DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments and Amendments
Applicant's arguments filed 03/31/2026 have been fully considered but they are not persuasive.
Applicant's argument regarding the amendments intended to clarify "Length (Lt)" in the independent claims is not persuasive because it is not clear what the meets and bounds of a greatest linear length is and because the claim is broad enough that an arbitrary line can be drawn to accommodate this limitation. These problems and non-persuasiveness is illustrated in the multiple rejections below. It is noted that Applicant is using adjectives such as “solid” and “greatest” to overcome the prior art, neither of which appear in the specification as noted below.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The independent claims recite the phrases “greatest linear dimension” and “solid wall conduit.” There is no clear basis for these limitations from the specification, nor is there a clear definition for the meaning of “greatest linear dimension.”
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
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.
Claims 1, 12, 17, and 28 are 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.
Claims 1, 12, 17, and 28 recite the limitation "wherein the length (Lt) is a greatest linear dimension of the control line tubular." It is unclear what the meets and bounds of “a greatest linear dimension” constitutes. Does “greatest” mean best? Or does “greatest” mean largest? In which case in which dimension? Circumference? Length? Width? Depth?
Claims 2-11, 13-16, and 18-27 are rejected for depending on a rejected claim.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 12, and 14-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fripp et al. (US 2021/0372527 A1), hereinafter Fripp-527.
Regarding claim 1, Fripp-527 discloses a control line (120+130, fig. 1 and 4a, par. 0019 and 0034) for use in a well system (5, fig. 1 and 4a, par. 0019 and 0034), comprising:
a control line tubular (120, fig. 4a), the control line tubular having a length (Lt), a width (Wt) and wall thickness (Tt) (fig. 4a, par. 0034), wherein the length (Lt) is a greatest linear dimension of the control line tubular (see circumference of 120 in annotated fig. 4a), wherein the control line tubular is a solid wall conduit (fig. 4a) configured to transport control line fluid along the length (Lt) (par. 0034); and
a sleeve of expandable metal (130, fig. 4a) positioned within the control line tubular (fig. 4a), the sleeve of expandable metal comprising a metal configured to expand in response to hydrolysis to seal the control line tubular when contacting a reactive fluid (par. 0024, 0026, and 0034), wherein the sleeve of expandable metal (130, fig. 4a) extends axially along the length (Lt) (a length of 120, fig. 4a; see annotated fig. 4a) by a length (Ls) (a length of 130, fig. 4a; see annotated fig. 4a), and further wherein the length (Ls) is at least 25% of the length (Lt) (see annotated fig. 4a, wherein the respective circumferences’ are outlined).
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Regarding claim 2, Fripp-527 further discloses further including a barrier layer (145, fig. 4b, par. 0035) positioned between the control line tubular and the sleeve of expandable metal (120 and 130, fig. 4b).
Regarding claim 3, Fripp-527 further discloses further including an electric communication line or optical fiber communication line placed within the control line tubular and the sleeve of expandable metal (125, fig. 4A, par. 0034).
Regarding claim 12, Fripp-527 discloses a method for sealing a control line, comprising:
positioning a control line (120+130, fig. 1 and 4a, par. 0019 and 0034) within a wellbore (5, fig. 1 and 4a, par. 0019 and 0034) located in a subterranean formation (35, fig. 1, par. 0019), the control line including:
a control line tubular (fig. 4a, 120), the control line tubular having a length (Lt), a width (Wt) and wall thickness (Tt) (fig. 4a, par. 0034), wherein the length (Lt) is a greatest linear dimension of the control line tubular (see circumference of 120 in annotated fig. 4a), wherein the control line tubular is a solid wall conduit (fig. 4a) configured to transport control line fluid along the length (Lt) (par. 0034); and
a sleeve of expandable metal (fig. 4a, 130) positioned within the control line tubular (fig. 4a), the sleeve of expandable metal comprising a metal configured to expand in response to hydrolysis (par. 0034), wherein the sleeve of expandable metal (130, fig. 4a) extends axially along the length (Lt) (a length of 120, fig. 4a; see annotated fig. 4a) by a length (Ls) (a length of 130, fig. 4a; see annotated fig. 4a), and further wherein the length (Ls) is at least 25% of the length (Lt) (see annotated fig. 4a) and
subjecting an exposed region of the sleeve of expandable metal to a reactive fluid to form an expanded metal seal in the control line tubular (par. 0024, 0026, and 0034).
