DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/28/2026 has been entered. 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 Amendment
Applicant's amendments are sufficient to obviate the 112(a) rejections of independent claims 1 & 11. However, the examiner is respectfully obliged to note that independent claim 22 has not been similarly amended, and still has the "one or more seals located within one or more seal grooves in the outside tubular surface downhole of the two or more plug seat openings" language that was previously held as new matter. Therefore the examiner is respectfully obliged to maintain the drawing objections and the 112(a) new matter rejection of claim 22.
Applicant's replacement version of fig 3B, and the associated specification amendment to [0026], filed 1/28/2026, adds "first outer diameter (d1)", "a second smaller outer diameter (d2)", "transition 316" between them, forming "no-go shoulder 317".
The examiner views this as acceptable under 112(a) because the drawings as originally filed clearly and reasonably conveyed these elements, as well as the relative size between them. Fig 1 also originally discusses "sleeve shoulder 135".
That said, the prior grounds of rejection, US 2012/0305265 (Garcia), similarly discloses such a shoulder in figs 4A & 4B, highlighted in the annotated reproduction below. The oval annotations highlight the shoulder, clearly formed by a diameter change from a larger diameter above the shoulder (holding seals 126), and a smaller diameter below the shoulder. The radial space formed by the lower, smaller diameter is highlighted by the rectangular annotation as the gap between "inner sleeve 120" and "housing 110" on the left side (fig 4A). This gap is missing in the actuated position shown on the right side (fig 4B) when the larger diameter upper portion slides downward. The right side (fig 4B) also clearly shows the shoulder landing on a matching shoulder on housing 110. The examiner respectfully asserts this is clearly commensurate with the present amendments, and if originally filed present figure 3B provides implicit support for the present replacement figure 3B and the present amendments, the same is true of the prior art.
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Similarly, in the prior 103 rejection of claims 11-16, 19-30 & 33, both US 4,474,241 (Freeman) & US 2012/0305265 (Garcia) teach the claimed change in diameter. Garcia is explained above. Freeman clearly shows a no-go shoulder in "annular shoulder 145" (figs 1-3) that is defined by an upper, larger diameter (holding "opposed shear pins 150" - fig 1) and a lower, smaller diameter (holding "ports 148" - fig 1). The examiner respectfully maintains the prior art grounds of rejection.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following features must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The "one or more seals located within one or more seal grooves in the outside tubular surface downhole of the two or more plug seat openings" of independent claim 22 are not shown. Looking at figures 3B & 3D, "one or more seal grooves 350" with "seals 355" therein are only shown as being above / uphole of the two or more plug seat openings 320. ¶ 31 of the as-filed specification (emphasis added):
"In the illustrated embodiment, the inner sleeve 300 may additionally include one or more seal grooves 350 in the outside tubular surface 315d. The inner sleeve 300 may additionally include one or more seals 355 positioned within the one or more seal grooves 350. In at least one embodiment, the one or more seal groove 350 and one or more seals 355 are positioned between the two or more plug seat openings 320 and the uphole end 315a of the tubular 310, and are configured to prevent fluid from entering the spacing between the inner sleeve 300 and the valve connector housing."
¶ 30 of the as-filed specification discusses grooves 340, which are downhole of 320, are conspicuously not "seal grooves" with "seals" therein, but rather are "lock ring grooves" with "lock ring 345" therein. There is no sealing function disclosed to these features, nor is such ability inherent. Present claim 9 recites this lock ring & lock ring groove as being "located between the two or more plug seat openings and the downhole end of the tubular", thus further showing the lack of support for the amendments to the independent claims.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 22-33 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention. This is a "new matter" rejection.
As similarly discussed in the drawing objections above, the examiner respectfully does not find support in the originally filed specification for the new limitation of "one or more seals located within one or more seal grooves in the outside tubular surface downhole of the two or more plug seat openings" of independent claim 22. Looking at figures 3B & 3D, "one or more seal grooves 350" with "seals 355" therein are only shown as being above / uphole of the two or more plug seat openings 320. ¶ 31 of the as-filed specification (emphasis added):
"In the illustrated embodiment, the inner sleeve 300 may additionally include one or more seal grooves 350 in the outside tubular surface 315d. The inner sleeve 300 may additionally include one or more seals 355 positioned within the one or more seal grooves 350. In at least one embodiment, the one or more seal groove 350 and one or more seals 355 are positioned between the two or more plug seat openings 320 and the uphole end 315a of the tubular 310, and are configured to prevent fluid from entering the spacing between the inner sleeve 300 and the valve connector housing."
¶ 30 of the as-filed specification discusses grooves 340, which are downhole of 320, are conspicuously not "seal grooves" with "seals" therein, but rather are "lock ring grooves" with "lock ring 345" therein. There is no sealing function disclosed to these features, nor is such ability inherent. Further, present claim 9 recites this lock ring & lock ring groove as being "located between the two or more plug seat openings and the downhole end of the tubular", thus further showing the lack of support for the amendments to the independent claims. Claims 23-33 depend from claim 22.
Claim Rejections - 35 USC § 102
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.
