DETAILED ACTION
This communication is a final office action on the merits and in response to amendments filed on 4/9/2026. 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 .
Response to Amendments and Arguments
Applicant's amendments filed 4/9/2026 are sufficient to obviate the drawing, specification, and claim objections. They are also sufficient to obviate all prior 112(a) and (b) rejections.
Regarding the 103 rejection over US 8,365,826 (Braddick) in view of US 5,417,289 (Carisella), Applicant's remarks have been fully considered but are respectfully not persuasive. Applicant first asserts "Carisella merely refers to the inflatable packer as providing a seal. There is no indication in Carisella that the inflatable packer could operate as an anchor, let alone an anchor that would provide sufficient holding force to maintain the downhole assembly in place during operation of a fishing device to pull and move an object. Thus, the person of ordinary skill in the art would not discern any advantage regarding the usability of the pulling tool assembly that could be gleaned from the inflatable packer of Carisella" (bottom of page 7 & top of page 8 of the as-filed Remarks).
First, Applicant is largely arguing nomenclature (Carisella does not use the word "anchor" per se, but the claimed structure is taught) and Applicant's arguments imply there is much more structure required for the "anchor" than there actually is in the claims. However, the "anchor" is recited at almost the highest level of generality possible, and is even disclosed at a similarly high level of generality (discussed below). Further, there is no numerical force values recited in the claim and therefore even holding a force of 0.5 N is sufficient. Is Applicant asserting that the packer of the prior art is incapable of supporting literally any weight? This would contrast with Carisella describing it as a "a packer, bridge plug, tubing hanger" (first ¶ of col 4) and the tubular below the packer that is clearly and reasonably supported by it (fig 3). Applicant themselves describe the present "anchor including an elastomeric anchor element" as "[p]refereably, the elastomeric anchor element is a packer element" (¶ 26 of the present case's PGPUB, US 2025/0354448), but yet they disparage the prior art as being merely a packer despite all the claimed structure being taught.
In other words, rather than arguing about how much force the prior art is capable of supporting versus the present case is alleged to hypothetically support, Applicant is respectfully invited to recite the structure that results in the alleged present higher force anchoring. The prior art packer teaches all the claimed structure for the "anchor" (which is conspicuously recited at an extremely high level of generality and is taught as a "packer" in the present case in the exact same manner as the prior art) and it is therefore generally reasonable to presume that the prior art is capable of meeting the functions of the claim, both of which are recited at an extremely high level of generality. See MPEP 2112.01, subsection I: "When the structure recited in the reference is substantially identical to that of the claims, claimed proprieties or functions are presumed to be inherent".
Second, if it is the applied pressure "in the throughbore" that allows for the necessary force application in the present case ("The grip force of the packer used to anchor the assembly and the pull force of the downhole assembly are both proportional to the pressure applied" - ¶ 27 of the present case's PGPUB, US 2025/0354448) the same is true of the prior art.
Third, the examiner respectfully notes the level of generality the present "anchor" is disclosed at in present figure 3. The only two sub-elements therein are "elastomeric anchor element 62" and "throughbore 36", both of which are explicitly taught in the prior art of Carisella ("An inflatable elastomeric bladder 40" - col 4:20 - and "bore 18" - col 4:52). The present case does not even have any internal reinforcements disclosed, unlike Carisella. But yet Applicant disparages Carisella as being supposedly incapable of supported the same amount alleged force as the present packer. All this while the present disclosure actually has less details for the packer than the prior art.
Put simply, what is the structure of the presently disclosed packer that allows for the forces Applicant alleges in their arguments that is different than the prior art? Applicant's arguments would have weight if there was a reasonable correlation between the arguments and claims. But the claims are recited as broadly as possible, and patentability is being alleged relative to the function, not the claimed structure. However, the prior art teaches the claimed structure, which is the standard for examination of apparatus claims, as is well established.
Fourth, Applicant alleges "the person of ordinary skill in the art would not discern any advantage regarding the usability of the pulling tool assembly that could be gleaned from the inflatable packer of Carisella". This conspicuously ignores the motivation / rationale expressly presented on page 8 of the prior action, and Applicant does not attempt to refute the rationale in favor of simply asserting none is present.
Applicant also asserts "Braddick states at paragraph [0020] that a slip mechanism is a desirable anchor for the pulling tool assembly because the axial force applied to the plurality of slips is reactive to the force exerted on the fishing device by the plurality of pistons, so increasing force on the slips increases the engaging force of the fishing device, and the slip mechanism allows the forces generated by the pistons to act simultaneously on the slip mechanism and on the tool mandrel. Thus, the person of ordinary skill in the art would not contemplate alternative mechanisms, contrary to the teaching of Braddick, especially without any assurances of said alterative mechanism (such as the inflatable packer of Carisella) functioning to provide or allow sufficient gripping force" (middle of page 8 of the as-filed Remarks).
