`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`90/014,871
`
`09/28/2021
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`10844697
`
`DYNA REEXAM
`
`4353
`
`Moy
`
`~
`
`“nen
`
`Moyles IP, LLC
`1 Enterprise Drive, Suite 428
`Shelton, CT 06484
`
`DOERRLER,WILLIAM: CHARLES
`
`ART UNIT
`
`3993
`
`MAIL DATE
`
`11/01/2021
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`PAPER NUMBER
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`DELIVERY MODE
`
`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.
`
`PTOL-90A(Rev. 04/07)
`
`PGR2021-00078
`PGR2021-00078
`PGR2021-00097
`PGR2021-00097
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`1
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`Ex. 3005
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`John Karl Buche Buche & Associates, PC
`875 ProspectStreet
`Suite 305
`
`La Jolla, CA 92037
`
`EXPARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/014,877 .
`
`PATENT UNDER REEXAMINATION 10844697 .
`
`ART UNIT 3993 .
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the aboveidentified exparfe reexamination proceeding (37 CFR 1.550(f)).
`
`Wherethis copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the exva/fe reexamination requester will be
`acknowledgedor considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`PGR2021-00078
`PGR2021-00078
`PGR2021-00097
`PGR2021-00097
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`2
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`5
`Order Granting Request For
`Ex Parte Reexamination Art Unit|AIA (FITF) StatusExaminer
`
`
`WILLIAM C DOERRLER
`3993
`Yes
`
`90/014,871
`
`10844697
`
`Patent Under Reexamination
`
`
`
`--The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`
`The request for erparfe reexamination filed 09/28/2021 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`Attachments: a)
`
`PTO-892,
`
`b)¥)
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`PTO/SB/08,
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`c)O Other:
`
`1.
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`The request for exoarfe reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.5380 (b)). EXTENSIONS OF TIME ARE GOVERNED BY37 CFR 1.550(c).
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timelyfiled
`Patent Owner's Statement (87 CFR 1.535). NO EXTENSION OFTHIS TIME PERIOD IS PERMITTED.
`If Patent Owner doesnotfile a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`WILLIAM C DOERRLER/
`Reexamination Specialist, Art Unit 399
`
`U.S. Patent and Trademark Office
`PTOL-471 G(Rev. 01-13)
`
`Office Action in Ex Parfe Reexamination
`
`Part of Paper No. 20211007
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`PGR2021-00078
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`Application/Control Number: 90/014,871
`Art Unit: 3993
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`Page 2
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`DECISION ON REQUEST FOR REEXAMINATION
`
`A substantial new question of patentability affecting claims 1,2 and 8-10 of United States
`
`Patent Number 10,844,697 is raised by the request for ex parte reexamination.
`
`Extensionsof time under 37 CFR 1.136(a) will not be permitted in these proceedings
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`because the provisions of 37 CFR 1.136 apply only to "an applicant" and not to parties ina
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`reexamination proceeding. Additionally, 35 U.S.C. 305 requires that ex parte reexamination
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`proceedings "will be conducted with special dispatch" (87 CFR 1.550(a)). Extensions of time in
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`ex parte reexamination proceedings are provided for in 37 CFR 1.550(c).
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`Related Post Grant Reviews
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`The ‘697 patentis the subject of two Post Grant Review petitions, PGR2021-00078 and
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`PGR2021-00097. A decision on institution has not been issued yetfor either of these petitions.
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`Service of Papers
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`After the filing of a request for reexamination by a third party requester, any document
`
`filed by either the patent owner or the third party requester must be served on the other party (or
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`parties where two or morethird party requester proceedings are merged)in the reexamination
`
`proceeding in the mannerprovided in 37 C.F.R. 1.248. See 37 C.F.R. 1.550(f).
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`Amendment in Reexamination Proceedings
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`Patent owner is notified that any proposed amendmentto the specification and/or claims
`
`in this reexamination proceeding must comply with 37 C.F.R. 1.530(d)-(j), must be formally
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`PGR2021-00078
`PGR2021-00078
`PGR2021-00097
`PGR2021-00097
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`Application/Control Number: 90/014,871
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`Page 3
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`presented pursuant to 37 C.F.R. 1.52(a) and (b), and must contain any fees required by 37
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`C.F.R. 1.20(c). See MPEP §2250(IV) for examples to assist in the preparation of proper
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`proposed amendmentsin reexamination proceedings.
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`Submissions
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`In order to ensurefull consideration of any amendments, affidavits or declarations or
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`other documents as evidenceof patentability, such documents must be submitted in response
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`to the first Office action on the merits (which does not result in a close of prosecution).
