DETAILED ACTION
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 10–18 and 21–31 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1–10 of U.S. Patent No. 12,546,194, and, with respect to claims 21–31, further in view of Gonzalez et al. (U.S. Patent No. 5,027,708). Although the claims at issue are not identical, they are not patentably distinct from each other because they recite broader, apparatus-form, or otherwise obvious variations of the same spring-biased, automatically armed perforating gun claimed in the patent.
Regarding claim 10, claim 10 of the patent recites providing a perforating gun comprising a housing, a charge holder configured to receive a shaped charge, an initiator, a detonating cord configured to detonate the shaped charge, and a spring positioned within the housing, wherein the relative position of the initiator and detonating cord is movable between ballistically unarmed and armed positions and the spring biases the initiator and detonating cord toward the unarmed position. Claim 10 merely claims the perforating gun expressly provided and used in patented method claim 10 without requiring the arming and deployment steps.
Regarding claim 11, claim 1 of the patent recites an initiator holder coupled to the charge holder and an initiator at least partially positioned within the initiator holder. Because the initiator holder is within the housing, the initiator positioned within the initiator holder is necessarily at least partially positioned within the housing, as recited in claim 11.
Claims 12–16 are unpatentable over claims 2–6, respectively, of the patent, which recite the same retainer coupled to the initiator holder, fixed positional relationship between the initiator and retainer, cylindrical retainer portions and annular retainer end plate, initiator head and shell arrangement, and axial displacement of the initiator shell relative to the detonating cord.
Claim 17 is unpatentable over claim 8 of the patent, which recites the same guide groove, guide-groove lip, and guide-tab arrangement configured to prevent the spring from pushing the retainer off the initiator holder.
Claim 18 is unpatentable over claim 9 of the patent, which recites the same initiator channel and positioning of the spring within the initiator channel.
Regarding claim 21, claim 1 of the patent recites a perforating gun comprising a housing, charge holder, initiator holder, initiator, detonating cord, and spring, wherein the initiator is movable between ballistically unarmed and armed positions and is biased toward the unarmed position. Claim 21 differs principally in broadly reciting at least one biasing member and requiring electrical communication between the initiator and an electrical conductor within the housing to be established before the initiator is moved into the armed position.
Gonzalez teaches a perforating apparatus having a transport position, an electrical-contact position, and an armed position. In the electrical-contact position, an electrical plug is electrically connected to the detonator while the detonator remains ballistically misaligned from the detonating cord shell or booster. The detonator is subsequently moved into ballistic alignment while the electrical connection is maintained. It would have been obvious to configure the spring-biased perforating gun of patented claim 1 so that electrical communication is established before ballistic arming, as taught by Gonzalez, to provide electrical connection while maintaining ballistic isolation and thereby reduce the risk of accidental initiation.
Regarding claim 22, patented claim 6 recites that the initiator shell is axially displaced from the detonating cord in the unarmed position. Gonzalez teaches establishing electrical communication while the detonator remains ballistically displaced or misaligned from the detonating cord shell. Establishing the electrical communication while the initiator remains axially displaced from the detonating cord would have been an obvious application of Gonzalez to the arrangement of patented claim 6.
Regarding claim 23, Gonzalez teaches electrically connecting the detonator to an electrical source before ballistic alignment. Providing the electrical communication as ground communication between the initiator and the surrounding housing would have been an obvious and predictable manner of completing the electrical circuit of the perforating gun.
Regarding claim 24, Gonzalez teaches an electrical conductor, plug, and jack for providing electrical communication to the detonator. Providing the electrical conductor as a through wire extending through the housing would have been an obvious manner of conducting electrical power or signals through the perforating gun and connected toolstring.
Regarding claim 25, Gonzalez expressly teaches maintaining the electrical connection between the plug and detonator as the detonator transitions from the electrical-contact position to the armed position.
Regarding claim 26, patented claim 1 expressly recites that the biasing member is a spring.
Regarding claim 27, using a plurality of springs collectively to provide the biasing force would have been an obvious duplication or distribution of the spring of patented claim 1 to apply biasing forces at multiple movable components or electrical contacts.
Regarding claim 28, patented claim 7 recites an initiator-channel spring. Providing at least one of an initiator-channel spring, ground spring, or through-line spring would have been an obvious placement of springs at the respective mechanically movable initiator and electrical-contact components in view of the electrical-contact arrangement taught by Gonzalez.
Regarding claim 29, patented claim 10 recites coupling a second toolstring component to the housing to transition the relative position of the initiator and detonating cord from the unarmed position to the armed position. Claim 29 merely recites the same operation as a functional limitation of the apparatus of claim 21.
Regarding claim 30, patented claim 10 further recites that the second toolstring component abuts the initiator and provides sufficient force to transition the initiator and detonating cord to the armed position. Claim 30 therefore recites the same abutting and force-overcoming relationship expressly required by patented claim 10.
Regarding claim 31, claim 10 of the patent recites the spring-biased perforating-gun structure, and Gonzalez teaches establishing electrical communication with the detonator before the detonator is moved into ballistic alignment with the detonating cord shell. It would have been obvious to incorporate the electrical-before-ballistic-arming arrangement of Gonzalez into the perforating gun of patented claim 10 to provide electrical connection while maintaining ballistic isolation and thereby improve safety.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL D DAVID whose telephone number is (571)270-3737 and whose email address is michael.david@uspto.gov*. The examiner can normally be reached on M-F 8:30am-5:00pm EST.
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/MICHAEL D DAVID/Primary Examiner, Art Unit 3641
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