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.
`
`13/329,096
`
`12/16/2011
`
`W. Lynn Frazier
`
`MOTI—018P1D1
`
`5032
`
`60935
`
`7590
`
`01/24/2013
`
`Edmonds & Nolte, PC
`2625 Bay Area Boulevard, Suite 530
`Houston, TX 77058
`
`EXAMINER
`
`FULLER, ROBERT EDWARD
`
`ART UNIT
`
`3676
`
`PAPER NUMBER
`
`NOT *ICATION DATE
`
`DELIVERY MODE
`
`01/24/2013
`
`ELECTRONIC
`
`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)
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`Office Action Summary
`
`Application No.
`
`App|icant(s)
`
`13/329,096
`
`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 § 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 26 October 2012.
`
`2a)IXI This action is FINAL.
`
`2b)I:I This action is non—final.
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`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)|XI Claim(s)1-:.3‘6is/are pending in the application.
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`5a) Of the above claim(s) _ 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)1-:.3‘6is/are rejected.
`
`8)I:I Claim(s) _ is/are objected to.
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`9)|:l Claim(s) _ are subject to restriction and/or election requirement.
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`* 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.'s or send an inquiry to P:-7’Hfeedback
`us 1.0.: 0v.
`
`Application Papers
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`10)I:I The specification is objected to by the Examiner.
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`11)|Xl The drawing(s) filed on 26 October 2012 is/are: a)IZI accepted or b)|:I 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).
`
`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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`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).
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`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.
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`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)).
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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) 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:
`.
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`PTOL-326 (Rev. 09-12)
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`Office Action Summary
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`Part of PaB4EiGéCFi6iéiE2’até 989801 15
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`Application/Control Number: 13/329,096
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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 26, 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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`Claim Rejections - 35 USC § 1 12
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`Claim limitation “means for connecting” has been interpreted under 35
`
`U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA), sixth paragraph, because it uses a non-
`
`structural term “means” coupled with functional language “connecting” without
`
`reciting sufficient structure to achieve the function. Furthermore, the non-
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`structural term is not preceded by a structural modifier.
`
`Since this claim limitation invokes 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre—AlA),
`
`sixth paragraph, claims 28-36 are interpreted to cover the corresponding structure
`
`described in the specification that achieves the claimed function, and equivalents
`
`thereof.
`
`A review of the specification shows that the following appears to be the
`
`corresponding structure described in the specification for the 35 U.S.C. 112(f) or
`
`35 U.S.C. 112 (pre—AlA), sixth paragraph limitation: Right or Left—handed threads.
`
`Claim limitation “means for releasing” has been interpreted under 35 U.S.C.
`
`112(f) or 35 U.S.C. 112 (pre-AIA), sixth paragraph, because it uses a non-
`
`structural term “means” coupled with functional language “releasing” without
`
`reciting sufficient structure to achieve the function. Furthermore, the non-
`
`structural term is not preceded by a structural modifier.
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`Application/Control Number: 13/329,096
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`Page 3
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`Art Unit: 3676
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`Since this claim limitation invokes 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre—AlA),
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`sixth paragraph, claims 28-36 are interpreted to cover the corresponding structure
`
`described in the specification that achieves the claimed function, and equivalents
`
`thereof.
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`A review of the specification shows that the following appears to be the
`
`corresponding structure described in the specification for the 35 U.S.C. 112(f) or
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`35 U.S.C. 112 (pre-AIA), sixth paragraph limitation: any component, part, element,
`
`member, or thing that shears or is capable of shearing at a predetermined stress that is
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`less than the stress required to shear the body of the plug (see paragraph 0023).
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`If applicant wishes to provide further explanation or dispute the examiner’s
`
`interpretation of the corresponding structure, applicant must identify the corresponding
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`structure with reference to the specification by page and line number, and to the
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`drawing, if any, by reference characters in response to this Office action.
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`If applicant does not wish to have the claim limitation treated under 35 U.S.C.
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`112(f) or 35 U.S.C. 112 (pre-AIA), sixth paragraph, applicant may amend the claim so
`
`that it will clearly not invoke 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre—AlA), sixth
`
`paragraph, or present a sufficient showing that the claim recites sufficient structure,
`
`material, or acts for performing the claimed function to preclude application of 35 U.S.C.
`
`112(f) or 35 U.S.C. 112 (pre—AlA), sixth paragraph.
`
`For more information, see MPEP § 2173 et seq. and Supplementary Examination
`
`Guidelines for Determining Compliance with 35 U.S.C. § 112 and for Treatment of
`
`Related Issues in PatentApplications, 76 FR 7162, 7167 (Feb. 9, 2011).
