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 .
Election/Restrictions
Applicant's election with traverse of Species I in the reply filed on 4/20/2026 is acknowledged. The traversal is on the ground(s) that there is no serious search burden. This is not found persuasive because there is a serious search burden based on the various species and claims as disclosed and specifically claimed, where each species has exclusive features which would each require separate search strategies, employing exclusive search terms and analysis.
The requirement is still deemed proper and is therefore made FINAL.
Applicant has stated that claims 1-7, 10-11, 13-18, 20-21 and 23-30 are encompassed within the elected species. Claims 8-9, 12, 19 and 22 are withdrawn as being drawn to a non-elected species. The examiner respectfully notes that claims 4-6 and 16-18 appear to be drawn to non-elected species as containing limitations only found within the other species. Note the election of species in parent application 18/407,842, and response filed 10/31/2024, where the same restriction requirement and election was made. Therefore claims 4-6 and 16-18 are also withdrawn as being drawn to non-elected species.
Claim Objections
Claim 30 is objected to because the claim includes an additional phrase after the ending punctuation of the claim.
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 1-3, 7, 10-11, 13-15, 20-21, and 23-30 are 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.
Claims 1, 13 and 23 all recite a first piston with an end with “a larger piston surface area” and an end with “a smaller piston surface area”, and a second piston with an end “with a larger piston surface area”. These limitations in relation to the first piston have been interpreted as requiring the first piston as having one end with a larger surface area than the other “smaller” end, but it is not clear how to interpret the second piston as recited with only one end defined as with “larger piston surface area” since it is not clear “what” the area is larger than. The remaining claims are indefinite as being dependent on an indefinite claim.
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.
Claim(s) 1-2, 7, 10-11, 13-14, 20-21, 23-24 and 29 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Lembcke et al. (US 5,893,413).
In regard to claim 1, Lembcke et al. discloses a downhole tool, comprising: a mandrel (106); a sliding element (170) positioned radially about the mandrel; and a pressure intensifier (140/142/150, etc) positioned radially about the mandrel and coupled to the sliding element, the pressure intensifier including: a first piston (142) having a first pressure receiving end with a larger piston surface area (left side of 142 as in fig 1B, where left side facing surfaces show larger surface area than right side facing surfaces) and a first pressure output end with a smaller piston surface area (right end of 142); and a second piston (150) coupled to the first piston, the second piston having a second pressure receiving end with a larger piston surface area (left end of 150), a fluid chamber (122) defined between the first pressure output end of the first piston with the smaller piston surface area and the second pressure receiving end of the second piston with the larger piston surface area, the pressure intensifier configured to move the sliding element when a force is applied thereto (as between figs 1-2-3).
In regard to claim 2, Lembcke et al. disclose wherein the pressure intensifier is a selectively engageable pressure intensifier, the selectively engageable pressure intensifier configured to have an initial state physically coupling the first piston and the second piston with one another when subjected to an initial fluid pressure below a threshold fluid pressure (as in fig 1B where all components are physically coupled), and configured to have a subsequent state physically decoupling and fluidly coupling the first piston and the second piston with one another when subjected to a subsequent fluid pressure above the threshold fluid pressure (as in fig 2B).
In regard to claim 7, Lembcke et al. disclose wherein the pressure intensifier is a selectively engageable pressure intensifier, the selectively engageable pressure intensifier configured to have an initial state physically coupling the first piston and the second piston with one another for a duration of time (as in fig 1B where all components are physically coupled), and configured to have a subsequent state physically decoupling and fluidly coupling the first piston and the second piston with one another after an amount of time has lapsed (fig 2B).
In regard to claim 10, Lembcke et al. disclose wherein the sliding element is coupled to a radially expanding sealing element (102), the sliding element configured to axially compress the radial expanding sealing element into radial engagement with an outer tubular as the pressure intensifier moves the sliding element when the force is applied thereto (as in fig 1a-2a-3a).
In regard to claim 11, Lembcke et al. disclose wherein the sliding element is coupled to a radially expanding anchor element (102 as engaging a borehole would provide anchoring), the sliding element configured to axially compress the radial expanding anchor element into radial engagement with an outer tubular as the pressure intensifier moves the sliding element when the force is applied thereto (fig 1a-2a-3a).
In regard to claim 13, Lembcke et al. disclose a well system, comprising: a wellbore located in a subterranean formation (col. 5, lines 20+ as disclosed for downhole use); and a downhole tool (100) positioned in the wellbore, the downhole tool including: a mandrel (106); a sliding element (170) positioned radially about the mandrel; and a pressure intensifier (140/142/150, etc) positioned radially about the mandrel and coupled to the sliding element, the pressure intensifier including: a first piston (142) having a first pressure receiving end with a larger piston surface area (left side of 142 as in fig 1B, where left side facing surfaces show larger surface area than right side facing surfaces) and a first pressure output end with a smaller piston surface area (right end of 142); and a second piston (150) coupled to the first piston, the second piston having a second pressure receiving end with a larger piston surface area (left end of 150), a fluid chamber (122) defined between the first pressure output end of the first piston with the smaller piston surface area and the second pressure receiving end of the second piston with the larger piston surface area, the pressure intensifier configured to move the sliding element when a force is applied thereto (as between figs 1-2-3).
