Detailed Action
Status of Claims
This is the first office action on the merits. Claims 1-20 are currently pending and addressed below.
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 .
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.
Claim 1 is rejected on the ground of nonstatutory obviousness double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,584,366.
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 claim 1 is generic to all that is recited in claim 1 of U.S. Patent No. 12,584,366. In other words, claim 1 of U.S. Patent No. 12,584,366 fully encompasses the subject matter of claim 1 and therefore anticipates claim 1. Specifically, because upper and lower load relief plates that comprise a profile of indentations that are circumferentially provided in the one or more profiled plates induce a change in shape from thermal expansion are a species of the generic category defined by “thermal expansion”, claim 1 reciting “thermal change” is anticipated by claim 1 of U.S. Patent No. 12,584,366 reciting “thermal expansion”.
Claims 2-3 are rejected for depending on a rejected claim.
Claim 5 is rejected on the ground of nonstatutory obviousness double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,584,366.
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 claim 5 is generic to all that is recited in claim 1 of U.S. Patent No. 12,584,366. In other words, claim 1 of U.S. Patent No. 12,584,366 fully encompasses the subject matter of claim 5 and therefore anticipates claim 1. Specifically, because upper and lower load relief plates that comprise a profile of indentations that are circumferentially provided in the one or more profiled plates induce a change in shape from thermal expansion are a species of the generic category defined by “thermal expansion”, claim 5 reciting “thermal change” is anticipated by claim 1 of U.S. Patent No. 12,584,366 reciting “thermal expansion”.
As above, Claim 6 is rejected on the ground of nonstatutory obviousness double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,584,366
As above, Claim 12 is rejected on the ground of nonstatutory obviousness double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,584,366
Claims 7-11 are rejected for depending on a rejected claim.
Claim 13 is rejected on the ground of nonstatutory obviousness double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,584,366.
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 claim 13 is generic to all that is recited in claim 10 of U.S. Patent No. 12,584,366. In other words, claim 10 of U.S. Patent No. 12,584,366 fully encompasses the subject matter of claim 13 and therefore anticipates claim 13. Since claim 13 is anticipated by claim 10 of the patent, it is not patentably distinct from claim 10. Thus the invention of claim 10 of the patent is in effect a “species” of the “generic” invention of claim 13. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 13 is anticipated (fully encompassed) by claim 10 of the patent, claim 13 is not patentably distinct from claim 10, regardless of any additional subject matter present in claim 10.
As above, Claim 14 is rejected on the ground of nonstatutory obviousness double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,584,366
As above, Claim 16 is rejected on the ground of nonstatutory obviousness double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,584,366
Claims 15, 17-20 are rejected for depending on a rejected claim
Allowable Subject Matter
Claim 1-20 are indicated as allowable subject matter. However, Claims 1, 5-6, 12-14 and 16 are rejected under non-statutory double patenting grounds. Claims 2-4, 7-11, 15, 17-20 are rejected for depending on rejected claims.
The following is an examiner’s statement of reasons for allowance:
Slip and hanger seals are well known in the art of wellbore exploration and operations. Representative art which appears close to the claimed invention includes Lang (US Pub No 20030042027) Carmichael (US Pat No 3994517) Roach (US Pat No 2315134) and Allen (US Pat No 6015009). This art, alone or in combination, discloses various structures related to sealing arrangements of hangers and liners utilizing various recited features including but not limited to, such as one or more load relief plates to be above or below one or more profiled plates, the one or more profiled plates comprising a profile of indentations that are circumferentially provided in the one or more profiled plates and that induces a change in shape, in a vertical orientation which is along a wellbore, in the one or more load relief plates under a load applied from a thermal expansion to the slip hanger or the packoff . However, this art fails to disclose or fairly suggest the specifically combined structure and steps regarding the specific positional relationships and operations between each recited structure in operation, such as a first profiled plate of the one or more profiled plates comprises one or more screw holes; and one or more screws provided in the one or more screw holes, the one or more screws arranged parallel to the vertical orientation and the one or more screws extending through at least the first profiled plate and a first load relief plate of the one or more load relief plates. It could be argued that the individual structure is generally known or easily conceived in the art and thus, could just be assembled to disclose the claimed invention. However, the instant invention clearly and specifically recites structural relationships and combinations, which require a greater effort than just cobbling together known structures. Furthermore, the claimed structures are sufficiently detailed to be distinguishable when configured as claimed. The examiner could find no motivation to combine or modify the references which would define a fully functioning apparatus as claimed in the instant application.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas D Wlodarski whose telephone number is (571)272-3970. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm.
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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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/NICHOLAS D WLODARSKI/Examiner, Art Unit 3672
/Nicole Coy/Supervisory Patent Examiner, Art Unit 3672
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