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
Applicant’s filing dated 10/30/25 has been entered. The amendments have resolved the previously presented 112(b) rejections and claim objections from the Office Action of 8/6/25.
Applicant's arguments filed 10/30/25 have been fully considered but they are not persuasive.
Concerning the determination that claim 5 (and consequently new dependent claim 30) are directed to an unelected species, applicant’s arguments are unpersuasive. The examiner maintains that claim 5 is directed to an unelected species and thus should be withdrawn. Please note that this determination is made after consultation with the examiner’s supervisor.
As previously discussed, when the amended claim was first presented, applicant expressly indicated that the claim language was supported by an unelected embodiment. See, Applicant’s remarks dated 6/2/25, on page 6, "Plugged lateral well" is added to claim 5, per FIG. 5 and [0083] ("lateral well 503 having plug 505."). There was no indication in applicant’s initial response that the claim was directed to the elected embodiment of Fig 4. Applicant’s assertion regarding support for the amended claim was only newly found, and is improper.
As previously stated, the lateral element does not necessarily depict a plugged lateral well. A generically depicted lateral element does not provide support for a more specifically claimed lateral well. As indicated in MPEP 2163, citing In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972), “a genus may not support claims to a subgenus or species within the genus”. This lateral element is not necessarily a well. Not all bores are “wells”, for example, it may be a perforation, etc.
Moreover, it is noted, that not only does the claim recite merely the presence of any well, but, would require a “plugged lateral well”. Applicant’s response dated 7/16/25, on page 4, citing Law Insider states that a “plugged well” according to its ordinary meaning is, “a well that has been filled or partially filled with cement or other material to prevent migration of fluid within the well”. The lateral element of the elected embodiment of Figure 4 is not “filled or partially filled”. The bore of the lateral element is completely open and unobstructed and would not “prevent migration of fluid within the well” (as stated by applicant, it is “uncased” and therefore fluid would be free to flow within the bore).
Applicant’s additional citation of the definition of a temporarily plugged well, in footnote 6, is noted (as claim 5 is directed to a “method of temporarily plugging a lateral well”). Applicant’s definition states that is a well “where primary and secondary well barriers have been installed to isolate all potential flow zones by the well and where a wellhead is still installed access to the well is still provided for”. This is, certainly, not the case. The well is completely exposed to “all potential flow zones”. No access to the lateral is provided for, by virtue of plug 402.
Moreover, the examiner notes, that to the extent that applicant attempts to find support solely from the depict of Figure 4. Figure 4 does not reasonably convey a “plugged lateral well” as would be recognizable by to person of ordinary skill. See for example, Figures 4-5, Para 0014-15 of Johnson (US 20090020286 A1), Figure 5, Para 0020 of Al-Khamis (US 20100226206 A1), or Figure 5, and Para 0080 of the instant application. Each of these depicts a plugged lateral well as would be recognized by a person of ordinary skill in the art. Those characteristics (such as a plug within the bore of a lateral well) are not present in Figure 4.
Concerning the restriction of claim 17 and its withdrawal, applicant untimely suggests that the “requirement was never clear to Applicant”. However, to the extent that applicant is attempting to traverse this requirement, it is unclear and untimely. If applicant desires, the examiner would be willing to reconsider the restriction of claim 17 if applicant indicates on the record that it is an obvious variant of the elected embodiment.
Concerning applicant’s arguments regarding Thomeer regarding claim 1, applicant argues, “There is no well behind closure 110, thus there can be no section of plugged well”. It is noted that the features upon which applicant relies (i.e., a well behind the closure 110) 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). Applicant has broadly recited the limitation as a “section of plugged well”. This is taught by Thomeer as discussed below.
Concerning applicant’s arguments regarding the modification with Gill, as applied to claim 2, the examiner respectfully disagrees. As previously stated, and repeated again here, applicant argues that “the numbers quotes by the Examiner […] are static pressure test standards, not performance results”. Applicant notes that the present claims requires “erosive degradation”. However in so doing, applicant argues Gill individually. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The examiner additionally notes that the arguments do not address the specific manner in which the examiner has cited Gill. Nor do the arguments address the specific manner in which Gill has been cited and been used as a modification to Thomeer. The examiner additionally notes that the claim has recited to merely require that the plug be “degradable” i.e. it has been recited functionally and not a specific method step.