Claims 1-3, 7-11, 15, 16, & 19-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2012/0305265 (Garcia). The independent claims will be addressed first so that similar dependent claims may be addressed together.
Independent claim 1. Garcia teaches an inner sleeve ("an inner sleeve or insert 120" ¶ 29, fig 2A-4B), comprising:
a tubular (the sleeve 120 is tubular: figs 2A-4B) having an uphole end (upper side as seen in the figures), a downhole end (lower side), an inside tubular surface (clearly conveyed by the figures), and an outside tubular surface (ibid), the inside tubular surface and the outside tubular surface defining a sidewall thickness (t) (ibid; a tubular sleeve inherently has a sidewall thickness of some amount), the outside tubular surface having a first outer diameter (d1) (d1 as indicated in the annotated version of fig 4A above) and a second smaller outer diameter (d2) (d2 as indicated in the annotated version of fig 4A above), a transition between the first outer diameter (d1) and the second smaller outer diameter (d2) forming a no-go shoulder (Indicated by the oval annotation in the figures above. It is clearly shown in fig 4B as seating on a matching outer shoulder - i.e. it is "a no-go shoulder" in the same manner as the present case); and
two or more plug seat openings (slots 122: "The seat 140 includes a plurality of keys or dogs 142 disposed in slots 122 defined in the insert 120." - ¶ 31) circumferentially positioned about the tubular (figs 2B, 3B, 4B) and extending from the outside tubular surface to the inside tubular surface and through an entirety of the sidewall thickness (t) (slots 122 extend entirely through the sidewall as shown in vertical cross-section in fig 2A and horizontal cross-section in fig 2B; also clearly conveyed in figs 4A & 4B), the two or more plug seat openings configured to engage with two or more associated plug seats (keys or dogs 142 - [0031] - "To move the insert 120, the ball 130 dropped down the tubing string from the surface engages a seat 140 inside the insert 120. The seat 140 includes a plurality of keys or dogs 142 disposed in slots 122 defined in the insert 120.. so that the keys 142 define a restricted opening with a diameter (d) smaller than the intended diameter (D) of the dropped ball. As shown, four such keys 142 can be used") and allow the two or more associated plug seats to move between a radially retracted state (fig 3A & B; fig 4A) and a radially extended state (fig 2A & B; fig 4B), the two or more plug seat openings not exposed to either of the uphole end or the downhole end (they are isolated from the ends by the sidewall in the same manner as the present case).
Independent claim 11. Garcia discloses a downhole tool ("a downhole sleeve" - abstract), comprising:
a valve connector housing ("housing 110" with "ends 104/106" - figs 2A, 3A, 4A, 4B); and an inner sleeve ("an inner sleeve or insert 120" ¶ 29, fig 2A-4B) located at least partially within the valve connector housing (ibid).
The remaining limitations of independent claim 11 are the same as claim 1, and are similarly rejected over Garcia, as described for claim 1 above, respectfully not repeated again here.
2 & 15. The inner sleeve as recited in Claim 1 / The downhole tool as recited in Claim 11, wherein the two or more plug seat openings are two or more T-shaped plug seat openings (the T-shaped horizontal cross-section of the openings 122 & dogs 142 therein is clearly shown in the horizontal cross-section of figs 2B & 3B. Figs 4A & 4B shows a T-shaped vertical cross-section).
3 & 16. The inner sleeve as recited in Claim 2 / The downhole tool as recited in Claim 15, wherein the two or more T-shaped plug seat openings (122) each include a vertical portion (vertical cross-sections clearly shown in figs 2A, 3A, 4A) and a horizontal portion (horizontal cross-sections clearly shown in figs 2B, 3B, 4C).
7. The inner sleeve as recited in Claim 2, wherein the two or more T- shaped plug seat openings (122) each include a vertical portion (vertical cross-sections clearly shown in figs 2A, 3A, 4A) and a horizontal portion (horizontal cross-sections clearly shown in figs 2B, 3B, 4C), and wherein the two or more associated plug seats ("plurality of keys or dogs 142 disposed in slots 122 defined in the insert 120" - ¶ 31) are two or more associated T-shaped plug seats (the plugs 142 match the slots 122: figs 2B, 3B, 4A & 4B) engaged within the two or more T-shaped plug seat openings (ibid), the two or more associated T-shaped plug seats each including a vertical plug seat portion and a horizontal plug seat portion (ibid), and further wherein the vertical plug seat portion has a radius of curvature (the seats 142 are clearly shown in figs 2B & 3B to have curved portions matching the curvature of the tubular. This curvature extends vertically along the outer circumference shown in figs 2A, 3A, 4A).
8 & 19. The inner sleeve as recited in Claim 1 / The downhole tool as recited in Claim 11, further including four or more plug seat openings ("As shown, four such keys 142 can be used, although the seat 140 can have any suitable number of keys 142" - ¶ 31) / associated plug seats (each slot 122 has it's own key 142) circumferentially positioned about the tubular (figs 2B, 3B, 4C) and extending from the outside tubular surface to the inside tubular surface (ibid), each seat engaged with a opening (ibid).
