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 November 25, 2025. These drawings are accepted.
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, 5-11, and 15-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McGarian (US 2011/0308785).
Regarding claim 1: McGarian discloses a whipstock 5, comprising:
a coupling section 6u having a first radius of curvature Fig 13, the coupling section configured to engage with a mill bit 10 when running in hole [0040], Fig 1;
a casing breakthrough section 7 having a second radius of curvature Fig 14; and
a controlled exit section 6l having a third radius of curvature fig 15, wherein the second radius of curvature is less than the third radius of curvature Fig 14, 15.
Regarding claims 5 and 15: Wherein the second radius of curvature is less than the first radius of curvature Fig 13, 14.
Regarding claims 6 and 16: Wherein the third radius of curvature is less than the first radius of curvature Fig 13, 15.
Regarding claims 7-10 and 17-20: Due to the phrase “ramp rate” not being defined in the instant specification, claims 7-10 and 17-20 are being rejected as best understood.
Regarding claims 7 and 17: Wherein the coupling section has a first ramp rate, the casing breakthrough section has a second ramp rate, and the controlled exit section has a third ramp rate Fig 13-15.
While McGarian does not disclose the ramp rate of the different sections of the whipstock, as the structure of the whipstock is substantially identical to that of the claims, the resulting function and structural relationships will be the same. “When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” See MPEP 2112.01.
Regarding claims 8 and 18: Wherein the first ramp rate is less than the second ramp rate but greater than the third ramp rate Fig 13-15 – see above.
Regarding claims 9 and 19: Wherein the second ramp rate is at least six times the first ramp rate Fig 13-15 – see above.
Regarding claims 10 and 20: Wherein the controlled exit section includes a downhole portion at C in Figure 8 with a downhole portion ramp rate Fig 8 and an uphole portion at A in Figure 8 with an uphole portion ramp rate Fig 8, and further wherein a downhole portion ramp rate is less than an uphole portion ramp rate.
While McGarian does not disclose the ramp rate of the different sections of the whipstock, as the structure of the whipstock is substantially identical to that of the claims, the resulting function and structural relationships will be the same. “When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” See MPEP 2112.01.
Regarding claim 11: McGarian discloses a well system Fig 1, comprising:
a wellbore Abstract, [0002] extending through one or more subterranean formations;
wellbore casing 1 located in at least a portion of the wellbore;
the above described whipstock located within the wellbore radially inside of the wellbore casing; and
a bottom hole assembly Fig 1-3 extending within the wellbore adjacent the whipstock.
Regarding claim 21: The well system further including a lateral wellbore extending from the wellbore proximate the whipstock [0002], [0036].
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.
Claim(s) 1, 5-11, and 15-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over McGlothen in view of McGarian (US 2010/0012322, McGarian2).
Regarding claim 1: McGlothen discloses a whipstock 28, comprising:
a coupling section 32 having a first radius of curvature r – [0033], [0034], [0036], the coupling section configured to engage with a mill bit when running in hole;
a casing breakthrough section 50 having a second radius of curvature Fig 4 – relatively flat; and
a controlled exit section 30 having a third radius of curvature R – [0033], [0034], [0036], wherein the second radius of curvature is less than the third radius of curvature an element or section that is flat has a radius of curvature that is less than an element or section that is concave.
McGlothen discloses all of the limitations of the above claim(s) except the coupling section being configured to engage with a mill bit when running in the hole.
McGarian2 discloses a whipstock-mill assembly Fig 1 where the mill is secured to the upper portion of the whipstock for running into the wellbore. McGarian2 further discloses that it is advantageous use such a single trip system instead of running the components in individually [0001], [0003].
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 McGlothen so that the mill was secured to the coupling section of the mill, as suggested by McGarian 2, in order to have eliminated the need to run the whipstock and mill into the wellbore as separate trips [0003].
Regarding claims 5 and 15: Wherein the second radius of curvature is less than the first radius of curvature [0033], [0034], [0036].
Regarding claims 6 and 16: Wherein the third radius of curvature is less than the first radius of curvature [0033], [0034], [0036].
