrical signals [0052, 0066]. Clemens fails to explicitly disclose the structure to achieve this actuation such as the claimed electrical signal conductor extending through the uphole assembly and configured to provide electrical signal communication between the uphole assembly and the downhole tool when the downhole housing is connected to the downhole tool.
Massey teaches a similar device in the same field of downhole tools wherein an electrical signal conductor (122+113+115, fig. 1, [0036]) extending through the uphole assembly (118+112, i.e. 110 minus 114, fig. 1, [0034-0035]) and configured to provide electrical signal communication between the uphole assembly and the downhole tool (116, fig. 1, [0034-0037]) when the downhole housing (114, fig. 1, [0034-0037]) is connected to the downhole tool (116, fig. 1, [0037]).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Clemens to incorporate the electrical conductors of Massey in order to electrically connect the downhole tool to the uphole assembly ([0034-0037] of Massey and achieve the electrical actuation taught by Clemens).
Regarding claim 2, Clemens in view of Massey further discloses wherein the uphole assembly further comprises a mandrel (210 which includes 232, fig. 2a-c, [0058 and 0060]) which extends into the downhole housing when the uphole assembly is connected to the downhole housing (fig. 2a) and wherein the mandrel carries the lock ring (fig. 2a) and an electrical contact for carrying electrical signals and/or data to the downhole tool ([0065]).
Regarding claim 3, Clemens in view of Massey further discloses wherein the uphole assembly further comprises a piston (214, fig. 2a-c, [0058, 0060, and 0068]) carried on a periphery of the mandrel whereby the piston seals against both a periphery of the mandrel and a radially inner surface of at least one of the uphole housing and the downhole housing, and wherein the piston engages a radially inner surface of the lock ring with a surface defining the movable wedge (fig. 2a-c, [0058, 0060, and 0068]).
Regarding claim 4, Clemens in view of Massey further discloses wherein the mandrel (210) comprises a catch sleeve at a downhole end thereof (232), the catch sleeve comprising a ring shoulder projecting uphole towards the uphole housing with an annular space for the piston (space between 232, fig. 2a-c) whereby the catch sleeve is configured to apply, in response to the application of tension against the uphole housing, an uphole directed compressive force against a downhole end of the lock ring sufficient to deflect the lock ring inwardly when the movable wedge is in the downhole position ([fig. 2a-c, 0061-0062 and 0067]).
Regarding claim 8, Clemens in view of Massey further discloses wherein the combustion element comprises a unitized ignitor and power cartridge ([0065-0066]).
Regarding claim 9, Clemens further discloses wherein the combustion element comprises low explosive configured to avoid the formation of a supersonic shockwave in response to ignition of the low explosive ([0066], wherein shockwaves are not referenced).
Regarding claim 11, Clemens discloses a release tool (202 fig. 1 and 2A-C, [0056]) for releasably securing a workstring (204, fig. 1 and 2A-C, [0056]) to a downhole tool (226 fig. 1 and 2A-C, [0056 and 0059]) deployable into a wellbore (104, fig. 1, [0007 and 0047]) extending through a subterranean earthen formation (110, fig. 1, [0007 and 0047]), the release tool (see below) comprising:
an uphole housing (208, fig. 2a-c, [0056-0058]) connectable to the workstring (fig. 2a-c);
a downhole housing (224, fig. 2a-c, [0059-0060]) connected to the uphole housing when the release tool is in a locked state (fig. 2a) and disconnected from the uphole housing when the release tool is in a released state (fig. 2c);
a moveable wedge (210, fig. 2a-c, [0062]) coupled to the uphole housing and positioned in the downhole housing (fig. 2a);
a lock ring (216, fig. 2a-c, [0060-0062 and 0067-0068]) disposed in the downhole housing (fig. 2a) and having a locked state (fig. 2a) in which the lock ring is restricted from radially contracting by the moveable wedge to lock the downhole housing to the uphole housing (fig. 2a-c, [0060-0062]), and an unlocked state (fig. 2c) in which the lock ring is permitted to radially contract thereby permitting the downhole housing to be released from the uphole housing (fig. 2a-c, [0060-0062]); and
an actuation module (212, fig. 2a-c, [0058 and 0061]; see also [0063-0069]) positioned at an uphole end of the uphole housing (fig. 2a) whereby the actuation module is removeable from the uphole housing without disassembling the lock ring from the moveable wedge (the actuation module 212 is removable from uphole housing 208 without disassembling the lock ring 210 since 208 is “made up of multiple parts” therefore it is possible to remove parts other than the lock ring in order to remove the actuation module ), the actuation module configured to move, in response to receiving a release signal ([0063-0069]), the moveable wedge relative to the lock ring to transition the lock ring from the locked state to the unlocked state (fig. 2a-c, [0060-0062]).
