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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
708, fig 7
1406, fig 14
1706, fig 17
1912, figs 17 & 20
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 10 is objected to because of the following informalities:
Claim 10 recites "a second side of the carrier" which should read "the second side of the carrier" as this feature is already recited in parent claim 9.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
The following recitations are held as invoking 112(f). The examiner does not quote the claimed functional recitations here in the interests of brevity:
Claims 1, 11, & 19: "a plurality of actuators…" - second clause of the body. "Actuator" is both functional and generic. The only structure in this clause is "a first end" which is certainly not "sufficient structure" to specifically define the 'actuator". This is drawn to "hydraulic cylinders 116" and equivalents thereof.
Claims 1 & 19: "a plurality of pairs of gripper assemblies…" - fourth clause of the body. "Gripper assembly" is both functional and generic, and is followed by an entirely functional recitation. The "gripper assemblies" are drawn to the "assemblies" of "slip plate 122" / "slide plate 122" (as-filed paragraph [0032] & dependent claim 10), the "alternating angled surfaces" of the slide plates ([0036] & dependent claim 10), the plurality of biasing springs (as-filed paragraphs [0039], [0055] & present claims 5 & 6), the "gripping inserts 126" ([0032]) / "pipe inserts" (claims 9 & 10), the angled teeth of the inserts ([0038]), the "retaining arm 404" ([0034], [0039] and present claim 9), and "retaining rod 2302" ([0054], which together provide the functional outcomes for the "gripper assemblies" of claim 1 (and equivalents thereof). The examiner notes that the final two clauses of claims 1 & 19 include further additional functional recitations for the means-plus-function 112(f) invocation.
Claims 3, 11, & 10 recite "a pair of members for…" followed by a functional limitation. Claim 3 also recites "a pair of locking bars each connected to one of the pair of members and extending downwardly therefore" as well as "a least one lift rod…", both followed by a functional limitation.
These are clear 112(f) invocations. The word "rod" is not reasonably "sufficient structure… for performing the claimed function" as a whole. However, as discussed in the 112(b) rejections below it is not clear to the examiner what elements they are drawn to, as is required by such a recitation per MPEP 2185, paragraph (C).
Claims 4 & 13 recite "a wear insert configured to be removably connected to the support frame at areas where the member slidably engages the support frame". This is again a clear 112(f) invocation as there is zero clear structure in the claim. This is drawn to the structure and locations of figs 18 & 19, discussed in as-filed paragraphs [0058] & [0059], and equivalents thereof.
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.
Claims 2-4 & 7-21 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claims 2 & 12 recite "a plurality of separate portions that are configured to be bolted together". As similarly discussed in the previous parent case, while "configured to" is not improper per se, the examiner holds "configured to be bolted together" to be indefinite as currently worded because it is unclear if Applicant is attempting to recite an assembly (implied by the preamble of "An omnidirectional slip bowl") or if Applicant is attempting to recite a collection of unassembled parts, like a kit claim. Similarly, do claims 2 & 12 require bolts, or merely the capability of using bolts?
The preamble and specification imply an assembly, but "configured to be bolted together" appears to require merely a collection of "separate portions" that are capable of being "bolted together". While it is Applicant's right to word the claims broadly, the use of "configured to" in the present context creates ambiguity as to what is actually required, structurally by the claim. In other words, in Applicant's attempt to word the claims broadly, and to eschew simply reciting "a plurality of separate portions that are bolted together" in plain language, Applicant broadens the metes and bounds of the claim so that what exactly is covered is unclear.
Claims 3, 11, & 19 recite "a pair of members for slidably engaging the support frame in a direction parallel to the central axis of the support frame, each member of the pair of members connects to a pair of the plurality of actuators to move the member between the open configuration and the closed configuration". This is a clear 112(f) invocation as similarly discussed above.