In regard to claim 14, Lembcke et al. disclose wherein the pressure intensifier is a selectively engageable pressure intensifier, the selectively engageable pressure intensifier configured to have an initial state physically coupling the first piston and the second piston with one another when subjected to an initial fluid pressure below a threshold fluid pressure (as in fig 1B where all components are physically coupled), and configured to have a subsequent state physically decoupling and fluidly coupling the first piston and the second piston with one another when subjected to a subsequent fluid pressure above the threshold fluid pressure (as in fig 2B).
In regard to claim 20, Lembcke et al. disclose wherein the sliding element is coupled to a radially expanding sealing element (102), the sliding element configured to axially compress the radial expanding sealing element into radial engagement with an outer tubular as the pressure intensifier moves the sliding element when the force is applied thereto (as in fig 1a-2a-3a).
In regard to claim 21, Lembcke et al. disclose wherein the sliding element is coupled to a radially expanding anchor element (102 as engaging a borehole would provide anchoring), the sliding element configured to axially compress the radial expanding anchor element into radial engagement with an outer tubular as the pressure intensifier moves the sliding element when the force is applied thereto (fig 1a-2a-3a).
In regard to claim 23, Lembcke et al. disclose a method, comprising: positioning a downhole tool in a wellbore located in a subterranean formation (100, as used downhole col. 5, lines 20+), the downhole tool including: a mandrel (106); a sliding element (170) positioned radially about the mandrel; and a pressure intensifier (140/142/150, etc) positioned radially about the mandrel and coupled to the sliding element, the pressure intensifier including: a first piston (142) having a first pressure receiving end with a larger piston surface area (left side of 142 as in fig 1B, where left side facing surfaces show larger surface area than right side facing surfaces) and a first pressure output end with a smaller piston surface area (right end of 142); and a second piston (150) coupled to the first piston, the second piston having a second pressure receiving end with a larger piston surface area (left end of 150), a fluid chamber (122) defined between the first pressure output end of the first piston with the smaller piston surface area and the second pressure receiving end of the second piston with the larger piston surface area, the pressure intensifier configured to move the sliding element when a force is applied thereto (as between figs 1-2-3); and applying fluid pressure to the pressure intensifier to move the sliding element (col. 5, lines 24-40).
In regard to claim 24, Lembcke et al. disclose wherein the pressure intensifier is a selectively engageable pressure intensifier, the selectively engageable pressure intensifier configured to have an initial state physically coupling the first piston and the second piston with one another when subjected to an initial fluid pressure below a threshold fluid pressure (as in fig 1B where all components are physically coupled), and configured to have a subsequent state physically decoupling and fluidly coupling the first piston and the second piston with one another when subjected to a subsequent fluid pressure above the threshold fluid pressure (as in fig 2B).
In regard to claim 29, Lembcke et al. disclose wherein the pressure intensifier is a selectively engageable pressure intensifier, the selectively engageable pressure intensifier configured to have an initial state physically coupling the first piston and the second piston with one another for a duration of time (as in fig 1B where all components are physically coupled), and configured to have a subsequent state physically decoupling and fluidly coupling the first piston and the second piston with one another after an amount of time has lapsed (fig 2B).
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 1-3, 7, 10-11, 13-15, 20-21, 23-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12.428,920. An obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but an examined application claim is not patentably distinct from the reference claim(s) because the examined 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). Although the conflicting claims are not identical, they are not patentably distinct from each other because, for example, instant claim 1 is generic to all that is recited in claim 1 of U.S. Patent No. 12,428,920. In other words, claim 1 of U.S. Patent No. ‘920 fully encompasses the subject matter of instant claim 1 and therefore anticipates instant claim 1. Since instant claim 1 is anticipated by claim 1 of the patent, it is not patentably distinct from claim 1 of ‘920. Thus the invention of claim 1 of the patent is in effect a “species” of the “generic” invention of instant claim 1. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since instant claim 1 is anticipated (fully encompassed) by claim 1 of the patent, instant claim 1 is not patentably distinct from claim 1 of ‘920, regardless of any additional subject matter present in claim 10. Instant claims 2-3, 7, 10-11, 13-15, 20-21, 23-30 appears similarly encompassed by claims 1-17 of ‘920.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to D Andrews whose telephone number is (571)272-6558. The examiner can normally be reached M-F, 7-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at 571-272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D. ANDREWS/ Primary Examiner, Art Unit 3672
5/13/2026
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