Regarding claim 14, Fripp-527 further discloses wherein a crack in the control line forms the exposed region, the expanded metal seal sealing the crack in the control line (0024, 0026, and 0034).
Regarding claim 15, Fripp-527 further discloses wherein subjecting the exposed region of the sleeve of expandable metal to the reactive fluid includes intentionally subjecting the exposed region of the sleeve of expandable metal to the reactive fluid (par. 0034).
Regarding claim 16, Fripp-527 further discloses wherein subjecting the exposed region of the sleeve of expandable metal to the reactive fluid includes unexpectedly subjecting the exposed region of the sleeve of expandable metal to the reactive par. fluid (0024, 0026, and 0034).
Regarding claim 17, Fripp-527 further discloses a well system, comprising:
a wellbore (5, fig. 1 and 4a, par. 0019 and 0034) located within a subterranean formation (35, fig. 1, par. 0019); and
a control line located in the wellbore (120+130, fig. 1 and 4a, par. 0019 and 0034), the control line including:
a control line tubular (fig. 4a, 120), the control line tubular having a length (Lt), a width (Wt) and wall thickness (Tt) (fig. 4a, par. 0034), wherein the length (Lt) is a greatest linear dimension of the control line tubular (see circumference of 120 in annotated fig. 4a), wherein the control line tubular is a solid wall conduit (fig. 4a) configured to transport control line fluid along the length (Lt) (par. 0034); and
a sleeve of expandable metal (fig. 4a, 130) positioned within the control line tubular (fig. 4a), the sleeve of expandable metal comprising a metal configured to expand in response to hydrolysis (par. 0034) to seal the control line tubular when contacting a reactive fluid (par. 0024, 0026, and 0034), wherein the sleeve of expandable metal (130, fig. 4a) extends axially along the length (Lt) (a length of 120, fig. 4a; see annotated fig. 4a) by a length (Ls) (a length of 130, fig. 4a; see annotated fig. 4a), and further wherein the length (Ls) is at least 25% of the length (Lt) (see annotated fig. 4a).
Regarding claim 18, Fripp-527 further discloses further including a wellbore tubular (125, fig. 4A, par. 0034) located in the wellbore (5, fig. 1 and 4A), the control line located in an annulus between the wellbore tubular and the wellbore (120+130 is between 125 and 5, fig. 1 and 4A).
Regarding claim 19, Fripp-527 further discloses further including an electric communication line or optical fiber communication line placed within the control line tubular and the sleeve of expandable metal (125, fig. 4A, par. 0034).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 4-5, 11, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Fripp et al. (US 2021/0372527 A1), hereinafter Fripp-527 in view of Fripp et al. (US 2020/0370391 A1), hereinafter Fripp-391.
Regarding claim 4 and 20, Fripp-527 further teaches a control line tubular (120, fig. 4a) and the sleeve of expandable metal (130, fig. 4a).
However, Fripp-527 does not include a sleeve of filler material placed within the control line tubular and the sleeve of expandable metal.
Fripp-391 teaches a similar device in the same field of self-healing control lines wherein there is a sleeve of filler material (505, fig. 15, par. 0052) placed within the control line tubular and the sleeve of expandable metal (140 and 145, fig. 15).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to place the sleeve of filler material 505 Fripp-391 between the control line tubular 120 and the sleeve of expandable metal 130 of Fripp-527 because it may provide for extrusion resistance, strength to the structure, and increase the pressure holding capabilities of the structure (par. 0052).
Regarding claims 5 and 21, Fripp-527 as currently modified by Fripp-391 teaches wherein the sleeve of filler material (505, fig. 15, par. 0052 of Fripp-391) is positioned between the sleeve of expandable metal (130, fig. 4a of Fripp-527) and the electric communication line or optical fiber communication line (125, fig. 4A, par. 0034 of Fripp-527).
