DETAILED ACTION
This communication is a first office action on the merits. All currently pending claims have been considered below. 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 1-4, 6, 8, 10, 11, 13, 16, 17, & 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2,990,896 (Kandle).
Independent 1. Kandle discloses a drilling apparatus for drilling in a subterranean formation (fig 1), comprising:
a main body (elements 1 & 2 together; figs 2 & 5. There is nothing improper about drawing two inter-related and directly adjacent prior art elements to a single claim element recited at a high level of generality) including a plurality of blades (not individually numbered, but clearly shown holding "teeth 13" fig 5), each blade of the plurality of blades including at least a first cutting edge ("teeth 13"); and
a plurality of wing assemblies ("wing cutters 17" - col 2:21-25 - and the associated attachment structure as cited below), each wing assembly of the plurality of wing assemblies comprising:
a wing (ibid) with a hinge portion ("shank 18") and at least a second cutting edge (not individually numbered but clearly shown in figs 2 & 4);
a corresponding knuckle (the upper and lower flanges / surfaces that define "a recess 19 in the outer edge of plate 15" - col 2:25-26 - best shown in fig 2) of the main body ("plate 15" is a sub-element of the "body" drawn to elements 1 & 2 together); and
a connector inserted into the hinge portion and the corresponding knuckle ("pin 20 extends vertically downwardly through the plate 15 and shank 18 to pivotally secure the cutter 17 to plate 15" - col 2:26-28), wherein a wing of a wing assembly of the plurality of wing assemblies is rotatable between a collapsed position (fig 4) and an expanded position (figs 1 & 2), and wherein the wing rotates from the collapsed position to the expanded position about a longitudinal axis of the connector (ibid) in response to a rotation of the main body ("…be automatically expanded to cutting position thereby when the drill is positioned for cutting in the bottom of the hole and is rotated in a forward cutting direction" - ¶ bridging cols 2 & 3).
2. The drilling apparatus of claim 1, wherein the drilling apparatus has a first diameter when each wing of the plurality of wing assemblies is in the collapsed position ("the wing collar being foldable… for removal through the casing and being expandable to a diameter for cutting in excess of the diameter of the casing" - second ¶ of col 1; figs 3 & 4), wherein the drilling apparatus has a second diameter when each wing of the plurality of wing assemblies is in the expanded position (ibid & fig 2), and wherein the second diameter is greater than the first diameter (ibid).
3. The drilling apparatus of claim 2, wherein the first diameter is defined at least in part by a width of a blade of the plurality of blades (fig 4), and wherein the second diameter is defined at least in part by a width of a wing of the plurality of wing assemblies when the wing is in the expanded position (fig 2 & the dashed, expanded portion of fig 3; second ¶ of col 1).
4. The drilling apparatus of claim 3, wherein the width of the wing is greater than the width of the blade (fig 2 & the dashed, expanded portion of fig 3).
6. The drilling apparatus of claim 1, wherein in the collapsed position (fig 4) a first surface of the wing is proximate to the main body (fig 4 clearly shows "a surface" of the wings 17 being "proximate" the main body), and wherein in the expanded position a second surface of the wing is proximate to a blade of the plurality of blades (fig 2 & the dashed, expanded portion of fig 3).
8. The drilling apparatus of claim 1, wherein the drilling apparatus is an expandable drill bit (title) with a distal end of the drilling apparatus substantially coming to a point (not individually numbered but clearly shown in figs 1 & 2).
10. The drilling apparatus of claim 1, wherein the longitudinal axis of the connector is substantially parallel with a longitudinal axis of the main body (figs 1-3).
Independent claim 11. Kandle discloses a system for drilling in a subterranean formation (fig 1), comprising:
a drilling apparatus (fig 1), comprising:
a main body (elements 1 & 2 together; figs 2 & 5. There is nothing improper about drawing two inter-related and directly adjacent prior art elements to a single claim element recited at a high level of generality) including a plurality of blades (not individually numbered, but clearly shown holding "teeth 13" fig 5), each blade of the plurality of blades including at least a first cutting edge ("teeth 13"); and
a plurality of wing assemblies ("wing cutters 17" - col 2:21-25 - and the associated attachment structure as cited below), each wing assembly of the plurality of wing assemblies comprising:
a wing (ibid) with a hinge portion ("shank 18") and at least a second cutting edge (not individually numbered but clearly shown in figs 2 & 4);
a corresponding knuckle (the upper and lower flanges / surfaces that define "a recess 19 in the outer edge of plate 15" - col 2:25-26 - best shown in fig 2) of the main body ("plate 15" is a sub-element of the "body" drawn to elements 1 & 2 together; and
a connector inserted into the hinge portion and the corresponding knuckle ("pin 20 extends vertically downwardly through the plate 15 and shank 18 to pivotally secure the cutter 17 to plate 15" - col 2:26-28), wherein a wing of a wing assembly of the plurality of wing assemblies is rotatable between a collapsed position (fig 4) and an expanded position (figs 1 & 2); and
a drill string (4, fig 1) in communication with the main body (ibid), wherein the wing rotates from the collapsed position to the expanded position about a longitudinal axis of the connector in response to a rotation of the main body via the drill string ("…be automatically expanded to cutting position thereby when the drill is positioned for cutting in the bottom of the hole and is rotated in a forward cutting direction" - ¶ bridging cols 2 & 3).
