DETAILED ACTION
Claims 30-37 are pending.
Claims 1-15, 17-29, and 40 are allowed.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/30/2026 has been entered.
Response to Arguments
The most recent specification objection has been withdrawn in light of the current specification amendment.
The most recent claim objections have been withdrawn in light of the current claim amendments.
The most recent 35 U.S.C. § 112 rejections corresponding to claims 38, 41, and 42 have been withdrawn in light of the current claim cancellations.
In regard to claim 30, Applicant’s representative should submit an argument under the heading “Remarks” pointing out disagreements with the examiner’s contentions, as currently there are known presented in the most recent arguments dated 01/30/2026. Applicant’s representative must also discuss the references applied against the claims, explaining how the claims avoid the references or distinguish from them. With that being said, claim 30 and its respective dependent claims stand rejected.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 30-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bowersock et al. (US Publication 2012/0168147 A1; herein “Bowersock”) in view of Sherman (US Patent 11,060,382 B2; herein “Sherman”).
In regard to claim 30, Bowersock discloses: An expandable metal fishing tool for use in a wellbore (as disclosed in abstract and shown in figure 2 | paragraphs [0001, 0006 and 0011] introduces “[…] The use of spears or overshots with the articulated seal feature is contemplated. If a swelling design is used it can respond to water or hydrocarbons that are found at the subterranean location”; “[…] The seal 20 can be a swelling material that is responsive to well fluids that are either present in the wellbore or thereafter added to the wellbore to initiate the swelling”), comprising:
a mandrel (outermost tubular radially adjacent to 20, as shown in figure 2);
one or more expandable members (20) positioned at least partially along an interior surface or an exterior surface of the mandrel (figure 2 shows the elements positioned partially along the interior surface of the mandrel; paragraph [0010] introduces “The use of a swellable material allows a given size of seal 20 to swell to a sealing position at 20' and span a variable gap depending on the fish configuration while still allowing a sealing conduct so that pressure down the housing 12 from end 18 can be communicated to the fish to either operate a pressure actuated assembly on the fish with the hope of an assist in dislodging it or to allow circulation or reverse circulation through the fish and the body 12 again with the intent of breaking the fish loose so that it can be retrieved”);
wherein the one or more expandable members configured to expand in response to hydrolysis (abstract, paragraphs [0006 & 0011} and claim 6 introduces “[…] The seal 20 can be a swelling material that is responsive to well fluids that are either present in the wellbore or thereafter added to the wellbore to initiate the swelling. The material can responsive to hydrocarbons or water”); and
wherein a combined volume (i.e., arbitrary combined volume of expandable material(s) of 20) configured to expand in response to hydrolysis of the one or more expandable members is sufficient to expand radially to engage a downhole feature (of the fish body; paragraph [0002] introduces “During the conduct of operations in a borehole a tool or a tubular string can get stuck and needs to be worked free”) within the wellbore in response to the hydrolysis (abstract, paragraphs [0006 & 0011} and claim 6 introduces “[…] The seal 20 can be a swelling material that is responsive to well fluids that are either present in the wellbore or thereafter added to the wellbore to initiate the swelling. The material can responsive to hydrocarbons or water”).
However, Bowersock is silent in regard to: wherein the one or more expandable members comprise a non-oxide metal configured to expand in response to hydrolysis; and
wherein a combined volume of the non-oxide metal configured to expand in response to hydrolysis of the one or more expandable members is sufficient to expand radially in response to the hydrolysis.
Nonetheless, the teachings of Bowersock and Sherman introduce for the expandable downhole tool(s) disclosed therein to be made of a tangible material to withstand temperatures, pressures within the wellbore environment. Sherman introduces: the downhole conveyance (“DS”, as shown in figures 10-11) having an expandable metal tool coupled to a downhole end thereof (abstract, column 14, lines 34-44 and claim 1 introduces the expandable member to comprise of expandable filler(s), such as, water-swellable carbide, magnesium oxide, magnesium, etc., which acknowledges both oxide and non-oxide variants of some metal of which magnesium is one of them);
wherein the one or more expandable members comprise a non-oxide metal configured to expand in response to hydrolysis (abstract, column 14, lines 34-44 and claim 1 introduces for the expandable member to comprise expandable filler(s), such as, water-swellable carbide).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ) or at the time the invention was made, by modifying the downhole expandable members, as taught by Bowersock, to add for non-oxide metal expandable fillers, as taught by Sherman. Mechanical properties such as modulus, creep strength, and/or fracture strength can also or alternatively be controlled through the addition of fillers and diluents and semi-permeable engineering polymers having controlled moisture solubility (column 10, lines 55-60).