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`Application/Control Number: 13/329,096
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`Page 4
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`Art Unit: 3676
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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
`
`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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`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
`
`be commonly owned with this application, or claims an invention made as a result of
`
`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).
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`Application/Control Number: 13/329,096
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`Page 5
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`Art Unit: 3676
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`Claims 1-13 and 21-36 are rejected on the ground of nonstatutory
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`obviousness-type double patenting as being unpatentable over claims 1, 2, 4-11,
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`13, 14, and 16-19 of U.S. Patent No. 8,079,413. Although the conflicting claims are
`
`not identical, they are not patentably distinct from each other because the claims in the
`
`instant application are fully encompassed by the patented claims, and are therefore
`
`obviously directed to the same invention. The pending claims are clearly directed to the
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`subcombination of an insert for a plug, while the patented claims relate to the
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`combination of the plug and the insert, and contain the particulars of the insert.
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`Claims 1-8 and 14-36 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 13 and 15-38 of copending Application No. 13/329,077. Although the
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`conflicting claims are not identical, they are not patentably distinct from each other
`
`because claim 1
`
`in the pending application is broader than claim 13 of the ‘077
`
`application and is therefore fully encompassed by that claim, and obviously directed to
`
`the same invention. Claim 14 in the instant application is clearly the method of using
`
`the apparatus of claim 13 in the ’077 application, and the claims are therefore not
`
`patentably distinct. Claims 28 and 35 in the instant application are broader than claim
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`18 in the ‘O77 application, since the claims in the instant application simply recite
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`"means for connecting" and "means for releasing", rather than specifying “threads” as in
`
`the ‘077 application.
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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: 13/329,096
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`Page 6
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`Art Unit: 3676
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(b) the invention was patented or described in a printed publication in this or a foreign country or in
`public use or on sale in this country, more than one year prior to the date of application for patent in
`the United States.
`
`Claims 28-32 and 34-36 are rejected under 35 U.S.C. 102(b) as being
`
`anticipated by Baker (US 2,737,242).
`
`With regard to claims 28 and 35, Baker discloses a shearable insert for a
`
`downhole plug (and a method of using such an insert—note that the structure in claim
`
`35 is the same as that required in claim 28), comprising:
`
`a body (12) having a first end and a second end;
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`a shoulder formed on an outer surface of the body (just above the seal member);
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`means for connecting (i.e. threads) the body to a downhole plug, wherein the
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`means for connecting the body is disposed on the outer surface of the body between
`
`the shoulder and the first end of the body (Fig. 2); and
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`means for releasing (43) the body from a setting tool, wherein the means for
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`releasing the body is disposed on an inner surface of the body between the shoulder
`
`and the first end of the body, and wherein the means for releasing the body is adapted
`
`to release the setting tool when exposed to a predetermined axial force.
`
`With regard to claim 29, the means for connecting the body to the downhole plug
`
`is radially offset from the means for releasing the body from the setting tool (Fig. 2).
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`Art Unit: 3676
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`With regard to claims 30 and 36, the means for connecting the body to the
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`downhole plug comprises one or more threads disposed on the outer surface of the
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`body (Fig. 2).
`
`With regard to claim 31, the shoulder is adapted to anchor the body within the
`
`downhole plug.
`
`With regard to claim 32, the "first end" of the shoulder is considered to be the flat
`
`part which contains the o-ring seal, and the "second end" is the horizontal part which
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`transitions to a smaller diameter.
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`With regard to claim 34, the axial force is less than a force required to break the
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`body (see numeral 44 in Fig. 2).
`
`Claims 28-32 and 34-36 are rejected under 35 U.S.C. 102(b) as being
`
`anticipated by Bassinger (US 2,230,447).
`
`With regard to claims 28 and 35, Bassinger discloses a shearable insert for a
`
`downhole plug (and a method for using such an insert, since the structure recited in
`
`claim 35 is the same as that required by claim 28), comprising:
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`a body (60) having a first end and a second end;
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`a shoulder formed on an outer surface of the body (i.e. just below threads
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`proximate numeral 66);
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`means for connecting (i.e. threads proximate 66) the body to a downhole plug,
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`wherein the means for connecting the body is disposed on the outer surface of the body
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`between the shoulder and the first end of the body (Fig. 9); and
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`Page 8
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`Art Unit: 3676
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`means for releasing (65) the body from a setting tool (81), wherein the means for
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`releasing the body is disposed on an inner surface of the body between the shoulder
`
`and the first end of the body, and wherein the means for releasing the body is adapted
`
`to release the setting tool when exposed to a predetermined axial force (note that the
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`force which breaks pin 65 occurs primarily along the transverse axis of the body).