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`Submissions after the second Office action on the merits, which is intended to be a final action,
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`will be governed by the requirements of 37 C.F.R. 1.116, after final rejection and by 37 C.F.R.
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`41.33 after appeal, which will be strictly enforced.
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`Notification of Concurrent Proceedings
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`The patent owneris reminded of the continuing responsibility under 37 CFR 1.565(a) to
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`apprise the Office of anylitigation activity, or other prior or concurrent proceeding, involving
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`Patent No. 10,844,697 throughout the course of this reexamination proceeding. The third party
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`requester is also remindedof the ability to similarly apprise the Office of any such activity or
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`proceeding throughout the course of this reexamination proceeding. See MPEP §§ 2207, 2282
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`and 2286.
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`In order to ensurefull consideration of any amendments, affidavits or declarations, or
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`other documents as evidenceof patentability, such documents must be submitted in response
`
`to this Office action. Submissions after the next Office action, which is intended to beafinal
`
`action, will be governed by the requirements of 37 CFR 1.116,after final rejection and 37 CFR
`
`41.33 after appeal, which will be strictly enforced.
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`PGR2021-00078
`PGR2021-00078
`PGR2021-00097
`PGR2021-00097
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`Application/Control Number: 90/014,871
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`Page 4
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`Notification of Current Assignmentof the Patent
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`The patent owneris requested to provide the current assignment information for the
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`patent for which reexamination is requested. An assignment can be madeof record in the file of
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`a patent application, patent, or other patent proceeding (e.g., reexamination proceeding). This
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`step is necessary to permit the assignee to "take action”in the application, patent, or other
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`patent proceeding underthe conditions set forth in 37 CFR 3.73 and MPEP § 324. Recordation
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`of an assignmentin the assignmentrecords of the Office, however, doesnot, by itself, permit
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`the assignee to take action in the application, patent, or other patent proceeding.
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`Brief Summary of the Previous Examination
`
`The ‘697 patent issued with 17 claims on November 24, 2020. The patent issued from
`
`application 16/585,790, which wasfiled September 27, 2019. The ‘790 application wasfiled as a
`
`continuation of 16/359,540, filed March 20, 2019, now US Patent 10,472,938, whichis a
`
`continuation of application of application 15/920,812 filed on March 14, 2018, now US Patent
`
`11/125,056. The ‘812 application is a continuation of application 15/617,344, filed June 8, 2017,
`
`now US Patent 10,429,161, which is a division of application 15/287,309 filed October 6, 2016,
`
`now US Patent 9,702,680, which is a division of application 14/904, 788, filed under 35 USC 371
`
`based on PCT/CA2014/050673 on July 16,2014, Now US Patent 9,494,021. Priority was sought
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`based on Canadian application 2821506, filed July 18, 2013.
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`The ‘790 application wasfiled with a requestfor prioritized examination, which was
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`granted, and 20 claims. The first Office action rejected claims 1,2, and 9-12 as anticipated by
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`Schacherer (US 9,677,363), objected to dependentclaims 4-8 and indicated claims 13-20 were
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`allowable. A February 12, 2020 amendmentcleared up clarity problems, specifying that the pin
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`connectors extend beyond the endsof the pressure bulkhead. This led to a March 6, 202 notice
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`of allowability. Three subsequent RCE filings were each met with a new notice of allowability,
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`the final 2 including an examiner's amendment which added “a perforation gun system
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`PGR2021-00078
`PGR2021-00078
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`PGR2021-00097
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`comprisingafirst outer gun carrier, a shaped charge, and a first detonator, wherein the shaped
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`charge and the first detonator are positioned within the first outer gun carrier, wherein the first
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`outer gun carrier is connected to the first end of the tandem seal adapter. Also included was a
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`reasons for allowance:
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`Regarding claims 1-5, 7-12, 21 and 22, the prior art fails to anticipate or make obvious (in
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`the context of the pertinent claims) a perforation gun system comprisingafirst outer gun
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`carrier having a shaped charge and detonator positioned therein, the detonator in electrical
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`communication with a pin connector assembly as claimed and as Applicant disclosesin at
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`least Fig. 35B. US 9,145,764 B2 to Burton et al. (“Burton”) discloses a downhole toolstring
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`(Fig. 2) comprising a first detonator 250 positioned within a sub body 210, the detonator
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`250 and sub body 210 positioned at an end of a pressure bulkhead 230 that is opposite an
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`outer gun carrier 220. In other words, Burton does not teach or suggest placementof
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`detonator 250 within gun carrier 220 and the knownpriorart fails to make such a
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`modification obvious.
