www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`90/014,871
`
`09/28/2021
`
`10844697
`
`DYNA REEXAM
`
`4353
`
`Moy
`
`”
`
`nna
`
`Moyles IP, LLC
`1 Enterprise Drive, Suite 428
`Shelton, CT 06484
`
`DOERELER, WIDLIANECEIAGLES
`
`ART UNIT
`
`3993
`
`MAIL DATE
`
`01/26/2022
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`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.
`
`PTOL-90A (Rev. 04/07)
`PGR2021-00078
`PGR2021-00078
`PGR2021-00097
`PGR2021-00097
`
`1
`1
`
`Ex. 3006
`Ex. 3006
`
`

`

`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 Prospect Street
`Suite 305
`
`La Jolla, CA 92037
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/014,877 .
`
`PATENT UNDER REEXAMINATION 10844697 .
`
`ART UNIT 3993 .
`
`Enclosed is a copyof the latest communication from the United States Patent and Trademark
`Office in the above identified exparte reexamination proceeding (87 CFR 1.550(f)).
`
`Wherethis copy is supplied after the reply by requester, 37 CFR 1.535, or the timefor filing a
`reply has passed, no submission on behalf of the evparfe reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOARSBIYAIOT
`PGR2021-00078
`PGR2021-00097
`PGR2021-00097
`
`2
`2
`
`Ex. 3006
`Ex. 3006
`
`

`

`10. O Other: cc: Requester (if third
`
`SUMMARY OF ACTION
`
`Claims 1-2 and 8-10 are subject to reexamination.
`
`Claims 3-7 and 11-21 are not subject to reexamination.
`
`Claims ___ have been canceledin the present reexamination proceeding.
`
`Claims __ are patentable and/or confirmed.
`
`H§OOOSRDOLnSW Acknowledgment is made ofthe priority claim under 35 U.S.C. 119(a)-(d) or (f).
`
`Office Action in Ex Parte Reexamination
`
`Control No.
`90/014,871
`
`Patent Under Reexamination
`10844697
`
`Examiner
`WILLIAM C DOERRLER
`
`Art Unit
`3993
`
`AIA (FITF) Status
`Yes
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`
`a. L) Responsive to the communication(s)filed on
`( Adeclaration(s)affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`:
`
`b. (J This action is made FINAL.
`
`Cc.
`
`A statement under 37 CFR 1.530 has not been received from the patent owner.
`
`A shortenedstatutory period for responseto this action is set to expire 2 month(s) from the mailing date ofthis letter.
`Failure to respond within the period for response will result in termination of the proceeding and issuanceof an eygarfe reexamination
`certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`If the period for response specified aboveis less than thirty (30) days, a response within the statutory minimum ofthirty (30) days
`will be consideredtimely.
`
`THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`Part!
`Interview Summary, PTO-474.
`(1 Notice of References Cited by Examiner, PTO-892.
`3.{1
`1.
`2. () Information Disclosure Statement, PTO/SB/08.
`40.
`
`Part Il
`
`ta.
`
`1b.
`
`2.
`
`Claims 1-2 and 8-10 are rejected.
`
`Claims _ are objectedto.
`
`The drawings, filed on
`are acceptable.
`The proposed drawing correction, filed on
`
`has been (7a)
`
`( approved (7b)
`
`() disapproved.
`
`a)
`
`All
`
`b)
`
`(J Some* c)
`
`(CJNone
`
`of the certified copies have
`
`1 () been received.
`
`2 (J not been received.
`
`3
`
`been filed in Application No. 14/904,788.
`
`4 (J been filed in reexamination Control No.
`
`5 (1) been received by the International Bureau in PCT application No.
`
`* See the attached detailed Office action for a list of the certified copies not received.
`
`9.
`
`(J Since the proceeding appears to be in condition for issuance of an exparte reexamination certificate except for formal
`matters, prosecution as to the merits is closed in accordancewith the practice under Exparte Quayle, 1935 C.D.
`11, 453 O.G. 213.
`
`U.S. Patent and Trademark Office
`PTOL-466(Rev. 08-13)
`
`Office Action in Ex Parte Reexamination
`
`PartofPaperNo.
`
`20220112
`
`PGR2021-00078
`PGR2021-00078
`PGR2021-00097
`PGR2021-00097
`
`3
`3
`
`Ex. 3006
`Ex. 3006
`
`