`
`With regard to claim 29, the means for connecting the body to the downhole plug
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`is radially offset from the means for releasing the body from the setting tool (Fig. 9).
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`With regard to claims 30 and 36, the means for connecting the body to the
`
`downhole plug comprises one or more threads disposed on the outer surface of the
`
`body (proximate 66).
`
`With regard to claim 31, the shoulder is adapted to anchor the body within the
`
`downhole plug (note especially Fig. 2, where the shoulder contacts ball seat 21).
`
`With regard to claim 32, the “first end” of the shoulder is considered to be the flat
`
`area below the horizontal portion of the shoulder, and the “second end” is the horizontal
`
`portion itself, which transitions from a larger diameter to a smaller diameter.
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`With regard to claim 34, the predetermined axial force is less than a force
`
`required to break the body (see pin 65 in Fig. 3).
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`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`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.
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`Application/Control Number: 13/329,096
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`Page 9
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`Art Unit: 3676
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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:
`
`.4‘.W!\3."
`
`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 1-8, 14-19, and 21 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Bassinger in view of Streich et al. (US 5,224,540, hereinafter
`
`Streich) and McCullough (US 3,094,166).
`
`With regard to claim 1, Bassinger discloses a shearable insert for a plug,
`
`comprising:
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`a body (60) having a first end and a second end;
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`a shoulder (proximate numeral 66, at the lower end of the threaded portion)
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`formed on an outer surface of the body, and located between the first and second ends
`
`of the body;
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`one or more threads disposed on the outer surface of the body between the
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`shoulder and the first end of the body (Fig. 9), the one or more threads adapted to
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`couple with one or more threads of the plug (Fig. 9); and
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`one or more threads (82) disposed on an inner surface of the body between the
`
`shoulder and the first end of the body, the threads adapted to couple to a setting tool
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`(81).
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`Application/Control Number: 13/329,096
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`Page 10
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`Art Unit: 3676
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`Bassinger fails to disclose the body comprising brass or cast iron. Bassinger
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`further fails to disclose shearable threads for connecting to the setting tool. Bassinger
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`discloses a shear pin (65) instead of shear threads.
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`Streich teaches that it is well known to utilize brass or cast iron components in a
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`packer (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
`
`time the invention was made, to have modified the body of Bassinger such that it was
`
`formed of brass or cast iron, since Streich teaches that “it is frequently simpler and less
`
`expensive to mill or drill [packers] out rather than to implement a complex retrieving
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`operation" (column 1, line 34) and drilling softer materials is much faster than milling
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`hard materials (column 1, lines 46-54).
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`McCullough teaches a packer insert (70) comprising shearable threads (72)
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`which release a setting tool (10) when exposed to a predetermined 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 Bassinger such that the shear pin
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`arrangement was replaced by shearable threads as shown by McCullough, since such a
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`modification would have amounted to the simple substitution of one known release
`
`mechanism for another, and would have yielded predictable results.
`
`With regard to claim 2, the shoulder outer surface comprises a larger diameter
`
`with a shoulder therebetween (see Fig. 9), the shoulder adapted to anchor the body
`
`within the plug (since the shoulder will eventually contact lower ball seat 21, see
`
`specifically Fig. 2 in particular).
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`Page 11
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`Art Unit: 3676
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`With regard to claim 3, the “first end” of the shoulder is considered to be the flat
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`area below the horizontal portion of the shoulder, and the “second end” is the horizontal
`
`portion itself, which transitions from a larger diameter to a smaller diameter.
`
`With regard to claim 4, Bassinger and Streich in combination disclose the body
`
`being made of brass, and Bassinger's plug is capable of use as a frac plug.
`
`With regard to claim 5, the force to shear the threads is less than a force required
`
`to break the body.
`
`With regard to claim 6, the threads disposed on the outer surface of the body are
`
`right-handed threads, and wherein the shearable threads are left-handed threads (the
`
`best illustration is in Fig. 11).
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`With regard to claims 7 and 8, the drawings of Bassinger appear to show that
`
`there are roughly 10 threads, and their pitch is similar to that shown in applicant's
`
`drawings. However, the drawings cannot be relied upon to disclose these elements.
`
`Therefore, Bassinger in view of Streich and McCullough is silent as to the number and
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`pitch of the threads.
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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 Bassinger such that there were between
`
`4 and 12 threads, having a pitch between 0.1 and 5 mm, since it has been held that
`
`where the general conditions of a claim are disclosed in the prior art, discovering the
`
`optimum or workable ranges involves only routine skill in the art.