Claims 6-7, 10, 22, 23, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Fripp et al. (US 2021/0372527 A1), hereinafter Fripp-527 in view of Webre et al. (US 20070158079 A1), hereinafter Webre.
Regarding claims 6 and 22, Fripp-527 teaches the control line tubular (120, fig. 4B) having a length (Lt), a width (Wt), and a wall thickness (Tt) of the control line tubular (fig. 4B).
Fripp-527 does not explicitly teach the size of these dimensions.
Webre teaches a similar device in the same field of control lines wherein the length (Lt) of the control line tubular is at least 4 cm (par. 0009, wherein the length can be along the length of the pipe string), the width (Wt) of the control line tubular is no greater than 50 mm (diameter of whole is between 5mm – 60 mm, par. 0009), and the wall thickness (Tt) of the control line tubular is no greater than 6 mm (diameter of whole is between 5mm – 60 mm, par. 0009, therefore the wall thickness would have to fit within).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Fripp-527 to have the dimensions wherein the length (Lt) of the control line tubular is at least 4 cm, the width (Wt) of the control line tubular is no greater than 50 mm, and the wall thickness (Tt) of the control line tubular is no greater than 6 mm, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984).
Regarding claims 7 and 23, Fripp-527 as currently modified by Webre teaches the length (Lt) of the control line tubular is at least 4 cm (par. 0009, wherein the length can be along the length of the pipe string of Webre), the width (Wt) of the control line tubular is no greater than 50 mm (diameter of whole is between 5mm – 60 mm, par. 0009 of Webre), and the wall thickness (Tt) of the control line tubular is no greater than 6 mm (diameter of whole is between 5mm – 60 mm, par. 0009, therefore the wall thickness would have to fit within of Webre).
However, Fripp-527 as currently modified by Webre fails to explicitly teach wherein the sleeve of expandable metal wall thickness (Ts), and further wherein the length (Ls) is at least 3 cm, and the wall thickness (Ts) is no greater than 10 mm.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Fripp to have the dimensions the sleeve of expandable metal wall thickness (TS), and further wherein the wall thickness (Ts) is no greater than 10 mm since this would have been routine optimization within the already given range of Webre (par. 0009 of Webre, see also MPEP 2144.05).
Regarding claims 8 and 24, Fripp-527 as currently modified by Webre teaches wherein the length (LS) (a length of 130, fig. 4a; see annotated fig. 4a) is at least 75% of the length (Lt) (see annotated fig. 4a).
Regarding claims 9 and 25, Fripp-527 as currently modified by Webre teaches wherein the length (LS) (a length of 130, fig. 4a; see annotated fig. 4a) is at least 90% of the length (Lt) (see annotated fig. 4a).
Regarding claim 10 and 26, Fripp-527 as currently modified by Webre further teaches the wall thickness (Tt) of the control line tubular is no greater than 6 mm (diameter of whole is between 5mm – 60 mm, par. 0009, therefore the wall thickness would have to fit within).
However, Fripp-527 as currently modified by Webre fails to explicitly teach wherein the wall thickness (Ts) of the sleeve of expandable metal is no greater than 3 mm.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Fripp-527 to have the wall thickness (Ts) of the sleeve of expandable metal is no greater than 3 mm since this would have been routine optimization within the already given range of Webre in order for the wall thickness to fit inside of the overall diameter (par. 0009 of Webre, see also MPEP 2144.05).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Fripp et al. (US 2021/0372527 A1), hereinafter Fripp-527 in view of Connell et al. (US 8,955,597 B2), hereinafter Connell.
Regarding claim 13, Fripp-527 discloses further including a wellbore tubular (125, fig. 4A, par. 0034) located within the wellbore (5, fig. 1 and 4A), the control line positioned in an annulus between the wellbore tubular and the wellbore (120+130 is between 125 and 5, fig. 1 and 4A).
However, Fripp-527 fails to disclose severing a wellbore tubular during a plug and abandonment.