With respect to applicant’s citation to paragraph 0077, the examiner notes that this portion of Gill is not cited to in the rejection. And indeed, it appears that applicant’s citation to Para 0077 is merely a discussion within Gill of prior art materials as opposed to the materials and combinations of materials which Gill’s invention is directed to.
Concerning applicant’s arguments regarding the overlapping rejection citing a second interpretation of Thomeer and its modification with Gill, the examiner respectfully disagrees. As previously stated, and repeated again here, applicant argues that “there is no lateral well to plug”. However, the claim in question does not require a lateral well to plug. Applicant’s additional arguments concerning the wiper plugs is noted. However, the examiner notes Gill’s own description of his well system as being directed to “temporarily plugged wells” (Para 0057). While applicant may have a different conception of what is required by applicant’s “plugged well”, those particulars are neither recited nor seemingly described in the specification. The modification as articulated proposes the use of Thomeer’s invention “within the system” of Gill, which Gill describes relating to “systems of temporarily plugged wells”.
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Lastly applicant argues the teaching of Hice. Applicant appears to be relying on the incorrect Figure and descriptions within Hice. As previously indicated, Figure 4 and the accompanying description in Para 0052 may be helpful for applicant. Para 0052, “pulsed jetting nozzles 23 directed generally laterally and perpendicular to the longitudinal axis”. The sentence in Para 0031 discusses this “laterally pulsed jetting nozzles”, and indicates, “angled generally laterally to project a horizontal pulsed jet stream to one angled slightly (e.g. 10 degrees)”. Figure 4, reproduced, shows this exit nozzle which may be “angled slightly (e.g. 10 degrees)” and thus teaches the limitation argued by applicant. Note the claim requires a 10-20 degrees relative to “a jet nozzle exit”, which is seen as 23, and not relative to a vertical axis (which applicant appears to argue would result in a 100 degree inclination).
Claim Objections
Claims 5 and 30 are objected to because of the following informalities:
Claims 5 and 30 lack the appropriate claim status indicator of being withdrawn, see also discussion in the Response to Arguments above.
Appropriate correction is required.
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, 3, 8-9, 11-16, and 27-29 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 recites “installing one or more degradable plug(s) in said tubing in said well, thus providing a section of temporarily plugged well […] performing a downhole activity in said section of plugged well”. It is unclear, when considered in light of applicant’s arguments on the record and the specification, what is to be regarded as the recited “section of temporarily plugged well”. It is unclear whether applicant regards the unlabeled and undescribed lateral feature in Figs 4A-4C as being a “section of temporarily plugged well” or whether the “section of temporarily plugged well” is well 401’s section containing plug 402.
If applicant regards the lateral features of Fig 4A-4C as being the “section of temporarily plugged well” (as appears to be the case, based on applicant’s arguments on page 11, “there is no lateral well to plug”), it is unclear how the subsequent limitation requiring “performing a downhole activity in said section of plugged well”. The access to that purported section of plugged well is inaccessible (it is not conceded that that lateral element would reasonably be regarded as a plugged lateral well, for the reasons discussed in the response to arguments).
It is additionally noted that the installation of the one or more degradable plug(s) in said tubing in said well is recited as “providing” a temporarily plugged section of well. “Provide” is defined as “to supply or make available” (see e.g., https://www.merriam-webster.com/dictionary/provide). It is unclear how installation of the one or more degradable plug(s) “supplies or makes available” a section of temporarily plugged well. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).
For the purposes of examination, the examiner understanding the limitation to met by virtue of the installing one or more degradable plug(s) in said tubing in said well in any manner, including within a sidewall of said tubing.
Dependent claim 3, 8-9, 11-16, and 27-28 are rejected for depending from an indefinite claim.
