DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
The amendments dated 8/18/25 have been entered. The examiner respectfully notes that the examiner would be permitted to make this action FINAL, see MPEP 706.07(b). However, the examiner has opted to make this rejection non-final as a courtesy to applicant.
Applicant's arguments filed 8/18/25 have been fully considered but they are not persuasive. The claims in question are rejected over Xu (US 20090146835 A1), in view of Bell (US 20040206503 A1).
Applicant argues that the new limitation is not met. The examiner respectfully disagrees. Applicant appears to recognize that the carriers 116 and 101 may be reasonably construed as the claimed “material”. Applicant argues that “no material of a pressure chamber 101 fully surrounds and encases the two or more radially spaced apart perforation elements”. However, the rejection, as articulated below, does not construe the centralizer as a single chamber 101, but collectively each of the carrier elements 116 and each of the pressure chambers 101 (a plurality of which are seen in e.g. Figure 4). When construed as including each of the chambers 101 (with a perforating element placed within and therefore surrounded by and encased by the chamber 101 and its material). To the extent that applicant’s amendments attempt to differentiate from this, it is not clear from the amendments or arguments.
It is noted that the claim does not recite “a material” in a manner which precludes the interpretation of the material which are used to form each of the carriers 116 and chambers 101 as being formed from the recited “material”. It is noted that applicant has not recited the centralizer in a manner which requires the centralizer to be exclusively drawn to element 116, such as by requiring the centralizer to be a single-piece unitary element.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-3, 10-15 and 20-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu (US 20090146835 A1), in view of Bell (US 20040206503 A1).
Regarding claim 1, Xu teaches a well system, comprising:
metal wellbore casing located in a wellbore (Para 0017, communication of the tool 10 occurs through a casing wall);
an untethered downhole tool assembly located within the metal wellbore casing (Fig 1, tool 10, Para 0009, 0017; the tool is used within the casing), the untethered downhole tool assembly including:
a housing (Fig 1, shell 20); and
a signal generator located on or in the housing (Fig 1, signal emitter 16/18 in the shell 20).
While Xu teaches that the downhole tool may be a perforating gun (Para 0011), Xu is not explicit on the recited particulars of the perforating gun.
Bell teaches a downhole perforation device located along an outer surface of the metal wellbore casing proximate a subterranean formation (Abstract, “perforating system is attached to the outside of the casing and is conveyed along with the casing”) the downhole perforation device including:
a perforating structure formed of a material surrounding at least a portion of an outer surface of the metal wellbore casing (Fig 4, perforating structure including at least each of the elements of 116 and 101, and 108, not seen, are around casing 102. Please see the discussion in the response to arguments these are construed as being formed of “a material”.), the perforating structure having two or more radially spaced wellbore casing centralizers formed of the material (Fig 4, features 116, 101, and 108 function to centralize the casing and there are a plurality of such radially spaced centralizing features i.e. sets of the identified components as seen. Please also see Para 0124, the sets of elements identified as centralizers have all of the functional and structural characteristics required by the recitation);
two or more radially spaced apart perforation elements (Fig 5, Para 0080, gun assembly 40, including shaped charges 42, these are the perforation elements; Para 0077 there are a plurality of chambers 101/portion of centralizer in which the gun assemblies 40 reside) embedded within the material of the two or more radially spaced wellbore casing centralizers (Fig 5, Para 0083, “Inside each pressure chamber 101 is gun assembly 40” including shaped charges 42, as suggested by Fig 4, there would be a plurality of gun assemblies 40.), and further wherein at a given cross-section taken through the two or more radially spaced apart perforation elements and the two or more radially spaced wellbore casing centralizers, the two or more radially spaced apart perforation elements are fully surrounded by and encased within the material of the two or more radially spaced wellbore casing centralizers (Fig 5, Para 0080, gun assembly 40, including shaped charges 42, these are the perforation elements; Para 0077 there are a plurality of chambers 101/portion of centralizer in which the gun assemblies 40 reside), the two or more perforation elements positioned to perforate the wellbore casing to an inside thereof (Fig 5, Para 0084, shaped charges 42 are “positioned to face the casing 102”); and
electronics at least partially embodied within the perforating structure, the electronics for triggering the two or more perforation elements (Fig 6A, Fig 7, Para 0106, electronics within firing head portion of perforating structure; Para 0113 electronics of Fig 7 are used for triggering/actuating the perforating elements).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Xu by having the downhole tool be the perforating device as disclosed by Bell because Xu already envisions use in combination with a perforating gun (Para 0011), Xu does not teach the details of this gun. The perforating assembly of Bell would have the benefit of being “externally-mounted in such a way that the casing will be centered rather than offset within the wellbore upon its installation” (Para 0023 of Bell) along with a number of other benefits articulated in Para 0023 of Bell.
