UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.goV
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`APPLICATION NO.
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`F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONF {MATION NO.
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`12/317,497
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`12/23/2008
`
`W. Lynn Frazier
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`8893
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`45662
`7590
`G. TURNER MOLLER
`711 N. CARANCAHUA, SUITE 720
`CORPUS CHRISTI, TX 78401
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`06/14/2012
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`EXAMINER
`FULLER, ROBERT EDWARD
`ART UNIT
`PAPER NUMBER
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`3676
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`MAIL DATE
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`06/14/2012
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`DELIVERY MODE
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL—90A (Rev. 04/07)
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`MEGCO EX' 1021
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`MEGCO Ex. 1021
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`Office Action Summary
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`Application No.
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`App|icant(s)
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`12/317,497
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`FRAZIER, W. LYNN
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`Examiner
`ROBERT E. FULLER
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`A“ Unit
`3676
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE § MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1.136(a).
`In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`—
`— Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`Status
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`1)IXl Responsive to communication(s) filed on 10 May 2012.
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`2a)I:I This action is FINAL.
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`2b)IXl This action is non—final.
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`3)I:l An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)I:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
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`Disposition of Claims
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`5)IXl Claim(s) 14 5 8 11 16 1724 41-4751 and 52 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`)
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`( L
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`7)IX| Claim(s) 1 4 58 1124 41-47 51 and 52 is/are rejected.
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`8)I:l Claim(s) j is/are objected to.
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`9)I:l Claim(s)
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`are subject to restriction and/or election requirement.
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`Application Papers
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`10)I:I The specification is objected to by the Examiner.
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`11)|:| The drawing(s) filed on j is/are: a)I:| accepted or b)I:l objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`12)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`13)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`a)|:I All
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`b)I:l Some * c)I:I None of:
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`1.|:I Certified copies of the priority documents have been received.
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`2.|:I Certified copies of the priority documents have been received in Application No. _.
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`3.|:I Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) El Notice of References Cited (PTO-892)
`2) D Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3) IX] Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date
`.
`U.S. Patent and Trademark Office
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`4) El Interview Summary (PTO-413)
`Paper N°(5)/IVIaII DaTe- L -
`5) I:I Notice of informal Patent Application
`6) D Other:
`.
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`PTOL-326 (Rev. 03-11)
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`Office Action Summary
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`Part of Paper No./Mail Date 20120611
`MEGCO EX. 1021
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`Application/Control Number: 12/317,497
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`Page 2
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`Art Unit: 3676
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`DETAILED ACTION
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`Continued Examination Under 37 CFR 1. 1 14
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`A request for continued examination under 37 CFR 1.114, including the fee set
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`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
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`application is eligible for continued examination under 37 CFR 1.114, and the fee set
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`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
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`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 10,
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`2012 has been entered.
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`Examiner has withdrawn the objections to the specification and claims set forth in
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`the previous Office Action. Examiner has modified the previous grounds of rejection in
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`response to the amendments to the claims.
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`Terminal Disclaimer
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`The terminal disclaimer filed on January 24, 2012 disclaiming the terminal portion
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`of any patent granted on this application which would extend beyond the expiration date
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`of 8,079,413 has been reviewed and is NOT accepted.
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`The filing date listed on the terminal disclaimer (July 27, 2011) is incorrect. The
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`correct filing date is July 29, 2011.
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`Claim Objections
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`Claim 1
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`is objected to because of the following informalities: The section
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`beginning "pulling on the setting rod..." in line 12 is unclear because it appears to recite
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`a method step in an apparatus claim. Examiner suggests inserting --wherein-- between
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`Application/Control Number: 12/317,497
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`Page 3
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`Art Unit: 3676
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`"section," and "pulling" and changing "acting" to --acts--. Appropriate correction is
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`required.
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`Double Patenting
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`The nonstatutory double patenting rejection is based on a judicially created
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`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
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`unjustified or improper timewise extension of the “right to exclude” granted by a patent
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`and to prevent possible harassment by multiple assignees. A nonstatutory
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`obviousness—type double patenting rejection is appropriate where the conflicting claims
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`are not identical, but at least one examined application claim is not patentably distinct
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`from the reference claim(s) because the examined application claim is either anticipated
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`by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140
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`F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29
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`USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir.
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`1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422
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`F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163
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`USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321 (d)
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`may be used to overcome an actual or provisional rejection based on a nonstatutory
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`double patenting ground provided the conflicting application or patent either is shown to
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`be commonly owned with this application, or claims an invention made as a result of
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`activities undertaken within the scope of a joint research agreement.