9 & 20. The inner sleeve as recited in Claim 1 / The downhole tool as recited in Claim 11, further including a lock ring ("the lock 124 can be a snap ring that reaches a circumferential slot 116 in the housing 110 and expands outward to lock the insert 120 in place. Although the lock 124 is shown as a snap ring 124 is shown, the insert 120 can use a shear ring or other device known in the art to lock the insert 120 in place" - ¶ 33) located within a lock ring groove in the outside tubular surface (fig 2A, 3A), the lock ring and lock ring groove located between the two or more plug seat openings and the downhole end of the tubular (positioned as-claimed; figs 2A, 3A).
10 & 21. The inner sleeve as recited in Claim 1 / The downhole tool as recited in Claim 11, further including one or more seals (two "peripheral seals 126 on the insert 120" - ¶ 30; figs 2A & 4A) located within one or more seal grooves in the outside tubular surface (clearly shown in figs 2A & 4A that seals 126 are in unnumbered grooves in the sleeve), the one or more seal grooves located between the two or more plug seat openings and the uphole end of the tubular (ibid).
Claims 4-6, 17, & 18 are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0305265 (Garcia) in view of US 4,765,402 (Smith).
Claims 4 & 17. Garcia discloses all the limitations of the parent claims, but Garcia does not expressly disclose that a downhole sidewall of the vertical portion of the opening is angled downhole.
However Smith discloses a tubular inner sleeve ("The seal body 43 includes a lower tubular extent 53 which is provided with a plurality of window openings 55. Preferably, there are four window openings provided at one circumferential location about the lower tubular extent 53, the window openings 55 being provided at evenly spaced 90.degree. locations. Each of the window openings 55 is provided with an upper and a lower tapered ramp surface 57, 59." - first full ¶ of col 4. Shown in figs 1 & 6 among other places) having two or more plug seat openings ("window openings 55") circumferentially positioned about the tubular (ibid) and extending from the outside of the tubular surface to the inside tubular surface and through an entirety of the sidewall thickness (t) (clearly shown in figs 1 & 5), the two or more plug seat openings configured to engage with matching associated plug seats ("A plurality of latch elements 71"… " The latch elements 71 are thus movable axially and radially within the widow openings 55" - col 4:50-51) and allow the plug seats to move between a radially retracted state ("As the latch elements 71 encounter the increased diameter of the circumferential groove 21, the spring 89 forces the latch elements radially outward to the relaxed position within the groove (see FIG. 2)" - col 5:34-37) and a radially extended state (fig 1), the plug seat openings not exposed to either the uphole end or the downhole end, but located between the uphole and downhole ends (isolated from the ends by the sidewall of seal body 43 in the same manner as the present case; fig 6),
wherein a downhole sidewall of the vertical portion of the opening is angled downhole ("Each of the window openings 55 is provided with an upper and a lower tapered ramp surface 57, 59. The lower ramp surface 59 forms an angle of approximately 45.degree. with respect to the longitudinal axis of the lower tubular extent 53" - first full ¶ of col 4).
Therefore it would have been obvious to one having ordinary skill in the art to angle the downhole vertical portion of the slots taught by Garcia as taught by Smith. This provides a camming surface against which the seat can engage and slide to aid in moving the seat radially outward (col 4:33-41 & col 4:55-58) as is the function of both references' retractable seats.
5. The inner sleeve as recited in Claim 4, wherein the two or more associated plug seats are two or more associated T-shaped plug seats engaged within the two or more T- shaped plug seat openings (Garcia: the T-shaped horizontal cross-section of the openings 122 & dogs 142 therein is clearly shown in the horizontal cross-section of figs 2B & 3B. Figs 4A & 4B shows a T-shaped vertical cross-section. The modification of Smith only adds sloping camming surface to a lower end of this), the two or more T-shaped plug seat openings allowing the two or more associated T-shaped plug seats to move between the radially retracted state and the radially extended state (ibid).
6 & 18. The inner sleeve as recited in Claim 5 / The downhole tool as recited in Claim 17, wherein the two or more associated T- shaped plug seats each include a vertical plug seat portion (Garcia: vertical cross-sections clearly shown in figs 2A, 3A, 4A) and a horizontal plug seat portion (horizontal cross-sections clearly shown in figs 2B, 3B, 4C), and further wherein a second downhole sidewall of the vertical plug seat portion is angled downhole (as-modified by Smith for claim 4 above, the combination has "lower tapered ramp surface 59" which engages "lower axial projections 87" of "latch elements 71" - fig 4 of Smith).
Therefore it would have been obvious to one having ordinary skill in the art to angle the downhole vertical portion of the seat taught by Garcia as taught by Smith. This provides a camming surface against which the seat can engage and slide to aid in moving the seat radially outward (col 4:33-41 & col 4:55-58) as is the function of both references' retractable seats.
Claims 11-16 & 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over US 4,474,241 (Freeman) in view of US 2012/0305265 (Garcia).