`

`Application/Control Number: 90/014,871
`Art Unit: 3993
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`The present application, filed on or after March 16, 2013, is being examined underthe
`
`first inventor to file provisions of the AIA.
`
`Reexamination
`
`No SNQ wasprovided for claims 3-7 and 11-21. As such, these claims will not be part of
`
`this reexamination and will not be commented upon.
`
`In order to ensurefull consideration of any amendments, affidavits or declarations, or
`
`other documents as evidence of patentability, such documents must be submitted in response
`
`to this Office action. Submissions after the next Office action, which is intendedto 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.
`
`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
`
`presented pursuant to 37 C.F.R. 1.52(a) and (b), and must contain any fees required by 37
`
`C.F.R. 1.20(c). See MPEP §2250(IV) for examples to assist in the preparation of proper
`
`proposed amendmentsin reexamination proceedings.
`
`The patent owneris remindedof the continuing responsibility under 37 CFR 1.565(a), to
`
`apprise the Office of anylitigation activity, or other prior or concurrent proceeding, involving
`
`Patent No. 10,844,697 throughout the course of this reexamination proceeding. See MPEP §§
`
`2207, 2282 and 2286.
`
`Related Post Grant Reviews
`
`The ‘697 patentis the subject of two Post Grant Review petitions, PGR2021-00078 and
`
`PGR2021-00097. A decision on institution was issued January 6, 2022 for the ‘097 PGR for
`
`claims 1,2 and 8-10 including a rejection based on Harrigan. The ‘078 PGR wasinstituted
`
`PGR2021-00078
`PGR2021-00078
`PGR2021-00097
`PGR2021-00097
`
`4
`4
`
`Ex. 3006
`Ex. 3006
`
`

`

`Application/Control Number: 90/014,871
`Art Unit: 3993
`
`Page 3
`
`November1, 2021, relying of references that are not part of this reexamination. Although no
`
`final decision has been madein these PGRs, they (along with District Court cases) will continue
`
`to be monitored for positions taken with respect to claim construction and priority.
`
`Brief Description of Proceedings
`
`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 upon the following proposed
`
`rejections:
`
`1. Claim 1 of the ‘697 patent is unpatentable under 35 USC 102(a)(1) as anticipated by
`
`US Patent No. 3,173,992 to Boop (hereinafter “Boop’).
`
`2. Claims 1,2 and 8-10 of the ‘697 patent are unpatentable under 35 USC 102(a)(1) or
`
`102(a)(2) as anticipated US Pre-Grant Publication No. 2016/0084048to Harrigan
`
`(hereinafter “Harrigan’).
`
`3. Claims 1,2 and 8-10 of the ‘697 patent are unpatentable under 35 USC 102(a)(2)
`
`anticipated by US Patent No. 10,352,136 to Goyeneche(hereinafter “Goyeneche’).
`
`An Order mailed November 1, 2021 found all of the above proposed rejections are
`
`supported with a SNQ. The onlyfilings since the mailing of the Order have been IDSs apprising
`
`the Office of updates on the concurrent proceedings.
`
`The Effective Filing Date of the ‘697 Patent
`
`The ‘697 patent issued on November 24, 2020 and wasfiled September 27, 2019. The
`
`earliest priority date is the July 18, 2013 filing of Canadian application 2821506. The request
`
`alleges that “the subject matter of the claims was not described until February 8, 2017 (at the
`
`earliest).” See paragraph iii on page 14 of the request. On page 15, the requeststates, “the
`
`PGR2021-00078
`PGR2021-00078
`PGR2021-00097
`PGR2021-00097
`
`5
`3)
`
`Ex. 3006
`Ex. 3006
`
`