Regarding claims 7-10 and 17-20: Due to the phrase “ramp rate” not being defined in the instant specification, claims 7-10 and 17-20 are being rejected as best understood.
Regarding claims 7 and 17: Wherein the coupling section has a first ramp rate, the casing breakthrough section has a second ramp rate, and the controlled exit section has a third ramp rate Fig 2, 4.
While McGlothen does not disclose the ramp rate of the different sections of the whipstock, as the structure of the whipstock is substantially identical to that of the claims, the resulting function and structural relationships will be the same. “When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” See MPEP 2112.01.
Regarding claims 8 and 18: Wherein the first ramp rate is less than the second ramp rate but greater than the third ramp rate Fig 2, 4 – see above.
Regarding claims 9 and 19: Wherein the second ramp rate is at least six times the first ramp rate Fig 2, 4 – see above.
Regarding claims 10 and 20: Wherein the controlled exit section includes a downhole portion 36 with a downhole portion ramp rate Fig 5 and an uphole portion 44 with an uphole portion ramp rate Fig 5, and further wherein a downhole portion ramp rate is less than an uphole portion ramp rate.
While McGlothen does not disclose the ramp rate of the different sections of the whipstock, as the structure of the whipstock is substantially identical to that of the claims, the resulting function and structural relationships will be the same. “When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” See MPEP 2112.01.
Regarding claim 11: McGlothen discloses a well system, comprising:
a wellbore extending through one or more subterranean formations Fig 1;
wellbore casing 18 located in at least a portion of the wellbore;
a whipstock 28 located within the wellbore radially inside of the wellbore casing, the whipstock including:
a coupling section 32 having a first radius of curvature r – [0033], [0034], [0036], the coupling section configured to engage with a mill bit when running in hole;
a casing breakthrough section 50 having a second radius of curvature Fig 4 – relatively flat; and
a controlled exit section 30 having a third radius of curvature R – [0033], [0034], [0036], wherein the second radius of curvature is less than the third radius of curvature an element or section that is flat has a radius of curvature that is less than an element or section that is concave; and
a bottom hole assembly extending within the wellbore adjacent the whipstock Fig 1.
Regarding claim 21: The well system further including a lateral wellbore extending from the wellbore proximate the whipstock [0002], [0023], [0024].
Regarding claim 22: The well system further including a mill bit 66 located proximate the whipstock, the mill bit including:
a tubular having an uphole end and a downhole end Fig 9;
a first cutting section 70 having one or more first cutting surfaces 76 disposed about the tubular, the first cutting section having a first material removal rate and configured to engage with wellbore casing disposed within a wellbore [0065]; and
a second cutting section 68 having one or more second cutting surfaces 74 disposed about the tubular, the second cutting section having a second material removal rate less than the first material removal rate [0061] and configured to engage with a whipstock disposed within the wellbore [0061], [0065].
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 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,497,842. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are merely broader recitations of U.S. Patent No. 12,497,842.
Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,071,815. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are merely broader recitations of U.S. Patent No. 12,071,815.
Allowable Subject Matter
Claims 2-4 and 12-14 would be allowable if the statutory double patenting rejection, set forth in this Office action, is overcome and if they are rewritten to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 2 and 12: The prior art of record fails to disclose or suggest that the second radius of curvature is at least 5% less than the third radius of curvature as recited in the claimed combination.
It is noted that paragraph [0038] provide criticality for this feature and thus it cannot be said to be obvious.
Regarding claims 3 and 13: The prior art of record fails to disclose or suggest that the second radius of curvature is at least 10% less than the third radius of curvature as recited in the claimed combination.
It is noted that paragraph [0038] provide criticality for this feature and thus it cannot be said to be obvious.
Regarding claims 4 and 14: The prior art of record fails to disclose or suggest that the second radius of curvature is at least 25% less than the third radius of curvature as recited in the claimed combination.
It is noted that paragraph [0038] provide criticality for this feature and thus it cannot be said to be obvious.
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 on (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
07/23/2026
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