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 .
Drawings
The drawings were received on October 10, 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 9-11 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.
There is insufficient antecedent basis for “the center of mass” in claims 9-11 nor does the claim indicate what the center of mass is of. It is suggested claims 9-11 be amended to recited --the center of mass of the guiding structure--.
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) 1-3, 5-8, 12, and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Restarick et al. (US 4,321,965, Rest).
Regarding claim 1: Rest discloses a fishing tool 300 – 9:40-46 comprising:
a drive end 304 to be connected to an associated running structure 16; and
an engagement end 302 configured to engage with a fish located downhole 9:40-56,
wherein the engagement end comprises a guiding structure 330 that is rotationally self-aligning and non-symmetrical Fig 6, Abstract, 9:40-56.
Regarding claim 2: Wherein the guiding structure is rotationally self-aligning in relation to the drive end 9:40-56.
Regarding claim 3: The fishing tool further comprising a support body 305 extending between the drive end and the engagement end Fig 6, wherein the support body comprises at least one grappling device implied with the recitation of a fishing tool inserted into a stuck pipe or fish, the gripping or grappling device would be directly or indirectly located on the support body.
Regarding claim 5: Wherein the engagement end comprises a support shaft 305, and wherein the guiding structure is rotationally supported on the support shaft 8:58-9:56.
Regarding claim 6: Wherein the support shaft is arranged centrally in the fishing tool Fig 6.
Regarding claim 7: Wherein the guiding structure has a center of mass located off-center in relation to a longitudinal axis of the fishing tool Fig 6.
Regarding claim 8: Wherein the guiding structure comprises an apex Fig 6.
Regarding claim 12: Wherein the guiding structure comprises a hollow portion Fig 6.
Regarding claim 13: Rest discloses a method for providing a fishing tool, comprising:
providing the above described fishing tool.
Claim Rejections - 35 USC § 103
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rest in view of Hallundbaek et al. (US 2014/0311757, Hall).
Rest discloses all of the limitations of the above claim(s) except the grappling device comprising a conical drive part, and wherein at least one grapple is arranged to slide on the conical drive part.
Hall discloses a fishing tool that includes a guide structure 10b and a grappling device Fig 1a, 1b. The grappling device includes a conical drive part 18 and at last one grapple 171 that is arranged to slide on the conical drive part fig 1a, 1b.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Rest so that the grappling device included a conical drive part and at least one grapple that slide on the conical drive part, as taught by Hall, in order to have been able to force the grappling device into contact with the downhole fish [0071].
Claim(s) 9-11 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rest.
Regarding claim 9: Rest discloses all of the limitations of the above claim(s) except the apex being located at an angle of 160° to 200° from the center of mass of the guiding structure.
However, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Rest so that the apex was located at an angle of 160° to 200° from the center of mass of the guiding structure, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable range involves only routine skill in the art. In re Aller, 105 USPQ 233.
The test for obviousness of a result-effective variable is not whether or not this variable is recognized in the art applied. Such recognition would potentially lead to the variable being rejected as being anticipated by the reference. The test for obviousness of a result-effective variable is whether or not one or ordinary skill in the art would recognize that this variable could be changed or altered, and the results of this change, without deviating from the intended purpose of the reference. Further, the variable must not have any associated criticality in the instant application.
In this case, paragraphs [0035], [0036], and [0078] of the instant specification gives no criticality to the angle of the apex from the center of mass. Paragraphs [0035], [0036], and [0078] indicates that the angle provides “efficient engagement for fish” however this is similar to the reasons for the slanted guide surface of Rest as recited in column 1, 48-64 and 4:44-53. Therefore, the angle of the apex from the center of mass can be said to be obvious.
Regarding claim 10: Rest discloses all of the limitations of the above claim(s) except the apex being located at an angle of -20° to +20° from the center of mass of the guiding structure.
However, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Rest so that the apex was located at an angle of -20° to +20° from the center of mass of the guiding structure, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable range involves only routine skill in the art. In re Aller, 105 USPQ 233.
The test for obviousness of a result-effective variable is not whether or not this variable is recognized in the art applied. Such recognition would potentially lead to the variable being rejected as being anticipated by the reference. The test for obviousness of a result-effective variable is whether or not one or ordinary skill in the art would recognize that this variable could be changed or altered, and the results of this change, without deviating from the intended purpose of the reference. Further, the variable must not have any associated criticality in the instant application.
In this case, paragraphs [0035], [0036], and [0078] of the instant specification gives no criticality to the angle of the apex from the center of mass. Paragraphs [0035], [0036], and [0078] indicates that the angle provides “efficient engagement for fish” however this is similar to the reasons for the slanted guide surface of Rest as recited in column 1, 48-64 and 4:44-53. Therefore, the angle of the apex from the center of mass can be said to be obvious.
Regarding claim 11: Rest discloses all of the limitations of the above claim(s) except the apex being located at an angle of 70° to 110° from the center of mass of the guiding structure.
However, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Rest so that the apex was located at an angle of 70° to 110° from the center of mass of the guiding structure, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable range involves only routine skill in the art. In re Aller, 105 USPQ 233.
The test for obviousness of a result-effective variable is not whether or not this variable is recognized in the art applied. Such recognition would potentially lead to the variable being rejected as being anticipated by the reference. The test for obviousness of a result-effective variable is whether or not one or ordinary skill in the art would recognize that this variable could be changed or altered, and the results of this change, without deviating from the intended purpose of the reference. Further, the variable must not have any associated criticality in the instant application.
In this case, paragraphs [0035], [0036], and [0078] of the instant specification gives no criticality to the angle of the apex from the center of mass. Paragraphs [0035], [0036], and [0078] indicates that the angle provides “efficient engagement for fish” however this is similar to the reasons for the slanted guide surface of Rest as recited in column 1, 48-64 and 4:44-53. Therefore, the angle of the apex from the center of mass can be said to be obvious.
Regarding claim 14: Rest discloses a method for operating a fishing tool 300 – 9:40-46, comprising:
providing a guiding structure 330 having an eccentric center of mass and being rotationally non-symmetrical Fig 6;
rotationally supporting the guiding structure at an engagement end 302 of the fishing tool so that the guiding structure is self-aligning 9:40-56; and
engaging the fishing tool with a downhole fish 9:40-56.
Rest discloses all of the limitations of the above claim(s) except the method specifically including extracting the fishing tool and the engaged fish from downhole.
However, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, that the purpose of a fishing tool, like that taught by Rest, is to remove or extract fish from downhole. As such, it would have been obvious that the method of operating the fishing tool, as taught by Rest, would have included extracting the fishing tool and fish from downhole. This would have achieved the predictable results of ensuring that the fish or obstacle was removed so normal operations could resume.
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
7/16/2026
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