DETAILED ACTION
Claims 1-15 and 17-42 are pending.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/30/2025 has been entered.
Response to Arguments
Applicant's arguments filed 10/30/2025 have been fully considered but they are not persuasive.
Applicant’s representative amended claims 1, 17, 22 and introduced new independent claim 30, for purposes of overcoming the most recent prior art rejection. Examiner notes that the new amendments to claims 1, 17 and 22 (also, similarly introduced in claim 30) are broad in nature and do not overcome the most recent prior art rejection. See details in the rejections herein. Examiner suggests introducing additional claim language (i.e., structural and/or functional, or objected to language indicated herein) for purposes of overcoming the most recent prior art rejection, preferably towards an allowance.
Specification
The disclosure is objected to because of the following informalities:
“In another embedment, the seal 310 is a cup seal member. In accordance with this embodiment, the swellable rubber seal member may be configured to swell in response to contact with one or more downhole fluids”, as recited in paragraph [0039], should likely read as follows: “In another [[embedment]]embodiment, the seal 310 is a cup seal member. In accordance with this embodiment, the swellable rubber seal member may be configured to swell in response to contact with one or more downhole fluids”.
Appropriate correction is required.
Claim Objections
Claim 17 (and, similarly claims 22 and 30) is/are objected to because of the following informalities and should likely read as follows: “[...] wherein a combined volume configured to expand in response to hydrolysis of the one or more expandable members is sufficient to expand radially to engage a downhole feature within [[a]]the wellbore in response to the hydrolysis; and
[[a]]the downhole feature located within the wellbore, the one or more expandable members having expanded radially to engage the downhole feature in response to the hydrolysis...”
Appropriate correction is required.
Claim 29 is/are objected to because of the following informalities and should likely read as follows: “[...] wherein an inside surface of the non-oxide metal is fully exposed to expand radially to engage [[a]]the downhole feature...”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 41-42 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 41 cites: “[...] wherein the interior surface of the mandrel is void of gripping features for mechanically engaging the downhole feature other than the other than the one or more expandable members.” The specification lacks support for the negative limitation. Furthermore, the claim seems to contradict what entails of “gripping features” entails, as gripping fish/tool(s) is the primary purpose of fishing operations. In other words, the expandable seal member is essentially a “gripping feature” itself, absent specific detail. Due to claim 41 being rejected under 35 U.S.C. § 112(a), the corresponding dependent claim is also rejected.
Claim 42 cites: “[...] wherein the interior surface of the mandrel is void of threads for mechanically engaging the downhole feature.” The specification lacks support for the negative limitation. Rather, at least the embodiment of figure 11A teaches for an internal threads to allow for connecting to the tubular “1120”, which essentially allows “mechanically engaging the downhole feature”.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 38 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 38 recites: “[...] a pair of end rings positioned on uphole and downhole ends of the one or more bulk volumes of the non-oxide metal configured to expand in response to hydrolysis.” Examiner notes that claim language is construes multiple interpretations causing confusion as to what the metes and bounds of the limitation are. It appears prima facie that the rings and/or “the one or more bulk volumes of the non-oxide metal” are configured to “expand in response to hydrolysis”. For examination purposes, the Examiner will take its broadest reasonable interpretation in light of the instant specification and will assume for the rings not expand (as supported in paragraph [0042] of the instant specification.
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 1-3, 5, 8-15, 17, 20, 22, 25-26 and 29-37 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 regards to claim 1, Bowersock discloses: An expandable fishing tool (10) for use in a wellbore (paragraphs [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 partially along an interior surface (as shown in cross-section view of figure 2) or exterior surface of the mandrel (as shown in figure 2; 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 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 a wellbore in response to the hydrolysis (paragraph [0010-0011] introduces “[…] Dashed lines 20' are intended to show the set position of the seal assembly 20 which has it moving radially to an engaged relation with the fish body that has advanced into the opening 14 and up to internal shoulder 24. The seal assembly 20, 20' is the distinguishing feature of the present invention as compared to the known design in FIG. 1”; “[…] 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”; furthermore, 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”).
