..
`·Application/Control Number: 13/194,871
`Art Unit: 3676
`
`Page 2
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`EXAMINER'S COMMENT
`
`Election/Restrictions
`
`Restriction to one of the following inventions is required under 35 U.S.C: 121:
`
`I.
`
`II.
`
`Claims 1-17, drawn to a plug, classified in class 166, subclass 135.
`
`Claims 18-20, drawn to an insert, classified in class 166, subclass 242.6.
`
`The inventions are distinct, each from the other because of the following reasons:
`
`Inventions I and II are related as combination and subcombination. Inventions in
`
`this relationship are distinct if it can be shown that (1) the combination as claimed does
`
`not require the particulars of the subcombination as claimed for patentability, and (2)
`
`that the subcombination has utility by itself or in other combinations (MPEP §
`
`806.05(c)). In the instant case, the combination as claimed does not require the
`
`particulars of the subcombination as claimed because the combination does not require
`
`the threads on the outer surface of the insert body. The subcombination has separate
`
`utility such as a means to connect tubulars within a drilling assembly.·
`
`The examiner has required restriction between combination and subcombination
`
`inventions. Where applicant elects a subcombination. and claims thereto are
`
`subsequently found allowable, any claim(s) depending from or otherwise requiring all
`
`the limitations of the allowable subcombination will be examined for patentability in
`
`accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised tnat if
`
`any claim presented in a continuation or divisional application is anticipated by, or
`
`includes all the limitations of, a claim that is allowable in the present application , such
`
`MEGCO Ex. 1027
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`
`·Application/Control Number: 13/194,871
`Art Unit: 3676
`
`Page 2
`
`EXAMINER'S COMMENT
`
`Election/Restrictions
`
`Restriction to one of the following inventions is required under 35 U.S.C: 121:
`
`I.
`
`II.
`
`Claims 1-17, drawn to a plug, classified in class 166, subclass 135.
`
`Claims 18-20, drawn to an insert, classified in class 166, subclass 242.6.
`
`The inventions are distinct, each from the other because of the following reasons:
`
`Inventions I and II are related as combination and subcombination. Inventions in
`
`this relationship are distinct if it can be shown that (1) the combination as claimed does
`
`not require the particulars of the subcombination as claimed for patentability, and (2)
`
`that the subcombination has utility by itself or in other combinations (MPEP §
`
`806.05(c)). In the instant case, the combination as claimed does not require the
`
`particulars of the subcombination as claimed because the combination does not require
`
`the threads on the outer surface of the insert body. The subcombination has separate
`
`utility such as a means to connect tubulars within a drilling assembly.·
`
`The examiner has required restriction between combination and subcombination
`
`inventions. Where applicant elects a subcombination. and claims thereto are
`
`subsequently found allowable, any claim(s) depending from or otherwise requiring all
`
`the limitations of the allowable subcombination will be examined for patentability in
`
`accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised tnat if
`
`any claim presented in a continuation or divisional application is anticipated by, or
`
`includes all the limitations of, a claim that is allowable in the present application , such
`
`MEGCO Ex. 1027
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`
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`.
`..
`· Application/Control Number: 13/194,871
`· Art Unit: 3676
`
`Page 3
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`claim may be subject to provisional statutory and/or nonstatutory double patenting
`
`rejections over the claims of the instant application.
`
`Restriction for examination purposes as indicated is proper because all these
`
`inventions listed in this action-are independent or distinct for the reasons given above
`
`and there would be a serious search and/or examination burden if restriction were not
`
`required because at least the following reason(s) apply:
`
`The inventions require different search scopes, as evidenced by their separate
`
`·classification.
`
`Applicant is advised that the reply to this requirement to be complete must
`
`include (i) an election of a invention to be examined even though the requirement
`
`may be traversed (37 CFR 1.143) and (ii) Identification of the claims encompassing
`
`the elected invention.
`
`The election of an invention may be made with or without traverse. To reserve a
`
`right to petition, the election must be made with traverse. If the reply does not distinctly
`
`and specifically point out supposed errors in the restriction requirement, the election
`
`shall be· treated as an election without traverse. Traversal must be presented at the time
`
`of electio~ in order to be considered timely. Failure to timely traverse the requirement
`
`will result in the loss of right to petition under 37 CFR 1.144. If claims are, added after
`
`the election .. applicant must indicate ~hich of these claims are readable upon the
`
`elected invention.
`
`Should applicant traverse on the ground that the inventions are not patentably
`
`distinct, applicant should submit evidence or identify such evidence now of record
`
`MEGCO Ex. 1027
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`
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`.
`"
`· Appli~tion/Control Number: 13/194,871
`Art Unit: 3676
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`Page 4
`
`showing the inventions to be obvious variants or clearly admit on the record that this is
`
`the case. In either instance, if the examiner finds one of the inventions unpatentable ·
`
`over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C.
`
`1 03(a) of the other invention.
`
`This application conta.ins claims directed to the following patentably distinct
`
`species:
`
`Species 1- Plug having shearable threads disposed directly on the plug body
`
`(Fig. 2C).
`
`Species II - Plug having shearable threads disposed on an insert threadably
`
`attached on an interior surface of the plug body (Figs. 2A, 28, 3).
`
`The species are independent or distinct because the claimed setting tool
`
`connections are mutually exclusive. In addition, these species are not obvious variants
`
`of each other based on the current record.