Claims 29 recites “installing one or more degradable plug(s) in said tubing in said well, thus providing a section of temporarily plugged well […] performing a downhole activity in said well”. It is unclear, when considered in light of applicant’s arguments on the record and the specification, what is to be regarded as the recited “section of temporarily plugged well”. It is unclear whether applicant regards the unlabeled and undescribed lateral feature in Figs 4A-4C as being a “section of temporarily plugged well” or whether the “section of temporarily plugged well” is well 401’s section containing plug 402 (as appears to be the case, based on applicant’s arguments on page 11, “there is no lateral well to plug”).
It is additionally noted that the installation of the one or more degradable plug(s) in said tubing in said well is recited as “providing” a temporarily plugged section of well. “Provide” is defined as “to supply or make available” (see e.g., https://www.merriam-webster.com/dictionary/provide). It is unclear how installation of the one or more degradable plug(s) “supplies or makes available” a section of temporarily plugged well. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).
For the purposes of examination, the examiner understanding the limitation to met by virtue of the installing one or more degradable plug(s) in said tubing in said well in any manner, including within a sidewall of said tubing.
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, 8, 11-12 and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thomeer (US 6439313 B1) under a first interpretation, in view of Gill (US 20200095840 A1).
Regarding claim 1, Thomeer teaches a method of temporarily plugging a well, comprising:
a. providing a section of tubing in a well (Fig 3A-3B, tubular 100; Column 8, lines 1-4, tubular is downhole),
b. installing one or more degradable plug(s) in said tubing in said well, (Fig 3A-3B, closure 110 is installed in tubing, tubing is within the well when with closure present), thus providing a section of temporarily plugged well (Fig 3A-3B, tubular section with closure 110, the closure 110 is later removed; see the response to arguments and 112(b) rejection for additional discussion which is not repeated again here);
c. performing a downhole activity in said section of plugged well for a period of time (Fig 3A-3B, maintaining hydraulic isolation between the inner bore and zones behind closure 110 i.e. downhole activity for all the time until the closures are removed); and
d. providing one or more degrading fluid(s) downhole to degrade said degradable plug, leaving no solid plug material behind and thereby opening said section of plugged well, wherein said one or more degrading fluid(s) are deployed by jet at a high pressure of 1000-5000 psi onto said degradable plug so as to provide an erosive force to completely remove said degradable plug (Column 8, lines 5-11, “Fluid (such as water, concentrated acids such as HCI, xylene mixtures, or fluid slurries containing abrasive particles such as sand) is then sprayed out through the nozzle at high pressure (e.g., at least about 1,500 psi), such that the second material that forms the closure member 110 is machined away, thus opening a fluid flow path.”).
Thomeer is not explicit on wherein said degradable plug is degradable with said high pressure in less than 48 hours.
Gill teaches wherein said degradable plug is degradable with said high pressure in less than 48 hours (Para 0073, “5 ksi test hold for 30 min”; Para 0024, “degrade the degradable plug and the degradable tape in 48 hours or less, preferably in 24 hours or less or overnight.” Please see additional discussion in the response to arguments which is not repeated again here).
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 Thomeer by having said degradable plug be degradable with said high pressure in less than 48 hours as disclosed by Gill because it is a timeframe which a plug is required to hold pressure and then degradable open which is known to be desired in the wellbore development field, as evidenced by Gill.
Regarding claim 3, Thomeer is not explicit on said degradable plug is degradable with said high pressure in less than 24 hours.
Gill teaches wherein said degradable plug is degradable with said high pressure in less than 24 hours (Para 0073, “5 ksi test hold for 30 min”; Para 0024, “degrade the degradable plug and the degradable tape in 48 hours or less, preferably in 24 hours or less or overnight.”).
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 Thomeer by having said degradable plug be degradable with said high pressure in less than 24 hours as disclosed by Gill because it is a timeframe which a plug is required to hold pressure and then degradable open which is known to be desired in the wellbore development field, as evidenced by Gill.
Regarding claim 8, Thomeer teaches wherein said high pressure is at least about 1500 psi (Column 8, lines 5-11, “Fluid […] is then sprayed out through the nozzle at high pressure (e.g., at least about 1,500 psi).”).