Connell teaches a similar device in the same field of endeavor wherein further including severing the wellbore tubular and the control line tubular (cutting tubulars lining the borehole, col. 2 lines 36-41) during a plug and abandonment application (able to plug and abandon the borehole, col. 2 lines 9-10), the severing creating the exposed region (in order to assure no leakage occurs … to ream or open the borehole in the cut portion to assure that cement interfaces directly with the formation, background lines 10-14 of Connell).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the swellable metal seal of Fripp-527 to incorporate the severing of a wellbore tubular during a plug and abandonment of Connell because it would ensure no leakages occur between the wellbore and the formation (background lines 10-14 of Connell).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 11-12, 15-19, and 27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fripp et al. (US 2020/0370391 A1), hereinafter Fripp.
Regarding claim 1, Fripp discloses a control line for use in a well system, comprising:
a control line tubular (145, fig. 16, par. 0049), the control line tubular having a length (Lt), a width (Wt) and wall thickness (Tt) (Annotated Fig. 16 Version 1), wherein the length (Lt) is a greatest linear dimension of the control line tubular (Annotated Fig. 16 Version 1), wherein the control line tubular is a solid wall conduit configured to transport control line fluid along the length (Lt) (fig. 16, par. 0031, wherein 145 is solid and there is fluid transported within it in 135); and
a sleeve of expandable metal (140) positioned within the control line tubular (140 is within 145, fig. 16), the sleeve of expandable metal (140) comprising a metal configured to expand in response to hydrolysis (par. 0053) to seal the control line tubular when contacting a reactive fluid (par. 0053, wherein when 140 swells it would effectively seal 145).
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Regarding claim 3, Fripp further discloses further including an electric communication line or optical fiber communication line (lines 610 may be … a conveyance line that may convey power, data, instructions, pressure, fluids, etc., page 6 par. 0053) placed within the control line tubular (610 is within 145, fig. 16) and the sleeve of expandable metal (610 being inside 605, page 5 par. 0053; and 605 disposed between 140, page 5 par. 0053).
Regarding claim 11, Fripp further discloses wherein the control line tubular (145) forms at least a portion of a control line splice (par. 0057) configured to couple two separate control lines together (par. 0058).
Regarding claim 12, Fripp discloses a method for sealing a control line, comprising:
positioning a control line within a wellbore located in a subterranean formation (line 610 may be run from the surface and down the exterior of the base pipe 135, pages 5-6 par. 0053), the control line including:
a control line tubular (145, fig. 16, par. 0049), the control line tubular having a length (Lt), a width (Wt) and wall thickness (Tt) (Annotated Fig. 16 Version 1), ), wherein the length (Lt) is a greatest linear dimension of the control line tubular (Annotated Fig. 16 Version 1), wherein the control line tubular is a solid wall conduit configured to transport control line fluid along the length (Lt) (fig. 16, par. 0031, wherein 145 is solid and there is fluid transported within it in 135); and
a sleeve of expandable metal (140) positioned within the control line tubular (140 is within 145, fig. 16), the sleeve of expandable metal (140) comprising a metal configured to expand in response to hydrolysis (the swellable metals swell, page 4 par. 0041); and
subjecting an exposed region of the sleeve of expandable metal to a reactive fluid to form an expanded metal seal in the control line tubular (par. 0053, wherein when 140 swells it would effectively seal 145).
Regarding claim 15, Fripp further discloses wherein subjecting the exposed region (porous layer 145 can be any material or structure which allows gas and liquid passage, page 3 par. 0003) of the sleeve of expandable metal (140) to the reactive fluid (specific swell-inducing fluids, page 1 par. 0002) includes intentionally subjecting the exposed region of the sleeve of expandable metal to the reactive fluid (the swellable metal sealing element 140 is exposed to the downhole fluid via the porous layer 145. That is, the downhole fluids flow through the voids 180 of the frame 175 to contact the swellable metal sealing element 140, page 3 par. 0039; in some embodiments, the porous layer 145 that is selected has a permeability that is based on a type of downhole fluid expected to contact the porous layer 145, page 3 par. 0036).