In regard to claim 31, in view of the modification of the preceding claim, Bowersock further discloses: wherein the combined volume (i.e., total arbitrary volume) of the non-oxide metal (as taught by Sherman) configured to expand (i.e., radially) in response to hydrolysis is one or more bulk volumes (i.e., arbitrary volume(s)) of the non-oxide metal (as taught by Sherman) configured to expand in response to hydrolysis (as taught by Bowersock in view of Sherman — see claim 30 rejection herein).
In regard to claim 32, in view of the modification of the preceding claim, Bowersock further discloses: wherein the one or more bulk volumes (i.e., arbitrary volume(s)) of the non-oxide metal (as taught by Sherman) configured to expand (i.e., radially) in response to hydrolysis are radially spaced about the interior surface of the mandrel (as taught by Bowersock in view of Sherman — see claim 30 rejection herein).
In regard to claim 33, in view of the modification of the preceding claim, Bowersock further discloses: wherein the one or more bulk volumes (i.e., arbitrary volume(s)) of the non-oxide metal (as taught by Sherman) configured to expand (i.e., radially) in response to hydrolysis (as taught by Bowersock in view of Sherman — see claim 30 rejection herein) includes four or less radially spaced apart segments (Absent specific details, Examiner notes under broadest reasonable interpretation that the claimed “radially spaced apart segments” can read as mere arbitrary sections of the single seal expandable ring member, as taught in Bowersock and Sherman).
In regard to claim 34, in view of the modification of the preceding claim, Bowersock further discloses: wherein the one or more bulk volumes (i.e., arbitrary volume(s)) of the non-oxide metal (as taught by Sherman) configured to expand (i.e., radially) in response to hydrolysis (as taught by Bowersock in view of Sherman — see claim 30 rejection herein) includes four or less radially spaced apart segments (Absent specific details, Examiner notes under broadest reasonable interpretation that the claimed “radially spaced apart segments” can read as mere arbitrary sections of the single seal expandable ring member, as taught in Bowersock and Sherman).
In regard to claim 35, in view of the modification of the preceding claim, Bowersock further discloses: wherein the one or more bulk volumes (i.e., arbitrary volume(s)) of the non-oxide metal (as taught by Sherman) configured to expand (i.e., radially) in response to hydrolysis (as taught by Bowersock in view of Sherman — see claim 30 rejection herein) includes a single segment (as taught in Bowersock and Sherman).
In regard to claim 36, in view of the modification of the preceding claim, Bowersock further discloses: wherein the single segment is a sleeve (as taught in Bowersock and Sherman).
In regard to claim 37, in view of the modification of the preceding claim, Bowersock further discloses: wherein the sleeve is a 360 degree sleeve (as taught in Bowersock and Sherman).
Allowable Subject Matter
Claims 1-15, 17-29, and 40 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
In regard to claims 1, 17, and 22 Bowersock et al. (US Publication 2012/0168147 A1; herein “Bowersock”) in view of Sherman (US Patent 11,060,382 B2; herein “Sherman”) is/are the closest references (see details in Final Rejection dated 11/19/2025 corresponding to claims 1, 17, and 22). However, the references (individually and in combination thereof) do not teach: “[...] wherein the bulk volume of the non-oxide metal configured to expand in response to hydrolysis is configured to go from metal to micron-scale particles that expand and lock together.” Rather, the modification (i.e., Bowersock in view of Sherman) at most teaches the non-oxide metal to essentially separate and disperse in the matrix during the expansion of the expandable member, but does not teach the requirement of micron-scale particles that expand and lock together. The prior art of record, either singularly or in combination thereof, does not teach, nor would be obvious to modify the reference to meet the limitation(s), as such a modification would require an improper reliance on hindsight reasoning and require too significant of a redesign of the prior art system/method.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NEEL PATEL whose telephone number is (469)295-9168. The examiner can normally be reached M-F, 9:00AM-5:00PM CST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tara Schimpf can be reached at (571) 270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NEEL GIRISH PATEL/Primary Patent Examiner, Art Unit 3676
Prosecution Insights