`
`Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or
`
`a single grouping of patentably indistinct species, for prosecution on the merits to which
`
`the claims shall be restricted if no generic claim is finally held to be allowable. Currently,
`
`no claims are generic.
`
`There is a search and/or examination burden for the patentably distinct species
`
`as set forth above because at least the following reason(s) apply:
`
`The mutually exclusive features between the two species would require a
`
`different scope of search and unique search queries.
`
`MEGCO Ex. 1027
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`
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`. ·Application/Control Number: 13/194,871
`Art Unit: 3676
`
`Page 5
`
`Applicant is advised that the reply to this requirement to be complete must
`
`include (i) an election of a species or a grouping of patentably indistinct species
`
`to· be examined even though the requirement may be traversed (37 CFR 1.143) and
`
`(ii) identification of the claims encompassing the elected species or grouping of
`
`-patentably indistinct species, including any claims subsequently added . An argument
`
`that a claim is allowable or that all claims are generic is considered nonresponsive
`
`unless accompanied by an election.
`
`·The election may be made with or without traverse. To preserve a right to
`
`petition, th~ election must be made with traverse. If the reply does not distinctly and
`
`specifically point out supposed errors in the election of species requirement, the election
`
`shall be treated as an election without traverse. Traversal must be presented at the time
`
`of election in order to be considered timely. Failure to timely traverse the requirement .
`
`0
`
`•
`
`will result in the loss of right to petition under 37 CFR 1.144. If claims are added after
`
`the election, applicant must indicate which of these claims are readable on the elected
`
`species or grouping of patentably indistinct species.
`
`. Should applicant traverse on the ground that the species, or groupings of
`
`pat~ntably indistinct species from which election is required, are not patentably distinct,
`
`applicant should submit evidence or identify such evidence now of record showing them
`
`to be obvious variants or clearly admit on the reco~~ that this is the case. In either
`
`instance, if the examiner finds one of the species unpatentable over the prior art, the
`
`evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other
`
`species.
`
`MEGCO Ex. 1027
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`
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`.
`.
`· Application/Control Number: 13/194,871
`Art Unit: 3676
`
`Page 6
`
`Upon the allowance of a generic claim, applicant will be entitled to consideration
`
`of claims to additional species which depend from or otherwise require all the limitations
`
`of an· allowable generic claim as provided by 37 CFR 1.141.
`
`During a telephone conversation with Robb Edmonds on October 14, 2011 a
`
`provisional election was made without traverse to prosecute the invention of Group I,
`
`Species 11; claims 12-17. Affirmation of this election must be made by applicant in ·
`.
`replying to this Office action. Claims 1-11 and 18-20 are withdrawn from further
`
`consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected
`
`invention.
`
`Per the supplemental amendment filed October 20, 2011, claims 1-11 and
`
`18-20 have been cancelled. New claims 21-34 are all directed to group I, species
`
`II.
`
`Allowable Subject Matter
`
`The following is an examiner's statement of reasons for allowance:
`
`The closest prior art is that of Thompson (US 2,714,932) and Bonner (US
`
`3,160,209).
`
`Thompson discloses a plug having a body (10), a malleable element (30, 31), a
`
`~lip (32), a conical element (33, 34), and an insert (15). The insert has "shearable"
`
`threads on an exterior surface (14) and on an interior surface (22), the interior threads
`
`engaging a setting tool (26). Note that Thompson does not explicitly statE? that the
`
`·.
`
`MEGCO Ex. 1027
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`
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`· Applitation/Control Number: 13/194,871
`Art Unit: 3676
`
`Page 7
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`threads shear, but examiner interprets any threaded connection to be shearable since
`
`the threads could s~ear if acted upon by a large enough force.
`
`Thompson does not teach or suggest the insert having a passageway extending
`
`therethrough, nor does the removal of the setting tool (26) provide a flow passage
`
`through the insert and the body, as specifically called for in the claimed combination.
`
`Bo~ner discloses a plug having a body (82), a malleable element (95), a slip (89,
`
`90), a conical element (93, ~4), and an insert (83) having a passage therethrough.
`
`Removal of a setting tool (84) provides a fluid passage through the body (82) and· the
`
`insert (83). The insert does not have threads within its outer surface, but does have a
`
`shear pin (85) which connects with the setting tool. Though Bonner fails to disclose
`
`shearable threads, it would have been considered obvious to replace the shear pin of
`
`Bonner with shearable threads, as this would have amounted to simple substitution of
`
`well known equivalent shear release mechanisms.
`
`Bonner does not teach or suggest the insert being screwed into or disposed
`
`within an interior surface of the body, as specifically called for in the claimed
`
`combination.
`
`Any comments considered necessary by applicant must be submitted no later
`
`than the payment of the issue fee and, to avoid processing delays, should preferably
`
`accompany the issue fee. Such submissions should be clearly labeled "Comments on
`
`Statement of Reasons for Allowance."
`
`MEGCO Ex. 1027
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`
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`...
`'
`• AppliCation/Control Number: 13/194,871
`Art Unit: 3676
`
`Page 8
`
`. Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ROBERT E. FULLER whose telephone number is
`
`(571 )272-6300. The examiner can normally be reached on Monday thru Friday from
`
`9:00AM - 6:30 PM.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Shane Bomar can be reached on 571-272-7026. The fax phone number f~r
`
`the organization where this application or proceeding is assigned is 571 -273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`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
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`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
`
`10/24/2011
`/R.E.F./
`
`MEGCO Ex. 1027
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`
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