However, it is unclear what disclosed structure this means-plus-function invocation is referencing, and therefore the limitation is indefinite per MPEP 2185, paragraph (C). There are any number of disclosed structures that would apparently read on this, which typifies the indefiniteness of the 112(f) invocation. The "pair of members" of claims 3 & 11 could be any of:
The plurality of "cylinder mounts 120" ([0031]), which are attached to the actuators (ibid), slidably move relative to the support frame parallel to the frame's access (transition between figs 1 & 2), and have "latching bar 304" ([0033]) / "locking bar 304" ([0035]) extending downward therefrom (figs 3, 4, & 7);
The "upper cylinder mount[s] 920", which move vertically and are attached to the actuators 916 (figs 10-12), and which have several elements "extending downwardly therefrom" (fig 11);
The "latch bar 1102" which moves vertically ([0052]) and has numerous elements extending therefrom (fig 11);
"latching bar 304" which moves vertically and are attached to the actuators (figs 3, 4, & 7; [0033]) and have "connectors 712" & "cylindrical members 716" extending therefore ("downwardly" having very little limiting nature as currently worded) and 704 also extending therefrom (fig 7).
While it is not improper per se for Applicant to word the claims as broadly as possible, and to eschew reciting structure, this has resulted in clear 112(f) invocation and a lack of clarity as to what the claims actually required or exclude. The ability to clearly map a means-plus-function limitation is a requirement for such a recitation. MPEP 2185, paragraph (C).
Similarly, the examiner holds "a pair of locking bars… extending downward" from the "pair of members" and the "at least one lift rod…" as indefinite means-plus-function recitations because it is unclear in light of the specification what this 112(f) invocation is requiring. All of the above possibilities for the "pair of members" have elements extending therefrom, which similarly renders the "pair of locking bars" and "at least one lift rod" means-plus-function limitation unclear.
Claims 12-18 depend from claim 11.
Claims 4, 7, 13, & 16 recite "wear insert configured to be removably connected to…" The examiner respectfully holds this to be indefinite as similarly described for claim 2 above. What does "configured to be removably connected to" structurally require that is not already reasonably covered by just "removably connected to"? Applicant's phrasing is clearly an attempt to broaden the claim, but what the broadening encompass is not clear.
Claims 8, 17, & 19 recite "the first bolt is configured to be moved to provide a plurality of first predetermined positions" which is respectfully held as indefinite as similarly described above. Are the bolts movable or not? Further, the ability to "provide a plurality of first predetermined positions" does not appear to be a feature of the "first bolt's" configuration alone, or perhaps at all. Rather, the "provid[ing] a plurality of first predetermined positions" is a result of a combination of the bolts and the pivot arms together: "A plurality of holes 2008 allow the lower stop bolt 2004 to be moved to a variety of positions" (as-filed [0061]). Put another way claim 8 attempts to recite this movability as a feature / "configuration" of the bolts alone, when the specification clearly describes other features being involved. Does claim 8 require "a plurality of holes 2008", because that is what appears to "provide a plurality of first predetermined positions", and not any "configuration" of the bolt itself. In Applicant's attempt to word the claim broadly and to eschew plain structural recitations, they imply numerous unrecited features are present but the claims do not actually recite such features without improperly importing them from the specification. See MPEP 2111.01, subsection I. Applicant themselves disclaim any limiting nature of the specification on the claims in as-filed paragraph [0063]. Claims 20 & 21 depend from claim 19.
Claims 9 & 11 recite "a retaining rod configured to be inserted…" which is held as indefinite as similarly described above. Is the rod in the channel or not, and if not, how is it an "assembly" as claimed? Claim 10 depends from claim 9. Claims 12-18 depend from claim 11.
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 & 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,404,729 in view of US 3,760,469 (Brown).
Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are only broader than the issued claims. Under the same logic that a narrower species will always anticipate the broader genus (MPEP §2131.02, subsection I), claims which are only narrower can not be held patentably distinct from claims which are only broader.
Present claim 1 is, generally speaking, only broader than issued claim 1, and lacks the issued claim's recitations for the "carriers" and "slide plates". Besides merely grammatical differences, present claim recites that the "pivot arms for moving between an open configuration and a closed configuration" are "located on opposite sides of the support frame". This "opposite sides" is not found in the issued claims.