Regarding claim 16, Fripp further discloses wherein subjecting the exposed region (porous layer 145 can be any material or structure which allows gas and liquid passage, page 3 par. 0003) of the sleeve of expandable metal (140) to the reactive fluid (specific swell-inducing fluids, page 1 par. 0002) includes unexpectedly subjecting the exposed region of the sleeve of expandable metal to the reactive fluid (the swellable metal sealing element 140 is exposed to the downhole fluid via the porous layer 145. That is, the downhole fluids flow through the voids 180 of the frame 175 to contact the swellable metal sealing element 140, page 3 par. 0039).
Regarding claim 17, Fripp discloses a well system, comprising:
a wellbore (75 as seen in fig. 1) located within a subterranean formation (20 as seen in fig. 1); and a control line located in the wellbore (610 is located inside the swell packer 600 as seen in fig. 16; the generic swell packer 110 is in the wellbore, page 2 par. 0027), the control line including: a control line tubular (145, fig. 16, par. 0049), the control line tubular having a length (Lt), a width (Wt) and wall thickness (Tt) (Annotated Fig. 16 Version 1), ), wherein the length (Lt) is a greatest linear dimension of the control line tubular (Annotated Fig. 16 Version 1), wherein the control line tubular is a solid wall conduit configured to transport control line fluid along the length (Lt) (fig. 16, par. 0031, wherein 145 is solid and there is fluid transported within it in 135); and
a sleeve of expandable metal (140) positioned within the control line tubular (140 is within 145, fig. 16), the sleeve of expandable metal (140) comprising a metal configured to expand in response to hydrolysis (par. 0053) to seal the control line tubular when contacting a reactive fluid (par. 0053, wherein when 140 swells it would effectively seal 145).
Regarding claim 18, Fripp further teaches further including a wellbore tubular located in the wellbore, the control line (610) located in an annulus between the wellbore tubular and the wellbore (see Annotated Fig. 2 and Annotated Fig. 16 Version 3).
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Regarding claim 19, Fripp further discloses further including an electric communication line or optical fiber communication line (lines 610 may be … a conveyance line that may convey power, data, instructions, pressure, fluids, etc., page 6 par. 0053) placed within the control line tubular (610 is within 145, fig. 16) and the sleeve of expandable metal (610 being inside 605, page 5 par. 0053; and 605 disposed between 140, page 5 par. 0053).
Regarding claim 27, Fripp further discloses wherein the control line tubular (145, fig. 16, par. 0049) forms at least a portion of a control line splice (par. 0057) configured to couple two separate control lines together (par. 0058).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 2, 4-5, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Fripp et al. (US 2020/0370391 A1), hereinafter Fripp.
Regarding claim 2, Fripp teaches a control line tubular (145) and the sleeve of expandable metal (140) in embodiment shown in fig. 16.
However, embodiment shown in fig. 16 does not include a barrier layer positioned between the control line tubular and the sleeve of expandable metal.
The embodiment of Fripp shown in fig. 15 shows wherein there includes a barrier layer (reinforcement layer 505 may provide extrusion resistance to 140, page 5 par. 0052) positioned between the control line tubular and the sleeve of expandable metal (140 and 145, fig. 15).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to place the barrier layer 505 between the control line tubular 145 and the sleeve of expandable metal 140 because it may provide for extrusion resistance, strength to the structure, and increase the pressure holding capabilities of the structure (page 5 par. 0052). Furthermore, Fripp teaches that the various embodiments may be combined (page 8 par. 0093).
Regarding claim 4, Fripp further teaches a control line tubular (145) and the sleeve of expandable metal (140) in embodiment shown in fig. 16.
However, embodiment shown in fig. 16 does not include a sleeve of filler material placed within the control line tubular and the sleeve of expandable metal.
The embodiment of Fripp shown in fig. 15 shows wherein there includes a sleeve of filler material (505, fig. 15, par. 0052) placed within the control line tubular and the sleeve of expandable metal (140 and 145, fig. 15).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to place the sleeve of filler material 505 between the control line tubular 145 and the sleeve of expandable metal 140 because it may provide for extrusion resistance, strength to the structure, and increase the pressure holding capabilities of the structure (page 5 par. 0052). Furthermore, Fripp teaches that the various embodiments may be combined (page 8 par. 0093).