Independent claim 11. Freeman discloses a downhole tool ("Differential fill float collar 20" - col 5:20) comprising:
a valve connector housing ("casting 32" and/or "tubular upper housing 52" & "lower housing 90" all of which hold two valves as clearly shown in fig 1); and
an inner sleeve located at least partially within the valve connector housing ("Activating sleeve 130"), the inner sleeve including:
a tubular ("activating sleeve 130" - fig 1) having an uphole end (upper side as viewed in the figures), a downhole end (lower side as viewed in the figures), an inside tubular surface, and an outside tubular surface (both clearly conveyed by fig 1), the tubular surface and the outside tubular surface defining a sidewall thickness (ibid) the outside tubular surface having a first diameter (d1) (holding "opposed shear pins 150" - fig 1) and a second smaller outer diameter (d2) (holding "ports 148" - fig 1), a transition between the first outer diameter (d1) and the second smaller outer diameter (d2) forming a no-go shoulder ("annular shoulder 145" - figs 1-3);
a plug seat positioned on the inside tubular surface ("annular lip 136" - fig 1) configured to catch a dropped ball ("tripping ball 200" - fig 2), move axially in response to fluid pressure on the dropped ball (transition between figs 2 & 3; ¶ bridging cols 5 & 6), and after movement, selectively fail and allow the dropped ball to pass through the downhole tool ("As activating sleeve 130 reaches the full extent of its travel, ball 200 is extended past annular lip 136 and is pumped out of float collar 20 to the bottom of the well bore" - ibid).
As discussed above, Freeman discloses an annular lip seat 136 that bends and fails under the ultimate pressure applied to the ball after the sleeve stops moving (figs 1 vs fig 3; col 6:11-14), not plug seat openings and radially retractable plug seats engaged therein.
However Garcia teaches an inner sleeve ("an inner sleeve or insert 120" ¶ 29, fig 2A-4B), comprising:
a tubular (the sleeve 120 is tubular: figs 2A-4B) having an uphole end (upper side as seen in the figures), a downhole end (lower side), an inside tubular surface (clearly conveyed by the figures), and an outside tubular surface (ibid), the inside tubular surface and the outside tubular surface defining a sidewall thickness (t) (ibid; a tubular sleeve inherently has a sidewall thickness of some amount), the outside tubular surface having a first outer diameter (d1) (d1 as indicated in the annotated version of fig 4A above) and a second smaller outer diameter (d2) (d2 as indicated in the annotated version of fig 4A above), a transition between the first outer diameter (d1) and the second smaller outer diameter (d2) forming a no-go shoulder (Indicated by the oval annotation in the figures above. It is clearly shown in fig 4B as seating on a matching outer shoulder - i.e. it is "a no-go shoulder" in the same manner as the present case);
two or more plug seat openings (slots 122: "The seat 140 includes a plurality of keys or dogs 142 disposed in slots 122 defined in the insert 120." - ¶ 31) circumferentially positioned about the tubular (figs 2B, 3B, 4B) and extending from the outside tubular surface to the inside tubular surface and through an entirety of the sidewall thickness (t) (slots 122 extend entirely through the sidewall as shown in vertical cross-section in fig 2A and horizontal cross-section in fig 2B), the two or more plug seat openings configured to engage with two or more associated plug seats (keys or dogs 142 - [0031] - "To move the insert 120, the ball 130 dropped down the tubing string from the surface engages a seat 140 inside the insert 120. The seat 140 includes a plurality of keys or dogs 142 disposed in slots 122 defined in the insert 120.. so that the keys 142 define a restricted opening with a diameter (d) smaller than the intended diameter (D) of the dropped ball. As shown, four such keys 142 can be used") and allow the two or more associated plug seats to move between a radially retracted state (fig 3A & B) and a radially extended state (fig 2A & B), the two or more plug seat openings not exposed to either of the uphole end or the downhole end (they are isolated from the ends by the sidewall in the same manner as the present case), but located between the uphole end and the downhole end (ibid, figs 2A-4B); and
two or more associated plug seats ("keys or dogs 142 disposed in slots 122" - ¶ 31) engaged with the two or more plug seat openings (ibid), the two or more associated plug seats configured to move between a radially retracted state (fig 2A) and a radially extended state (fig 3A) as the inner sleeve slides within the valve connector housing (ibid, and as cite above). After expansion, the dropped ball passes through the seat and down further into the well (¶ 34) just as in Freeman as cited above.
Therefore it would have been obvious to one having ordinary skill in the art at the time of filing to use the retractable seats taught by Garcia for the dropped ball seat taught by Freeman. This allows the full path of the flowbore to be open after release of the ball (fig 3A of Garcia). Further, the use of multiple frangible / shear / selectively failing features in series as taught by Freeman (shear pin 150 must fail before seat 136; transition between figs 1 & 3 of Freeman) means that the seat 136 must be carefully manufactured so as to fail at a desired pressure but not before shear pin 150 fails. The retractable seats taught by Garcia only extend outward upon the sleeve reaching "circumferential slot 114" (¶ 34) which means it can be more easily guaranteed that seats 142 will only retract after the initial movement of the sleeve and the shearing of the initial retaining shear pin (128, ¶3 2 of Garcia; 150 of Freeman).
