Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s amendments dated 3/26/25 have been entered. The amendments have resolved the 112 issues from the preceding Office Action.
Applicant's arguments filed 3/26/25 have been fully considered but they are not persuasive.
Applicant argues that the amendment differentiates from the Sherman reference. Applicant argues that “Sherman explicitly discusses that the inclusion of the polymeric binder”.
The examiner notes the reactive metal element has been drawn only to the metal elements of Sherman. The examiner notes that, as recited, “the downhole device comprises the reactive metal element” i.e. permits the downhole tool to include elements in addition to the reactive metal element (by virtue of the use of the open-ended transitional phrase “comprises”). The reactive metal element of Sherman has been drawn to the expandable fillers discussed in Para 0044 (which states, “the expandable filler can be a) MgO, CaO, Li.sub.2O, borate, selenium, iron, magnesium, manganese, germanium, calcium, aluminum, sodium, lithium, zinc or other oxidizable metal […])”. This was previously cited and discussed in the preceding Office Action. In other words, the claim, as presently recited, does not preclude the possibility of a binder under the broadest reasonable interpretation of the claim and the modification does not suggest that such binders not be used.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 3-4, 6-8, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Streich (US 20110042081 A1), in view of Sherman (US 20190316025 A1).
Regarding claim 1, Streich teaches a method for initiating the reaction of a reactive metal element of a downhole device comprising:
introducing the downhole device into a wellbore (Fig 6a-6b, device 600; Abstract, device is used in a wellbore); wherein the downhole device comprises a chemical (Fig 6a, chemical 640);
While Streich teaches the use of a cementious annular sealing composition as the chemical (Para 0003), Streich is silent on the particulars of the chemicals including the reactive metal and its recited particulars.
Sherman teaches the chemicals including the reactive metal, wherein the reactive metal element consists of a metal or a metal alloy (Para 0044, expandable filler includes e.g. “the expandable filler can be a) MgO, CaO, Li.sub.2O, borate, selenium, iron, magnesium, manganese, germanium, calcium, aluminum, sodium, lithium, zinc or other oxidizable metal”; Para 0089, expandable fillers react with water/brine).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Streich by using the composition i.e. the expandable filler and its carrier and its corresponding annular activation methods (of which only the metal fillers of Sherman as being drawn to the “reactive metal”) as disclosed by Sherman as the chemical in Streich because of its beneficial properties e.g. it creates “a tight seal and/or eliminating annulus cracking, fracture, and/or gas channels in the wellbore” (Para 0088).
Streich as modified by Sherman wherein the reactive metal element has a first volume (Para 0044 of Sherman, expandable filler before reaction has a first volume); wherein the reactive metal element is separated from a reaction-inducing fluid by a frangible casing (Fig 6a-6b, Para 0045, opening 650 has a “sealing element” which is removable); wherein the downhole device further comprises a sliding piston (Fig 6a-6b, piston 630) positioned proximate to the frangible casing such that both the sliding piston and the frangible casing are adjacent to one another in a longitudinally axial direction of the downhole device (Fig 6a, piston 630 is longitudinally axially aligned with frangible casing/sealing at 650);
removing the frangible casing by translating the sliding piston towards the frangible casing in the longitudinal axial direction to apply sufficient pressure to the frangible casing in the longitudinal axial direction to break the frangible casing (Fig 6b, Para 0045, the sealing element/frangible casing 650 is removed after the element(s) in the longitudinal direction have been “sufficiently compressed”); and
contacting the reactive metal element with the reaction-inducing fluid to produce a metal hydroxide reaction product having a second volume greater than the first volume (Fig 6b, chemical 650/670 has been released into the annulus; Para 0090 of Sherman, the wellbore fluid/annular fluid causes the reaction; “the expandable sealant material such as iron, magnesium, aluminum, calcium, sodium, silicon, zinc, titanium, CaO, MgO, and/or other materials that react with water”. See also Para 0099-0104).
Regarding claim 3, Streich as modified teaches wherein the reactive metal element is comprised of discrete pieces (Para 0090-0091 of Sherman, the reactive metal are “fillers” within a matrix i.e. discrete pieces, see also Para 0098 which describes particles).
Regarding claim 4, Streich as modified teaches wherein the reactive metal element is disposed within the downhole device (Fig 6a, the chemical/reactive metal at 650 as modified is within the tool 600, as seen).
Regarding claim 6, Streich as modified teaches wherein the frangible casing comprises a material selected from the group consisting of metal, polymer, cellulosic material, ceramic material, and any combination thereof (Para 0045, frangible casing may be wax-like substance i.e. polymer).
Regarding claim 7, Streich as modified teaches wherein the reactive metal element comprises a metal selected from the group consisting of magnesium, calcium, aluminum, tin, zinc, beryllium, barium, manganese, and any combination thereof (Para 0107 of Sherman, metals such aluminum or magnesium).
Regarding claim 8, Streich as modified teaches wherein the reactive metal element comprises a metal alloy selected from the group consisting of magnesium-zinc, magnesium-aluminum, calcium-magnesium, aluminum-copper, and any combination thereof (Para 0107 of Sherman, metals such as copper and calcium may be added to aluminum or magnesium result in e.g. calcium-magnesium or aluminum-copper).
Regarding claim 21, Streich as modified teaches wherein the reactive metal element consists of a metal alloy selected from the group consisting of magnesium-zinc, magnesium-aluminum, calcium-magnesium, aluminum-copper, and any combination thereof (Para 0107 of Sherman, metals such as copper and calcium may be added to aluminum or magnesium result in e.g. calcium-magnesium or aluminum-copper).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Streich (US 20110042081 A1), in view of Sherman (US 20190316025 A1), further in view of Jamison (US 20140231086 A1).
Regarding claim 2, while Streich as modified teaches the reactive metal may take a variety of shapes (Para 0036), Streich as modified is silent on wherein the reactive metal element is in the shape of a lattice.
Jamison teaches wherein the reactive metal element is in the shape of a lattice (Para 0024, the swellable particles are “lattice-shaped”).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Streich as modified by Sherman by having the lattice shape for the swellable particles i.e. reactive metal of Sherman as disclosed by Jamison because Jamison teaches that the variety of shapes are known in the art and may be selectively designed to confer benefits based on the desired application (Para 0024).
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 THEODORE N YAO whose telephone number is (571)272-8745. The examiner can normally be reached typically 8am-4pm ET.
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/THEODORE N YAO/Primary Examiner, Art Unit 3676