Regarding claim 11, Thomeer teaches wherein said one or more degradation fluid(s) are selected from an aqueous acid, an aqueous caustic, an aqueous brine, xylene, toluene, chloroform (CHCl3}, aromatic solvent, dimethylformamide (DMF), dimethylacetamide (DMA), dichloromethane (DCM), CH2C12, tetrahydrofuran (THF), acetone, hexafluoroisopropanol, or combinations thereof (Column 8, lines 5-11, “Fluid (such as water, concentrated acids such as HCI, xylene mixtures, or fluid slurries containing abrasive particles such as sand) is then sprayed out through the nozzle at high pressure”).
Regarding claim 12, Thomeer teaches wherein said one or more degradation fluid(s) are combined with an abrasive agent (Column 8, lines 5-11, “Fluid (such as water, concentrated acids such as HCI, xylene mixtures, or fluid slurries containing abrasive particles such as sand) is then sprayed out through the nozzle at high pressure”).
Regarding claim 14, Thomeer is silent on said degradable plug is a threaded plug and wherein said threads are wrapped with a degradable thread tape.
Gill teaches wherein said degradable plug is a threaded plug and wherein said threads are wrapped with a degradable thread tape (Para 0002, “degradable thread tape and plugs”, see also Fig 5).
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 Thomeer by having the degradable plug and its particulars as disclosed by Gill because Thomeer teaches only a generic degradable plug and Gill teaches particular details which would be required to implement the invention of Graham which would be known to yield predictable results in a downhole environment (selective degradation downhole to open an orifice).
Regarding claim 15, Thomeer as modified by Gill teaches wherein a first degrading fluid of said one or more degrading fluid(s) degrades said degradable thread tape and a second degrading fluid of said one or more degrading fluid(s) degrades said degradable plug (Claim 10, “wherein a first degrading fluid degrades said degradable thread tape and a second degrading fluid degrades said degradable plug”). .
Regarding claim 16, Thomeer as modified by Gill teaches wherein a first degrading fluid degrades both said degradable thread tape and said degradable plug (Claim 2, “said degradable plug and said degradable tape are degradable in aqueous solution” i.e. both are degradable in an first fluid/aqueous solution).
Claim(s) 9 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thomeer (US 6439313 B1) under a first interpretation.
Regarding claim 9, while Thomeer teaches said high pressure is at least about 1500 psi (Column 8, lines 5-11, “Fluid […] is then sprayed out through the nozzle at high pressure (e.g., at least about 1,500 psi).”), Thomeer is not explicit on wherein said high pressure is at least about 2000 psi.
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 Thomeer by having said high pressure is at least about 2000 psi since "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003), see MPEP 2144.05. As discussed, Thomeer teaches a range of 1500 psi and above.
Regarding claim 13, Thomeer teaches in the description relied upon the parent claim (see above parent claim), Thomeer is not explicit on using the degradation fluid in combination with an abrasive agent.
Thomeer does teach Fluid (such as water, concentrated acids such as HCI, xylene mixtures, or fluid slurries containing abrasive particles such as sand) is then sprayed out through the nozzle at high pressure (Column 8, lines 5-11).
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 Thomeer by having the degradation fluid used in combination with an abrasive agent as Thomeer discloses the use of an abrasive agent in a fluid in an alternative description because it would allow for additional erosive force to be applied against the closure by mechanical abrasion.
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thomeer (US 6439313 B1) under a first interpretation, in view of Dickinson (US 4790394 A).
Regarding claim 27, while Thomeer teaches the use of fluid containing an abrasive (Column 8, lines 5-11), Thomeer is silent on wherein said degrading fluid(s) comprises silica flour.
Dickinson teaches wherein said degrading fluid(s) comprises silica flour (Column 8, lines 4-7, “abrasive material such as sand, silica flour or particles or dirt into the cutting fluid”).
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 Thomeer by having the silica flour as the abrasive material as disclosed by Dickinson because Dickinson teaches the use of silica flour as an abrasive used in a downhole fluid-based cutting system and Thomeer only teaches a generic abrasive, one would look to Dickinson as teaching the specific abrasive.
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thomeer (US 6439313 B1) under a first interpretation, in view of Hice (US 20160084083 A1).
Regarding claim 28 Thomeer is silent on wherein said jet has a nozzle exit angle at 10-20°.