Regarding claim 5, Fripp of embodiment shown in fig. 16 as currently modified by embodiment shown in fig. 15 further teaches wherein the sleeve of filler material (505, par. 0052) is positioned between the sleeve of expandable metal (140, fig. 15-16) and the electric communication line or optical fiber communication line (610, fig. 16).
Regarding claim 20, Fripp further teaches a control line tubular (145) and the sleeve of expandable metal (140) in embodiment shown in fig. 16.
However, embodiment shown in fig. 16 does not include a sleeve of filler material placed within the control line tubular and the sleeve of expandable metal.
The embodiment of Fripp shown in fig. 15 shows wherein there includes a sleeve of filler material (505, fig. 15, par. 0052) placed within the control line tubular and the sleeve of expandable metal (140 and 145, fig. 15).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to place the sleeve of filler material 505 between the control line tubular 145 and the sleeve of expandable metal 140 because it may provide for extrusion resistance, strength to the structure, and increase the pressure holding capabilities of the structure (page 5 par. 0052). Furthermore, Fripp teaches that the various embodiments may be combined (page 8 par. 0093).
Regarding claim 21, Fripp of embodiment shown in fig. 16 as currently modified by embodiment shown in fig. 15 further teaches wherein the sleeve of filler material (505, par. 0052) is positioned between the sleeve of expandable metal (140, fig. 15-16) and the electric communication line or optical fiber communication line (610, fig. 16).
Claims 6-10 and 22-26 are rejected under 35 U.S.C. 103 as being unpatentable over Fripp et al. (US 2020/0370391 A1), hereinafter Fripp in view of Webre et al. (US 20070158079 A1), hereinafter Webre.
Regarding claim 6, Fripp teaches the control line tubular (145) having a length (Lt), a width (Wt), and a wall thickness (Tt) of the control line tubular (Annotated Fig. 16 version 1).
Fripp does not explicitly teach the size of these dimensions.
Webre teaches a similar device in the same field of control lines wherein the length (Lt) of the control line tubular is at least 4 cm (par. 0009, wherein the length can be along the length of the pipe string), the width (Wt) of the control line tubular is no greater than 50 mm (diameter of whole is between 5mm – 60 mm, par. 0009), and the wall thickness (Tt) of the control line tubular is no greater than 6 mm (diameter of whole is between 5mm – 60 mm, par. 0009, therefore the wall thickness would have to fit within).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Fripp to have the dimensions wherein the length (Lt) of the control line tubular is at least 4 cm, the width (Wt) of the control line tubular is no greater than 50 mm, and the wall thickness (Tt) of the control line tubular is no greater than 6 mm, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984).
Regarding claim 7, Fripp as currently modified by Webre teaches the length (Lt) of the control line tubular is at least 4 cm (par. 0009, wherein the length can be along the length of the pipe string), the width (Wt) of the control line tubular is no greater than 50 mm (diameter of whole is between 5mm – 60 mm, par. 0009), and the wall thickness (Tt) of the control line tubular is no greater than 6 mm (diameter of whole is between 5mm – 60 mm, par. 0009, therefore the wall thickness would have to fit within).
However, Fripp as currently modified by Webre fails to explicitly teach wherein the sleeve of expandable metal has a length (Ls) and wall thickness (Ts), and further wherein the length (Ls) is at least 3 cm, and the wall thickness (Ts) is no greater than 10 mm.
Fripp does teach that the swell packer 110 may be used to form seals between various objects which have various thicknesses and lengths (pages 6-7 par. 0058) and that numerical parameters of the device may vary depending on the desired properties needed (page 7 par. 0063).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Fripp to have the dimensions the sleeve of expandable metal has a length (LS) and wall thickness (TS), and further wherein the length (LS) is at least 3 cm, and the wall thickness (Ts) is no greater than 10 mm since this would have been routine optimization within the already given range of Webre (par. 0009 of Webre, see also MPEP 2144.05).