Xu as modified teaches an untethered downhole tool assembly located proximate the downhole perforation device (Fig 1, tool 10, Para 0011, 0017, the tool is deployed in communication distance from the downhole perforation device as modified) the signal generator capable of transmitting a passive or active signal to the downhole perforation device located on (Para 0011 of Xu, “the communicator 10 is moved or allowed to move through the wellbore 12 and as it does so it will communicate its instructions to a target downhole tool”; note as modified by Bell, the downhole tool is on the outer surface of the casing, see Abstract) to cause the downhole perforation device to perforate the metal wellbore casing from outside the metal wellbore casing to inside the metal wellbore casing (Abstract of Bell, “charges may be aimed inward in order to perforate the casing”).
Regarding claim 2, Xu further teaches wherein the passive signal is a passive magnetic signal, passive acoustic signal, passive vibration signal, or a passive radiation signal (Para 0009, the signal may be “an acoustic signal, a magnetic field, a gamma wave signal […]”, see also Para 0017).
Regarding claim 3, Xu further teaches a power source located within the housing (Para 0009, “communicator 10 in one embodiment will include an on board power source to drive the signal emitter 16.” Please note housing is the shell/exterior), and wherein the active signal is an active wireless signal (Para 0009, there are a number of signals which can broadly and reasonably construed as active by virtue of their active transmission by the powered signal emitter 16, these signals are wireless), and further wherein the signal generator is a powered transmitter capable of transmitting the active wireless signal through the metal wellbore casing (Para 0009, the signals disclosed by Xu are substantially identical as those disclosed in the instant application, see e.g. Para 0034 which would reasonably be understood as having the same capability. See also Para 0017).
Regarding claim 4, Xu further teaches wherein the powered transmitter is adapted to embed instructions for the downhole perforation device on the active wireless signal (Abstract, “a communicator configured to broadcast a signal; a downhole tool configured to receive the signal from the communicator and execute on an instruction conveyed”).
Regarding claim 10, Xu further teaches wherein the housing comprises a dissolvable or degradable material (Para 0016, “it is desirable to construct the communicator from dissolvable material”).
Regarding claim 11, Xu teaches a method for operating a well system, comprising:
positioning a downhole perforation device in a subterranean formation (Para 0011, the communicator 10 is usable with a downhole perforating device)
deploying an untethered downhole tool assembly downhole (Fig 1, tool 10) within an inside of the metal wellbore casing proximate the downhole perforation device (Fig 1, tool 10 is within wellbore 12, Para 0011, 0017, the wellbore in which the tool is deployed may include casing and the tool 10 is in communicating distance/proximate the downhole tool which it will actuate), the untethered downhole tool assembly including;
a housing (Fig 1, shell 20); and
a signal generator located on or in the housing (Fig 1, signal emitter 16/18 in the shell 20);
While Xu teaches that the downhole tool may be a perforating gun (Para 0011), Xu is not explicit on the recited particulars of the perforating gun.
Bell teaches positioning a downhole perforating device along an outer surface of a metal wellbore casing (Abstract, “perforating system is attached to the outside of the casing and is conveyed along with the casing”) the downhole perforation device including:
a perforating structure surrounding at least a portion of an outer surface of the metal wellbore casing (Fig 4, perforating structure including at least 116 and 101, and 108, not seen, are around casing 102), the perforating structure having two or more radially spaced wellbore casing centralizers (Fig 4, features 116, 101, and 108 function to centralize the casing and there are a plurality of such radially spaced centralizing features as seen);
two or more radially spaced apart perforation elements (Fig 5, Para 0080, gun assembly 40, including shaped charges 42, these are the perforation elements; Para 0077 there are a plurality of chambers 101/portion of centralizer in which the gun assemblies 40 reside) embedded within the two or more radially spaced wellbore casing centralizers (Fig 5, Para 0083, “Inside each pressure chamber 101 is gun assembly 40” including shaped charges 42, as suggested by Fig 4, there would be a plurality of gun assemblies 40), and further wherein at a given cross-section taken through the two or more radially spaced apart perforation elements and the two or more radially spaced wellbore casing centralizers, the two or more radially spaced apart perforation elements are fully surrounded by and encased within the two or more radially spaced wellbore casing centralizers (Fig 5, Para 0080, gun assembly 40, including shaped charges 42, these are the perforation elements; Para 0077 there are a plurality of chambers 101/portion of centralizer in which the gun assemblies 40 reside. Please see discussion in the response to arguments above), the two or more perforation elements positioned to perforate the wellbore casing to an inside thereof (Fig 5, Para 0084, shaped charges 42 are “positioned to face the casing 102”); and
electronics at least partially embodied within the perforating structure, the electronics for triggering the two or more perforation elements (Fig 6A, Fig 7, Para 0106, electronics within firing head portion of perforating structure; Para 0113 electronics of Fig 7 are used for triggering/actuating the perforating elements).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Xu by having the downhole tool be the perforating device as disclosed by Bell because Xu already envisions use in combination with a perforating gun (Para 0011), Xu does not teach the details of this gun. The perforating assembly of Bell would have the benefit of being “externally-mounted in such a way that the casing will be centered rather than offset within the wellbore upon its installation” (Para 0023 of Bell) along with a number of other benefits articulated in Para 0023 of Bell.