`

`Application/Control Number: 90/014,871
`Art Unit: 3993
`
`Page 4
`
`priority specifications neither describe in writing nor enable the challenged claims recital of a ‘pin
`
`connector assembly...configured to relay an electrical signal from the first end of the pressure
`
`bulkhead to the second end of the pressure bulkhead.” This language is from claim 1, from
`
`which the other requested claims (2 and 8-10) depend. The evidentiary support for the lack of a
`
`configuration that allows an electrical signal to travel through the bulkhead is based on an
`
`amendmentto paragraph 71 of the specification of the ‘309 application (three continuations and
`
`a divisional down the chain) made on February 8, 2017. This amendment deleted, “for
`
`grounding the detonator 26 within the gun carrier 12, through grounding means, depicted herein
`
`as a tandem seal adapter.” As established in the Brinsden declaration submitted with the
`
`request, an ordinary practitioner in the art would realize that the language that was deleted,
`
`establishes that the tandem seal adapteris electrically conductive, making electric signals short
`
`circuit through the tandem seal adapter, so the resultant assembly is not “configured to relay an
`
`electrical signal from the first end of the pressure bulkhead to the second end of the pressure
`
`bulkhead”. The same amendmentto the ‘309 application changed paragraph 74 from
`
`“connection and grounding of the above-described detonator assembly 26 through the tandem
`
`seal adapter 48 and a pressure bulkhead 124”, to “connection of the above described detonator
`
`assembly 26 to the tandem seal adapter 48 and a pressure bulkhead 124.” The original
`
`language grounding the detonator“through” the TSA is further evidence that the TSA was
`
`originally disclosed as electrically conductive and thus a signal would not pass through the
`
`bulkhead. If a signal does not pass through the bulkhead, the device will not function as
`
`intended, so the claimed invention is not seen as enabled bythe originally filed ‘309 application.
`
`While paragraph 71 did originally state that the TSA “transmits a ground wire to the carrier 12”,
`
`this is not seen to overcome the above twoinstancesestablishing the conductive nature of the
`
`TSA.
`
`Thus, the invention claimed in claims 1,2,8,9 and 10 of the ‘697 patent was enabled no
`
`earlier than February 8, 2017. The effectivefiling date of a claim is based on the filing date of
`
`PGR2021-00078
`PGR2021-00078
`PGR2021-00097
`PGR2021-00097
`
`6
`6
`
`Ex. 3006
`Ex. 3006
`
`

`

`Application/Control Number: 90/014,871
`Art Unit: 3993
`
`Page 5
`
`the earliest application for which the patent is entitled to a right of priority. To be entitled to
`
`priority, the clamed invention must have been adequately described to enable an ordinary
`
`practitioner in the art to make and usethe invention. The earliestfiling date in the chain of
`
`priority with a specification that does not include the conductive TSAis the application following
`
`the ‘309 application, 15/617,344, filed on June 8, 2017. Thus, June 8, 2017 is seen as the
`
`effectivefiling date for claims 1,2,8,9 and 10.
`
`Claim Rejections - 35 USC § 102
`
`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
`
`102 and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103)is incorrect, any correction of the
`
`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
`
`relied upon, and the rationale supporting the rejection, would be the same under either status.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
`
`basis for the rejections underthis section made in this Office action:
`
`A personshall be entitled to a patent unless —
`
`(a)(1) the claimed invention was patented, described in a printed publication, or in public use,
`on sale, or otherwise available to the public before the effectivefiling date of the claimed
`invention.
`(a)(2) the claimed invention was described in a patent issued under section 151, or in an
`application for patent published or deemed published under section 122(b), in which the
`patent or application, as the case may be, names another inventor and waseffectively filed
`before the effective filing date of the claimed invention.
`
`Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boop.
`
`Boop discloses an electrical connection assembly for establishing an electrical
`
`connection in a tool string (column 1, lines 11-19). The connection comprises a tandem seal
`
`adapter (12) with a bore (65,67) that extends from one end to the other. A perforation gun
`
`system includes an outer gun carrier (21), a shaped charge (“housing 30, containing a shape
`
`charge” —column 2, line 12) and a first detonator (41), with the shaped charge and the detonator
`
`PGR2021-00078
`PGR2021-00078
`PGR2021-00097
`PGR2021-00097
`
`7
`7
`
`Ex. 3006
`Ex. 3006
`
`