However, Bowersock appears to be silent in regards to: An expandable metal tool;
wherein the one or more expandable members comprise a non-oxide metal configured to expand in response to hydrolysis, the non-oxide metal not embedded within a material that would prevent such 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: An expandable metal tool (abstract, column 14, lines 34-44 and claim 1 introduces for the expandable member to comprise expandable filler(s), such as, water-swellable carbide);
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 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).
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 regards to claim 2, Bowersock further discloses: wherein the mandrel is a tubular mandrel (as shown in figure 2) having the interior surface (of outermost tubular radially adjacent to 20, as shown in figure 2), and further wherein the one or more expandable members are positioned partially along the interior surface (as shown in figure 2), such that the combined volume of the one or more expandable members is sufficient to expand radially inwardly to engage the downhole feature (paragraph [0010-0011] introduces “[…] Dashed lines 20' are intended to show the set position of the seal assembly 20 which has it moving radially to an engaged relation with the fish body that has advanced into the opening 14 and up to internal shoulder 24. The seal assembly 20, 20' is the distinguishing feature of the present invention as compared to the known design in FIG. 1”; “[…] 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”; furthermore, 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”).
In regards to claim 3, Bowersock further discloses: wherein the one or more expandable members is a single expandable sleeve (of 20) lining a portion of the interior surface (of the outermost tubular radially adjacent to 20, as shown in figure 2).
In regards to claim 5, Bowersock further discloses: wherein the one or more expandable members (20) are positioned partially along the interior surface (of the outermost tubular radially adjacent to 20, as shown in figure 2).
However, Bowersock in view of Sherman appear to be silent in regards to: wherein the one or more expandable members are two or more separate expandable sleeves positioned partially along the interior surface.
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, to modify the teachings of Bowersock in view of Sherman to include for two or more separate expandable sleeves positioned partially along the interior surface since it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Furthermore, doing so, allows for a more durable seal for purposes of retrieving the downhole tool(s) during fishing operation(s).
In regards to claim 8, Bowersock further discloses: wherein the one or more expandable members (20) positioned partially along the interior surface (of the outermost tubular radially adjacent to 20, as shown in figure 2).
However, Bowersock in view of Sherman appear to be silent in regards to: wherein the one or more expandable members positioned partially along the interior surface are two expandable members axially positioned along the interior surface.
Examiner notes that in the absence of a more explicit recitation of the structures or individual expandable members, different segments of the seals in the recited references may be taken as multiple sealing sections forming the whole seal.
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, to modify the teachings of Bowersock in view of Sherman to include for two expandable members axially positioned along the interior surface since it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Furthermore, doing so, allows for a more durable seal for purposes of retrieving the downhole tool(s) during fishing operation(s).
In regards to claim 9, Bowersock further discloses: wherein the one or more expandable members (20) positioned partially along the interior surface are axially positioned along and substantially equally radially spaced about the interior surface (of the outermost tubular radially adjacent to 20, as shown in figure 2).
However, Bowersock in view of Sherman appear to be silent in regards to: wherein the one or more expandable members positioned partially along the interior surface are three or more expandable members axially positioned along and substantially equally radially spaced about the interior surface.
Examiner notes that in the absence of a more explicit recitation of the structures or individual expandable members, different segments of the seals in the recited references may be taken as multiple sealing sections forming the whole seal.
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, to modify the teachings of Bowersock in view of Sherman to include for three or more expandable members axially positioned along and substantially equally radially spaced about the interior surface since it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Furthermore, doing so, allows for a more durable seal for purposes of retrieving the downhole tool(s) during fishing operation(s).
In regards to claim 10, Bowersock further discloses: the one or more expandable members (of 20) is configured to seal radially inward against the downhole feature (paragraph [0010-0011] introduces “[…] Dashed lines 20' are intended to show the set position of the seal assembly 20 which has it moving radially to an engaged relation with the fish body that has advanced into the opening 14 and up to internal shoulder 24. The seal assembly 20, 20' is the distinguishing feature of the present invention as compared to the known design in FIG. 1”; “[…] 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”; furthermore, 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”).
However, Bowersock in view of Sherman appears to be silent in regards to: a seal positioned proximate the one or more expandable members, wherein the seal is configured to seal radially inward against the downhole feature.