`
`In re A//er, 105 USPQ
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`233.
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`Application/Control Number: 13/329,096
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`Page 12
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`Art Unit: 3676
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`With regard to claim 14, the method of using the device of Bassinger in view of
`
`Streich and McCullough comprises the claimed steps (note that the structure recited in
`
`claim 14 is the same as in claim 1).
`
`With regard to claims 15, 16, and 18, Bassinger and McCullough, in combination,
`
`disclose threadably engaging the setting tool with the shearable threads, and then
`
`exposing threads to a force with the setting tool and thereby breaking the threads.
`
`With regard to claim 17, Bassinger discloses anchoring the insert within the plug
`
`with the shoulder (see especially Fig. 2), wherein the shoulder comprises a first
`
`diameter portion on the outer surface of the body that transitions to a second diameter
`
`portion on the outer surface of the body.
`
`With regard to claim 19, Bassinger discloses inserting a ball (72) into a bore
`
`formed through the body to restrict fluid flow therethrough.
`
`With regard to claim 21, the sets of threads are on radially opposite sides of the
`
`body (note that "radially opposed" does not imply that the threads are located at the
`
`same axial position along the body).
`
`Claims 1-5, 7, 8, 14-18, 21, 22, and 27 are rejected under 35 U.S.C. 103(a) as
`
`being unpatentable over Baker in view of Streich and McCullough.
`
`With regard to claims 1, 14, and 15, Baker discloses a shearable insert for a plug
`
`(and a method for using the plug--note that claim 14 contains the same structure as
`
`recited in claim 1), comprising:
`
`a body (12) having a first end and a second end;
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`Application/Control Number: 13/329,096
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`Page 13
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`Art Unit: 3676
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`a shoulder formed on an outer surface of the body (just above the o-ring), and
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`located between the first and second ends of the body;
`
`one or more threads (see Fig. 2) disposed on the outer surface of the body
`
`between the shoulder and the first end of the body, the one or more threads adapted to
`
`couple with one or more threads of the plug; and
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`one or more threads disposed on an inner surface of the body (proximate
`
`numeral 33) between the shoulder and the first end of the body, the threads adapted to
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`couple with one or more threads of a setting tool (C).
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`Baker fails to disclose the body comprising brass or cast iron. Baker also fails to
`
`disclose shearable threads, and instead discloses a shear stud arrangement (43).
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`Streich teaches that it is well known to utilize brass or cast iron components in a
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`packer (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
`
`time the invention was made, to have modified the body of Baker such that it was
`
`formed of brass or cast iron, since Streich teaches that “it is frequently simpler and less
`
`expensive to mill or drill [packers] out rather than to implement a complex retrieving
`
`operation" (column 1, line 34) and drilling softer materials is much faster than milling
`
`hard materials (column 1, lines 46-54).
`
`McCullough teaches a packer insert (70) comprising shearable threads (72)
`
`which release a setting tool (10) when exposed to a predetermined 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
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`arrangement was replaced by shearable threads as shown by McCullough, since such a
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`modification would have amounted to the simple substitution of one known release
`
`mechanism for another, and would have yielded predictable results.
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`With regard to claims 2 and 17, the outer surface of the body comprises a larger
`
`diameter and a smaller diameter forming the shoulder therebetween, the shoulder
`
`adapted to anchor the body within the plug (Fig. 2).
`
`With regard to claim 3, the "first end" of the shoulder is considered to be the flat
`
`part which contains the o-ring seal, and the "second end" is the horizontal part which
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`transitions to a smaller diameter.
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`With regard to claim 4, Baker and Streich, in combination, disclose the plug being
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`made of brass. Also, Baker discloses a frac plug, since the central passage is blocked
`
`by element 12.
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`With regard to claims 5, 16, and 18, Baker and McCullough, in combination,
`
`discloses that the predetermined axial force is less than a force required to break the
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`body.
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`With regard to claims 7 and 8, Baker in view of Streich and McCullough is silent
`
`as to the number and pitch of the threads.
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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 Baker such that there were between 4
`
`and 12 threads, having a pitch between 0.1 and 5 mm, since it has been held that
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`where the general conditions of a claim are disclosed in the prior art, discovering the
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`optimum or workable ranges involves only routine skill in the art.
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`In re A//er, 105 USPQ
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`233.
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`With regard to claim 21, Baker and McCullough, in combination, discloses that
`
`the shearable threads are radially opposed to the outer threads (Fig. 2 of Baker).
`
`With regard to claims 22 and 27, the lower end of the threaded portion proximate
`
`numeral 43 in Baker can be considered a "ball seat" since a ball can land there.