Xu as modified teaches transmitting a passive or active signal to the downhole perforation device located along the outer surface of the metal wellbore casing using the signal generator as the untethered downhole tool assembly is moving through the inside of the metal wellbore casing and as the untethered downhole tool assembly approaches the downhole perforation device (Para 0011 of Xu, “the communicator 10 is moved or allowed to move through the wellbore 12 and as it does so it will communicate its instructions to a target downhole tool”; note as modified by Bell, the downhole tool is on the outer surface of the casing, see Abstract), the passive or active signal causing the downhole perforation device to perforate the metal wellbore casing from outside the metal wellbore casing to inside the wellbore casing (Abstract of Bell, “charges may be aimed inward in order to perforate the casing”).
Regarding claim 12, Xu further teaches wherein transmitting a passive or active signal includes transmitting a passive magnetic signal, passive acoustic signal, passive vibration signal, or a passive radiation signal through the metal wellbore casing (Para 0009, the signal may be “an acoustic signal, a magnetic field, a gamma wave signal […]”, see also Para 0017).
Regarding claim 13, Xu further teaches a power source located within the housing (Para 0009, “communicator 10 in one embodiment will include an on board power source to drive the signal emitter 16.”), and further wherein transmitting a passive or active signal includes transmitting an active wireless signal (Para 0009, there are a number of signals which can broadly and reasonably construed as active by virtue of their active transmission by the powered signal emitter 16, these signals are wireless) through the metal wellbore casing (Para 0017).
Regarding claim 14, Xu further teaches wherein the active wireless signal has instructions for the downhole device embedded therein (Abstract, “a communicator configured to broadcast a signal; a downhole tool configured to receive the signal from the communicator and execute on an instruction conveyed”).
Regarding claim 15, Xu further teaches further wherein the instructions are triggering instructions (Para 0011, the instructions include “firing of a perforating gun”).
Regarding claim 20, Xu further teaches wherein the housing comprises a dissolvable or degradable material (Para 0016, “it is desirable to construct the communicator from dissolvable material”), and further including dissolving or degrading the housing after transmitting the passive or active signal to the downhole device located along the outer surface of the metal wellbore casing (Para 0016, “so that over a period of time longer than its intended useful life, it will dissolve in wellbore fluids thereby not being an impediment to any other downhole operations”; note the useful life would necessarily be the conveyance of the intended signal of the device 10).
Regarding claim 21, Xu as modified further teaches wherein the two or more radially spaced wellbore casing centralizers define an outer footprint of the perforating structure more radially spaced wellbore casing centralizers formed of the material (Fig 4 of Bell, features 116, 101, and 108 function to centralize the casing and there are a plurality of such radially spaced centralizing features. These collectively defined the OD of the perforating structure), and the two or more radially spaced apart perforation elements are embedded within the material of the two or more radially spaced wellbore casing centralizers that define the outer footprint (Fig 5, Para 0083 of Bell, “Inside each pressure chamber 101 is gun assembly 40”, perforation elements 40 are positioned/embedded within the centralizers as defined).
Regarding claim 22, Xu as modified further teaches wherein the two or more radially spaced wellbore casing centralizers define an outer footprint of the perforating structure (Fig 4 of Bell, features 116, 101, and 108 function to centralize the casing and there are a plurality of such radially spaced centralizing features. These collectively defined the OD of the perforating structure), and the two or more radially spaced apart perforation elements are embedded within the material of the two or more radially spaced wellbore casing centralizers that define the outer footprint (Fig 5, Para 0083 of Bell, “Inside each pressure chamber 101 is gun assembly 40”, perforation elements 40 are positioned/embedded within the centralizers as defined).