`

`Application/Control Number: 90/014,871
`Art Unit: 3993
`
`Page 6
`
`are within the outer gun carrier, which is connected to an end of the tandem seal adapter(figure
`
`3). The system further has a pressure bulkhead (plug 60) with an outer surface andafirst and
`
`second end and the outer surface of the bulkheadis sealingly received in the bore of the
`
`tandem seal adapter (column 3 lines 20-31) and having a pin connector assembly extending
`
`through the pressure bulkhead fromafirst pin connector end to a second pin connector end and
`
`configured to relay an electrical signal through the bulkhead (pin connectors 87-90 and wires
`
`80-83) with the pin connector ends extending beyond the ends of the pressure bulkhead (figure
`
`3). The detonator is in electrical communication with the pin connector assembly and the
`
`tandem seal adapter and the pressure bulkhead are configured to provide a seal(figure 3
`
`shows an O-ring between the connector 12 and box 20) between the detonator and an
`
`environment on the end of the tandem seal adapter.
`
`Claim(s) 1,2 and 8-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
`
`Harrigan.
`
`Harrigan showsanelectrical connection assembly for establishing an electrical
`
`connection in a tool string. The connection comprises a tandem seal adapter (117, 118) witha
`
`bore from one endto the other(figure 2A). A perforation gun system includes an outer gun
`
`carrier (110), a shaped charge andafirst detonator (125), with the shaped charge (“loading tube
`
`115 is configured to accommodatea host of shaped chargesfor a perforating application in a
`
`well’-paragraph 22) and the detonator within the outer gun carrier, which is connected to an end
`
`of the tandem seal adapter (“the carrier 110 and loading tube 115 may be sealed off at either
`
`end by bulkheads 117,118”-paragraph 24). The system further has a pressure bulkhead
`
`(119,120) with an outer surface andafirst and second end and the outer surface of the
`
`bulkhead is sealingly received in the bore of the tandem seal adapter (paragraph 25) and having
`
`a pin connector assembly (530) extending through the pressure bulkhead fromafirst pin
`
`connector end to a second pin connector end and configured to relay an electrical signal
`
`PGR2021-00078
`PGR2021-00078
`PGR2021-00097
`PGR2021-00097
`
`8
`8
`
`Ex. 3006
`Ex. 3006
`
`