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`In that
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`case, the outer threads are between the ball seat and the first end of the body.
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`Claims 9-13 and 23-26 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Bassinger in view of McKeachnie et al. (US 7,350,582,
`
`hereinafter McKeachnie).
`
`With regard to claim 9, Bassinger discloses a shearable insert for a plug,
`
`comprising:
`
`a body (60) having a first end and a second end and a bore formed therethrough
`
`(Fig. 4);
`
`a shoulder (proximate numeral 66 below the outer threads) formed on an outer
`
`surface of the body, and located between the first end and the second end of the body;
`
`one or more threads (82) disposed on an inner surface of the body proximate first
`
`end of the body, the one or more threads adapted to threadably engage with a setting
`
`tool (81);
`
`a ball seat (70) disposed within the bore; and
`
`at least one impediment (72) housed in the bore above the ball seat.
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`Bassinger fails to disclose the threads being shearable threads which break
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`before the body breaks, and Bassinger fails to disclose a pin caging the impediment
`
`between the pin and the ball seat.
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`McCullough teaches a packer insert (70) comprising shearable threads (72)
`
`which release a setting tool (10) when exposed to a predetermined 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 Bassinger such that the shear pin
`
`arrangement was replaced by shearable threads as shown by McCullough, since such a
`
`modification would have amounted to the simple substitution of one known release
`
`mechanism for another, and would have yielded predictable results.
`
`McKeachnie discloses a ball (206) seated within a plug and caged by an adapter
`
`pin (207).
`
`It would have been considered obvious to one of ordinary skill in the art, at the
`
`time the invention was made, to have modified Bassinger such that an adapter pin was
`
`“provided to constrain the upward movement of the ball" (McKeachnie, column 5, line
`
`64) so that the ball would easily and quickly seat on the shoulder once fracturing
`
`operations were resumed (McKeachnie, column 6, line 1).
`
`With regard to claim 10, Bassinger discloses the inner surface of the body
`
`comprises a larger diameter and a smaller diameter forming the ball seat (70)
`
`therebetween (see Fig. 9).
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`With regard to claims 11 and 12, Bassinger discloses the impediment is a ball,
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`and is adapted to seat against the ball seat, and restrict fluid flow in at least one
`
`direction through the bore.
`
`With regard to claim 13, in combination, Bassinger and McKeachnie disclose the
`
`pin contains the impediment between the pin and the ball seat.
`
`With regard to claim 23, Bassinger discloses threads (proximate numeral 66) on
`
`the outer surface of the body between the shoulder and the first end of the body.
`
`With regard to claim 24, the sets of threads are on radially opposite sides of the
`
`body (note that "radially opposed" does not imply that the threads are located at the
`
`same axial position along the body).
`
`With regard to claim 25, in combination, Bassinger and McCullough teach that
`
`the one or more shearable threads on the inner surface of the body are adapted to
`
`deform at an axial force less than that required to deform the one more threads on the
`
`outer surface of the body.
`
`With regard to claim 26, the axial length of the body is greater than a diameter of
`
`the body (Fig. 9).
`
`Claim 20 is rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Bassinger in view of Streich and McCullough as applied to claim 19 above, and
`
`further in view of McKeachnie.
`
`Bassinger fails to disclose a pin caging the impediment between the pin and the
`
`ball seat.
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`McKeachnie discloses a ball (206) seated within a plug and caged by an adapter
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`pin (207).
`
`It would have been considered obvious to one of ordinary skill in the art, at the
`
`time the invention was made, to have modified Bassinger in view of Streich and
`
`McKeachnie such that an adapter pin was “provided to constrain the upward movement
`
`of the ball" (McKeachnie, column 5, line 64) so that the ball would easily and quickly
`
`seat on the shoulder once fracturing operations were resumed (McKeachnie, column 6,
`
`line 1).
`
`Claim 33 is rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Baker in view of Streich.
`
`Baker discloses that the plug can be used as a frac plug (since flow through it is
`
`blocked by element 12). However, Baker fails to disclose the body being made of
`
`brass.
`
`Streich teaches that it is well known to utilize brass or cast iron components in a
`
`packer (column 1, lines 46-54).
`
`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 such that it was
`
`formed of brass or cast iron, since Streich teaches that “it is frequently simpler and less
`
`expensive to mill or drill [packers] out rather than to implement a complex retrieving
`
`operation" (column 1, line 34) and drilling softer materials is much faster than milling
`
`hard materials (column 1, lines 46-54).
`
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`Page 19
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`Claim 33 is rejected under 35 U.S.C. 103(a) as being