12. The downhole tool as recited in Claim 11, further including:
a body coupled to the valve connector housing and configured to fit within a casing string ("Tubing 22" - fig 1 of Freeman);
a first valve located within the body ("back pressure flapper 66" - fig 1) and configured to open (fig 1) and close (transition from fig 1 to fig 3) a fluid flow path through the valve connector housing (ibid), wherein the first valve is in a first valve open position (fig 1 is run-in position); and
a second valve located within the body ("Double flapper valve 170" - fig 1) and configured to open (fig 3) and close (fig 1) the fluid flow path through the valve connector housing (ibid), wherein the second valve opens to a second valve open position in a direction away from the wellhead of the wellbore (valve 17 opens downhole: fig 3).
13. The downhole tool as recited in Claim 12, wherein the first valve is configured to be in the first valve open position (Freeman: fig 1 is the run-in position and 66 is open) and the second valve is configured to be in a second valve closed position (170 is in the "a second valve closed position" in fig 1) during placement of the downhole tool in the wellbore (col 3:24-27. The examiner notes that: (A) "a second valve closed position" neither excludes 186 being open while 172 is closed because both are sub-elements of 170; (B), the "second valve" can be drawn to just 172; and (C) "double flapper valve 170", including "fillup flapper 186" are biased towards the closed position: col 5:14-16).
14. The downhole tool as recited in Claim 12, wherein the body includes one or more plug seat spaces (Garcia: "When the insert 120 reaches its opened condition, the keys 124 eventually reach another circumferential slot 114 in the housing 110. As best shown in FIG. 3B, the keys 124 retract slightly in the insert 120 when they reach the slot 114." - ¶ 34), the one or more plug seat spaces configured to allow the two or more associated plug seats to move from the radially retracted state to the radially extended state as the inner sleeve slides within the valve connector housing (ibid).
15. The downhole tool as recited in Claim 11, wherein the two or more plug seat openings are two or more T-shaped plug seat openings (the T-shaped horizontal cross-section of the openings 122 & dogs 142 therein is clearly shown in the horizontal cross-section of figs 2B & 3B. Figs 4A & 4B shows a T-shaped vertical cross-section).
16. The downhole tool as recited in Claim 15, wherein the two or more T-shaped plug seat openings (122) each include a vertical portion (vertical cross-sections clearly shown in figs 2A, 3A, 4A) and a horizontal portion (horizontal cross-sections clearly shown in figs 2B, 3B, 4C).
19. The inner sleeve as recited in Claim 1 , further including four or more plug seat openings (Garcia: "As shown, four such keys 142 can be used, although the seat 140 can have any suitable number of keys 142" - ¶ 31) / associated plug seats (each slot 122 has it's own key 142) circumferentially positioned about the tubular (figs 2B, 3B, 4C) and extending from the outside tubular surface to the inside tubular surface (ibid), each seat engaged with a opening (ibid).
20. The downhole tool as recited in Claim 11, further including a lock ring (Garcia: "the lock 124 can be a snap ring that reaches a circumferential slot 116 in the housing 110 and expands outward to lock the insert 120 in place. Although the lock 124 is shown as a snap ring 124 is shown, the insert 120 can use a shear ring or other device known in the art to lock the insert 120 in place" - ¶ 33) located within a lock ring groove in the outside tubular surface (fig 2A, 3A), the lock ring and lock ring groove located between the two or more plug seat openings and the downhole end of the tubular (positioned as-claimed; figs 2A, 3A).
21. The downhole tool as recited in Claim 11, further including one or more seals (Garcia: two "peripheral seals 126 on the insert 120" - ¶ 30; figs 2A & 4A) located within one or more seal grooves in the outside tubular surface (clearly shown in figs 2A & 4A that seals 126 are in unnumbered grooves in the sleeve), the one or more seal grooves located between the two or more plug seat openings and the uphole end of the tubular (ibid).
Therefore it would have been obvious to PHOSITA at the time of filing to use the seals taught by either Garcia on the sleeve taught by Freeman. Similar to claim 11 above, this is the simple addition of a known element to an analogous tool to achieve the predictable result of providing a seal above the seat in addition to the seal below the seat (which is already taught by the modification). The seal performs the same function in the modification as it originally does. Further, it provides redundancy in the event the first seal fails. This is a prima facie case of obviousness. MPEP 2143, subsection I(A).
Claims 22-30 & 33 are rejected under 35 U.S.C. 103 as being unpatentable over US 4,474,241 (Freeman) in view of US 2012/0305265 (Garcia), in further view of US 3,768,556 (Baker).