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`Substantial New Question
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`The Third Party Requester (TPR) requested reexamination of claims 1,2 and 8-10 of U.S.
`
`Patent No. 10,844,697 (hereinafter “the ‘697 patent”) based uponthe following proposed
`
`rejections:
`
`1. Claim 1 of the ‘697 patent is unpatentable under 35 USC 102(a)(1) as anticipated by
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`US Patent No. 3,173,992 to Boop (hereinafter “Boop’”).
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`2. Claims 1,2 and 8-10 of the ‘697 patent are unpatentable under 35 USC 102(a)(1) or
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`102(a)(2) as anticipated US Pre-Grant Publication No. 2016/0084048 to Harrigan
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`(hereinafter “Harrigan’).
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`3. Claims 1,2 and 8-10 of the ‘697 patent are unpatentable under 35 USC 102(a)(2)
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`anticipated by US Patent No. 10,352,136 to Goyeneche (hereinafter “Goyeneche’”).
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`A discussion of the effective filing date of the ‘697 patent:
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`PGR2021-00078
`PGR2021-00078
`PGR2021-00097
`PGR2021-00097
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`The ‘697 patent issued on November24, 2020 and wasfiled September 27, 2019. The
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`earliest priority date is the July 18, 2013 filing of Canadian application 2821506. The request
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`alleges that “the subject matter of the claims was not described until February 8, 2017 (at the
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`earliest).” See paragraph iii on page 14 of the request. On page 15, the requeststates, “the
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`priority specifications neither describe in writing nor enable the challenged claims recital of a ‘pin
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`connector assembly...configured to relay an electrical signal from the first end of the pressure
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`bulkhead to the second end of the pressure bulkhead.” This language is from claim 1, from
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`which the other requested claims (2 and 8-10) depend. The evidentiary support for the lack of a
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`configuration that allows an electrical signal to travel through the bulkhead is based on an
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`amendmentto paragraph 71 of the specification of the ‘309 application (three continuations and
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`a divisional down the chain) made on February 8, 2017. This amendmentdeleted, “for
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`grounding the detonator 26 within the gun carrier 12, through grounding means, depicted herein
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`as a tandem seal adapter.” As established in the Brinsden declaration submitted with the
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`request, an ordinary practitioner in the art would realize that the language that was deleted,
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`establishes that the tandem seal adapteris electrically conductive, making electric signals short
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`circuit through the tandem seal adapter, so the resultant assembly is not “configured to relay an
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`electrical signal from the first end of the pressure bulkhead to the second end of the pressure
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`bulkhead”. The same amendmentto the ‘309 application changed paragraph 74 from
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`“connection and grounding of the above-described detonator assembly 26 through the tandem
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`seal adapter 48 and a pressure bulkhead 124”, to “connection of the above described detonator
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`assembly 26 to the tandem seal adapter 48 and a pressure bulkhead 124.” Theoriginal
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`language grounding the detonator “through” the TSA is further evidence that the TSA was
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`originally disclosed as electrically conductive and thus a signal would not pass through the
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`bulkhead. If a signal does not pass through the bulkhead, the device will not function as
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`intended, so the claimed invention is not seen as enabled by the originally filed ‘309 application.
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`While paragraph 71 did originally state that the TSA “transmits a ground wire to the carrier 12”,
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`PGR2021-00078
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`this is not seen to overcome the above twoinstances establishing the conductive nature of the
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`TSA.
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`Thus, the invention claimed in claims 1,2,8,9 and 10 of the ‘697 patent was enabled no
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`earlier than February 8, 2017. The effective filing date of a claim is based on the filing date of
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`the earliest application for which the patent is entitled to a right of priority. To be entitled to
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`priority, the clamed invention must have been adequately described to enable an ordinary
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`practitioner in the art to make and use the invention. The earliestfiling date in the chain of
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`priority with a specification that does not include the conductive TSAis the application following
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`the ‘309 application, 15/617,344, filed on June 8, 2017. Thus, June 8, 2017 is seen as the
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`effective filing date for claims 1,2,8,9 and 10.
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`A discussion of the availability of the prior art references now follows:
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`Boop is a US patent that published March 16, 1965. As this is more than one yearprior
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`to the earliest priority date of the ‘697 patent, Boopis available as prior art under 35 U.S.C.
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`102(a)(1). Boop wasnotcited during the original prosecution of the ‘697 patent.