Examiner notes that “the one or more expandable members” and “the seal” are interchangeable terminology in light of the instant application’s specification and the prior art(s) used herein.
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, to modify the teachings of Bowersock in view of Sherman to include for a seal positioned proximate the one or more expandable members, wherein the seal is configured to seal radially inward against the downhole tubular since it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Furthermore, doing so, allows for a more durable seal for purposes of retrieving the downhole tool(s) during fishing operation(s).
In regards to claim 11, Bowersock discloses: the one or more expandable members, wherein the swellable seal member is configured to swell in response to contact with one or more downhole fluids to seal radially inward against the downhole feature or radially outward against the mandrel (paragraph [0010-0011] introduces “[…] Dashed lines 20' are intended to show the set position of the seal assembly 20 which has it moving radially to an engaged relation with the fish body that has advanced into the opening 14 and up to internal shoulder 24. The seal assembly 20, 20' is the distinguishing feature of the present invention as compared to the known design in FIG. 1”; “[…] 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”; furthermore, 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”).
However, Bowersock in view of Sherman appears to be silent in regards to: wherein the seal is a swellable rubber seal member positionable proximate the one or more expandable members, wherein the swellable rubber seal member is configured to swell in response to contact with one or more downhole fluids to seal radially inward against the downhole feature or radially outward against the mandrel
Examiner notes that “the one or more expandable members” and “the seal” are interchangeable terminology in light of the instant application’s specification and the prior art(s) used herein.
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, to modify the teachings of Bowersock in view of Sherman to include for the seal to be a swellable seal member positionable proximate the one or more expandable members to allow since it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Furthermore, doing so, allows for a more durable seal for purposes of retrieving the downhole tool(s) during fishing operation(s).
In regards to claim 12, Bowersock further discloses: wherein the mandrel has a tubular receiving end for receiving the downhole feature (paragraph [0010] introduces “[…] As shown in the FIG. 2 the overshot 10 has an elongated tubular body 12 with a lower end opening 14 which accepts the fish”; furthermore, 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”) and a connector end (of 18) for connecting to a downhole conveyance (upper most connecting end as shown in figure 1; furthermore, paragraph [0009] introduces “[…] internal thread form 16 is preferably made of a hardened material so that rotation of the body 12 using a string (not shown) that is connected at the upper end 18 will result in cutting a similar thread form in the fish so that the body 12 can mechanically engage the fish for force transmission in the axial direction and in rotation”, as shown in figure 2).
In regards to claim 13, Bowersock further discloses: wherein the connector end is a first threaded connection for engaging with a second threaded connection on replacement production tubing (threaded connection of the uphole connector end, as shown in figure 1, is introduced for coupling another threaded connection of the tubular for conveyance purposes within the wellbore).
In regards to claim 14, Bowersock further discloses: wherein the one or more expandable members include one or more alignment ramps for directing the downhole feature inside of the mandrel (alignment ramps of the expandable member 20, as shown in light of the cross-hatching within figure 2).
In regards to claim 15, Bowersock discloses: the one or more expandable members (20, as shown in figure 2).
However, Bowersock in view of Sherman appears to be silent in regards to: wherein the one or more expandable members have a length (L) of about 5.3 cm.
Nonetheless, 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, to modify the teachings of Bowersock in view of Sherman to include for the one or more expandable members have a length (L) of about 5.3 cm since it has been held by the courts that a change in shape or configuration, without any criticality, is nothing more than one of numerous shapes that one of ordinary skill in the art will find obvious to provide based on the suitability for the intended final application. In re Dailey, 149 USPQ 47 (CCPA 1976). Furthermore, since the Applicant has not disclosed that the claimed design feature(s) solves any problem(s) or is for a particular reason, it appears that the claimed invention would perform equally well with the disclosed modifications. Lastly, doing so, allows for sealing zone(s) within the wellbore for purposes of subterranean fluid (e.g. oil, gas, water, etc.) recovery.
