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 .
Terminal Disclaimer
The terminal disclaimer filed on 5/14/26 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Patent 11713645, 11634965, and Application 18999405 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant’s amendments have addressed the previously presented claim objections of the preceding Office Action.
Applicant's arguments filed 5/20/26 have been fully considered but they are not persuasive.
Applicant asserts that Baker does not teach the recited limitation, specifically the recitation of a mandrel (in e.g. claim 1). The examiner respectfully disagrees and notes that applicant has construed the mandrel as consisting of element 11 of Baker. However, this is not how the examiner has broadly, but reasonably, construed the mandrel. The mandrel has been construed as element 11 and the surrounding conical structures e.g. conical features 50 and 38. Nothing in the claim precludes the mandrel (or similarly recited elements in the other independent claims argued) from being made of several sub-elements. Regarding applicant’s pre-emptive point on Claim 3, the examiner notes that this is taught by Carisella’ s slip structure and has been modified into the claim and is discussed further below.
Applicant’s arguments with respect to the prior art rejection of the claim(s) citing Xu, those arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Nichols has been newly cited in the rejection below.
Claim Objections
Claim 21 is objected to because of the following informalities:
Claim 21 recites “the carrier”. This should read: “the carrier ring”
Claim 22 recites “wherein the at least the portion [….]”. There appears to be a grammatical/typographical error. Appropriate correction is required.
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) 1-3, 5-8, 16, 18-19, 21-24, and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baker (US 2121002 A), in view of Carisella (US 6354372 B1).
Regarding claim 1, Baker teaches a downhole tool for use in a wellbore, the downhole tool comprising:
a mandrel (Fig 1-3, elements including 11, and conical features 50 and 38) comprising:
a distal end (Fig 1-3, downhole end); a proximate end (Fig 1-3, uphole end); an outer surface (Fig 1-3, outer surface seen and defined by 51, 54, 38); an inner surface (Fig 1-3, inner surface, seen); an inner flowbore disposed in the mandrel, and extending therethrough from the proximate end to the distal end(Fig 1-3, flow bore 21); and a ball seat formed within the inner flowbore on the inner surface between the distal end and the proximate end (Fig 1-3, ball seat best seen in Fig 3 with ball 60 engaged on the seat);
a carrier ring slidingly engaged with the outer surface (Fig 1-3, carrier ring “B”); and
a slip engaged with the outer surface in a run-in configuration and a set configuration (Fig 1, slip “A” at the outer surface, run-in configuration of Fig 1),
wherein the inner surface comprises a first inner surface having a first inner
diameter (Fig 3, inner surface below ball seat engaging 60), and the inner surface has a second inner surface having a second inner diameter that is larger than the first inner diameter (Fig 3, inner surface above ball seat engaging 60; the ID above seat at 60 is larger than the first ID), and
wherein the first angled surface and the second angled surface converge toward the crest (Fig 1, 3, angled surfaces converge at crest 54).
Baker is silent on the carrier ring further comprising an outer seal element groove; a seal element is disposed in the outer seal element groove.
Carisella teaches the carrier ring further comprising an outer seal element groove (Fig 2-3, slip groove occupied by 104 and 106); a seal element is disposed in the outer seal element groove (Fig 3, seal 120 is retained in the groove of the slip 102 as seen).
It would have been obvious for one of ordinary skill in the art before the effective
filing date of the claimed invention to have modified the invention disclosed by Baker by having the slip structure, its slip retaining mechanism, and its corresponding groove in the slip as disclosed by Carisella applied to each of the slips of Baker because it would be a simple substitution of one known element (the expandable slip structure of Baker) for another (the expandable slip structure of Carisella) to obtain predictable results (slip structures expandable to engage a wellbore wall within the borehole).
Regarding claim 2, Baker teaches wherein the outer surface comprises a first angled surface and a second angled surface (Fig 1-3, uphole and downhole conical surfaces, generically at faces at 51 and 38), wherein the first angled surface comprises a first plane that in cross section bisects a longitudinal axis at a first angle (Fig 1, plane defined by surface 51), and wherein the second angled surface comprises a second plane that in cross section bisects the longitudinal axis at a second angle negative to that of the first angle (Fig 1, plane defined by surface 38, which is opposite/negative to the plane of the first angle).
