DETAILED CORRESPONDENCE
Status of Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 8-10 & 12 have been examined in this application. This communication is a Final Rejection in response to the Amendment filed on October 14, 2025. Claims 1-7 & 14-20 stand withdrawn. Claims 11 & 13 stand canceled.
Claim Objections
Claims 9, 10 & 12 are objected to because of the following informalities:
Claim 9 appears to further limit the first state of the metal sealant, but does not clarify which of “a single metal, metal alloy or metal oxide” is further limited. As such, the claim reads on “a single metal” possibly being “a combination of an alkaline earth metal and transition metal”. To improve clarity of the claim, correction to clearly recite the first state as one of a single metal, metal alloy or metal oxide, followed by recitation of the specific metal(s) is required. Appropriate correction is required.
Claim 10 appears to further limit the first state of the metal sealant, but does not clarify which of “a single metal, metal alloy or metal oxide” is further limited. As such, the claim reads on “a single metal” possibly being a combination of two or more elements selected from the group as instantly claimed. To improve clarity of the claim, correction to clearly recite the first state as one of a single metal, metal alloy or metal oxide, followed by recitation of the specific metal(s) is required. Appropriate correction is required. Claim 12 is also objected to for being dependent on Claim 10.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim 8 is 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 8 recites the limitation “securing the casing patch to the well casing with the downhole running tool and expandable device by applying force to the metal sealant and the base; wherein the force anchors the portion of the axial length of the base extending past the axial length of the metal sealant to the well casing”. The specification in [0011] & [0012] discusses one or more embodiments of applying force to the casing patch or first section of the base to anchor the casing patch, but the specification does not appear to describe securing the casing patch by anchoring the extended portion of the axial length of the base with force also applied to “the metal sealant” as instantly claimed. These limitations regarding applying force to the metal sealant to secure the casing patch and anchor the portion of the axial length of the base extending past the axial length of the metal sealant as instantly claimed are not sufficiently described in the specification as required above. Appropriate correction and/or clarification is required. Claims 9, 10 & 12 are also rejected for being dependent on Claim 8.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 8-10 & 12 are rejected under 35 U.S.C. 103 as being unpatentable over Sherman (US 2019/0264543).
With respect to Claim 8, Sherman discloses a method for patching a well casing downhole in a wellbore environment (Sherman: Section [0003]), the method comprising: assembling a casing patch by disposing a sealant with a base, wherein the base has a tubular shape; wherein the sealant and the base each have a diameter smaller than a diameter of a section of the well casing; and the diameter of the casing patch is also smaller than the diameter of the section of the well casing; coupling the assembled sealant and base to the well casing using a downhole running tool; and securing the casing patch to the well casing with the downhole running tool (Sherman: Sections [0022]-[0028] & [0055]); wherein the sealant transitions from a first state to a second state in response to a hydration reaction with a water-based fluid; wherein the second state is a hydroxide reaction product of the hydration reaction; wherein the second state comprises a larger volume than the first state; and wherein the hydroxide reaction product patches the well casing by forming a seal against the well casing (Sherman: Sections [0026], [0029], [0034], [0061], & [0063]).
Sherman further teaches one or more embodiments where the sealants comprise a metal that reacts with water in the hydration reaction, and forms a seal in patching, repairing damage etc. (Sherman: Sections [0003], [0036] & [0064]); teaches one or more embodiments with expandable filler materials that comprise a single metal, metal alloy or metal oxide (Sherman: Sections [0036] & [0064]); teaches one or more embodiments employing expandable outer coatings that partially coat the outer surface of the tube member, as non-limiting example: spaced bands (which is considered to read on a sealant that has a tubular shape, with a diameter larger than the diameter of the base, disposed adjacent to and around the base, wherein the base has an axial length greater than an axial length of the metal sealant and a portion of the axial length of the base extends past the axial length of the metal sealant); and one or more embodiments with outer coatings composed of expandable material, such as the expandable filler material (Sherman: Sections [0118]-[0138]); and teaches one or more embodiments where an expandable device is used in coupling the sealant and base and securing the casing patch; one or more embodiments where the expansion is by chemical and/or mechanical forces, and where expansion of portions of the casing patch are controlled/tailored as desired (Sherman; Sections [0025], [0027] & [0056]); in providing improved seals (Sherman: Sections [0004]-[0021]). The metals as disclosed upon reacting with water are considered to provide a hydroxide reaction product as instantly claimed and as described in [0018] of the instant specification. “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). To the extent there is any difference between the reaction product of Sherman and the reaction product as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
As such, although the reference fails to explicitly disclose the above method steps in combination with a “metal” sealant wherein the metal sealant is disposed “adjacent to and around the base” with a first state comprising “a single metal, metal alloy, or metal oxide” and wherein the metal sealant has “a tubular shape” wherein the diameter of the metal sealant is larger than the diameter of the base; “wherein the base has an axial length greater than an axial length of the metal sealant and a portion of the axial length of the base extends past the axial length of the metal sealant” and the steps of coupling and securing with an expandable device by applying force to the metal sealant and the base; wherein the force anchors the portion of the axial length of the base extending past the axial length of the metal sealant to the well casing, in a single embodiment, as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the above method to employ the metal sealant with a first state as instantly claimed and having a tubular shape, a diameter larger than the diameter of the base and adjacent to and around the base as instantly claimed, a desired axial length of the base such as instantly claimed and to couple and secure desired sections of the casing patch, such as the axial length of the base extending past the axial length of the metal sealant, using an expandable device and force as instantly claimed, with a reasonable expectation of success, in order to patch wells, repair damage and/or provide improved seals. (Sherman: Sections [0003]-[0021], [0025], [0027], [0036], [0056], [0064] & [0118]-[0138]).
With respect to Claims 9, 10 & 12, Sherman teaches the method as provided above with respect to Claim 8, and further discloses the first state as respectively claimed (Sherman: Sections [0036] & [0064]).
Response to Arguments
Applicants' amendments regarding the 35 USC § 112 rejections have been fully considered. Some amendments raise new objections and/or issues under 35 USC § 112 as set forth above.
Applicants’ arguments with respect to the rejection(s) of Claims 8-10 & 12 under 103 as being unpatentable over Sherman have been fully considered but they are not persuasive. Applicants assert that the Sherman reference does not teach or suggest securing the casing patch to the well casing with the downhole running tool and expandable device by applying force to the metal sealant and the base; wherein the force anchors the portion of the axial length of the base extending past the axial length of the metal sealant to the well casing; the tube member in Sherman can be expanded without need for hydraulics, pulling drillstring expansion cones, or having other completion/activation strings involved to set the tube member; and the instant invention anchors the casing patch using the downhole running tool and expandable device to secure the casing patch in the desired position before the metal sealant is reacted and then to also allow the metal sealant to have a sufficiently secured surface in the anchored base to then press against once the metal sealant has begun its reaction.
The Examiner respectfully disagrees.
Sherman teaches the step of securing the casing patch as instantly claimed as set forth above. Further, in response to Applicants’ argument that the references fail to show certain features of Applicants’ invention, it is noted that the features upon which Applicants rely (i.e., hydraulics, pulling drillstring expansion cones, or having other completion/activation strings to set the tube member; securing the casing patch in the desired position before the metal sealant is reacted and then to also allow the metal sealant to have a sufficiently secured surface in the anchored base to then press against once the metal sealant has begun its reaction) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ANURADHA AHUJA whose telephone number is (571)272-3067. The examiner can normally be reached Monday through Friday.
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/ANURADHA AHUJA/Primary Examiner, Art Unit 3674
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