Claim(s) 5-7 and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu (US 20090146835 A1), in view of Bell (US 20040206503 A1), further in view of Tolman (US 20170314372 A1).
Regarding claim 5, while Xu teaches “the communicator may be in that of a ball, a dart, a rotary wing with a gravity pendant, etc.” (Para 0010), Xu is silent on further including a radially deployable packer element coupled to the housing, the radially deployable packer element movable from a radially retracted state to a radially deployed state.
Tolman teaches a radially deployable packer element coupled to the housing (Fig 3, packer 302, body/housing described in Para 0073 but not specifically labelled), the radially deployable packer element movable from a radially retracted state to a radially deployed state (Para 0073, “the elastomeric sealing element 302 is mechanically expanded”).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Xu by having the tool take the form of the plug 300 as disclosed by Tolman because Xu makes clear that communicator may take numerous different forms. By having the communicator take the form of plug 300 it would allow for a single trip to both actuate a tool as well as set a plug which would reduce time and increase the efficiency of the operation.
Regarding claim 6, Xu as modified further teaches wherein the radially deployable packer element is movable from the radially retracted state to the radially deployed state (Para 0073 of Tolman, “the elastomeric sealing element 302 is mechanically expanded”) upon receiving one or more signals from the downhole perforation device located on the outside of the metal wellbore casing (Para 0078 of Tolman, the tool is activated with the use of a location component 308 which is “configured to detect collars, object, tags or pressures within the wellbore”, this configuration would permit it to detect/receive a signal from a downhole device, which is not understood to be a required part of the tool).
Regarding claim 7, while Xu teaches “the communicator may be in that of a ball, a dart, a rotary wing with a gravity pendant, etc.” (Para 0010), Xu is silent on further including one or more slip elements coupled to the housing.
Tolman teaches further including one or more slip elements coupled to the housing (Fig 3, slips 304, body/housing described in Para 0073 but not specifically labelled).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Xu by having the tool take the form of the plug 300 as disclosed by Tolman because Xu makes clear that communicator may take numerous different forms. By having the communicator take the form of plug 300 it would allow for a single trip to both actuate a tool as well as set a plug which would reduce time and increase the efficiency of the operation.
Regarding claim 16, while Xu teaches “the communicator may be in that of a ball, a dart, a rotary wing with a gravity pendant, etc.” (Para 0010), Xu is silent on further including a radially deployable packer element coupled to the housing, and further including moving the radially deployable packer element from a radially retracted state to a radially deployed state upon receiving one or more signals from the downhole device located on the outside of the wellbore casing.
Tolman teaches further including a radially deployable packer element coupled to the housing (Fig 3, packer 302, body/housing described in Para 0073 but not specifically labelled), and further including moving the radially deployable packer element from a radially retracted state to a radially deployed state (Para 0073, “the elastomeric sealing element 302 is mechanically expanded”) upon receiving one or more signals from the downhole device located on the outside of the wellbore casing (Para 0078 of Tolman, the tool is activated with the use of a location component 308 which is “configured to detect collars, object, tags or pressures within the wellbore”; the examiner notes as a modification to Xu as modified that the downhole device is an object which indicates the desired location below which a frac plug is set. Additionally, the downhole device can be more broadly defined as including the object/collar.).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Xu by having the tool take the form of the plug 300 as disclosed by Tolman because Xu makes clear that communicator may take numerous different forms. By having the communicator take the form of plug 300 it would allow for a single trip to both actuate a tool as well as set a plug which would reduce time and increase the efficiency of the operation. Additionally, the use of a frac plug would prevent the fracturing fluid from being sent to further portions of the tool which are downhole and do not require the fluid.
Regarding claim 17, while Xu teaches “the communicator may be in that of a ball, a dart, a rotary wing with a gravity pendant, etc.” (Para 0010), Xu is silent on wherein the untethered downhole tool assembly further includes one or more slip elements coupled to the housing.
Tolman teaches the untethered downhole tool assembly further includes one or more slip elements coupled to the housing (Fig 3, slips 304, body/housing described in Para 0073 but not specifically labelled).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Xu by having the tool take the form of the plug 300 as disclosed by Tolman because Xu makes clear that communicator may take numerous different forms. By having the communicator take the form of plug 300 it would allow for a single trip to both actuate a tool as well as set a plug which would reduce time and increase the efficiency of the operation.
Conclusion
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/THEODORE N YAO/ Primary Examiner, Art Unit 3676