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`Application/Control Number: 12/317,497
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`Page 4
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`Art Unit: 3676
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`Effective January 1, 1994, a registered attorney or agent of record may sign a
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`terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
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`37 CFR 3.73(b).
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`Claims 41-47, 51, and 52 are rejected on the ground of nonstatutory
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`obviousness-type double patenting as being unpatentable over claims 1-6 of U.S.
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`Patent No. 8,079,413. Although the conflicting claims are not identical, they are not
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`patentably distinct from each other because the claims in the ‘41 3 patent are narrower
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`than the pending claims, and therefore the pending claims are fully encompassed by the
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`patented claims and obviously directed to the same invention.
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`This is a provisional obviousness-type double patenting rejection because the
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`conflicting claims have not in fact been patented.
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
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`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
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`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under 35 U.S.C. 103(a) are summarized as follows:
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`1.
`2.
`3.
`4.
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`Determining the scope and contents of the prior art.
`Ascertaining the differences between the prior art and the claims at issue.
`Resolving the level of ordinary skill in the pertinent art.
`Considering objective evidence present in the application indicating
`obviousness or nonobviousness.
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`Application/Control Number: 12/317,497
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`Page 5
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`Art Unit: 3676
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`Claims 1, 8, 11, 24, 41, 43, 44, and 51 are rejected under 35 U.S.C. 103(a) as
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`being unpatentable over Bonner (US 3,160,209) in view of Fripp et al. (US
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`7,428,922, hereinafter Fripp).
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`With regard to claim 1, Bonner discloses a down hole well tool comprising
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`a mandrel (82) having a first passage therethrough;
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`a slips/seal section (95, 93, 91, etc.) movable on an exterior of the mandrel from
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`a running in position to an expanded position for sealing against a production string; and
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`a setting assembly (70, 84, 83, etc.) for assisting in moving the slips/seal section
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`from the running in position to the expanded position, the setting assembly including
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`a setting device (83), rigid with the mandrel, having a second passage
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`therethrough, and
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`a setting rod engaged with the second passage (via a pin 85), pulling on the
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`setting rod acting to pull the engaged sections apart (by breaking the pin 85), expand
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`the slips/seal section into sealing engagement with the production string and remove
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`the setting rod from the mandrel, the arrangement of the setting device and setting rod
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`being that removal of the setting rod from the tool opens the first and second passages,
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`the setting device remaining rigid with the mandrel upon removal of the setting rod (see
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`Figs.).
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`Bonner fails to disclose the connection between the setting rod and the setting
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`device being a shearable thread connection. Bonner instead discloses a shear pin.
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`Fripp teaches the functional equivalence of shear pins and shear threads for
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`release mechanisms in downhole tools (column 7, lines 6-16).
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`Application/Control Number: 12/317,497
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`Page 6
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`Art Unit: 3676
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`It would have been considered obvious to one of ordinary skill in the art, at the
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`time the invention was made, to have modified Bonner such that the shear pin
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`connection was replaced with a shearable thread connection, since such a modification
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`would have amounted to the mere substitution of one well-known release mechanism
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`for another, and would have yielded predictable results, as evidenced by Fripp.
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`Furthermore, in combination, Bonner and Fripp discloses an unthreaded section (i.e.
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`between the part that's already threaded in Bonner and the added threads which
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`replace the pin of Bonner) that would necessarily be larger in diameter than the
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`threaded section in order for the setting rod to be removed from above as required.
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`With regard to claim 8, the first passage extends completely through the mandrel
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`and slips/seal section (see Figs. of Bonner).
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`With regard to claim 11, Bonner in view of Fripp discloses a first end and a
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`second end, the down hole tool being adapted to receive the setting rod through the first
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`end and wherein the unthreaded section is between the second end and the threaded
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`section (see Figs. of Bonner and discussion above with respect to claim 1).
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`With regard to claim 24, the setting device (83) is connected to the mandrel (82).
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`With regard to claim 41, Bonner discloses a plug for isolating a wellbore,
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`comprising
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`a mandrel (82) having a first end and a second end and a passage between the
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`mandrel;
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`at least one malleable element (95) disposed about the mandrel;
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`at least one slip (89) disposed about the mandrel;
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`Page 7
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`Art Unit: 3676
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`at least one conical member (93) disposed about the mandrel; and
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`an insert (83) threadably engaging the mandrel through a threaded connection
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`proximate the second end of the mandrel and adapted to receive a setting tool (84) that
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`enters the mandrel through the first end thereof, wherein:
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`the insert providing a passage thereinto;
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`the insert adapted to engage the setting tool (via shearable pin 85); and
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`the insert adapted to release the setting tool when exposed to a predetermined
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`axial force, thereby providing a passageway through the mandrel and into the insert.