Hice teaches wherein said jet has a nozzle exit angle at 10-20° (Para 0031, “laterally pulsed jetting nozzles with guide vanes can be most effectively manufactured using 3-D printing and angled generally laterally to project a horizontal pulsed jet stream to one angled slightly (e.g. 10 degrees)”).
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 Thomeer by having the jet nozzle as disclosed by Hice because Thomeer teaches only the use of a generic nozzle, one would look to the nozzle of Hice because it is a known orientation for a nozzle which still permits effective cutting in a substantially lateral direction with predictable results such as that taught by Thomeer.
Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thomeer (US 6439313 B1) under a first interpretation, in view of Dickinson (US 4790394 A), in view of Hice (US 20160084083 A1).
Regarding claim 29, Thomeer teaches a method of temporarily plugging a well, comprising:
a. providing a section of tubing in a well (Fig 3A-3B, tubular 100; Column 8, lines 1-4, tubular is downhole);
b. installing one or more degradable plug(s) in said tubing in said well (Fig 3A-3B, closure 110 is installed in tubing, tubing is within the well when with closure present), thus providing a section of temporarily plugged well (Fig 3A-3B, tubular section with closure 110, the closure 110 is later removed; see the response to arguments and 112(b) rejection for additional discussion which is not repeated again here);
c. performing a downhole activity in said well for a period of time (Fig 3A-3B, maintaining hydraulic isolation between the inner bore and zones behind closure 110 i.e. downhole activity for all the time until the closures are removed); and
d. providing one or more degrading fluid(s) downhole to degrade said degradable plug, leaving no solid plug material behind and thereby opening said section of plugged well, wherein said one or more degrading fluid(s) are deployed by a jet nozzle at a high pressure of 1000-5000 psi onto said degradable plug so as to provide an erosive force to completely remove said degradable plug (Column 8, lines 5-11, “Fluid (such as water, concentrated acids such as HCI, xylene mixtures, or fluid slurries containing abrasive particles such as sand) is then sprayed out through the nozzle at high pressure (e.g., at least about 1,500 psi), such that the second material that forms the closure member 110 is machined away, thus opening a fluid flow path.”).
Thomeer is silent on the degrading fluid(s) comprising silica flour.
Dickinson teaches wherein said degrading fluid(s) comprises silica flour (Column 8, lines 4-7, “abrasive material such as sand, silica flour or particles or dirt into the cutting fluid”).
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 Thomeer by having the silica flour as the abrasive material as disclosed by Dickinson because Dickinson teaches the use of silica flour as an abrasive used in a downhole fluid-based cutting system and Thomeer only teaches a generic abrasive, one would look to Dickinson as teaching the specific abrasive.
Thomeer as modified is silent on the jet nozzle exit angle at 10-20°.
Hice teaches wherein said jet has a nozzle exit angle at 10-20° (Para 0031, “laterally pulsed jetting nozzles with guide vanes can be most effectively manufactured using 3-D printing and angled generally laterally to project a horizontal pulsed jet stream to one angled slightly (e.g. 10 degrees)”).
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 Thomeer by having the jet nozzle as disclosed by Hice because Thomeer teaches only the use of a generic nozzle, one would look to the nozzle of Hice because it is a known orientation for a nozzle which still permits effective cutting in a substantially lateral direction with predictable results such as that taught by Thomeer.
Thomeer as modified teaches wherein a time needed to remove said degradable plug is reduced by at least half what it would be with soaking in said degrading fluid and without said jet and said high pressure (Column 8, lines 5-11 of Thomeer, Column 6, lines 40-45, Column 8, lines 4-7 of Dickinson because the prior art as modified has the same jetting and high pressure characteristic recited, it stands to reason that it would perform in the manner recited).
Claim(s) 1, 3, 8-9, and 11-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thomeer (US 6439313 B1) under a second interpretation, in view of Gill (US 20200095840 A1).
Regarding claim 1, Thomeer teaches a method of temporarily plugging a well, comprising:
a. providing a section of tubing in a well (Fig 3A-3B, tubular 100; Column 8, lines 1-4, tubular is downhole),
b. installing one or more degradable plug(s) in said tubing in said well, (Fig 3A-3B, closure 110 is installed in tubing, tubing is within the well when with closure present).