Regarding claim 8, Fripp as currently modified by Webre further teaches wherein the length (LS) is at least 75% of the length (Lt) (Annotated Fig. 16 Version 2 shows the length of the sleeve 140 to be approximately the length of the tubular 145 therefore it is at least 75% the length).
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Regarding claim 9, Fripp as currently modified by Webre further teaches wherein the length (LS) is at least 90% of the length (Lt) (Annotated Fig. 16 Version 2 shows the length of the sleeve 140 to be approximately the length of the tubular 145 therefore it is at least 90% the length).
Regarding claim 10, Fripp as currently modified by Webre further teaches the wall thickness (Tt) of the control line tubular is no greater than 6 mm (diameter of whole is between 5mm – 60 mm, par. 0009, therefore the wall thickness would have to fit within).
However, Fripp as currently modified by Webre fails to explicitly teach wherein the wall thickness (Ts) of the sleeve of expandable metal is no greater than 3 mm.
Fripp does teach that the swell packer 110 may be used to form seals between various objects which have various thicknesses and lengths (pages 6-7 par. 0058) and that numerical parameters of the device may vary depending on the desired properties needed (page 7 par. 0063).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Fripp to have the wall thickness (Ts) of the sleeve of expandable metal is no greater than 3 mmsince this would have been routine optimization within the already given range of Webre in order for the wall thickness to fit inside of the overall diameter (par. 0009 of Webre, see also MPEP 2144.05).
Regarding claim 22, Fripp teaches the control line tubular (145) having a length (Lt), a width (Wt), and a wall thickness (Tt) of the control line tubular (Annotated Fig. 16 version 1).
Fripp does not explicitly teach the size of these dimensions.
Webre teaches a similar device in the same field of control lines wherein the length (Lt) of the control line tubular is at least 4 cm (par. 0009, wherein the length can be along the length of the pipe string), the width (Wt) of the control line tubular is no greater than 50 mm (diameter of whole is between 5mm – 60 mm, par. 0009), and the wall thickness (Tt) of the control line tubular is no greater than 6 mm (diameter of whole is between 5mm – 60 mm, par. 0009, therefore the wall thickness would have to fit within).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Fripp to have the dimensions wherein the length (Lt) of the control line tubular is at least 4 cm, the width (Wt) of the control line tubular is no greater than 50 mm, and the wall thickness (Tt) of the control line tubular is no greater than 6 mm, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984).
Regarding claim 23, Fripp as currently modified by Webre teaches the length (Lt) of the control line tubular is at least 4 cm (par. 0009, wherein the length can be along the length of the pipe string), the width (Wt) of the control line tubular is no greater than 50 mm (diameter of whole is between 5mm – 60 mm, par. 0009), and the wall thickness (Tt) of the control line tubular is no greater than 6 mm (diameter of whole is between 5mm – 60 mm, par. 0009, therefore the wall thickness would have to fit within).
However, Fripp as currently modified by Webre fails to explicitly teach wherein the sleeve of expandable metal has a length (Ls) and wall thickness (Ts), and further wherein the length (Ls) is at least 3 cm, and the wall thickness (Ts) is no greater than 10 mm.
Fripp does teach that the swell packer 110 may be used to form seals between various objects which have various thicknesses and lengths (pages 6-7 par. 0058) and that numerical parameters of the device may vary depending on the desired properties needed (page 7 par. 0063).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Fripp to have the dimensions the sleeve of expandable metal has a length (LS) and wall thickness (TS), and further wherein the length (LS) is at least 3 cm, and the wall thickness (Ts) is no greater than 10 mm since this would have been routine optimization within the already given range of Webre (par. 0009 of Webre, see also MPEP 2144.05).
Regarding claim 24, Fripp as currently modified by Webre further teaches wherein the length (LS) is at least 75% of the length (Lt) (Annotated Fig. 16 Version 2 shows the length of the sleeve 140 to be approximately the length of the tubular 145 therefore it is at least 75% the length).