In regards to claim 17, Bowersock discloses: A well system (as disclosed in abstract and shown in figure 2), comprising:
a wellbore positioned within a subterranean formation (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”);
a downhole conveyance (18) located within the wellbore (Examiner notes that paragraphs [0001, 0006 and 0011] introduces the use of the tool, as shown in figure 2, to be used within the wellbore), the downhole conveyance having an expandable fishing tool (10) coupled to a downhole end thereof (as shown in figure 2; paragraphs [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”), the expandable metal fishing tool including:
a mandrel (outermost tubular radially adjacent to 20, as shown in figure 2);
one or more expandable members (20) positioned 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”); and
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”);
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 [[a]]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”); and
[[a]]the downhole feature located within the wellbore, the one or more expandable members having expanded radially to engage the downhole feature in response to the hydrolysis (paragraph [0010-0011] introduces “[…] Dashed lines 20' are intended to show the set position of the seal assembly 20 which has it moving radially to an engaged relation with the fish body that has advanced into the opening 14 and up to internal shoulder 24. The seal assembly 20, 20' is the distinguishing feature of the present invention as compared to the known design in FIG. 1”; “[…] 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”; furthermore, 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”).
However, Bowersock appears to be silent in regards to: the downhole conveyance having an expandable metal tool coupled to a downhole end thereof;
wherein the one or more expandable members comprise a non-oxide metal configured to expand in response to hydrolysis;
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 regards to claim 20, Bowersock further discloses: wherein the mandrel is a tubular mandrel (as shown in figure 2) having the interior surface (of outermost tubular radially adjacent to 20, as shown in figure 2), and further wherein the one or more expandable members are positioned partially along the interior surface (as shown in figure 2), such that the combined volume of the one or more expandable members is sufficient to expand radially inwardly to engage the downhole feature (paragraph [0010-0011] introduces “[…] Dashed lines 20' are intended to show the set position of the seal assembly 20 which has it moving radially to an engaged relation with the fish body that has advanced into the opening 14 and up to internal shoulder 24. The seal assembly 20, 20' is the distinguishing feature of the present invention as compared to the known design in FIG. 1”; “[…] 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”; furthermore, 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”).
In regards to claim 22, Bowersock discloses: A method for setting an expandable fishing tool (10; abstract & paragraphs [0001, 0009-0011] introduces a method for setting an expandable fishing tool, as shown in figure 2), comprising:
positioning a downhole conveyance (18) within a wellbore of a subterranean formation (paragraphs [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”), the downhole conveyance having an pre-expansion expandable fishing tool coupled to a downhole end thereof (as shown in figure 2; paragraphs [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”; the pre-expansion state of the fishing tool is the state of the tool prior to the swelling of the expandable member therein), the expandable metal fishing tool including:
a mandrel (outermost tubular radially adjacent to 20, as shown in figure 2) having a receiving end (downhole end of 20) and a connector end (uphole end of 20);
one or more expandable members (20) positioned 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”); and
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”);
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 [[a]]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”); and
positioning the receiving end of the mandrel and the one or more expandable members of the pre-expansion expandable metal fishing tool around [[a]] downhole feature or within an opening of the downhole feature (paragraph [0010-0011] introduces “[…] Dashed lines 20' are intended to show the set position of the seal assembly 20 which has it moving radially to an engaged relation with the fish body that has advanced into the opening 14 and up to internal shoulder 24. The seal assembly 20, 20' is the distinguishing feature of the present invention as compared to the known design in FIG. 1”); and
subjecting the pre-expansion expandable metal fishing tool positioned around the downhole feature or within the opening of the downhole tubular to a wellbore fluid, the one or more expandable members radially expanding to engage the downhole feature in response to the hydrolysis (paragraph [0010-0011] introduces “[…] Dashed lines 20' are intended to show the set position of the seal assembly 20 which has it moving radially to an engaged relation with the fish body that has advanced into the opening 14 and up to internal shoulder 24. The seal assembly 20, 20' is the distinguishing feature of the present invention as compared to the known design in FIG. 1”; “[…] 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”; furthermore, 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”).
