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 Amendment
The Preliminary Amendment filed November 26, 2025 has been entered and consider with the Office Action below.
Claims 1-20 have been cancelled.
Claims 21-40 have been added.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, PCT/EP2021/079019, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. PCT/EP2021/079019 fails to disclose the “initiator holder” recited in claims 28, 29, 32, and 37. As such, claims 28, 29, and 32-40 are not granted benefit of the filing date of this application or the filing data of the applications from which it claims priority.
The disclosure of the prior-filed application, PCT/EP2021/058182, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. PCT/EP2021/058182 fails to disclose the “orientation alignment ring” recited in claim 21. As such, claims 21-31 are not granted benefit of the filing date of this application or the filing data of the applications from which it claims priority.
The disclosure of the prior-filed application, Application No. 29/784384, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Application No. 29/784384 fails to disclose the “orientation alignment ring” recited in claim 21. As such, claims 21-31 are not granted benefit of the filing date of this application or the filing data of the applications from which it claims priority.
The disclosure of the prior-filed application, Provisional Application 62/945,942, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Provisional Application 62/945,942fails to disclose the “orientation alignment ring” recited in claim 21. As such, claims 21-31 are not granted benefit of the filing date of this application.
The disclosure of the prior-filed application, Provisional Application 63/001,766, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Provisional Application 62/945,942fails to disclose the “orientation alignment ring” recited in claim 21. As such, claims 21-31 are not granted benefit of the filing date of this application.
The disclosure of the prior-filed application, 17/834,417, PCT/EP2020/085624, and the provisional from which it claims priority, Provisional Application 63/003,222, provides adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for all of claims of this application. As such, claims 21-40 are granted benefit of the filing date of these applications. The effective filing date of claims 21-40 is March 31, 2020.
Drawings
The drawings were received on July 14, 2025. These drawings are accepted.
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 37-40 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.
Regarding claim 37: Both lines 9 and 12 require that the initiator assembly include “an orientation sensor”. It is unclear if both occurrences are referring to the same sensor or separate elements. For the purpose of examination, the recitation of “an orientation sensor” in both lines 9 and 12 are being treated as the same sensor.
Regarding claims 38-40: These claims are considered to be indefinite due to their dependence on claim 37.
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 21 and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 11, and 15 of U.S. Patent No. 12,448,854. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent No. 12,448,854 are merely broader recitations of claims 21 and 32 of the instant application. Specifically, claim 21 corresponds to claims 1 and 5 of U.S. Patent No. 12,448,854 and claim 32 corresponds to claims 11 and 15 of U.S. Patent No. 12,448,854.
Claim 37 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,448,854. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 16 includes essentially the same subject matter as claim 37 of the instant application with the exception of “the initiator assembly comprising an orientation sensor configured to determine an orientation of the initiator assembly within a wellbore” at the end of the claim. This portion of claim 37 is considered to be the obvious method of use of the orientation sensor required in claim 16 of U.S. Patent No. 12,448,854.
Claim 38 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,448,854. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 17 of U.S. Patent No. 12,448,854 includes all of the limitations of claim 38 of the instant application and differs only in that the two corresponding independent claims, claims 16 and 37 respectively, differ in an obvious manner.
Allowable Subject Matter
Claims 22-31 and 33-36 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 21 and 32 would be allowable if rewritten or amended to overcome the double patenting rejection, set forth in this Office action, or a Terminal Disclaimer filed.
Claims 37-40 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, as well as the double patenting rejection, also set forth in this Office Action, or a Terminal Disclaimer filed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 21: The prior art of record fails to disclose or suggest a gun housing having a transverse wall positioned between an intermediate portion of the gun housing and a first end of the gun housing, the transverse wall defining an opening therethrough configured for passage of an end of a bulkhead into the interior space of the intermediate portion of the gun housing as recited in the claimed combination.
Regarding claims 32 and 37: The prior art of record fails to disclose or suggest an initiator assembly that includes an orientation sensor as recited in the claimed combination and method.
Regarding claims 22-31, 33-36, and 38-40: These claims are considered allowable due to their dependence on one of the above claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER H GAY whose telephone number is (571)272-7029. The examiner can normally be reached Monday through Thursday, 6-3:30 and every other Friday 6-11.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Y Coupe can be reached at (571)270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER H GAY/Primary Examiner, Art Unit 3619
JHG
4/6/2026
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