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`Harrigan is a US Pre-Grant Publication that published March 24, 2016. The application
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`wasfiled as a national stage application of PCT/US14/36541 filed May 2, 2014, with a filing date
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`of the US national stage of November3, 2015. Asthis is prior to the June 8, 2017 effective filing
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`date, Harrigan is available as prior art under 35 U.S.C. 102(a)(2). Harrigan wascited in an IDS
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`during the original prosecution of the ‘697 patent, but was not used in a rejection or discussed
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`on the record.
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`Goyeneche is a US patentthat published July 16, 2019. Goyeneche wasfiled in the US
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`on November 17, 2016 as the US national stage application of PCT/US2015/031047, filed May
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`15, 2015. As the application wasfiled prior to the June 8, 2017 effective filing date of the claims
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`in question, Goyeneche is available as prior art under 35 U.S.C. 102(a)(2). Goyeneche wasnot
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`cited during the original prosecution of the ‘697 patent.
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`Discussion of the SNQs
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`SNQ1: Claim 1 anticipated by Boop
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`Boop showsanelectrical connection assembly for establishing an electrical connection
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`in a tool string (column 1, lines 11-19). The connection comprises a tandem seal adapter (12)
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`with a bore (65,67) from one end to the other. A perforation gun system includes an outer gun
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`carrier (21), a shaped charge (“housing 30, containing a shape charge” —column 2, line 12) and
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`a first detonator (41), with the shaped charge and the detonator are within the outer gun carrier,
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`which is connected to an end of the tandem seal adapter(figure 3). The system further has a
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`pressure bulkhead (plug 60) with an outer surface andafirst and second end and the outer
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`surface of the bulkhead is sealingly received in the bore of the tandem seal adapter (column 3
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`lines 20-31) and having a pin connector assembly extending through the pressure bulkhead
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`from a first pin connector end to a second pin connector end and configured to relay an
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`electrical signal through the bulkhead (pin connectors 87-90 and wires 80-83) with the pin
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`cannector ends extending beyond the endsof the pressure bulkhead (figure 3). The detonatoris
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`in electrical communication with the pin connector assembly and the tandem seal adapter and
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`the pressure bulkhead are configured to provide a seal (figure 3 shows an O-ring between the
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`connector 12 and box 20) between the detonator and an environment on the end of the tandem
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`seal adapter.
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`As Boop appears to disclose all of the structure of claim 1 the ‘697 patent, an examiner
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`would consider the reference important in the patentability determination thereof. As the
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`reference was notcited in the original proceeding of the ‘697 patent, the reference is seen to
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`provide a SNQ for claim 1 of the ‘697 patent.
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`SNQ2: Claims 1,2,8,9 and 10 anticipated by Harrigan.
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`Harrigan showsan electrical connection assembly for establishing an electrical
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`connection in a tool string. The connection comprises a tandem seal adapter (117, 118) witha
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`bore from one end to the other. A perforation gun system includes an outer gun carrier (110), a
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`shaped charge andafirst detonator (125), with the shaped charge (‘loading tube 115 is
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`configured to accommodate a host of shaped chargesfor a perforating application in a well’-
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`paragraph 22) and the detonator are within the outer gun carrier, which is connected to an end
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`of the tandem seal adapter(“the carrier 110 and loading tube 115 may be sealed off at either
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`end by bulkheads 117,118”-paragraph 24). The system further has a pressure bulkhead
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`(119,120) with an outer surface and a first and second end and the outer surface of the
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`bulkhead is sealingly received in the bore of the tandem seal adapter (paragraph 25) and having
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`a pin connector assembly (530) extending through the pressure bulkhead fromafirst pin
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`cannector end to a second pin connector end and configured to relay an electrical signal
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`through the bulkhead with the pin connector ends extending beyond the endsof the pressure
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`bulkhead. The detonator is in electrical communication with the pin connector assembly and the
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`tandem seal adapter and the pressure bulkhead are configured to provide a seal between the
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`detonator and an environment on the end of the tandem seal adapter (paragraph 24).
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`In regard to claim 2, Harrigan’s solid feed through 530 is seen to preventinterruption of
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`the electrical signal from the first pin connector end to the second pin connector end. In regard
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`to claim 8, Harrigan’s insert 500 with bow springs 525 is seen to produce a spring-loaded
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`electrical connection adjacent to the tandem seal adapter. In regard to claims 9 and 10,
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`paragraph 21 states the perforating gun disclosed may be “provided in series”. Paragraph 26
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`describes connections made to associated tools or devices and paragraph 37 describes feature
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`“which add to the practicality of using a linked together, modular concept for a gun 100”.