Although as discussed in the rejection under the first interpretation the claim limitation is taught by Thomeer; however, if construed under a second narrower interpretation, Thomeer is silent on thus providing a section of temporarily plugged well.
Gill teaches thus providing a section of temporarily plugged well (Fig 2, tubular section 205 with opens 207 closures/plugs which prevent radial flow. The present of flow obstructions in the system are noted and would prevent flow through the central bore. Additionally, the system of Gill is a ‘temporarily plugged well’ or well portion, see e.g. Para 0036, 0057, etc.).
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 Thomeer by using the tubular section 100 with closures 110 within the system, and more specifically as the plugged tubular section 205 in the system of Fig 2 as disclosed by Gill because Thomeer is otherwise silent as to the system in which it is used. Gill teaches a system which provides the additional structural detail which would be required to implement the invention of Thomeer and would be a combination of prior art elements to yield the predictable results of selectively plugging, then permitting production from an intended zone in a wellbore.
Thomeer as modified teaches c. performing a downhole activity in said section of plugged well for a period of time (Fig 3A-3B, maintaining hydraulic isolation between the inner bore and zones behind closure 110 i.e. downhole activity for all the time until the closures are removed); and
d. providing one or more degrading fluid(s) downhole to degrade said degradable plug, leaving no solid plug material behind and thereby opening said plugged well, wherein said one or more degrading fluid(s) are deployed by jet at a high pressure of 1000-5000 psi onto said degradable plug so as to provide an erosive force to completely remove said degradable plug (Column 8, lines 5-11, “Fluid (such as water, concentrated acids such as HCI, xylene mixtures, or fluid slurries containing abrasive particles such as sand) is then sprayed out through the nozzle at high pressure (e.g., at least about 1,500 psi), such that the second material that forms the closure member 110 is machined away, thus opening a fluid flow path.”).
Thomeer is not explicit on wherein said degradable plug is degradable with said high pressure in less than 48 hours.
Gill teaches wherein said degradable plug is degradable with said high pressure in less than 48 hours (Para 0073, “5 ksi test hold for 30 min”; Para 0024, “degrade the degradable plug and the degradable tape in 48 hours or less, preferably in 24 hours or less or overnight.” Please see additional discussion in the response to arguments which is not repeated again here).
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 Thomeer by having said degradable plug be degradable with said high pressure in less than 48 hours as disclosed by Gill because it is a timeframe which a plug is required to hold pressure and then degradable open which is known to be desired in the wellbore development field, as evidenced by Gill.
Regarding claim 3, Thomeer is not explicit on said degradable plug is degradable with said high pressure in less than 24 hours.
Gill teaches wherein said degradable plug is degradable with said high pressure in less than 24 hours (Para 0073, “5 ksi test hold for 30 min”; Para 0024, “degrade the degradable plug and the degradable tape in 48 hours or less, preferably in 24 hours or less or overnight.”).
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 Thomeer by having said degradable plug be degradable with said high pressure in less than 24 hours as disclosed by Gill because it is a timeframe which a plug is required to hold pressure and then degradable open which is known to be desired in the wellbore development field, as evidenced by Gill.
Regarding claim 8, Thomeer teaches wherein said high pressure is at least about 1500 psi (Column 8, lines 5-11, “Fluid […] is then sprayed out through the nozzle at high pressure (e.g., at least about 1,500 psi).”)..
Regarding claim 9, while Thomeer teaches said high pressure is at least about 1500 psi (Column 8, lines 5-11, “Fluid […] is then sprayed out through the nozzle at high pressure (e.g., at least about 1,500 psi).”), Thomeer is not explicit on wherein said high pressure is at least about 2000 psi.
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 Thomeer by having said high pressure is at least about 2000 psi since "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003), see MPEP 2144.05. As discussed, Thomeer teaches a range of 1500 psi and above.