However, Bowersock appears to be silent in regards to: A method for setting an expandable metal tool;
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: A method for setting an expandable metal tool (abstract, column 14, lines 34-44, column 27, lines 21-51, and claim 1 introduces for the expandable member to comprise expandable filler(s), such as, water-swellable carbide);
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 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 variance of some metal of which magnesium is one of them).
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 regards to claim 25, Sherman further discloses: wherein the metal is a magnesium alloy or a magnesium alloy alloyed with one of Al, Zn, Mn, Zr, Y, Nd, Gd, Ag, Ca, Sn, and Re (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).
In regards to claim 26, Bowersock further discloses: wherein the mandrel is a tubular mandrel having the interior surface (outermost tubular radially adjacent to 20, as shown in figure 2, which comprises of an interior surface), and further wherein the one or more expandable members (20) are positioned partially along the interior surface (as shown in figure 2), and further wherein positioning the receiving end includes positioning the receiving end around the downhole feature (paragraph [0010-0011] introduces “[…] Dashed lines 20' are intended to show the set position of the seal assembly 20 which has it moving radially to an engaged relation with the fish body that has advanced into the opening 14 and up to internal shoulder 24. The seal assembly 20, 20' is the distinguishing feature of the present invention as compared to the known design in FIG. 1”), and wherein subjecting the pre-expandable fishing tool includes subjecting the pre-expansion expandable fishing tool positioned around the downhole feature to the wellbore fluid, the one or more expandable members radially inwardly expanding to engage the downhole feature in response to the hydrolysis (paragraph [0010-0011] introduces “[…] Dashed lines 20' are intended to show the set position of the seal assembly 20 which has it moving radially to an engaged relation with the fish body that has advanced into the opening 14 and up to internal shoulder 24. The seal assembly 20, 20' is the distinguishing feature of the present invention as compared to the known design in FIG. 1”; “[…] 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”; furthermore, 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”).
In regards to claim 29, in view of the modification of the preceding claim, Bowersock further discloses: wherein an inside surface (i.e., arbitrary inside surface area) of the non-oxide metal (as taught by Sherman) is fully exposed (i.e., vulnerable, susceptible) to expand radially to engage [[a]]the downhole feature (as taught by Bowersock — see claim 1 rejection).
In regards 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 [[a]]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 regards 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 regards 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 regards 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 regards 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 regards 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 regards 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 regards 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 regards 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).
Claims 4 & 6-7 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”) and US Patent 4,424,859 (i.e., Sims et al.).
In regards to claim 4, Bowersock discloses: the single expandable sleeve (of 20, shown in figure 2).
However, Bowersock in view of Sherman appear to be silent in regards to: wherein the single expandable sleeve further includes one or more openings extending entirely through a wall thickness thereof for accepting one or more fasteners for fixing the single expandable sleeve to the interior surface.
Though the teachings of Sims is directed towards a downhole injection tool for purposes of hydrocarbon recovery, it also teaches the use of certain unique expandable seal elements therein to help assist in wellbore operation(s), such as, but not limited to, downhole isolation (as shown in figures 3 & 9 of Sims). Sims discloses: wherein the single expandable sleeve (24, 54) further includes one or more openings extending entirely through a wall thickness thereof for accepting one or more fasteners (58) for fixing (i.e., indirectly coupling) the single expandable sleeve to the interior surface (as disclosed in column 6, lines 45-60 and figures 3 & 9).
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, to modify the teachings of Bowersock in view of Sherman to include for the teachings of Sims, by modifying the single expandable sleeve taught by Bowersock in view of Sherman to include for one or more openings extending entirely through a wall thickness thereof for accepting one or more fasteners for fixing the single expandable sleeve to the interior surface taught by Sims to allow for securing the expandable sealing element about the downhole tool (column 6, lines 45-60).
In regards to claim 6, Bowersock discloses: expandable sleeve along the interior surface (as shown in figure 1).
However, Bowersock in view of Sherman appear to be silent in regards to: including a pair of retaining rings positioned adjacent at opposing ends of the two or more separate sleeves for fixing the two or more separate expandable sleeves along the interior surface.
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, to modify the teachings of Bowersock in view of Sherman to include for two or more separate expandable sleeves positioned partially along the interior surface since it has been held that mere duplication of essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Furthermore, doing so, allows for a more durable seal for purposes of retrieving the downhole tool(s) during fishing operation(s).