Independent claim 22. Freeman discloses a method ("As the cementing operation is performed…" - col 6:27) comprising:
obtaining a casing string ("casing 2" - fig 1 & col 3:40-46) and a downhole tool installed therein ("Differential fill float collar 20" - col 5:20), wherein the downhole tool includes:
a body coupled to the casing string ("Tubing 22" - fig 1);
a valve connector housing located within the body ("casting 32" and/or "tubular upper housing 52" & "lower housing 90" all of which hold two valves as clearly shown in fig 1);
an inner sleeve located at least partially within the valve connector housing ("Activating sleeve 130" - fig 1), the inner sleeve including:
a tubular ("activating sleeve 130" - fig 1) having an uphole end (upper side as viewed in the figures), a downhole end (lower side as viewed in the figures), an inside tubular surface, and an outside tubular surface (both clearly conveyed by fig 1), the tubular surface and the outside tubular surface defining a sidewall thickness (ibid), the outside tubular surface having a first diameter (d1) (holding "opposed shear pins 150" - fig 1) and a second smaller outer diameter (d2) (holding "ports 148" - fig 1), a transition between the first outer diameter (d1) and the second smaller outer diameter (d2) forming a no-go shoulder ("annular shoulder 145" - figs 1-3);
a plug seat positioned on the inside tubular surface ("annular lip 136" - fig 1) configured to catch a dropped ball ("tripping ball 200" - fig 2), move axially in response to fluid pressure on the dropped ball (transition between figs 2 & 3; ¶ bridging cols 5 & 6), and after movement, selectively fail and allow the dropped ball to pass through the downhole tool ("As activating sleeve 130 reaches the full extent of its travel, ball 200 is extended past annular lip 136 and is pumped out of float collar 20 to the bottom of the well bore" - ibid);
a first valve located within the body ("back pressure flapper 66" - fig 1) and configured to open (fig 1) and close (transition from fig 1 to fig 3) a fluid flow path through the valve connector housing (ibid), wherein the first valve is in a first valve open position (fig 1 is run-in position); and
a second valve located within the body ("Double flapper valve 170" - fig 1) and configured to open (fig 3) and close (fig 1) the fluid flow path through the valve connector housing (ibid), wherein the second valve is in a second valve closed position (fig 1; the examiner notes that the "double flapper valve 170", including "fillup flapper 186" are biased towards the closed position: col 5:14-16); and
introducing the casing string and the downhole tool into a wellbore ("Differential fill float collar 20, as previously noted, is run into the open well bore suspended from casing 2" - col 5:20-21).
As discussed above, Freeman discloses an annular lip seat 136 that bends and fails under the ultimate pressure applied to the ball after the sleeve stops moving (figs 1 vs fig 3; col 6:11-14), not plug seat openings and radially retractable plug seats engaged therein.
However Garcia teaches an inner sleeve ("an inner sleeve or insert 120" ¶ 29, fig 2A-4B), comprising:
a tubular (the sleeve 120 is tubular: figs 2A-4B) having an uphole end (upper side as seen in the figures), a downhole end (lower side), an inside tubular surface (clearly conveyed by the figures), and an outside tubular surface (ibid), the inside tubular surface and the outside tubular surface defining a sidewall thickness (t) (ibid; a tubular sleeve inherently has a sidewall thickness of some amount), the outside tubular surface having a first outer diameter (d1) (d1 as indicated in the annotated version of fig 4A above) and a second smaller outer diameter (d2) (d2 as indicated in the annotated version of fig 4A above), a transition between the first outer diameter (d1) and the second smaller outer diameter (d2) forming a no-go shoulder (Indicated by the oval annotation in the figures above. It is clearly shown in fig 4B as seating on a matching outer shoulder - i.e. it is "a no-go shoulder" in the same manner as the present case);
two or more plug seat openings (slots 122: "The seat 140 includes a plurality of keys or dogs 142 disposed in slots 122 defined in the insert 120." - ¶ 31) circumferentially positioned about the tubular (figs 2B, 3B, 4B) and extending from the outside tubular surface to the inside tubular surface and through an entirety of the sidewall thickness (t) (slots 122 extend entirely through the sidewall as shown in vertical cross-section in fig 2A and horizontal cross-section in fig 2B), the two or more plug seat openings configured to engage with two or more associated plug seats (keys or dogs 142 - [0031] - "To move the insert 120, the ball 130 dropped down the tubing string from the surface engages a seat 140 inside the insert 120. The seat 140 includes a plurality of keys or dogs 142 disposed in slots 122 defined in the insert 120.. so that the keys 142 define a restricted opening with a diameter (d) smaller than the intended diameter (D) of the dropped ball. As shown, four such keys 142 can be used") and allow the two or more associated plug seats to move between a radially retracted state (fig 3A & B) and a radially extended state (fig 2A & B), the two or more plug seat openings not exposed to either of the uphole end or the downhole end (they are isolated from the ends by the sidewall in the same manner as the present case), but located between the uphole end and the downhole end (ibid, figs 2A-4B); and
two or more associated plug seats ("keys or dogs 142 disposed in slots 122" - ¶ 31) engaged with the two or more plug seat openings (ibid), the two or more associated plug seats held in a radially retracted states via the connector housing (¶ 33 & 34). After expansion, the dropped ball passes through the seat and down further into the well (¶ 34) just as in Freeman as cited above.
Therefore it would have been obvious to one having ordinary skill in the art at the time of filing to use the retractable seats taught by Garcia for the dropped ball seat taught by Freeman. This allows the full path of the flowbore to be open after release of the ball (fig 3A of Garcia). Further, the use of multiple frangible / shear / selectively failing features in series as taught by Freeman (shear pin 150 must fail before seat 136; transition between figs 1 & 3 of Freeman) means that the seat 136 must be carefully manufactured so as to fail at a desired pressure but not before shear pin 150 fails. The retractable seats taught by Garcia only extend outward upon the sleeve reaching "circumferential slot 114" (¶ 34) which means it can be more easily guaranteed that seats 142 will only retract after the initial movement of the sleeve and the shearing of the initial retaining shear pin (128, ¶3 2 of Garcia; 150 of Freeman).