Regarding claim 3, Baker as modified teaches wherein the slip comprises at least one slip groove that forms a lateral opening in the slip that is defined by a depth that extends from a slip outer surface to a slip inner surface (note, as modified in the parent claim to have the particulars of Carisella, Fig 2-3, slip 104 has a groove 106 extending through the outer surface to inner surface, as seen), and wherein the outer surface of the mandrel comprises a frustoconical portion (Fig 1-3, outer surface seen and defined by 51, 54, 38 has a frustoconical surface, as seen as seen).
Regarding claim 5, Baker as modified teaches the downhole tool further comprising a lower sleeve adjacent to the slip in the run-in configuration (Fig 2-3 of Carisella, lower sleeve 104 is adjacent with the slip in all configurations).
Regarding claim 6, Baker teaches wherein the carrier ring comprises an underside surface entirely in direct contact with the outer surface in the set configuration (Fig 1-3, “B” carrier ring has an underside in contact with outer surface as seen, set configuration of Fig 3), and wherein the outer surface is devoid of threads (Fig 1-3, outer surface seen and defined by 51, 54, 38 does not have threads).
Regarding claim 7, Baker as modified teaches wherein in the set configuration the lower sleeve is not in direct contact with the mandrel (Fig 2-3 of Carisella, lower sleeve 104 is within the slip and thus does not contact the mandrel).
Regarding claim 8, Baker teaches the first inner diameter is constant (Fig 3, inner surface below ball seat engaging 60 and above void at 27 and is constant, as seen).
Regarding claim 16, Baker teaches a downhole tool for use in a wellbore, the downhole tool
comprising:
a double cone (Fig 1-3, elements including 11, and conical features 50 and 38) comprising:
a distal end (Fig 1-3, downhole end); a proximate end (Fig 1-3, uphole end); an outer surface (Fig 1-3, outer surface seen); an inner flowbore extending therethrough from the proximate end to the distal end (Fig 1-3, flow bore 21); and a ball seat formed within the inner flowbore (Fig 1-3, ball seat best seen in Fig 3 with ball 60 engaged on the seat, seems to be 23 of Fig 1),
a carrier ring disposed around the double cone; (Fig 1-3, carrier ring “B”),
a slip disposed around the double cone axially below the carrier ring in a run-in configuration (Fig 1, slip “A” at the distal end, run-in configuration of Fig 1); and
wherein the outer surface comprises a first frustoconical surface (Fig 1, frustoconical surface defined by surface 51), and a second frustoconical surface in opposite orientation to the first frustoconical surface (Fig 1, plane defined by surface 38, which is opposite/negative to the plane of the first angle), whereby the first frustoconical surface and the second frustoconical surface converge at a crest on the outer surface (Fig 1, 3, angled surfaces converge at crest 54), and
wherein a wall thickness of the double cone is greater at the crest than a respective wall thickness at one or both of the distal end and the proximate end (Fig 1, 3, the thickness of the wall at crest of the double cone is thicker than at least the endmost of the proximate end, as seen),
wherein the double cone further comprises an inner surface defined by a first inner surface having a first inner diameter (Fig 3, inner surface below ball seat engaging 60), and the inner surface has a second inner surface having a second inner diameter that is larger than the first inner diameter (Fig 3, inner surface above ball seat engaging 60; the ID above seat at 60 is larger than the first ID); and
wherein the crest defines a maximum wall thickness of the double cone (Fig 1, 3, the double cone is thickest at crest portion 54).
Baker is silent on the carrier further comprising an outer seal element groove, and a seal element is disposed in the outer seal element groove; a lower sleeve proximate to the slip in the run-in configuration and in a set configuration,
Carisella teaches the carrier ring further comprising an outer seal element groove (Fig 2-3 of Carisella, slip groove occupied by 104 and 106), and a seal element is disposed in the outer seal element groove (Fig 3 of Carisella, seal 120 is retained in the groove of the slip 102 as seen); a lower sleeve proximate to the slip in the run-in configuration and in a set configuration (Fig 2-3 of Carisella, lower sleeve 104 is within the slip and is proximate the slip in run-in and directly contacts in a set configuration).
It would have been obvious for one of ordinary skill in the art before the effective
filing date of the claimed invention to have modified the invention disclosed by Baker by having the slip structure, its slip retaining mechanism, and its corresponding groove in the slip as disclosed by Carisella applied to each of the slips of Baker because it would be a simple substitution of one known element (the expandable slip structure of Baker) for another (the expandable slip structure of Carisella) to obtain predictable results (slip structures expandable to engage a wellbore wall within the borehole).