Furthermore, Bowersock in view of Sherman appear to be silent in regards to: including a pair of retaining rings positioned adjacent at opposing ends of the sleeve for fixing the expandable sleeve along the interior surface.
Nonetheless, Sims discloses: including a pair of retaining rings (56) positioned adjacent at opposing ends of the sleeve (24, 54) for fixing the expandable sleeve along the interior surface (as disclosed in column 6, lines 45-60 and figures 3 & 9).
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, to modify the teachings of Bowersock in view of Sherman to include for the teachings of Sims, by modifying two or more separate sleeves fixed along the interior surface taught by Bowersock in view of Sherman to include for a pair of retaining rings positioned adjacent at opposing ends of the sleeve(s) for fixing the expandable sleeve(s) along the interior surface taught by Sims to allow for protecting the sealing element about the downhole tool (column 6, lines 45-60).
In regards to claim 7, Sims further discloses: wherein the pair of retaining rings does not comprise the metal configured to expand in response to hydrolysis (Examiner notes that since the teachings of Sim fail to mention for the retaining rings to comprise of material configured to expand in response to hydrolysis, it would allow for the limitation to be met).
Claims 18-19, 21, and 27-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bowerock et al. (US Publication 2012/0168147 A1; herein “Bowersock”) in view of Sherman (US Patent 11,060,382 B2; herein “Sherman”) with the teachings of Roye (US Patent 2,075,912; herein “Roye”).
In regards to claim 18, Bowersock discloses: wherein the downhole conveyance is replacement production tubing (Examiner notes that 18 has the capability of being a replacement production tubing as it can allow for production fluid to flow therein).
However, Bowersock in view of Sherman appear to be silent in regards to: the downhole feature is cut production tubing.
It should be noted that Bowersock teaches that “[…] a tubular string can get stuck and needs to be worked free” (paragraph [0002]), but explicitly fails to teach for the downhole feature to be a cut production tubing. Nonetheless, Roye discloses: the downhole feature is cut production tubing (column 1, lines 39-43 introduces “the casing is a section of pipe 2, which is intended to illustrate a broken section of pipe which is to be removed from the well by means of a fishing tool”).
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, to modify the teachings of Bowersock in view of Sherman to include the teachings of Roye, by modifying the downhole fishing member taught by Bowersock in view of Sherman to include for the downhole member to be a cut production tubing taught by Roye to remove tubular(s) from the wellbore (column 1, lines 6-16).
In regards to claim 19, Bowersock further discloses: the expandable fishing tool is an expandable plug (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”; Examiner notes that in light of the sealing nature of the interior of the tool, the expansion of the expandable members allows it to be a plug). Sherman discloses: the downhole tool to comprise of metal (abstract, column 14, lines 34-44 and claim 1 introduces for the expandable member to comprise expandable filler(s), such as, water-swellable carbide).
However, Bowersock in view of Sherman appear to be silent in regards to: the downhole feature is cut production tubing.
It should be noted that Bowersock teaches that “[…] a tubular string can get stuck and needs to be worked free” (paragraph [0002]), but explicitly fails to teach for the downhole tubular to be a cut production tubing. Nonetheless, Roye discloses: the downhole tubular is cut production tubing (column 1, lines 39-43 introduces “the casing is a section of pipe 2, which is intended to illustrate a broken section of pipe which is to be removed from the well by means of a fishing tool”).
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, to modify the teachings of Bowersock in view of Sherman to include the teachings of Roye, by modifying the downhole fishing member taught by Bowersock in view of Sherman to include for the downhole member to be a cut production tubing taught by Roye to remove tubular(s) from the wellbore (column 1, lines 6-16).
In regards to claim 21, Bowersock discloses: the one or more expandable members, such that the combined volume of the one or more expandable members is sufficient to expand radially to engage the downhole feature (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”).
However, Bowersock in view of Sherman appear to be silent in regards to: wherein the one or more expandable members are positioned partially along the exterior surface, such that the combined volume of the one or more expandable members is sufficient to expand radially outwardly to engage an opening in the downhole feature.