First, review of the prior action at page 8 will show that the examiner did not propose replacing the slips with the packer as Applicant alleged. The same was true in the prosecution of the present application's parent case. Second, the inflatable packer of Carisella is commensurate with the claimed structure and the disclosed structure of the present anchor (which applicant also calls a "packer"). So the examiner again asks plainly: what is the disclosed structure that provides so much of the improvement alleged by Applicant? Where is it in the claims and where it is it in the disclosure? Applicant has clearly attempted to recite and disclose these features at a high level of generality (as is their right). However, their arguments imply some improvement that the prior art is incapable of meeting, but the structure the provides this alleged improvement is neither in the claims nor disclosure (as discussed above).
Third, as Applicant themselves acknowledge, Braddick teaches "increasing force on the slips increases the engaging force of the fishing device, and the slip mechanism allows the forces generated by the pistons to act simultaneously on the slip mechanism and on the tool mandrel" (as quoted above). The packer taught by Carisella is pressurized by this same fluid pressure, and therefore would also increase the gripping force of the packer, in the same manner in which Applicant disparages the combination.
The examiner respectfully maintains the prior art rejection.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over US 8,365,826 (Braddick) in view of US 5,417,289 (Carisella).
Independent claim 1. Braddick discloses an apparatus to move an object (title, abstract) in an open hole section of a wellbore (Intended use; not a method claim. Also addressed in the modification in of Carisella below), the apparatus comprising:
a string for running into the well ("a fishing tool includes an upper connector 12 for interconnection with a lower end of the workstring via threads 14" - col 2:24-26), the string being arranged to carry a fluid in a throughbore thereof ("…in response to pressurized fluid transmitted through the work string" - abstract) and including a downhole assembly (figs 1-5), the downhole assembly comprising:
a downhole pulling tool ("plurality of pistons (16, 28, 34) each movable in response to pressurized fluid transmitted through the work string… so that axial movement of the mandrel in response to the plurality of pistons dislodges the stuck tool or tubular" - abstract), the downhole pulling tool comprising an anchor ("anchor 52" - abstract & fig 3) for axially fixing the downhole assembly to a borehole wall ("A slip assembly as shown in FIG. 3 is a suitable mechanism serving as an anchor to axially position tool housing in the well." - col 3:19-21) of a section of the wellbore (ibid) and
an inner mandrel ("mandrel 35" & "mandrel extension 40") axially moveable relative to the anchor in response to the fluid in the throughbore (the fluid flow actuates the pistons, which in turn moves the mandrel relative to the anchor: "plurality of pistons (16, 28, 34) each movable in response to pressurized fluid transmitted through the work string… so that axial movement of the mandrel in response to the plurality of pistons dislodges the stuck tool or tubular" - abstract); and
a fishing device connected to the inner mandrel for engaging the object ("a fishing device, such as a grapple, a spear, a taper tap or any other type of fishing device 82 that is operated to engage the fish and break the fish loose by application of tensile forces" - fig 5 & col 3:15-18),
wherein an increase in fluid pressure in the throughbore operates the downhole pulling tool to anchor the downhole assembly to the borehole wall ("A slip assembly provides an anchor for axially fixing the position of the tool housing in the well, and is movable to a set position in response to axial movement of the plurality of pistons" - col 1:57-60. The pistons are fluid pressure actuated: abstract as cited above. "…since the mandrel axially moves with the grapple or other fishing tool or device in response to the same force from the pistons. More particularly, the axial force applied to the plurality of slips [the anchor device] is reactive to the force exerted on the fishing device by the plurality of pistons, so as the force on the slips is increased, the engaging force of the fishing device is increased" - col 3:23-29. Claims 2 & 15), raise the inner mandrel relative to the open hole anchor ("plurality of pistons (16, 28, 34) each movable in response to pressurized fluid transmitted through the work string… so that axial movement of the mandrel in response to the plurality of pistons dislodges the stuck tool or tubular" - abstract) and pull the object (ibid).
Braddick does not disclose that the anchor has an elastomeric element. And while the use in an open hole wellbore is intended use in an apparatus claim, Braddick does not explicitly disclose the anchor is used in an open hole.
Carisella discloses an anchor device (abstract) with an elastomeric anchor element ("annular elastomeric packing cover 75" - col 4:33-36) that anchors to an open hole section of wellbore ("The well bore may be cased or uncased. If [the] well bore is uncased, the wellbore will have a wall" - col 2:26-24; "The wall of the well bore A may be cased or uncased" - col 5:58-59). The examiner notes the discussion of drawing Carisella to an "anchor device" in the Response to Amendments and Arguments section above, respectfully not repeated in full here. Carisella discloses the claimed structure and the disclosed structure for the anchor (present figure 3 only identifies two elements of the anchor, both of which are taught by the prior art, as discussed above), and also expressly supports tubing (first ¶ of col 4 & fig 3).