13. The system of claim 11, wherein the main body is in communication with the drill string at a proximal end of the drilling apparatus (figs 1 & 2), and wherein a distal end of the drilling apparatus includes a drill tip (not individually numbered but clearly shown in figs 1 & ).
Independent claim 16. Kandle discloses a method for drilling a subterranean formation (fig 1), comprising:
inserting a drilling apparatus into a wellbore (fig 1) that has a first diameter (fig 4), the drilling apparatus including a main body (elements 1 & 2 together; figs 2 & 5. There is nothing improper about drawing two inter-related and directly adjacent prior art elements to a single claim element recited at a high level of generality) and a plurality of wings ("wing cutters 17" - col 2:21-25 - and the associated attachment structure as cited below), wherein each wing of the plurality of wings is coupled to the main body via a respective connector ("pin 20 extends vertically downwardly through the plate 15 and shank 18 to pivotally secure the cutter 17 to plate 15" - col 2:26-28) through a respective hinge portion of each wing ("shank 18") and a corresponding knuckle of the main body (the upper and lower flanges / surfaces that define "a recess 19 in the outer edge of plate 15" - col 2:25-26 - best shown in fig 2);
extending the drilling apparatus through the wellbore (figs 3 & 4; ¶ bridging cols 2 & 3);
actuating the plurality of wings of the drilling apparatus from a collapsed position to an expanded position ("…be automatically expanded to cutting position thereby when the drill is positioned for cutting in the bottom of the hole and is rotated in a forward cutting direction" - ¶ bridging cols 2 & 3);
performing a drilling process with the plurality of wings of the drilling apparatus in the expanded position (ibid);
retracting the drilling apparatus within the wellbore following the drilling process (fig 4; col 1:36-38; col 3:13-17); and
collapsing the plurality of wings of the drilling apparatus for removal of the drilling apparatus from the wellbore (ibid).
17. The method of claim 16, wherein the collapsing of the plurality of wings of the drilling apparatus for removal of the drilling apparatus from the wellbore comprises:
engaging a bottom edge of the wellbore with the drilling apparatus with the plurality of wings when the plurality of wings of the drilling apparatus are in the expanded position (col 3:13-17; the casing is lowered with the bit - col 1:56-58 - ).
19. The method of claim 16, wherein the drilling apparatus has a first apparatus diameter that is no greater than a first wellbore diameter of the wellbore when the plurality of wings are in the collapsed position ("When the cutters 17 are folded into the corresponding recesses 19 the maximum diameter of the wing collar 2 corresponds generally to the diameter of drill head 1 and both are smaller than the inside diameter of casing 8, so that they may be removed from the hole without removing the casing from the hole" - col 2:63-68), wherein the drilling apparatus has a second apparatus diameter that is greater than the first wellbore diameter of the wellbore (fig 1) when the plurality of wings are in the expanded position (ibid), and wherein the drilling process increases the first wellbore diameter of the wellbore to a second wellbore diameter that is at least the second apparatus diameter of the drilling apparatus (ibid).
Claims 1-4, 6, 7, 9, 11, 12, 14, 16, & 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 1,779,575 (Wilson).
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Independent claim 1. Wilson discloses a drilling apparatus for drilling in a subterranean formation (title, first ¶), comprising:
a main body (1, figs 1-3) including a plurality of blades (not individually numbered but clearly shown in fig 2, highlighted here), each blade of the plurality of blades including at least a first cutting edge (the rotationally forward end which acts as the backup for "cutting blades 4"; no more is required by the claim); and
a plurality of wing assemblies ("cutting blades 4" and the associated connection structure, cited below), each wing assembly of the plurality of wing assemblies comprising:
a wing ("cutting blades 4") with a hinge portion ("longitudinally extending pivot portions 4b" - fig 2 & the sentence bridging pages 1 & 2) and at least a second cutting edge ("cutting edges 4a at their outer sides" - ibid);
a corresponding knuckle of the main body ("recess 1d" - page 2:1-11); and
a connector inserted into the hinge portion and the corresponding knuckle ("…correspondingly shaped keys 5…" - page 2:10-21), wherein a wing of a wing assembly of the plurality of wing assemblies is rotatable between a collapsed position (not shown; page 1:10-16) and an expanded position (ibid & fig 2), and wherein the wing rotates from the collapsed position to the expanded position about a longitudinal axis of the connector in response to a rotation of the main body ("automatically forced outward during the reaming operation" - page 1:14-16).