Freeman does not expressly discloses one or more seals located within one or more seal grooves in the outside tubular surface downhole of the two or more plug seat openings.
However Baker discloses an inner sleeve ("closing sleeve 20" - fig 1) comprising:
a tubular (sleeve 20 is tubular - fig 1) having an uphole end (upper end; " Sleeve 20 also has at its upper end, a collet ring 21 formed by outer annular ridge 22 formed on sleeve 20" - col 3:5-6), a downhole end ("lower end 62 of sleeve 20" - col 5:30), an inside tubular surface and an outside tubular surface (clearly shown in figure 1) the inside tubular surface and the outside tubular surface defining a sidewall thickness (ibid),
two or more plug seat openings ("two or more ports 19 passing therethrough" - col 3:3-4) circumferentially positioned about the tubular (fig 1) and extending from the outside tubular surface to the inside tubular surface and through an entirety of the sidewall thickness (ibid), the two or more plug seat openings engaging an associated plug seat ("opening sleeve" with "beveled plug seat" held initially in place by a plurality of "shear pins 38" each located in a respective "port 19" - third to last ¶ of col 3 & fig 1), the two or more plug seat openings not exposed to either of the uphole end or the downhole end, but located between the uphole end and the downhole end (fig 1); and
one or more seals ("…elastomeric seal means 27" - second full ¶ of col 3) located within one or more seal grooves ("One or more annular recesses 26 located circumferentially about the exterior of sleeve 20, above and below ports 19, retain elastomeric seal means 27…" - ibid & fig 1) in the outside tubular surface downhole of the two or more plug seat openings (ibid).
Therefore it would have been obvious to one having ordinary skill in the art at the time of filing to use the seal grooves and seal element therein taught by Baker on the sleeve taught by Freeman. This is the simple addition of a known element to an analogous tool to achieve the predictable result of providing a seal on a device that is already used to control fluid flow across it. The seal performs the same function in the modification as it originally does. This is a prima facie case of obviousness. MPEP 2143, subsection I(A).
23. The method as recited in Claim 22, further including introducing cement composition into an annulus located between a wall of the wellbore and an outside of the casing string after introducing the casing string and the downhole tool into the wellbore (Conventional cementing circulation: pumping cement through the interior of the casing, out the bottom, and into the annulus, as is exceedingly well understood. Freeman: "When it is desired to actuate the back pressure valve… after circulation has been established prior to initiating of the cementing operation for the casing, a weighted tripping ball is dropped, which breaks the pin holding open the back pressure flapper. After cementing has been completed, the released back pressure flapper prevents cement flow back into the casing from the well bore annulus." - col 1:39-47).
24. The method as recited in Claim 23, wherein the two or more associated plug seats ("keys or dogs 142" of Garcia) held in the radially retracted state extend radially inward from the inside tubular surface (fig 2A; the same is similarly true of the lip 136 of Freeman that is modified by Garcia for claim 22 above), and further including introducing a plug into the casing string and the inner sleeve (taught by both references: "tripping ball 200" & fig 2 of Freeman; "dropped ball 130" & fig 2A of Garcia), wherein the plug engages with the two or more plug seats to create a seal and a pressure differential, and wherein the pressure differential causes the inner sleeve to shift downhole (taught by both references: Freeman: " tripping ball 200 is dropped down the casing bore 4, where it travels downward until it seats on annular lip 136 in activating sleeve 130. The pressure above ball 200 will build until shear pin 150 shears (FIG. 2), and activating sleeve 130 travels downward releasing back pressure flapper 66" - col 5:59-64 of Freeman. Garcia: "When the dropped ball 130 reaches the seat 140 in the closed condition, fluid pressure pumped down through the sleeve's bore 102 forces against the obstructing ball 130. Eventually, the force releases the insert 120 from a catch 128 that initially holds it in its closed condition. As shown, the catch 128 can be a shear ring, although a collet arrangement or other device known in the art could be used to hold the insert 120 temporarily in its closed condition… Continued fluid pressure then moves the freed insert 120 toward the open condition (FIG. 3A)." - ¶s 32 & 33 of Garcia).
25. The method as recited in Claim 24, wherein the shift downhole moves the first valve (66 of Freeman) to a first valve closed position (fig 3 of Freeman) and the second valve (170 of Freeman) to a second valve open position (fig 3 of Freeman).
26. The method as recited in Claim 24, wherein the shift downhole allows the two or more associated plug seats ("keys 142" of Garcia) to encounter one or more plug seat spaces ("When the insert 120 reaches its opened condition, the keys 124 eventually reach another circumferential slot 114 in the housing 110. As best shown in FIG. 3B, the keys 124 retract slightly in the insert 120 when they reach the slot 114." - ¶ 34) in the body and move from the radially retracted state to the radially extended state (ibid).
27. The method as recited in Claim 26, wherein the pressure differential against the plug moves the two or more associated plug seats from the radially retracted state to the radially extended state when they encounter the one or more plug seat spaces in the body (¶s 33 & 34 of Garcia).