Baker as modified teaches wherein as the downhole tool moves from the run-in configuration to the set configuration the lower sleeve urges the slip to move with respect to the first frustoconical surface (Fig 2-3 of Carisella, lower sleeve 104 is within the slip, the sleeve would “urge” movement relative to the frustoconical surface by applying a radially inward force. Please note the instant claim is an apparatus claim).
Regarding claim 18, Baker teaches wherein in the run-in configuration a relative position of the ball seat is disposed between the carrier ring and the slip (Fig 1, 3, ball seat 23 is disposed between carrier ring and slip “A” and “B” as seen).
Regarding claim 19, wherein in the set configuration, an underside of the carrier ring is directly engaged with the outer surface (Fig 1-3, “B” carrier ring has an underside in contact with outer surface as seen, set configuration of Fig 3), wherein the slip is a one-piece slip formed as an integral slip body (Column 6, lines 36-38, “the slip assembly configuration as a single initial unit as opposed to separate, individual slip members”), wherein the slip comprises at least one slip groove that form a lateral opening in the slip body that is defined by a depth that extends from a slip outer surface to a slip inner surface (note, as modified in the parent claim to have the particulars of Carisella, Fig 2-3, slip 104 has a groove 106 extending through the outer surface to inner surface, as seen).
Regarding claim 21, Baker teaches a downhole tool for use in a wellbore, the downhole tool comprising:
a cone member (Fig 1-3, elements including 11, and conical features 50 and 38) comprising:
a distal end (Fig 1-3, downhole end); a proximate end (Fig 1-3, uphole end); an outer surface comprising at least a portion that is frustoconical (Fig 1-3, outer surface seen and defined by 51, 54, 38); an inner flow bore disposed in the cone member, and extending therethrough from the proximate end to the distal end (Fig 1-3, flow bore 21); and a ball seat formed within the inner flowbore (Fig 1-3, ball seat best seen in Fig 3 with ball 60 engaged on the seat, seems to be 23 of Fig 1),
a carrier ring moveably disposed around the outer surface in one or both of a run-in configuration and a set configuration (Fig 1-3, carrier ring “B”);
a slip movable with respect to at least the portion that is frustoconical the run-in configuration and in the set configuration (Fig 1, slip “A” run-in configuration of Fig 1, set configuration of Fig 3, engaged with a frustoconical portion, as seen); and
wherein in the run-in configuration a relative position of the ball seat is disposed
between the carrier ring and the slip (Fig 1, 3, ball seat 23 is disposed between carrier ring and slip “A” and “B” as seen),
wherein the outer surface is devoid of threads (Fig 1-3, outer surface seen and defined by 51, 54, 38 does not have threads). .
When considered in light of the narrower interpretation required by the dependent claim, Baker is silent on a lower sleeve, and particulars of the slip/carrier ring.
Carisella teaches a lower sleeve proximate to the slip in the run-in configuration, and directly touching the slip in a set configuration (Fig 2-3 of Carisella, lower sleeve 104 is within the slip and is proximate the slip in run-in and directly contacts in a set configuration)
wherein the carrier (note the modification is being made to the carrier ring of Carisella, although reference to the same figures/slips are being referenced below, the modification is being made to each of the carrier ring/slip) further comprises an outer seal element groove (Fig 2-3, slip groove occupied by 104 and 106), and a seal element is disposed within the outer seal element groove (Fig 3, seal 120 is retained in the groove of the slip 102 as seen), and
wherein the slip comprises at least one slip groove that forms a lateral opening in the slip that is defined by a depth that extends from a slip outer surface to a slip inner surface (Fig 2-3, slip 104 has a groove 106 extending through the outer surface to inner surface, as seen).
It would have been obvious for one of ordinary skill in the art before the effective
filing date of the claimed invention to have modified the invention disclosed by Baker by having the slip structure, its slip retaining mechanism, and its corresponding groove in the slip as disclosed by Carisella applied to each of the slips of Baker because it would be a simple substitution of one known element (the expandable slip structure of Baker) for another (the expandable slip structure of Carisella) to obtain predictable results (slip structures expandable to engage a wellbore wall within the borehole).