2. The drilling apparatus of claim 1, wherein the drilling apparatus has a first diameter when each wing of the plurality of wing assemblies is in the collapsed position (inherent and well understood, but not individually shown; "…longitudinally pivoted reamer members, or blades, which may be folded inwardly when the reamer is inserted into or removed from the hole, and one in which the reamer members or blades are automatically forced outwardly during the reaming operation" - page 1:10-16), wherein the drilling apparatus has a second diameter when each wing of the plurality of wing assemblies is in the expanded position (figs 2 & 3), and wherein the second diameter is greater than the first diameter ("…longitudinally pivoted reamer members, or blades, which may be folded inwardly when the reamer is inserted into or removed from the hole, and one in which the reamer members or blades are automatically forced outwardly during the reaming operation" - page 1:10-16).
3. The drilling apparatus of claim 2, wherein the first diameter is defined at least in part by a width of a blade of the plurality of blades (when the blades are folded in, the width of the blades shown in fig 2 clearly "at least in part" define the width of the tool), and wherein the second diameter (fig 2) is defined at least in part by a width of a wing of the plurality of wing assemblies when the wing is in the expanded position (fig 2).
4. The drilling apparatus of claim 3, wherein the width of the wing is greater than the width of the blade (fig 2).
6. The drilling apparatus of claim 1, wherein in the collapsed position a first surface of the wing is proximate to the main body (not individually shown, but "a surface of the wing" of "pivot portions 4b" is "proximate to the main body" in the closed position as shown by 4b being within the knuckle / "recess 1d" of the main body), and wherein in the expanded position a second surface of the wing is proximate to a blade of the plurality of blades (directly abutting them: fig 2).
7. The drilling apparatus of claim 6, wherein the corresponding knuckle ("recess 1d" - page 2:1-11) is positioned within a pocket defined between adjacent blades of the plurality of blades (clearly shown by fig 2), and wherein the wing is proximate to the main body within the pocket when the wing is in the collapsed position (not individually shown, but in the folded position, the wing will inherently be between the blades and it is always "proximate" the main body at "pivot portions 4b").
9. The drilling apparatus of claim 1, wherein the drilling apparatus is an inline underreamer (title, fig 1) with a connector at a distal end of the drilling apparatus (connectors are at both ends: fig 3).
Independent claim 11 is similarly rejected over Wilson as similarly described for claim 1 above, respectfully not repeated in full again here. Wilson further discloses a drill string in communication with the main body (2 & 3, fig 3).
12. The system of claim 11, wherein the main body comprises a channel (1f and 1g, fig 2) configured to direct a fluid from the drill string radially away from a longitudinal axis of the main body (1g, fig 2) and against one or more wings of the plurality of wing assemblies such that the one or more wings rotates between the collapsed position and the expanded position ("These orifices [1f] direct water under considerable pressure against the blades 4, tending to force the same outwardly…" - page 2:45-53).
14. The system of claim 11, wherein the drill string includes a first section (2, figs 1 & 3) and a second section (3, figs 1 & 3), wherein the first section of the drill string is coupled to a first connector at a proximal end of the drilling apparatus (fig 3), and wherein the second section of the drill string is coupled to a second connector at a distal end of the drilling apparatus (ibid).
Independent claim 16 is similarly rejected over Wilson as similarly described for the above claims, respectfully not repeated in full again here. Wilson further discloses extending the drilling apparatus through the wellbore ("…a reamer [having] longitudinally pivoted reamer members… which may be folded inwardly when the reamer is inserted into or removed from the hole, and one in which the reamer members… are automatically forced outwardly during the reaming operation" - page 1:9-16);
actuating the plurality of wings of the drilling apparatus from a collapsed position to an expanded position (ibid);
performing a drilling process with the plurality of wings of the drilling apparatus in the expanded position (ibid & use downhole for "a drilling process" is the entire point. Otherwise the invention lacks utility);
retracting the drilling apparatus within the wellbore following the drilling process ("…which may be folded inwardly when the reamer is inserted into or removed from the hole" - page 1:9-16); and
collapsing the plurality of wings of the drilling apparatus for removal of the drilling apparatus from the wellbore (ibid).