Clemens teaches the above, and further teaches that actuation of the tool can be achieved via electrical signals [0052, 0066]. Clemens fails to explicitly disclose the structure to achieve this actuation such as the claimed electrical signal conductor extending through the uphole assembly and configured to provide electrical signal communication between the uphole assembly and the downhole tool when the downhole housing is connected to the downhole tool.
Massey teaches a similar device in the same field of downhole tools wherein an electrical signal conductor (122+113+115, fig. 1, [0036]) extending through the uphole assembly (118+112, i.e. 110 minus 114, fig. 1, [0034-0035]) and configured to provide electrical signal communication between the uphole assembly and the downhole tool (116, fig. 1, [0034-0037]) when the downhole housing (114, fig. 1, [0034-0037]) is connected to the downhole tool (116, fig. 1, [0037]).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Clemens to incorporate the electrical conductors of Massey in order to electrically connect the downhole tool to the uphole assembly ([0034-0037] of Massey and achieve the electrical actuation taught by Clemens).
Regarding claim 12, Clemens in view of Massey further discloses wherein the lock ring, when in the locked state, is at least partially received in an outer circumferential groove formed in the downhole housing (216 is within a groove of 224 in fig. 2a).
Regarding claim 13, Clemens in view of Massey further discloses wherein the lock ring is released from the outer circumferential groove formed in the downhole housing when in the unlocked state (216 is outside a groove of 224 in fig. 2c).
Regarding claim 15, Clemens discloses a release tool (202 fig. 1 and 2A-C, [0056]) for securing a workstring (204, fig. 1 and 2A-C, [0056]) to a downhole tool (226 fig. 1 and 2A-C, [0056 and 0059]) deployable into a wellbore (104, fig. 1, [0007 and 0047]) extending through a subterranean earthen formation (110, fig. 1, [0007 and 0047]), the release tool (see below) comprising:
a downhole housing (224, fig. 2a-c, [0059-0060]) having an uphole end, and a downhole end connectable to the downhole tool (fig. 2a-c); and
an uphole assembly (see below), comprising:
an uphole housing (208, fig. 2a-c, [0056-0058]) having a proximal end connectable to the workstring (204, fig. 2a-c, [0056-0058]) and a distal end connectable to the downhole housing (224, fig. 2a-c, [0056-0058]);
a lock ring (216, fig. 2a-c, [0060-0062 and 0067-0068]) secured to the uphole housing and disposed within the downhole housing when the release tool is in a locked state (fig. 2a), wherein the lock ring has a locked state in which the lock ring locks the uphole housing to the downhole housing (fig. 2a, [0060-0061]), and an unlocked state (fig. 2c, [0061-0062]) in which the lock ring is unlocked from at least one of the uphole housing and the downhole housing such that the downhole housing is permitted to move relative to the uphole housing along a central axis of the release tool (fig. 2c, [0061-0062]);
a piston (214, fig. 2a-c, [0058, 0061, 0064, 0067, and 0072]) having an uphole position that maintains the lock ring in the locked state and a longitudinally spaced downhole position that permits the lock ring to transition from the locked state to the unlocked state (fig. 2a-c, [0058, 0061, 0064, 0067, and 0072]); and
a combustion element ([0061 and 0072]) located uphole from the piston (fig. 2a-c) and configured to shift, in response to the uphole assembly receiving a release signal ([0063-0069]), the piston from the uphole position to the downhole position ([0060-0062]) and thereby transition the release tool from the locked state to a released state in which the downhole housing is released from the uphole housing (fig. 2a to fig. 2c, [0060-0062]).
Clemens teaches the above, and further teaches that actuation of the tool can be achieved via electrical signals [0052, 0066]. Clemens fails to explicitly disclose the structure to achieve this actuation such as the claimed electrical signal conductor extending through the uphole assembly and configured to provide electrical signal communication between the uphole assembly and the downhole tool when the downhole housing is connected to the downhole tool.
Massey teaches a similar device in the same field of downhole tools wherein an electrical signal conductor (122+113+115, fig. 1, [0036]) extending through the uphole assembly (118+112, i.e. 110 minus 114, fig. 1, [0034-0035]) and configured to provide electrical signal communication between the uphole assembly and the downhole tool (116, fig. 1, [0034-0037]) when the downhole housing (114, fig. 1, [0034-0037]) is connected to the downhole tool (116, fig. 1, [0037]).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Clemens to incorporate the electrical conductors of Massey in order to electrically connect the downhole tool to the uphole assembly ([0034-0037] of Massey and achieve the electrical actuation taught by Clemens).
Regarding claim 16, Clemens in view of Massey further discloses wherein the uphole assembly further comprises a mandrel (210 which includes 232, fig. 2a-c, [0058 and 0060]) which extends into the downhole housing when the uphole assembly is connected to the downhole housing (fig. 2a) and wherein the mandrel carries the lock ring (fig. 2a) and an electrical contact for carrying electrical signals and/or data to the downhole tool ([0065]).
