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
`
`APPLICATION NO.
`
`F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONF {MATION NO.
`
`12/16/2011
`
`W. Lynn Frazier
`
`MOTI—018P1C1
`
`2094
`
`EXAMINER
`
`FULLER, ROBERT EDWARD
`
`ART UNIT
`
`3676
`
`PAPER NUMBER
`
`NOT *ICATION DATE
`
`DELIVERY MODE
`
`01/22/2013
`
`ELECTRONIC
`
`13/329,077
`
`60935
`
`7590
`
`01/22/2013
`
`Edmonds & Nolte, PC
`2625 Bay Area Boulevard, Suite 530
`Houston, TX 77058
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on aboVe—indicated "Notification Date" to the
`following e—mail address(es):
`
`docketing@edmondsnolte.com
`
`PTOL—90A (Rev. 04/07)
`
`MEGCO EX. 1022
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`Office Action Summary
`
`Application No.
`
`App|icant(s)
`
`13/329,077
`
`FRAZIER, w. LYNN
`
`Examiner
`ROBERT E. FULLER
`
`Art Unit
`3676
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 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).
`
`Status
`
`1)|Xl Responsive to communication(s) filed on 24 October 2012.
`
`2a)IXI This action is FINAL.
`
`2b)I:I This action is non—final.
`
`3)|: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)|: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 Ouayle, 1935 C.D. 11, 453 O.G. 213.
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`Disposition of Claims
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`5)|Z Claim(s) 2 3 6-8 and 12-38 is/are pending in the application.
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`5a) Of the above claim(s) 2 3 and 6-8 is/are withdrawn from consideration.
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`6)I:I Claim(s) j is/are allowed.
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`7)|Xl Claim(s L386/are rejected.
`
`8)I:I Claim(s) _ is/are objected to.
`
`9)|:l Claim(s) _ are subject to restriction and/or election requirement.
`
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway
`program at a participating intellectual property office for the corresponding application. For more information, please see
`httn://www.Lssntq.ciov/patents,/init events/'
`h/'iPdex.'3 or send an inquiry to P:-7’Hfeedback
`us 1.0.: 0v.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`
`11)|Xl The drawing(s) filed on 24 October 2012 is/are: a)IZI accepted or b)|:I objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
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`12)|:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
`
`a)|:l All
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`b)I:I Some * c)I:l None of:
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`1.I:I Certified copies of the priority documents have been received.
`
`2.I:I Certified copies of the priority documents have been received in Application No. j.
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`3.I: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)).
`
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) Q Notice of References Cited (PTO-892)
`
`2) E Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date
`.
`U.S. Patent and Trademark Office
`
`3) El Interview Summary (PTO-413)
`Paper No(s)/Mail Date.
`4) D Other:
`.
`
`PTOL-326 (Rev. 09-12)
`
`Office Action Summary
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`Part of PaB4EiGéCFi6iéiE2’até 982301 09
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`Application/Control Number: 13/329,077
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`Page 2
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`Art Unit: 3676
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`DETAILED ACTION
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`Applicant’s submission, filed October 24, 2012, has been entered and
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`considered. Examiner has set forth new grounds of rejection in response to the
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`amendments to the claims.
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`Claims 2, 3, 6-8, and 12-38 are pending, and claims 2, 3, and 6-8 are withdrawn.
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`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
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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
`
`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); and In re Thorington, 418 F.2d 528, 163
`
`USPQ 644 (CCPA 1969).
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`Application/Control Number: 13/329,077
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`Page 3
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`Art Unit: 3676
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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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`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).
`
`Claims 18-20, 25, and 26 are provisionally rejected on the ground of
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`nonstatutory obviousness-type double patenting as being unpatentable over
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`claims 1, 2, 4, 5, and 28-36 of copending Application No. 13/329,096. Although the
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`conflicting claims are not identical, they are not patentably distinct from each other
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`because pending claim 18 is broader than claim 1
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`in the ‘O96 application, since claim 18
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`does not recite the shoulder or the location of the inner threads. Therefore, pending
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`claim 18 is fully encompassed by claim 1 of ‘096 and is obviously directed to the same
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`invention. Pending claim 19 is narrower than claim 28 of the ‘O96 application since
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`claim 28 does not specify what the "means for connecting" is. However, it would have
`
`been considered obvious to provide threads as the connection means since they are
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`well known connectors in wellbore packers. Note that claim 30 in ‘O96 does recite that
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`the connecting means are threads.
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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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`Application/Control Number: 13/329,077
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`Page 4
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`Art Unit: 3676
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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:
`
`(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.
`
`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:
`
`1.
`2.
`3.
`4.
`
`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.
`
`Claims 12-17, 22-24, and 27-38 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Baker (US 2,737,242) in view of Slup et al. (US 7,600,572,
`
`hereinafter Slup) and McCullough (US 3,094,166).