19. The method of claim 16, wherein the drilling apparatus has a first apparatus diameter that is no greater than a first wellbore diameter of the wellbore when the plurality of wings are in the collapsed position ("…a reamer [having] longitudinally pivoted reamer members… which may be folded inwardly when the reamer is inserted into or removed from the hole, and one in which the reamer members… are automatically forced outwardly during the reaming operation" - page 1:9-16), wherein the drilling apparatus has a second apparatus diameter that is greater than the first wellbore diameter of the wellbore when the plurality of wings are in the expanded position (ibid & fig 2), and wherein the drilling process increases the first wellbore diameter of the wellbore to a second wellbore diameter that is at least the second apparatus diameter of the drilling apparatus ("underreamer" - title, as PHOSITA would readily understand).
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.
Claims 17 & 18 are rejected under 35 U.S.C. 103 as being unpatentable over US 1,779,575 (Wilson) in view of US 1,559,761 (Nebergall).
17. Wilson further discloses that the blades have on their upper edges "beveled portions 4d [fig 3]… so that when the reamer is inserted into the hole, or withdrawn therefrom, the beveled portions tend to engage obstructions in the hole and force the blades 4 about their pivotal axis" (page 2:32-39). But does not explicitly disclose that this is to close the reamers.
However Nebergall discloses an expandable reamer (figs 1 & 3) with a plurality of pivotable wings (11, fig 3) that are collapsed for removal from the wellbore ("On the outer edges of the blades, at the upper portions thereof, are beveled or inclined portions 20, as shown, so that when the reamer is withdrawn or raised from its operating position and enters the lower end of the well-casing 21, the later will engage said inclined edges 20 and cause the blades to swing to the folded positions within the grooves" - page 2:24-32) that are retracted by engaging a bottom edge of the wellbore (bottom edge of the casing - ibid) with the drilling apparatus with the plurality of wings when the plurality of wings of the drilling apparatus are in the extended position (ibid).
Therefore it would have been obvious to use the sloped engagement surfaces taught by Nebergall in the reamer taught by Wilson. This ensures the blades are retracted when entering the casing upon withdrawal. Further, the use of casing, and the drilling below an existing casing is exceedingly well understood in the art, as PHOSITA would immediately appreciate. This ensures the device does not get stuck below the casing.
18. The method of claim 17, wherein the bottom edge of the wellbore is a bottom edge of existing casing within the wellbore (Nebergall, page 2:24-32 as quoted above).
Allowable Subject Matter
Claims 5, 15, & 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.
Claims 5, 15, & 20 recite a collection of interchangeable wings of different sizes / masse s / diameters that are interchangeable with each other via removal of the "connector". The examiner views these claims as positively requiring the various sets of wings in a kit claim format. In other words, the examiner views claims 5, 15, & 20 as structural, not intended use.
While the prior art cited above might be capable of being replaced with differing blades, removing the connector and actually doing it is not expressly taught. The same is true of: US 1,559,761 (fig 3); US 1,764,377 (fig 5); US 2,912,228 (fig 3); US 4,193,462 (fig 2); US 4,202,416 (fig 9); US 5,219,246 (fig 7); US 5,934,394 (fig 1); US 2010/0236831 (figs 2 & 3); US 2025/0129671 (fig 4).
US 4,773,491 teaches an reamer analogous to the claims and prior art above (fig 2). But the blades / dimensions are changed by removing the entire "drive shank" (col 1:35-39 & col 1:52-56), not the individual blades via their connectors.
US 2021/0388679 teaches a radially expandable reamer (title, abstract) where the modules may be swapped out for those of differing dimensions & characteristics ("[0082] A hollow-sleeve arrangement may allow for sleeves of differing sizes to be employed at different times without altering the underlying elongate body. Specifically, the sleeve, radially encompassing the elongate body, may be one of a plurality of sleeves each capable of radially encompassing the body. Each of these sleeves may comprise a unique maximum radial dimension such that a single elongate body with one or more dynamic elements may be used in differently sized boreholes by exchanging the sleeve."). However this is a substantially different construction overall that the prior art above, and the present claims, and does not teach nor suggest the limitations of claims 5, 15, or 20.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blake Michener whose telephone number is (571)270-5736. The examiner can normally be reached Approximately 9:00am to 6:00pm CT.
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/BLAKE MICHENER/
Primary Examiner, Art Unit 3676