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 .
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 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-18 of U.S. Patent No.12,392,213. Although the claims at issue are not identical, they are not patentably distinct from each other because the listed calms of the present application are fully encompassed by the listed claims of the reference patent.
Claim Rejections - 35 USC § 102
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 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) 1-4, 7 and 17 are rejected under 35 U.S.C. 102a1 as being anticipated by Jacob (WO 2020086892).
Jacob discloses a method, comprising:
Re claim 1:
deploying a plug assembly (i.e., fig. 6, pgh. 68, plug) into a casing 1 within а drilled hole (i.e., fig. 5), the plug assembly comprising a tubular metal seal 70 (i.e., fig. 6, pgh. 69, 'the continuous expandable ring 70 with a cylindrical sealing section 72') having an interior, an exterior, a sidewall extending between the interior and the exterior, a proximal end, a distal end, and a length extending between the proximal end and the distal end, the interior at the proximal end having a tapered interior portion extending inwardly toward the distal end along the length (i.e., fig. 6);
deploying a setting tool 62 into the casing within the drilled hole, the setting tool having a first end 63 having a tapered exterior portion; expanding the tubular metal seal radially to a first radial diameter with the setting tool by moving the setting tool longitudinally such that the tapered exterior portion 63 of the first end of the setting tool engages the tapered interior portion 73 of the proximal end of the tubular metal seal (i.e., fig. 8); and
removing the setting tool 62 from the casing (i.e., pgh. 78, 'the retrievable setting tool 62 will be recovered and brought back to surface').
Re claim 2, expanding the tubular metal seal 70 radially to the first radial diameter comprises plastically deforming at least the proximal end of the tubular metal seal with the setting tool and thereby conforming at least the proximal end of the tubular metal seal to the interior of the casing 1 (i.e., fig. 8).
Re claim 3, the interior of the casing 1 has an irregular shape (see at the point of the casing that accepts buttons 74), and wherein expanding the tubular metal seal radially to the first radial diameter (i.e., fig. 8), comprises expanding the tubular metal seal radially such that the tubular metal seal has an irregularly shaped circumference 72, 71, 74 conforming to the irregular shape of the interior of the casing 1.
Re claim 4, the tubular metal seal 70 has a radial interior groove 75 (i.e., figs. 6 and 7B) in the sidewall extending about the interior.
Re claim 7, expanding the tubular metal seal 72 radially to the second radial diameter comprises conforming the tubular metal seal to the interior of the casing 1 (i.e., the metal seal must radially expand continuously in order to contact with the inner surface of the casing).
Jacob discloses an assembly, comprising:
Re claim 17:
a tubular metal seal 70 (i.e., fig. 6, pgh. 69, 'the continuous expandable ring 70 with a cylindrical sealing section 72') having an interior, an exterior, a proximalend, a distal end, a length extending between the proximal end and the distal end, and a sidewall extending between the interior and the exterior, the interior having a tapered portion extending inwardly along the length toward the distal end, the interior having a radial interior groove 75 (i.e., figs. 6 and 7B) located between the tapered portion and the distal end; and
wherein the tubular metal seal is radially expandable to a first radial diameter (i.e., fig. 8) by moving a setting tool 62 longitudinally such that a tapered exterior portion 63 of a first end of the setting tool engages the tapered portion 73 of the interior of the proximal end of the tubular metal seal, thereby radially deforming the tubular metal seal (i.e., fig. 8).
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.
Claim(s) 8-10, 12-15 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jacob in view of Martin et al. (9976381 – Martin).
Re claim 8, Jacob is silent on an elastomer seal positioned on the exterior of the tubular metal seal. Martin teaches an elastomer seal 1904 (i.e., fig. 20, col. 18:35-36) positioned on the exterior of the expandable metal sleeve 1900 (i.e., figs. 20 and 21). It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to try the system of Jacob, with the elastomer seal, as taught by Martin to provide an additional fluid tight seal.
Martin further discloses,
Re claim 9, expanding the elastomer seal (i.e., it is O-ring or elastic band) on the exterior of the tubular 1900 such that the elastomer seal is in contact with the casing 2100.
Jacob further discloses,
Re claim 10, a frustoconical tube 60 having a first end in contact with the distal end of the tubular metal seal 70 (i.e., fig. 8), wherein the first end of the frustoconical tube has a first diameter and the frustoconical tube has a second end having a second diameter smaller than the first diameter.
Re claim 12, a slip member 70 (i.e., 70 also has with slips 74) having one or more slip segments (below slips 74) positioned at least partially around the second end of the frustoconical tube 60; and wherein the method further comprises: moving the frustoconical tube 60 longitudinally within the one or more slip segments by moving the setting tool 62 longitudinally (i.e., from fig. 6 to fig. 8), thereby expanding the one or more slip segments 74 outwardly.
Re claim 13, moving the frustoconical tube 60 longitudinally by moving the setting tool longitudinally further comprises moving the frustoconical tube longitudinally with the setting tool via transferred force through the tubular metal seal (i.e., pgh. 69, 'movement is preferably activated by a conveyance toolstring').
Re claim 14, expanding the one or more slip segments outwardly comprises expanding the one or more slip segments outwardly until grips on the one or more slip segments contact the casing (i.e., fig. 8).
Re claim 15, a slip member having one or more slip segments 74 positioned at least partially around the second end of the frustoconical tube 60; and an end cap 64 in contact with the slip member (through 66 and 75).
Re claim 20, a frustoconical tube 60 having a first end in contact with the distal end of the tubular metal seal 70 (i.e., 8), wherein the first end of the frustoconical tube has a first diameter and the frustoconical tube has a second end having a second diameter smaller than the first diameter; and a slip member 70 (i.e., 70 also has with slips 74) having one or more slip segments (below slips 74) positioned at least partially around the second end of the frustoconical tube 60.
Allowable Subject Matter
Claims 5, 6, 11, 16, 18 and 19 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hirth et al. (6862206) teaches packer with metal sealing element. Stout (8459347) discloses a plurality of anchoring elements and seals with respective anchoring and sealing engagement.
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/YONG-SUK (PHILIP) RO/ Primary Examiner, Art Unit 3676