Regarding claim 22, Baker as modified teaches wherein the at least the portion that is frustoconical comprises a first angled surface (Fig 1, plane defined by surface 51) converges toward a crest on the outer surface (Fig 1, 3, converges at crest 54), and wherein as the downhole tool is moved from the run-in configuration to the set configuration the lower sleeve urges the slip to move along the first angled surface (Fig 2-3 of Carisella, lower sleeve 104 is within the slip, the sleeve would “urge” movement the surface by applying a radially inward force).
Regarding claim 23, Baker teaches wherein in the set configuration a ball is engaged against the ball seat (Fig 3, ball 60 seated as seen), and wherein a wall thickness of the cone member is greater at the crest than a respective wall thickness at one or both of an end-most point of distal end and a respective end-most point of the proximate end (Fig 1, 3, the thickness of the wall at crest of the cone is thicker than at least the end most of the proximate end, as seen)..
Regarding claim 24, Baker teaches wherein the cone member has an inner surface within the inner flowbore, and wherein the inner surface comprises a first inner surface having a first inner diameter (Fig 3, inner surface below ball seat engaging 60), and the inner surface has a second inner surface having a second inner diameter that is larger than the first inner diameter (Fig 3, inner surface above ball seat engaging 60; the ID above seat at 60 is larger than the first ID).
Regarding claim 26, Baker teaches wherein the slip comprises a pin window (Fig 2-3, window accommodating pin 106A), and the lower sleeve comprises a pin groove (Fig 2-3, groove in sleeve 104 accommodating pin 106A, as seen), and wherein in the run-in configuration the slip is coupled with the lower sleeve via one or more pins inserted between the pin window and the pin groove (Fig 2-3, lower sleeve 104 is coupled with pin 106A).
Claim(s) 16 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu (US 20140041857 A1), in view of Nichols (US 20210054719 A1).
Regarding claim 16, Xu teaches a downhole tool for use in a wellbore, the downhole tool
comprising:
a double cone (Fig 4, cone 122) comprising:
a distal end (Fig 4, downhole end); a proximate end (Fig 4, uphole end); an outer surface (Fig 4, outer surface seen); an inner flowbore extending therethrough from the proximate end to the distal end (Fig 4, flow bore/center bore, seen); and a ball seat formed within the inner flowbore (Fig 4, portion of 120 which contacts ball, approximately middle surface of 120),
a carrier ring disposed around the double cone (Fig 4, Para 0020, note similarities with tool 14 not repeated again; but portion 30B of 130), the carrier ring further comprising an outer seal element groove (Fig 4, see also Para 0020, groove of 30B accommodating 30A), and a seal element is disposed in the outer seal element groove (Fig 4, seal portion 30A, see Para 0020);
a slip disposed around the double cone and axially below the carrier ring in a run-in configuration (Fig 4, slips 26); and
wherein the outer surface comprises a first frustoconical surface (Fig 4, surface at 46A), and a second frustoconical surface in opposite orientation to the first angled surface (Fig 4, surface at 46B), wherein the first frustoconical surface and the second frustoconical surface converge at a crest on the outer surface (Fig 4, converge at surface around reference number 122/crest is the middle part), and
wherein the double cone further comprises an inner surface defined by a first inner surface having a first inner diameter (Fig 4, lower inner surfaces have a first ID), and the inner surface has a second inner diameter that is larger than the first inner diameter (Fig 4, upper part of face 120 has a second ID larger than the first ID, further downhole),
and the crest defines a maximum wall thickness of the double cone (Fig 4, surface around reference number 122/crest is the middle part is the thickest part).
Xu is silent on a lower sleeve proximate to the slip in the run-in configuration and in a set configuration, wherein as the downhole tool moved from the run-in configuration to the set configuration the lower sleeve urges the slip to move with respect to the first frustoconical surface.
Nichols teaches a lower sleeve proximate to the slip in the run-in configuration and in a set configuration (Fig 1, the run in configuration, Fig 2, the set configuration in which sleeve 170 is proximate slips 215; please note the specific lower sleeve is the smooth outer surface embodiment shown in Figs 3-4),
wherein as the downhole tool moved from the run-in configuration to the set configuration the lower sleeve urges the slip to move with respect to the first frustoconical surface (Para 0053, 0057).