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`As Harrington appears to discloseall of the structure of claims 1,2 and 8-10 the ‘697
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`patent, an examiner would consider the reference important in the patentability determination
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`thereof. As Harrington provides a new technical teaching that was found lacking in earlier
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`prosecution, Harrington provide a SNQ for claims 1,2 and 8-10.
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`SNQ3: Claims 1,2,8,9 and 10 anticipated by Goyeneche.
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`Goyeneche showsanelectrical connection assembly for establishing an electrical
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`connection in a tool string. The connection comprises a tandem seal adapter (4) with a bore
`
`from one end to the other. A perforation gun system includes an outer gun carrier (12), a
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`shaped charge (13) and a first detonator (620), with the shaped charge and the detonator are
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`within the outer gun carrier (figure 7), which is connected to an end of the tandem seal adapter
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`(figure 7). The system further has a pressure bulkhead (feed through pin 610) with an outer
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`surface and a first and second end and the outer surface of the bulkhead is sealingly (line 46 of
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`calumn 5) received in the bore of the tandem seal adapter and having a pin connector assembly
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`(500) extending through the pressure bulkhead fromafirst pin connector end to a second pin
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`connector end and configured to relay an electrical signal through the bulkhead with the pin
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`cannector ends extending beyond the endsof the pressure bulkhead (lines 14-24 of column 6
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`describe the electrical contact). The detonatoris in electrical communication with the pin
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`connector assembly (lines 4-10 of column 7) and the tandem seal adapter and the pressure
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`bulkhead are configured to provide a seal between the detonator and an environment on the
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`end of the tandem seal adapter (line 46 of column 5).
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`In regard to claim 2, Goyeneche’s solid feed through 610 is seen to preventinterruption
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`of the electrical signal from the first pin connector end to the second pin connector end. In
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`regard to claim 8, Goyeneche’s spring 540 biases contact pin 500 outward to produce a spring-
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`loaded electrical connection adjacent to the tandem seal adapter. In regard to claims 9 and 10,
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`the paragraph beginning on line 55 of column 7 describes an intermediate sub with perforating
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`guns mountedateither end. This includesa firing signal being passed directly between guns
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`through tandem sub 4. The signal will pass to a detonator so the gun can function as disclosed.
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`As Goyeneche appearsto disclose all of the structure of claims 1,2 and 8-10 the ‘697
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`patent, an examiner would consider the reference important in the patentability determination
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`thereof. As Goyeneche provides a new technical teaching that was found lacking in earlier
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`prosecution, Goyeneche provide a SNQ for claims 1,2 and 8-10.
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`Conclusion
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`As the request provided a SNQ for claims 1,2 and 8-10, these claims will be reexamined.
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`As no SNQ hasbeen provided for claims 3-7 and 11-21, these claims will not be part ofthis
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`reexamination and will not be further discussed.
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`All correspondencerelating to this ex parte reexamination proceeding should
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`be directed:
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`By EFS: Registered users may submitvia the electronicfiling system EFS-Web,at
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`https://efs.uspto.gov/efile/myportal/efs-registered.
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`By Mail to:
`
`Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`Commissioner for Patents
`United States Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`By hand:
`
`Customer Service Window
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`For EFS-Webtransmissions, 37 CFR 1.8(a)(1)(i) (C) and (ii) states that correspondence
`
`(except for a request for reexamination and a corrected or replacement requestfor
`
`reexamination) will be considered timely filed if (a) it is transmitted via the Office’s electronic
`
`PGR2021-00078
`PGR2021-00078
`PGR2021-00097
`PGR2021-00097
`
`13
`13
`
`Ex. 3005
`Ex. 3005
`
`
`
`Application/Control Number: 90/014,871
`Art Unit: 3993
`
`Page 12
`
`filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission
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`for each piece of correspondencestating the date of transmission, whichis prior to the
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`expiration of the set period of time in the Office action.
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`Anyinquiry concerning the status of this proceeding should be directed to the Central
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`Reexamination Unit at telephone number(571) 272-7705. Any inquiry concerning this
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`cammunication should be directed to William C. Doerrler at telephone number(571) 272-4807.
`
`/WILLIAM C DOERRLER/
`Reexamination Specialist, Art Unit 3993
`
`Conferees: /JAK//E.D.L/
`SPRS, Art Unit 3993
`
`PGR2021-00078
`PGR2021-00078
`PGR2021-00097
`PGR2021-00097
`
`14
`14
`
`Ex. 3005
`Ex. 3005
`
`