Though the primary context of Bowersock presents as an overshot-type fishing tool, it also teaches that spear-type fishing tools are known (abstract and paragraph [0015] of Bowersock introduces “While an overshot is a preferred embodiment a spear that grabs a fishing groove can also be adapted to use the articulated seal whether swelling or otherwise initiated so that some fluid pressure can be delivered into the fish even if a spear that grabs with abutting collet fingers is used and some leakage among the fingers is encountered”). Roye discloses: wherein the one or more expandable members (14) are positioned partially along the exterior surface (of 4; as shown in figure 2 in light of the cross hatching), such that the combined volume of the one or more expandable members is sufficient to expand radially outwardly to engage an opening in the downhole feature (2; column 2, line 20- column 3, line 21 introduces expanding 14 radially outwardly to engage an opening in the downhole tubular, in light of the fluid introduced through 23 therein).
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, to modify the teachings of Bowersock in view of Sherman to include the teachings of Roye, by modifying the expandable fishing tool taught by Bowersock in view of Sherman to include for the expandable members of the fishing tool to radially expand outwardly within the opening of the downhole tubular taught by Roye to remove tubular(s) from the wellbore (column 1, lines 6-16).
In regards to claim 27, Bowersock discloses: wherein the one or more expandable members are positioned partially along the surface (positioned along the interior surface, as shown in figure 2), and the one or more expandable members radially expanding to engage the downhole feature in response to the hydrolysis (paragraph [0010-0011] introduces “[…] Dashed lines 20' are intended to show the set position of the seal assembly 20 which has it moving radially to an engaged relation with the fish body that has advanced into the opening 14 and up to internal shoulder 24. The seal assembly 20, 20' is the distinguishing feature of the present invention as compared to the known design in FIG. 1”; “[…] 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”; furthermore, 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”). Sherman discloses the downhole metal tool (abstract, column 14, lines 34-44 and claim 1 introduces for the expandable member to comprise expandable filler(s), such as, water-swellable carbide).
However, Bowersock in view of Sherman appear to be silent in regards to: wherein the one or more expandable members are positioned partially along the exterior surface, and further wherein positioning the receiving end includes positioning the receiving end within the opening in the downhole feature, and wherein subjecting the pre-expandable fishing tool includes subjecting the pre-expansion expandable fishing tool positioned within the opening of the downhole feature to the wellbore fluid, the one or more expandable members radially outwardly expanding to engage the downhole feature.
Though the primary context of Bowersock presents as an overshot-type fishing tool, it also teaches that spear-type fishing tools are known (abstract and paragraph [0015] of Bowersock introduces “While an overshot is a preferred embodiment a spear that grabs a fishing groove can also be adapted to use the articulated seal whether swelling or otherwise initiated so that some fluid pressure can be delivered into the fish even if a spear that grabs with abutting collet fingers is used and some leakage among the fingers is encountered”).
Nonetheless, Roye discloses: wherein the one or more expandable members (14) are positioned partially along the exterior surface (exterior surface of the mandrel 4; as shown in figure 2 in light of the cross hatching), and further wherein positioning the receiving end (downhole end) includes positioning the receiving end within the opening in the downhole feature (as shown in figure 1 where the fishing tool is placed within the downhole tubular 2), and wherein subjecting the pre-expandable fishing tool includes subjecting the pre-expansion expandable fishing tool positioned within the opening of the downhole feature (2) to the wellbore fluid, the one or more expandable members radially outwardly expanding to engage the downhole feature (column 2, line 20- column 3, line 21 introduces expanding 14 radially outwardly to engage an opening in the downhole tubular, in light of the fluid introduced through 23 therein).
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, to modify the teachings of Bowersock in view of Sherman to include the teachings of Roye, by modifying the expandable fishing tool taught by Bowersock in view of Sherman to include for the expandable members of the fishing tool to radially expand outwardly within the opening of the downhole tubular taught by Roye to remove tubular(s) from the wellbore (column 1, lines 6-16).
In regards to claim 28, Bowersock discloses: the one or more expandable members, such that the combined volume of the one or more expandable members is sufficient to expand radially to engage the downhole feature (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”).