Regarding claim 11, Thomeer teaches wherein said one or more degradation fluid(s) are selected from an aqueous acid, an aqueous caustic, an aqueous brine, xylene, toluene, chloroform (CHCl3}, aromatic solvent, dimethylformamide (DMF), dimethylacetamide (DMA), dichloromethane (DCM), CH2C12, tetrahydrofuran (THF), acetone, hexafluoroisopropanol, or combinations thereof (Column 8, lines 5-11, “Fluid (such as water, concentrated acids such as HCI, xylene mixtures, or fluid slurries containing abrasive particles such as sand) is then sprayed out through the nozzle at high pressure”).
Regarding claim 12, Thomeer teaches wherein said one or more degradation fluid(s) are combined with an abrasive agent (Column 8, lines 5-11, “Fluid (such as water, concentrated acids such as HCI, xylene mixtures, or fluid slurries containing abrasive particles such as sand) is then sprayed out through the nozzle at high pressure”).
Regarding claim 13, Thomeer teaches in the description relied upon the parent claim (see above parent claim), Thomeer is not explicit on using the degradation fluid in combination with an abrasive agent.
Thomeer does teach Fluid (such as water, concentrated acids such as HCI, xylene mixtures, or fluid slurries containing abrasive particles such as sand) is then sprayed out through the nozzle at high pressure (Column 8, lines 5-11).
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 Thomeer by having the degradation fluid used in combination with an abrasive agent as Thomeer discloses the use of an abrasive agent in a fluid in an alternative description because it would allow for additional erosive force to be applied against the closure by mechanical abrasion.
Regarding claim 14, Thomeer is silent on said degradable plug is a threaded plug and wherein said threads are wrapped with a degradable thread tape.
Gill teaches wherein said degradable plug is a threaded plug and wherein said threads are wrapped with a degradable thread tape (Para 0002, “degradable thread tape and plugs”, see also Fig 5).
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 Thomeer by having the degradable plug and its particulars as disclosed by Gill because Thomeer teaches only a generic degradable plug and Gill teaches particular details which would be required to implement the invention of Graham which would be known to yield predictable results in a downhole environment (selective degradation downhole to open an orifice).
Regarding claim 15, Thomeer as modified by Gill teaches wherein a first degrading fluid of said one or more degrading fluid(s) degrades said degradable thread tape and a second degrading fluid of said one or more degrading fluid(s) degrades said degradable plug (Claim 10, “wherein a first degrading fluid degrades said degradable thread tape and a second degrading fluid degrades said degradable plug”). .
Regarding claim 16, Thomeer as modified by Gill teaches wherein a first degrading fluid degrades both said degradable thread tape and said degradable plug (Claim 2, “said degradable plug and said degradable tape are degradable in aqueous solution” i.e. both are degradable in an first fluid/aqueous solution).
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thomeer (US 6439313 B1) under a second interpretation, in view of Gill (US 20200095840 A1), in view of Dickinson (US 4790394 A).
Regarding claim 27, while Thomeer teaches the use of fluid containing an abrasive (Column 8, lines 5-11), Thomeer is silent on wherein said degrading fluid(s) comprises silica flour.
Dickinson teaches wherein said degrading fluid(s) comprises silica flour (Column 8, lines 4-7, “abrasive material such as sand, silica flour or particles or dirt into the cutting fluid”).
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 Thomeer by having the silica flour as the abrasive material as disclosed by Dickinson because Dickinson teaches the use of silica flour as an abrasive used in a downhole fluid-based cutting system and Thomeer only teaches a generic abrasive, one would look to Dickinson as teaching the specific abrasive.
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thomeer (US 6439313 B1) under a second interpretation, in view of Gill (US 20200095840 A1), in view of Hice (US 20160084083 A1).
Regarding claim 28 Thomeer is silent on wherein said jet has a nozzle exit angle at 10-20°.
Hice teaches wherein said jet has a nozzle exit angle at 10-20° (Para 0031, “laterally pulsed jetting nozzles with guide vanes can be most effectively manufactured using 3-D printing and angled generally laterally to project a horizontal pulsed jet stream to one angled slightly (e.g. 10 degrees)”).
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 Thomeer by having the jet nozzle as disclosed by Hice because Thomeer teaches only the use of a generic nozzle, one would look to the nozzle of Hice because it is a known orientation for a nozzle which still permits effective cutting in a substantially lateral direction with predictable results such as that taught by Thomeer.
Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thomeer (US 6439313 B1) under a second interpretation, in view of Gill (US 20200095840 A1), in view of Dickinson (US 4790394 A), in view of Hice (US 20160084083 A1).
Regarding claim 29, Thomeer teaches a method of temporarily plugging a well, comprising:
a. providing a section of tubing in a well (Fig 3A-3B, tubular 100; Column 8, lines 1-4, tubular is downhole);
b. installing one or more degradable plug(s) in said tubing in said well (Fig 3A-3B, closure 110 is installed in tubing, tubing is within the well when with closure present).
Although as discussed in the rejection under the first interpretation the claim limitation is taught by Thomeer; however, if construed under a second narrower interpretation, Thomeer is silent on thus providing a section of temporarily plugged well.
Gill teaches thus providing a section of temporarily plugged well (Fig 2, tubular section 205 with opens 207 closures/plugs which prevent radial flow. The present of flow obstructions in the system are noted and would prevent flow through the central bore. Additionally, the system of Gill is a ‘temporarily plugged well’ or well portion, see e.g. Para 0036, 0057, etc.).
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 Thomeer by using the tubular section 100 with closures 110 within the system, and more specifically as the plugged tubular section 205 in the system of Fig 2 as disclosed by Gill because Thomeer is otherwise silent as to the system in which it is used. Gill teaches a system which provides the additional structural detail which would be required to implement the invention of Thomeer and would be a combination of prior art elements to yield the predictable results of selectively plugging, then permitting production from an intended zone in a wellbore.
Thomeer as modified teaches c. performing a downhole activity in said plugged well for a period of time (Fig 3A-3B, maintaining hydraulic isolation between the inner bore and zones behind closure 110 i.e. downhole activity for all the time until the closures are removed); and
d. providing one or more degrading fluid(s) downhole to degrade said degradable plug, leaving no solid plug material behind and thereby opening said plugged well, wherein said one or more degrading fluid(s) are deployed by a jet nozzle at a high pressure of 1000-5000 psi onto said degradable plug so as to provide an erosive force to completely remove said degradable plug (Column 8, lines 5-11, “Fluid (such as water, concentrated acids such as HCI, xylene mixtures, or fluid slurries containing abrasive particles such as sand) is then sprayed out through the nozzle at high pressure (e.g., at least about 1,500 psi), such that the second material that forms the closure member 110 is machined away, thus opening a fluid flow path.”).
Thomeer is silent on the degrading fluid(s) comprising silica flour.
Dickinson teaches wherein said degrading fluid(s) comprises silica flour (Column 8, lines 4-7, “abrasive material such as sand, silica flour or particles or dirt into the cutting fluid”).
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 Thomeer by having the silica flour as the abrasive material as disclosed by Dickinson because Dickinson teaches the use of silica flour as an abrasive used in a downhole fluid-based cutting system and Thomeer only teaches a generic abrasive, one would look to Dickinson as teaching the specific abrasive.
Thomeer as modified is silent on the jet nozzle exit angle at 10-20°.
Hice teaches wherein said jet has a nozzle exit angle at 10-20° (Para 0031, “laterally pulsed jetting nozzles with guide vanes can be most effectively manufactured using 3-D printing and angled generally laterally to project a horizontal pulsed jet stream to one angled slightly (e.g. 10 degrees)”).
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 Thomeer by having the jet nozzle as disclosed by Hice because Thomeer teaches only the use of a generic nozzle, one would look to the nozzle of Hice because it is a known orientation for a nozzle which still permits effective cutting in a substantially lateral direction with predictable results such as that taught by Thomeer.
Thomeer as modified teaches wherein a time needed to remove said degradable plug is reduced by at least half what it would be with soaking in said degrading fluid and without said jet and said high pressure (Column 8, lines 5-11 of Thomeer, Column 6, lines 40-45, Column 8, lines 4-7 of Dickinson because the prior art as modified has the same jetting and high pressure characteristic recited, it stands to reason that it would perform in the manner recited).
Conclusion
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/THEODORE N YAO/Primary Examiner, Art Unit 3676
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