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`Bonner fails to disclose the connection between the setting rod and the setting
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`device being a shearable thread connection. Bonner instead discloses a shear pin.
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`Fripp teaches the functional equivalence of shear pins and shear threads for
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`release mechanisms in downhole tools (column 7, lines 6-16).
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`It would have been considered obvious to one of ordinary skill in the art, at the
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`time the invention was made, to have modified Bonner such that the shear pin
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`connection was replaced with a shearable thread connection, since such a modification
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`would have amounted to the mere substitution of one well-known release mechanism
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`for another, and would have yielded predictable results, as evidenced by Fripp.
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`Furthermore, in combination with Fripp, Bonner discloses the threaded connection
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`between the insert (83) and the mandrel (82) being unshearable, since Figs. 2C and 3
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`show the connection between the insert and the setting tool shearing, but notthe
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`connection between the insert and the mandrel.
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`Application/Control Number: 12/317,497
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`Page 8
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`Art Unit: 3676
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`With regard to claim 43, the mandrel is at least capable of receiving a ball which
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`could seat on the upper end of the mandrel and thereby restrict flow in at least one
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`direction through the body.
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`With regard to claim 44, the predetermined axial force to release the setting tool
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`is less than an axial force required to break the mandrel.
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`With regard to claim 51, the mandrel passage is of a first diameter and the insert
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`passage is substantially the same diameter as the mandrel passage (see Bonner, Fig.
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`2G).
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`Claim 4, 5, and 47 are rejected under 35 U.S.C. 103(a) as being unpatentable
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`over Bonner in view of Fripp as applied to claims 1 and 41 above, and further in
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`view of Turley et al. (US 7,690,436, hereinafter Turley).
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`Bonner in view of Fripp discloses an inlet (i.e. at the upper end of mandrel 82 of
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`Bonner) which is capable of seating a ball. However, the inlet is not tapered, and
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`Bonner does not disclose a ball being seated within the inlet.
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`Turley discloses a downhole plug (Fig. 7C) comprising a tapered inlet (372)
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`for a ball (370) to seal against to prevent downward flow.
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`It would have been considered obvious to one of ordinary skill in the art, at the
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`time the invention was made, to have provided the apparatus of Bonner in view of Fripp
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`with a tapered inlet as disclosed by Turley, since this would have enabled additional
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`functionality for the plug, such as frac plug capability (see Turley, column 6, lines 18-
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`39).
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`Application/Control Number: 12/317,497
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`Page 9
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`Art Unit: 3676
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`Claims 45 and 46 are rejected under 35 U.S.C. 103(a) as being unpatentable
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`over Bonner in view of Fripp as applied to claim 41 above, and further in view of
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`Slup et al. (US 6,708,770, hereinafter Slup).
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`Bonner in view of Fripp fails to disclose an anti-rotation feature comprising a
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`taper or mule shoe.
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`Slup discloses a mandrel comprising a tapered anti-rotation feature (432—see
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`Figs. 22 and 23).
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`It would have been considered obvious to one of ordinary skill in the art, at the
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`time the invention was made, to have modified Bonner in view of Fripp to have an anti-
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`rotation feature at the second end of the device, in order to “rotationally lock...with
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`another abutting plug assembly without the need for a third component such as a key"
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`(Slup, column 18, line 65).
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`Claim 52 is rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Bonner in view of Fripp as applied to claim 41 above, and further in view of
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`Streich et al. (US 5,224,540, hereinafter Streich).
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`Bonner mentions that the plug is "easily drillable," but is silent as to the actual
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`material composition of the insert (column 1, lines 24-27).
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`Streich discloses brass being a well known material for components of
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`drillable bridge plugs (column 1, lines 46-54).
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`It would have been considered obvious to one of ordinary skill in the art, at the
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`time the invention was made, to have modified Bonner such that the insert was formed
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`Application/Control Number: 12/317,497
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`Page 10
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`Art Unit: 3676
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`of brass, as Bonner's plug is designed to be drillable, and Streich et al. teach that brass
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`is "relatively easy to drill" (Streich et al., column 6, lines 34-44).
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to ROBERT E. FULLER whose telephone number is
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`(571)272-6300. The examiner can normally be reached on Monday thru Friday from
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`9:00 AM - 6:30 PM.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Shane Bomar can be reached on 571-272-7026. The fax phone number for
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`the organization where this application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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`06/11/2012
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`/R.E.F./
`
`/SHANE BOMAR/
`
`Supervisory Patent Examiner, Art
`Unit 3676
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`MEGCO EX. 1021
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