Allowable Subject Matter
Claims 5-7, 10, 14, and 18-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if the double patenting rejection is overcome.
Claim 17 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims and if the double patenting rejection is overcome.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 5-7 would be allowable because Clemens, which is considered the closest prior art, fails to teach or disclose “a secondary shear pin” and “a secondary shear groove”. There is no obvious reason to modify Clemens to include a secondary shear pin and a secondary shear groove without undo hindsight when taken in conjunction with the rest of the claim and the independent claim.
Claims 10 and 14 would be allowable because Clemens, which is considered the closest prior art, fails to teach or disclose “a push-off lug”. There is no obvious reason to modify Clemens to include a push-off lug without undo hindsight when taken in conjunction with the rest of the claim and the independent claim.
Claim 17 would be allowable because Clemens, which is considered the closest prior art, fails to teach or disclose wherein “the piston engages a radially inner surface of the lock ring with a surface defining the moveable wedge”. There is no obvious reason to modify Clemens to include a push-off lug without undo hindsight when taken in conjunction with the rest of the claim and the independent claim.
Claims 18-19 would be allowable because Clemens, which is considered the closest prior art, fails to teach or disclose “a secondary groove” and “a third groove”. There is no obvious reason to modify Clemens to include a secondary groove and a third groove without undo hindsight when taken in conjunction with the rest of the claim and the independent claim. Claim 19 would be allowable for depending off of claim 18.
Claim 20 would be allowable because Clemens, which is considered the closest prior art, fails to teach or disclose wherein “a lug ring positioned in the downhole housing, wherein a downhole end of the piston is configured to impact the lug ring”. There is no obvious way to modify Clemens to include “a lug ring positioned in the downhole housing, wherein a downhole end of the piston is configured to impact the lug ring” when taken in conjunction with the rest of the claim and the independent claim because of the arrangement of parts of Clemens.
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.
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. Clemens et al. (US 2015/0247368 A1) in view of Massey et al. (US 11111735 B2), hereinafter Massey-735. Claim 1 of the present application 19/261,356 is largely identical from claim 1 of its parent Patent US 12,371,959 B2 except the phrases “a first position” has been changed to a “an uphole position” and “a secondary position” has been changed to “a longitudinally spaced downhole position.” Additionally, claim 1 has the phrases “located longitudinally between the movable wedge and the uphole end of the uphole housing” and “in a downhole direction” that are not present in the parent application. This arrangement can be taught from Clemens. Massey-735 teaches the electrical signal conductor limitations as described above in the 103 rejection. This is simply the patented version of the same application.
Claim 11 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. Clemens et al. (US 2015/0247368 A1) in view of Massey et al. (US 11111735 B2), hereinafter Massey-735. Claim 1 of the present application 19/261,356 is largely identical from claim 20 of its parent Patent US 12,371,959 B2 except the phrase “positioned at an uphole end of the uphole housing whereby the actuation module is removeable from the uphole housing without disassembling the lock ring from the moveable wedge.” This arrangement can be taught from Clemens. Massey-735 teaches the electrical signal conductor limitations as described above in the 103 rejection. This is simply the patented version of the same application.
Claim 15 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. Clemens et al. (US 2015/0247368 A1) in view of Massey et al. (US 11111735 B2), hereinafter Massey-735. Claim 1 of the present application 19/261,356 is largely identical from claim 20 of its parent Patent US 12,371,959 B2 except the phrases
“an uphole end” has been changed to a “a proximal end”
“an downhole end” has been changed to a “a distal end”
“a first position” has been changed to a “an uphole position” and
“a secondary position” has been changed to “a longitudinally spaced downhole position.”
Additionally, claim 15 has the phrase “element located uphole from the piston” that are not present in the parent application. This arrangement can be taught from Clemens. Massey-735 teaches the electrical signal conductor limitations as described above in the 103 rejection. This is simply the patented version of the same application.
Application - 19261356
Patent - US 12371959 B2
Patent - Massey et al. (US 11111735 B2)
1
1
+ Massey
2
1+2
+ Massey
3
1+3
+ Massey
4
1+3+4
+ Massey
5
1+3+5
+ Massey
6
1+3+6
+ Massey
7
1+3+7
+ Massey
8
1+8
+ Massey
9
1+9
+ Massey
10
1+15
+ Massey
11
14
+ Massey
12
14+17
+ Massey
13
14+17+18
+ Massey
14
14+19
+ Massey
15
20
+ Massey
16
14+20
+ Massey
17
14+20
+ Massey
18
14+20+21+23
+ Massey
19
14+20+21+23+24
+ Massey
20
14+20+21
+ Massey
The following is a chart of the rest of the claims that have double patenting. The substance of these is the same except for what has already been addressed when taken in combination as noted and with dependencies.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Railey whose telephone number is (571)270-7353. The examiner can normally be reached M-F (8-4).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tara Schimpf can be reached at (571) 270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A RAILEY/Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676
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