It would have been obvious for one of ordinary skill in the art before the effective
filing date of the claimed invention to have modified the invention disclosed by Xu by having lower sleeve structure disclosed by Nichols because it would be a simple substitution of one known element (the downhole compressing means of Xu) for another (the downhole compressing means of Nichols) to obtain predictable results (provide an actuating force to a downhole tool).
Regarding claim 17, Xu teaches wherein a ball is seated in the ball seat in the set configuration (Fig 4, ball 62 at the ball seat as defined), wherein the downhole tool has the slip, and no other slips (Fig 4, slips 26 are the only slips), and wherein in the set configuration, an underside of the carrier ring is directly engaged with the outer surface (Fig 4, set configuration seen, carrier ring 130 engaged with outer surface as seen).
Claim(s) 4, 20, and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baker (US 2121002 A), in view of Carisella (US 6354372 B1), in view of Merron (US 20210054704 A1)
Regarding claim 4, Baker teaches wherein in the run-in configuration a relative position of the ball seat is disposed between the carrier ring and the slip (Fig 1, ball seat 23 is disposed between carrier ring and slip “A” and “B” as seen).
Baker is silent on wherein at least one of the slip and the mandrel is made of a composite material.
Merron teaches wherein at least one of the slip and the mandrel is made of a composite material (Para 0062, variety of components e.g. “One or more components of the zonal isolation device 200 such as the wedge 180, expansion ring 190, anchoring assembly 215, end element 170, and/or lower mandrel 163 may comprise[…] a composite material”).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Baker by having one or more of the recited components formed by a composite material as disclosed by Merron because Merron identifies a list of known materials and selection of one material would be required to implement the invention of the primary reference. Merron teaches the selected material is workable with a reasonable expectation of success in a downhole tool.
Regarding claim 20, Baker as modified teaches wherein the ball seat is defined by the inner flowbore having a first inner diameter smaller than a second inner diameter (Fig 3, first ID is inner surface below ball seat engaging 60, second ID is inner surface above ball seat engaging 60; the ID above seat at 60 is larger than the first ID. This transition defines the ball seat)
and wherein the lower sleeve is not in direct contact with the double cone in the set configuration (Fig 2-3 of Carisella, lower sleeve 104 is within the slip in all configurations and thus does not directly contact the double done).
Baker is silent on wherein at least one of the double cone, the slip, and the lower sleeve is made of a composite material.
Merron teaches wherein at least one of the double cone, the slip, and the lower sleeve is made of a composite material (Para 0062, variety of components e.g. “One or more components of the zonal isolation device 200 such as the wedge 180, expansion ring 190, anchoring assembly 215, end element 170, and/or lower mandrel 163 may comprise[…] a composite material”).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Baker by having one or more of the recited components formed by a composite material as disclosed by Merron because Merron identifies a list of known materials and selection of one material would be required to implement the invention of the primary reference. Merron teaches the selected material is workable with a reasonable expectation of success in a downhole tool.
Regarding claim 25, Baker teaches wherein in the run-in configuration a relative position of the ball seat is disposed between the carrier ring and the slip (Fig 1, 3, ball seat 23 is disposed between carrier ring and slip “A” and “B” as seen),
wherein the ball seat is defined by the inner flowbore having a first inner diameter smaller than a second inner diameter (Fig 3, first ID is inner surface below ball seat engaging 60, second ID is inner surface above ball seat engaging 60; the ID above seat at 60 is larger than the first ID. This transition defines the ball seat).
Baker is silent on wherein at least one of the cone member, the slip, and the lower sleeve is made of a composite material.
Merron teaches wherein at least one of the cone member, the slip, and the lower sleeve is made of a composite material (Para 0062, variety of components e.g. “One or more components of the zonal isolation device 200 such as the wedge 180, expansion ring 190, anchoring assembly 215, end element 170, and/or lower mandrel 163 may comprise[…] a composite material”).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Baker by having one or more of the recited components formed by a composite material as disclosed by Merron because Merron identifies a list of known materials and selection of one material would be required to implement the invention of the primary reference. Merron teaches the selected material is workable with a reasonable expectation of success in a downhole tool.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THEODORE N YAO whose telephone number is (571)272-8745. The examiner can normally be reached typically 8am-4pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, TARA SCHIMPF can be reached at (571) 270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/THEODORE N YAO/ Primary Examiner, Art Unit 3676
Prosecution Insights