Therefore it would have been obvious to PHOSITA at the time of filing to use the elastomeric packer assembly taught by Carisella on the pulling tool assembly taught by Braddick. First, this increases the usability of the pulling tool assembly by facilitating use in both open holes and cased holes (Carisella, as cited above), not just cased holes taught by Braddick. This improves the industrial applicability of the tool. Second, it is also a releasable and resettable as a packer ("After actuation of the packer 10, the packer may be deflated and thereupon removed from the well bore A or moved to a new pre-determined position within the well bore A for subsequent actuation" - col 6:14-17), and will therefore be reusable if the initial stroke of Braddick does not fully free the stuck object (col 3:32-41). The examiner notes that this modification is not the replacement of anchor 52 of Braddick, but rather the addition of the inflatable packer 10 of Carisella.
2. The apparatus according to claim 1, wherein the open hole anchor is re-settable (Carisella: "After actuation of the packer 10, the packer may be deflated and thereupon removed from the well bore A or moved to a new pre-determined position within the well bore A for subsequent actuation" - col 6:14-17).
3. The apparatus according to claim 2, wherein the elastomeric anchor element comprises an inflatable packer element (Carisella: title, abstract).
4. The apparatus according to claim 2, wherein the anchor ("anchor 52" of Braddick in combination with "packer 10" of Carisella as modified in claim 1 above) further comprises at least one gripping element ("slips 52 [with] teeth53" - fig 3 of Braddick) to engage the borehole wall in the open hole section (capable of engaging an open hole section). The examiner notes that, while the present case shows "anchor 56" with "gripping elements 64" thereon (present figure 1), this is at an extremely high level of generality and is shown and discussed only schematically. There is no commensurate disclosure for the "gripping elements" in the more detailed description of "anchor 56" in present figure 3, and no apparent features which could incidentally be the "gripping elements" as they are shown in fig 1. This raises 112(a) "written description" questions regarding the present assembly as were similarly discussed at length in the parent application, (US serial number 17/800,252), specifically pages 7-10 of the non-final rejection mailed 1/29/2024. Without fully repeating that discussion here, the examiner respectfully notes that if it is Applicant's position that PHOSITA would be able to make and use an inflatable packer with additional gripping elements based off the present disclosure, the same is true of the prior art. Broadness and the skill of PHOSITA is a two way street. Applicant can not reasonably argue expansively with respect to the skill of PHOSITA to support their application under 112(a) and then minimize the skill of PHOSITA with respect to the prior art.
Put yet another way, Braddick teaches an anchor with gripping elements. Carisella teaches the use of an inflatable open hole packer. And there is motivation to combine these elements as discussed in the 103 modification of claim 1 above.
5. The apparatus according to claim 1, wherein the downhole pulling tool includes a housing (Braddick: "A tool housing is supported in a well on a work string, and the housing encloses a plurality of pistons (16, 28, 34)" - abstract; "A tool housing is supported in the well by a work string, which in turn supports a plurality of axially stacked pistons each movable in response to pressurized fluid transmitted downhole on the workstring" - col 1:53-57; "outer sleeve or housing 22" - figs 1-3 & col 2:34-44) supported in the well by the string ("…supported in the well by a work string" - col 1:53-57 as quoted above) and enclosing a plurality of axially stacked pistons ("…the housing encloses a plurality of pistons (16, 28, 34)" - abstract) generating a cumulative axial force ("… a plurality of axially stacked pistons each movable in response to pressurized fluid transmitted downhole on the workstring" - col 1:53-57. "a plurality of axially stacked pistons generating a cumulative axial force" - claim 1 of Braddick), each of the plurality of pistons axially movable in response to the fluid increase in the throughbore (ibid); and
wherein movement of the pistons also moves the inner mandrel ("… such that axial movement of the tool mandrel in response to the plurality of pistons dislodges the stuck tool or tubular" - col 1:63-65).
6. The apparatus according to claim 1, wherein the fixing device is selected from a group comprising: a spear (Braddick: "a fishing device, such as a grapple, a spear, a taper tap or any other type of fishing device 82" - col 3:15-17), an overshot, a grapple (ibid) and an anchor (ibid).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US 8,365,826 (Braddick) & US 5,417,289 (Carisella), as applied above, in further view of WO 2015/065196 (Evertsen 2). A copy of Evertsen 2 has been previously presented.