However, Bowersock in view of Sherman appear to be silent in regards to: wherein the one or more expandable members are positioned partially along the exterior surface, such that the combined volume of the one or more expandable members is sufficient to expand radially outwardly to engage an opening in the downhole feature.
Though the primary context of Bowersock presents as an overshot-type fishing tool, it also teaches that spear-type fishing tools are known (abstract and paragraph [0015] of Bowersock introduces “While an overshot is a preferred embodiment a spear that grabs a fishing groove can also be adapted to use the articulated seal whether swelling or otherwise initiated so that some fluid pressure can be delivered into the fish even if a spear that grabs with abutting collet fingers is used and some leakage among the fingers is encountered”). Roye discloses: wherein the one or more expandable members (14) are positioned partially along the exterior surface (of 4; as shown in figure 2 in light of the cross hatching), such that the combined volume of the one or more expandable members is sufficient to expand radially outwardly to engage an opening in the downhole feature (2; column 2, line 20- column 3, line 21 introduces expanding 14 radially outwardly to engage an opening in the downhole tubular, in light of the fluid introduced through 23 therein).
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, to modify the teachings of Bowersock in view of Sherman to include the teachings of Roye, by modifying the expandable fishing tool taught by Bowersock in view of Sherman to include for the expandable members of the fishing tool to radially expand outwardly within the opening of the downhole tubular taught by Roye to remove tubular(s) from the wellbore (column 1, lines 6-16).
Claims 23-24 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”) with the teachings of Robisson et al. (US Publication 2013/0292117 A1; hereinafter “Robisson”).
In regards to claim 23, Bowersock discloses claim 22 above.
However, Bowersock in view of Sherman appear to be silent in regards to: wherein the metal is configured to expand in response to one of magnesium hydrolysis, aluminum hydrolysis, calcium hydrolysis, and calcium oxide hydrolysis.
It should be noted that both Bowersock in view of Sherman introduce for the expandable downhole tool disclosed therein to be made of a tangible material to withstand temperatures, pressures within the wellbore environment.
Nonetheless, the teachings of Robisson introduces a downhole expandable sealing element. Robisson discloses: wherein the metal is configured to expand in response to one of magnesium hydrolysis, aluminum hydrolysis, calcium hydrolysis, and calcium oxide hydrolysis (paragraphs [0029 and 0036] introduces “Downhole swellable fixtures may comprise in non- limiting examples an elastomeric material filled with a setting or reactive filler such as cement clinker (silicates, aluminates and ferrites) and may further comprise oxides such as magnesium oxide and calcium oxide”).
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, to modify the teachings of Bowersock in view of Sherman to include the teachings of Robisson, by modifying the expandable member of the fishing tool taught by Bowersock in view of Sherman to include for the downhole expandable member to comprise of metal which is configured to expand in response to one of magnesium hydrolysis, aluminum hydrolysis, calcium hydrolysis, and calcium oxide hydrolysis taught by Robssion to increase the volume of the elastomer/filler composite (paragraph [0029]).
In regards to claim 24, Bowersock discloses the hydrolysis. Sherman teaches multiple materials, including some oxides and non-oxides usable together, wherein magnesium oxides can produce Brucite.
However, Bowersock and Sherman appear to be silent in regards to: wherein the hydrolysis forms a structure comprising one of a Brucite, Gibbsite, bayerite, and norstrandite.
Nonetheless, Robisson discloses for using magnesium hydroxide within the downhole swellable element (as shown in figures 3 and disclosed in paragraph [0025]). The instant application’s specification (specifically paragraph [0021]) states that magnesium hydroxide is also known as Brucite.
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, to modify the teachings of Bowersock and Sherman to include the teachings of Robisson (‘117), by modifying the material of the expansion element(s) in light of hydrolysis taught by Bowersock and Sherman to include for Brucite taught by Robisson (‘117) as it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. In re Leshing, 125 USPQ 416 (CCPA 1960) and Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945).
Allowable Subject Matter
Claim 38 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 39-40 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Patent Examiner, Art Unit 3676
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