Regarding claim 25, Fripp as currently modified by Webre further teaches wherein the length (LS) is at least 90% of the length (Lt) (Annotated Fig. 16 Version 2 shows the length of the sleeve 140 to be approximately the length of the tubular 145 therefore it is at least 90% the length).
Regarding claim 26, Fripp as currently modified by Webre further teaches the wall thickness (Tt) of the control line tubular is no greater than 6 mm (diameter of whole is between 5mm – 60 mm, par. 0009, therefore the wall thickness would have to fit within).
However, Fripp as currently modified by Webre fails to explicitly teach wherein the wall thickness (Ts) of the sleeve of expandable metal is no greater than 3 mm.
Fripp does teach that the swell packer 110 may be used to form seals between various objects which have various thicknesses and lengths (pages 6-7 par. 0058) and that numerical parameters of the device may vary depending on the desired properties needed (page 7 par. 0063).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Fripp to have the wall thickness (Ts) of the sleeve of expandable metal is no greater than 3 mmsince this would have been routine optimization within the already given range of Webre in order for the wall thickness to fit inside of the overall diameter (par. 0009 of Webre, see also MPEP 2144.05).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Fripp et al. (US 2020/0370391 A1), hereinafter Fripp, in view of Connell et al. (US 8,955,597 B2), hereinafter Connell.
Regarding claim 13, Fripp discloses further including a wellbore tubular located within the wellbore (145 is located inside the swell packer 600 as seen in fig. 16; the generic swell packer 110 is in the wellbore, page 2 par. 0027), the control line positioned in an annulus between the wellbore tubular and the wellbore (see Annotated Fig. 2 and Annotated Fig. 16 Version 3), and further wherein the expanded metal seal (140) seals the control line tubular (par. 0053, wherein when 140 swells it would effectively seal 145).
However, Fripp fails to disclose severing a wellbore tubular during a plug and abandonment.
Connell teaches a similar device in the same field of endeavor wherein further including severing the wellbore tubular and the control line tubular (cutting tubulars lining the borehole, col. 2 lines 36-41) during a plug and abandonment application (able to plug and abandon the borehole, col. 2 lines 9-10), the severing creating the exposed region (in order to assure no leakage occurs … to ream or open the borehole in the cut portion to assure that cement interfaces directly with the formation, background lines 10-14 of Connell).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the swellable metal seal of Fripp to incorporate the severing of a wellbore tubular during a plug and abandonment of Connell because it would ensure no leakages occur between the wellbore and the formation (background lines 10-14 of Connell).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Fripp et al. (US 2020/0370391 A1), hereinafter Fripp, in view of Lee (US 2019/0383115 A1), hereinafter Lee.
Regarding claim 14, Fripp discloses the method as recited in Claim 12.
However, Fripp fails to explicitly disclose wherein a crack in the control line forms the exposed region the expanded metal seal sealing the crack in the control line.
Lees teaches a similar device in the same field of endeavor wherein a crack in the control line forms the exposed region (a potential leak path at or along the control line, page 5 par. 0041), the expanded metal seal sealing the crack in the control line (using the swellable to seal … a potential leak path at or along the control line, page 5 par. 0041).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the swellable metal seal of Fripp to incorporate the sealed crack in a control line of Lees because it provides a seal for the control line that can allow cheaper abandonment (page 5 par. 0041 of Lees).
Allowable Subject Matter
Claim 28 would be allowable if rewritten or amended 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.
Claims 11 and 27 are 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.
The following is a statement of reasons for the indication of allowable subject matter: it would not be obvious to modify Fripp-527 to have “a control line splice configured to couple two separate control lines together” because the control line of Fripp-527 is arranged as a ring, as opposed to a tube as in like Fripp-391 (par. 00056-0058). Fripp-527 ring arrangement does not allow enough room for a splice to be placed.
Conclusion
Applicant's 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 Jennifer A Railey whose telephone number is (571)270-7353. The examiner can normally be reached M-F (8-4).
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/JENNIFER A RAILEY/Examiner, Art Unit 3676
/Nicole Coy/Supervisory Patent Examiner, Art Unit 3672
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