8. The combination discloses all the limitations of the parent claims and further discloses that the downhole assembly includes a valve for blocking the flow of fluid through the throughbore (Braddick: "ball seat 66" and the ball which lands on it, form a check valve - fig 4 & ¶ bridging cols 2 & 3). This valve is used to control the application of fluid pressure to the other elements of the tool, witch the pistons of the pulling tool section being uphole of the valve (figs 2-4) and the fishing tool downhole of the valve (figs 4-5). Braddick does not disclose the valve being actuated by raising the pulling tool. Rather the valve is a ball seat check valve as discussed above.
However Evertsen 2 discloses a downhole anchoring ("fixing device 18" - page 1 & ¶ bridging cols 5 & 6), pulling ("hydraulic jack 14" & "telescopic element 16" - ibid), and fishing assembly ("fishing device with fixing device 22" - fig full ¶ of page 6), with a valve ("valve 24" - fig 1 & abstract) between the uphole pulling tool section and the downhole fishing device (as shown in fig 1). The valve controls the application of fluid pressure to the uphole hydraulic pulling assembly (first full ¶ of page 2 & page 6:18-27, as is similarly true for Braddick, as discussed above) and is expressly taught as being an alternative to ball drop type check valves (ibid). The valve is closed by raising the downhole pulling tool relative to the fishing device when the fishing device engages the object (page 6:18-27; page 9:24-31; claim 2; open in figs 2 / 5, closed in figs 4 / 6) and opened by setting pressure down on the downhole pulling tool ("main spring 56" will transition the valve open by collapsing the telescoping section and moving from open to closed: page 9:12-31. However if it is still attached to the fish, the biasing force of spring 56 will not be overcome. Therefore, "setting down" on the pulling tool - the opposite motion from which opens it, as cited above - will inherently collapse the telescoping joint and open the valve: transition from fig 4 to fig 2).
Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to use the valve assembly taught by Evertsen 2 in place of the ball drop check valve taught by Braddick. The tools are very analogous as discussed above and Evertsen 2 expressly teaches the valve as an alternative to a ball drop check valve, as well as Evertsen 2's "style" working better in non-vertical wellbores (page 2:3-20).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over US 8,365,826 (Braddick) & US 5,417,289 (Carisella), as applied above, in further view of GB 2556461 A (Forde), a copy of which was included with an IDS on 10/31/2025.
Claim 9. The combination discloses all the limitations of the parent claim but just discloses the stuck element or "fish" generically, and does not disclose that it is a cut section of tubular.
However Forde discloses a downhole pulling ("pull tool 42" - abstract) and fishing assembly ("spear tool 40" - abstract) with a cutting tool in the downhole assembly ("cutting device 36" - fig 2 and page 12:29-26) and using the cutting tool to cut a section of tubular to be removed (page 14:16-26).
Therefore it would have been obvious skill in the art at the time of filing to add the casing tool taught by Forde to the fishing assembly taught by the combination. As discussed above, Braddick discloses the type of stuck element / "fish" generically, which suggests a broad applicability of the tool. However the generic disclosure of Braddick forces the reader to look elsewhere for a more detailed discussion with regards to the fish in particular. Forde teaches an analogous system used to remove casing, with the added functionality of being able to perform the cutting and pulling operation in a single trip (page 14:25-26). Casing is removed for a variety of reasons, including replacement of worn or damaged casing, re-completion of the wellbore, drilling laterals off the main wellbore, and abandonment.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over US 8,365,826 (Braddick) & US 5,417,289 (Carisella), as applied above, in further view of US 2015/0300154 (Hallundbaek).
Claim 10. The combination discloses all the limitations of the parent claim but does not expressly disclose those of the present.
However Hallundbaek discloses the use of inflatable packers (17, figs 1, 2, & 10; ¶ 57) that seat against a wall of an open hole wellbore (figs 1 & 10), wherein the downhole assembly further comprises a jetting tool ("second end 21" - ¶ 73; "before sealing the second end 21 of the first production casing 3 [by "ball 29" which is used to control the application of fluid pressure to the inflatable packers - ¶ 58], a flushing fluid may be injected from the second end of the first production casing 3 to perform a clean-out by flushing most of the drilling mud outside the first production casing 3 along the outside of the first production casing 3 and along the outside of the drill pipe") to wash an inner wall of the open hole section (ibid).
Therefore it would have been obvious to PHOSITA at the time of filing to jet fluid from the downhole assembly taught by the combination to clean the open hole walls as taught by Hallundbaek. This cleans out the wellbore and aids in the creation of a tight seal against the wellbore wall (¶ 73).
Conclusion
THIS ACTION IS MADE FINAL. 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 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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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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/BLAKE MICHENER/
Primary Examiner, Art Unit 3676