The examiner first respectfully asserts that this limitation is implicitly self-obvious, as slips are intended to grip around the pipe string. Modern slips are circumferential gripping assemblies. However, this is not inherent, thus necessitating a secondary reference.
Brown teaches a slip assembly with a support frame (fig 1, elements 69, 73, 75, 36, 11, 54, along with a few other intervening elements that collective define the "frame" clearly taught by Brown) and a pair of actuating / pivot arms (25 with pivoting portion 28, that are moved by actuators 12 & 13 to open and close the slips; 2nd ¶ of col 6) for moving between an open configuration (fig 3) and closed configuration (fig 4), each of the pair of pivot arms located on opposite sides of the support frame (figs 3 & 4).
Therefore it would have been obvious to PHOSITA at the time of filing to place the pivot arms of the present claims on opposite sides of the support frame as taught by Brown. As discussed above, this is suggested logically by the known state of the art, and is expressly taught as known by Brown. Placing the arms (and their grippers) on opposite sides of the frame allows them to pinch or grab the tubular string between them for a firm support.
Present claim 2 recites "the support frame comprises a plurality of separate portions that are configured to be bolted together". This is not recited in the issued claims. However Brown discloses that the support frame (fig 1, elements 69, 73, 75, 36, 11, 54, along with a few other intervening elements that collective define the "frame" clearly taught by Brown) comprise a plurality of separate portions (ibid) that are configured to be / are bolted together (fig 1; bolts 61a, 62a, 74, 45a, 54A, 49, etc. Numerous bolts are clearly shown by Brown in fig 1).
Therefore it would have been obvious to PHOSITA at the time of filing to use the bolted segments taught by Brown to assemble the frame of the present claims. Assembly / construction techniques of some style are inherently necessary, and bolting sections together is both generally known (bolts are not a new assembly technique, as PHOSITA would readily appreciate), and bolts allow for easy assembly, disassembly, and shipping.
Allowable Subject Matter
Independent claims 1, 11, & 19 would be allowable if amended to obviate the 112(b) rejections and with a terminal disclaimer to obviate the above double patenting rejection.
The following is a statement of reasons for the indication of allowable subject matter: The present independent claims have the same allowable matter as was indicated in the parent case, serial number 18/362,534 (now US Patent 12,404,729), as described in the Notice of Allowance mailed 5/5/2025. The prior art does not teach nor suggest the specific features of the independent claims so as to "more firmly engage the tubular to prevent the tubular" moving both "in" and "out of the wellbore". The examiner emphasizes that this is a result of the 112(f) means-plus-function recitations as articulated above. The majority of the prior art only teaches gripping in one direction, not both, as most of the prior art are released by pulling up on the pipe string / gripping elements (see: US 2010/0116558, ¶ 76).
The examiner notes that 112(f) encompasses the disclosed structure and "and equivalents thereof". MPEP 2183 discusses the standards for "equivalent": "The prior art element performs the identical function specified in the claim in substantially the same way, and produces substantially the same results as the corresponding element disclosed in the specification. Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364, 54 USPQ2d 1308, 1315 (Fed. Cir. 2000)" (underlined emphasis added).
US 3,760,469 (Brown) teaches a slip that tightens its grip in both directions (abstract; ¶ bridging cols 1 & 2) via a "double taper seat" (ibid). However the examiner does not view this as "equivalent" to the present claimed means-plus-function structure as it is not done in "substantially the same way". Rather the slip is set by rotation (figs 3 & 4), not axial movement, and the gripper assemblies of Brown (18 & 24) do not move "along the pivot arm" as claimed. In other words, the rotationally set bi-directional gipping assemblies taught by the prior art may achieve the same outcome, but not in "substantially the same way".
The same is generally true of similar references: US 4,269,277, figs 8A & 9A (no pivot arms, etc); US 4,576,254 (rotationally set, no pivot arms as claimed); US 4,940,118; US 5,027,926; & US 6,199,641.
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