`
`With regard to claim 12, Baker discloses a plug for use in a wellbore, comprising:
`
`a body (10) having a first end and a second end;
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`at least one malleable element (20) disposed about the body;
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`at least one slip (25) disposed about the body;
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`at least one conical member (17) disposed about the body; and
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`an insert (12) at least partially disposed in the body proximate the second end of
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`the body, the insert adapted to receive a setting tool (C) that enters the body through
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`the first end thereof, wherein:
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`the insert comprises one or more threads (see Fig. 2) disposed on an inner
`
`surface thereof; and
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`the one or more threads are disposed proximate the second end of the body and
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`are adapted to engage the setting tool (Fig. 2).
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`Baker fails to disclose the body being formed of one or more composite
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`materials. Baker also discloses a shear stud 43, rather than shearable threads.
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`Slup discloses a bridge plug (600) having a body (414) made of composite
`
`materials (column 19, lines 41-67).
`
`It would have been considered obvious to one of ordinary skill in the art, at the
`
`time the invention was made, to have modified the body of Baker to be constructed of
`
`composite material as disclosed by Slup, in order to enhance the drillability of the bridge
`
`plug (see Background and Summary sections of Slup).
`
`McCullough discloses a packer having shearable threads (72) which release a
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`setting tool (10) upon application of a sufficient axial force.
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`It would have been considered obvious to one of ordinary skill in the art, at the
`
`time the invention was made, to have modified Baker such that the shear stud was
`
`replaced by shear threads as shown by McCullough, since such a modification would
`
`have amounted to the simple substitution of known equivalent releasing mechanisms
`
`and would have yielded predictable results.
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`Page 6
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`Art Unit: 3676
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`With regard to claim 13, the outer surface of the brass insert has a larger
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`diameter and a smaller diameter forming a shoulder therebetween, the shoulder
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`adapted to anchor the brass insert within the body (see Fig. 2).
`
`With regard to claim 14, Baker fails to disclose complimentary anti-rotation
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`features on the first and second ends of the plug body.
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`Slup discloses mating profiles 432 and 543 on either end of a plug (see Fig. 22).
`
`It would have been considered obvious to one of ordinary skill in the art, at the
`
`time the invention was made, to have modified Baker such that the upper and lower
`
`ends were providing with complementary profiles, in order "rotationally lock [a bridge
`
`plug] with another abutting plug assembly" (Slup, column 25, lines 26-43).
`
`With regard to claim 15, Baker discloses that the body (10) is capable of
`
`receiving a ball to restrict flow through the body (see shoulder proximate numeral 33 on
`
`the inner surface of body 10).
`
`With regard to claim 16, Baker and McCullough, in combination, disclose that the
`
`predetermined axial force to release the setting toot is less than an axial force required
`
`to break the body.
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`With regard to claim 17, Baker’s plug could be used as a frac plug.
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`With regard to claims 22 and 23, the malleable element (20) comprises rubber,
`
`an elastomer.
`
`With regard to claim 24, the body (10) is a mandrel.
`
`With regard to claim 27, Baker discloses a plug for use in a wellbore, comprising:
`
`a body (10) having a first end and a second end;
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`Art Unit: 3676
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`at least one sealing element (20) disposed about the body;
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`at least one slip (14) disposed about the body;
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`at least one conical member (17) disposed about the body; and
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`an insert (12) disposed proximate the second end of the body, wherein:
`
`the insert comprises a shoulder formed on an outer surface thereof, and the
`
`shoulder abuts the second end of the body (unlabeled, see Fig. 2);
`
`the insert comprises threads disposed on an inner surface thereof (unlabeled,
`
`see Fig. 2); the threads are adapted to engage a setting tool (C) that enters the body
`
`through the first end thereof.
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`Baker fails to disclose the body being formed of one or more composite
`
`materials. Baker also discloses a shear stud 43, rather than shearable threads.
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`Slup discloses a bridge plug (600) having a body (414) made of composite
`
`materials (column 19, lines 41-67).
`
`It would have been considered obvious to one of ordinary skill in the art, at the
`
`time the invention was made, to have modified the body of Baker to be constructed of
`
`composite material as disclosed by Slup, in order to enhance the drillability of the bridge
`
`plug (see Background and Summary sections of Slup).
`
`McCullough discloses a packer having shearable threads (72) which release a
`
`setting tool (10) upon application of a sufficient axial force.
`
`It would have been considered obvious to one of ordinary skill in the art, at the
`
`time the invention was made, to have modified Baker such that the shear stud was
`
`replaced by shear threads as shown by McCullough, since such a modification would
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`Art Unit: 3676
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`have amounted to the simple substitution of known equivalent releasing mechanisms
`
`and would have yielded predictable results.
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`With regard to claims 28 and 29, Baker discloses that the body (10) is capable of
`
`receiving a ball to restrict flow through the body (see shoulder proximate numeral 33 on
`
`the inner surface of body 10).
`
`With regard to claims 30 and 31, in combination, Baker and McCullough disclose
`
`the stud element 43 being removed from the threaded portion of the insert due to the
`
`shearing of threads. After this point, the insert could receive a ball which would restrict
`
`flow into the interior of the insert. Claims 30 and 31 do not positively require the insert
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`to have a flowbore therethrough.