`

`Application/Control Number: 90/014,871
`Art Unit: 3993
`
`Page 7
`
`through the bulkhead with the pin connector ends extending beyond the endsof the pressure
`
`bulkhead. The detonator is in electrical communication with the pin connector assembly and the
`
`tandem seal adapter and the pressure bulkhead are configured to provide a seal between the
`
`detonator and an environment on the end of the tandem seal adapter (paragraph 24).
`
`In regard to claim 2, Harrigan’s solid feed through 530 is seen to preventinterruption of
`
`the electrical signal from the first pin connector end to the second pin connector end. In regard
`
`to claim 8, Harrigan’s insert 500 with bow springs 525 is seen to produce a spring-loaded
`
`electrical connection adjacent to the tandem seal adapter. In regard to claims 9 and 10,
`
`paragraph 21 states the perforating gun disclosed may be “provided in series”. This is seen to
`
`teach the tandem seal adapter and bulkhead connector element positioned within a second
`
`outer gun carrier, as the tandem seal adapter 118 is shown (figure 2A, for example) with each
`
`endfit inside a tubular body. Paragraph 26 describes connections made to associated tools or
`
`devices and paragraph 37 describes feature “which add to the practicality of using a linked
`
`together, modular concept for a gun 100”.
`
`Claim(s) 1,2 and 8-10 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by
`
`Goyeneche.
`
`Goyeneche showsanelectrical connection assembly for establishing an electrical
`
`connection in a tool string. The connection comprises a tandem seal adapter (4) with a bore
`
`entirely through the tandem seal adapter from one end to the other (figure 6). A perforation gun
`
`system includes an outer gun carrier (12), a shaped charge (16) andafirst detonator (620), with
`
`the shaped charge and the detonator within the outer gun carrier(figure 7), which is connected
`
`to an end of the tandem seal adapter(figure 7). The system further has a pressure bulkhead
`
`(feed through pin 610) with an outer surface and a first and second end and the outer surface of
`
`the bulkheadis sealingly (line 46 of column 5) received in the bore of the tandem seal adapter
`
`and having a pin connector assembly (500) extending through the pressure bulkhead from a
`
`PGR2021-00078
`PGR2021-00078
`PGR2021-00097
`PGR2021-00097
`
`9
`9
`
`Ex. 3006
`Ex. 3006
`
`

`

`Application/Control Number: 90/014,871
`Art Unit: 3993
`
`Page 8
`
`first pin connector end to a second pin connector end and configured to relay an electrical signal
`
`through the bulkhead with the pin connector ends extending beyond the endsof the pressure
`
`bulkhead (lines 14-24 of column 6 describe the electrical contact). The detonator is in electrical
`
`communication with the pin connector assembly (lines 4-10 of column 7) and the tandem seal
`
`adapter and the pressure bulkhead are configured to provide a seal between the detonator and
`
`an environmenton the end of the tandem seal adapter(line 46 of column 5).
`
`In regard to claim 2, Goyeneche’s solid feed through 610 is seen to preventinterruption
`
`of the electrical signal from the first pin connector end to the second pin connector end. In
`
`regard to claim 8, Goyeneche’s spring 540 biases contact pin 500 outward to producea spring-
`
`loaded electrical connection adjacent to the tandem seal adapter. In regard to claims 9 and 10,
`
`the paragraph beginning on line 55 of column 7 describes an intermediate sub with perforating
`
`guns mountedat either end. This includesa firing signal being passed directly between guns
`
`through tandem sub 4. The signal will pass to a detonator so the gun can function as disclosed.
`
`Conclusion
`
`Anyinquiry concerning this communication or earlier communications from the examiner
`
`should be directed to WILLIAM C DOERRLER whosetelephone numberis (571)272-4807. The
`
`examiner can normally be reached on M-F, 7-5.
`
`Examinerinterviews are available via telephone, in-person, and video conferencing
`
`using a USPTO supplied web-basedcollaboration tool. To schedule an interview, applicantis
`
`encouraged to use the USPTO AutomatedInterview Request (AIR)at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Eileen Lillis can be reached on 571-272-6928. The fax phone numberfor the
`
`organization where this application or proceeding is assigned is 571-273-8300.
`
`PGR2021-00078
`PGR2021-00078
`PGR2021-00097
`PGR2021-00097
`
`10
`10
`
`Ex. 3006
`Ex. 3006
`
`

`

`Application/Control Number: 90/014,871
`Art Unit: 3993
`
`Page 9
`
`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 accessto the Private
`
`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you
`
`would like assistance from a USPTO CustomerService Representative or access to the
`
`automated information system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/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
`
`11
`11
`
`Ex. 3006
`Ex. 3006
`
`