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`With regard to claim 32, the insert has a blocked passageway (i.e. a solid interior
`
`portion) which restricts flow in opposing directions therethrough. Claim 32 does not
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`positively require the insert to have a flowbore therethrough.
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`With regard to claim 33, Baker discloses one or more threads disposed on the
`
`outer surface thereof and adjacent to the shoulder (see Fig. 2), wherein the threads
`
`disposed on the outer surface of the insert are adapted to engage corresponding
`
`threads located at the second end of the body (see Fig. 2).
`
`With regard to claim 34, Baker fails to disclose complimentary anti-rotation
`
`features on the first and second ends of the plug body.
`
`Slup discloses mating profiles 432 and 543 on either end of a plug (see Fig. 22).
`
`It would have been considered obvious to one of ordinary skill in the art, at the
`
`time the invention was made, to have modified Baker such that the upper and lower
`
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`Application/Control Number: 13/329,077
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`Page 9
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`Art Unit: 3676
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`ends were providing with complementary profiles, in order "rotationally lock [a bridge
`
`plug] with another abutting plug assembly" (Slup, column 25, lines 26-43).
`
`With regard to claims 35 and 36, the sealing element (20) comprises rubber, an
`
`elastomer.
`
`With regard to claim 37, the body (10) is a mandrel.
`
`With regard to claim 38, the threads are disposed proximate the second end of
`
`the body (Fig. 2).
`
`Claims 18, 19, 25, and 26 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Baker in view of Guillory et al. (US 6,578,638, hereinafter
`
`Guillory) and McCullough.
`
`With regard to claim 18, Baker discloses a shearable insert for a plug,
`
`comprising:
`
`a body (10);
`
`one or more threads disposed on an outer surface of the body, the one or more
`
`threads adapted to couple with one or more threads of the plug (Fig. 2); and
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`one or more threads disposed on an inner surface of the body (Fig. 2), wherein at
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`least one of the threads disposed on the inner surface of the body is radially opposed to
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`at least one of the threads disposed on the outer surface of the body (Fig. 2), and
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`wherein the threads are adapted to couple with one or more threads of a setting tool
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`(10).
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`Application/Control Number: 13/329,077
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`Page 10
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`Art Unit: 3676
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`Baker fails to disclose the body comprising brass. Baker further fails to disclose
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`shearable threads which release the setting tool at a predetermined force.
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`lnstead,
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`Baker discloses a shear stud (43).
`
`Guillory discloses a packer which may be totally constructed of brass (column 6,
`
`lines 38-55).
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`It would have been considered obvious to one of ordinary skill in the art, at the
`
`time the invention was made, to have modified Baker such that the insert was
`
`constructed of brass, as Guillory teaches that such a modification would have amounted
`
`to the simple substitution of one known material for another and would have yielded
`
`predictable results.
`
`McCullough discloses a packer having shearable threads (72) which release a
`
`setting tool (10) upon application of a sufficient axial force.
`
`It would have been considered obvious to one of ordinary skill in the art, at the
`
`time the invention was made, to have modified Baker such that the shear stud was
`
`replaced by shear threads as shown by McCullough, since such a modification would
`
`have amounted to the simple substitution of known equivalent releasing mechanisms
`
`and would have yielded predictable results.
`
`With regard to claim 19, Baker discloses that the outer surface of the body has a
`
`shoulder formed thereon, the shoulder adapted to anchor the body within the plug (see
`
`Fig. 2).
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`With regard to claims 25 and 26, in combination, Baker and McCullough disclose
`
`that the axial force is less than required to break the body or the outer threads.
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`Application/Control Number: 13/329,077
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`Page 11
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`Art Unit: 3676
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`Claims 20 and 21 are rejected under 35 U.S.C. 103(a) as being unpatentable
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`over Baker in view of Slup and McCullough as applied to claim 12 above, and
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`further in view of Guillory.
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`Baker in view of Slup and McCullough fails to disclose the body of the insert
`
`being made of brass. Baker does disclose a packer which is capable of being used as
`
`a frac plug.
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`Guillory discloses a packer in which any component may be made of brass
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`(column 6, lines 38-55).
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`It would have been considered obvious to one of ordinary skill in the art, at the
`
`time the invention was made, to have modified Baker in view of Slup and McCullough
`
`such that the insert was constructed of brass, as Guillory teaches that such a
`
`modification would have amounted to the simple substitution of one known material for
`
`another and would have yielded predictable results.
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`Response to Arguments
`
`Applicant’s arguments with respect to claims 12, 18, and 27 have been
`
`considered but are moot because the arguments do not apply to the current rejection.
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`Conclusion
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
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`Application/Control Number: 13/329,077
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`Page 12
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`Art Unit: 3676
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`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFR1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
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`In the event a first reply is filed within
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
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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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`Application/Control Number: 13/329,077
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`Page 13
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`Art Unit: 3676
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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
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toII—free).
`
`If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/SHANE BOMAR/
`
`Supervisory Patent Examiner, Art
`Unit 3676
`
`01/10/2013
`
`/R.E.F./
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