28. The method as recited in Claim 26, wherein the move of the two or more associated plug seats from the radially retracted state to the radially extended state allows the plug to disengage from the two or more associated plug seats and leave the downhole tool ("As best shown in FIG. 3B, the keys 124 retract slightly in the insert 120 when they reach the slot 114. This allows the ball 130 to move or be pushed past the keys 124 so the ball 130 can travel out of the cluster sleeve 100 and further downhole" - ¶ 34 of Garcia).
29. The method as recited in Claim 22, wherein the two or more plug seat openings are two or more T-shaped plug seat openings (the T-shaped horizontal cross-section of the openings 122 & dogs 142 therein is clearly shown in the horizontal cross-section of figs 2B & 3B. Figs 4A & 4B shows a T-shaped vertical cross-section).
30. The method as recited in Claim 29, wherein the two or more T-shaped plug seat openings (122) each include a vertical portion (vertical cross-sections clearly shown in figs 2A, 3A, 4A) and a horizontal portion (horizontal cross-sections clearly shown in figs 2B, 3B, 4C).
33. The method as recited in Claim 22, further including a snap ring (Garcia: "the lock 124 can be a snap ring that reaches a circumferential slot 116 in the housing 110 and expands outward to lock the insert 120 in place. Although the lock 124 is shown as a snap ring 124 is shown, the insert 120 can use a shear ring or other device known in the art to lock the insert 120 in place" - ¶ 33) located within a snap ring groove in the outside tubular surface (figs 2A, 3A), the snap ring and the snap ring groove located between two or more plug seat openings and the downhole end of the tubular (positioned as-claimed; figs 2A, 3A).
Therefore it would have been obvious to PHOSITA at the time of filing to place the snap ring between the plug seat openings and the downhole end of the tubular as taught by Garcia in figs 2A & 3A in the combination. First, the primary reference teaches an analogous structure with "split lock ring 156" but discloses it in a radially surrounding roove, not a groove in the tubular. Garcia teaches the claimed orientation as achieving the same result in the same manner, but is a slightly different physical orientation, and would therefore be obvious to try with a reasonable expectation of success.
Claims 31 & 32 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of US 4,474,241 (Freeman), US 2012/0305265 (Garcia), & US 3,768,556 (Baker), in further view of US 4,765,402 (Smith).
Claim 31. The combination discloses all the limitations of the parent claims but does not expressly disclose that a downhole sidewall of the vertical portion of the opening is angled downhole.
However Smith discloses a tubular inner sleeve ("The seal body 43 includes a lower tubular extent 53 which is provided with a plurality of window openings 55. Preferably, there are four window openings provided at one circumferential location about the lower tubular extent 53, the window openings 55 being provided at evenly spaced 90.degree. locations. Each of the window openings 55 is provided with an upper and a lower tapered ramp surface 57, 59." - first full ¶ of col 4. Shown in figs 1 & 6 among other places) having two or more plug seat openings ("window openings 55") circumferentially positioned about the tubular (ibid) and extending from the outside of the tubular surface to the inside tubular surface and through an entirety of the sidewall thickness (t) (clearly shown in figs 1 & 5), the two or more plug seat openings configured to engage with matching associated plug seats ("A plurality of latch elements 71"… " The latch elements 71 are thus movable axially and radially within the widow openings 55" - col 4:50-51) and allow the plug seats to move between a radially retracted state ("As the latch elements 71 encounter the increased diameter of the circumferential groove 21, the spring 89 forces the latch elements radially outward to the relaxed position within the groove (see FIG. 2)" - col 5:34-37) and a radially extended state (fig 1), the plug seat openings not exposed to either the uphole end or the downhole end, but located between the uphole and downhole ends (isolated from the ends by the sidewall of seal body 43 in the same manner as the present case; fig 6),
wherein a downhole sidewall of the vertical portion of the opening is angled downhole ("Each of the window openings 55 is provided with an upper and a lower tapered ramp surface 57, 59. The lower ramp surface 59 forms an angle of approximately 45.degree. with respect to the longitudinal axis of the lower tubular extent 53" - first full ¶ of col 4).
Therefore it would have been obvious to one having ordinary skill in the art to angle the downhole vertical portion of the slots taught by Garcia as taught by Smith. This provides a camming surface against which the seat can engage and slide to aid in moving the seat radially outward (col 4:33-41 & col 4:55-58) as is the function of both references' retractable seats.
32. The method as recited in Claim 31, wherein the two or more associated plug seats are two or more associated T-shaped plug seats (the keys 142 match the T-shape of the slots, as shown in figs 2B, 3B, 4A, & 4B of Garcia), and further wherein the two or more associated T- shaped plug seats each include a vertical plug seat portion (clearly shown in figs 2A, 3A, 4A, & 4B as similarly cited above) and a horizontal plug seat portion (figs 2B, 3B, 4C), and further wherein a second downhole sidewall of the vertical plug seat portion is angled downhole (as-modified by Smith for claim 31 above, the combination has "lower tapered ramp surface 59" which engages "lower axial projections 87" of "latch elements 71" - fig 4 of Smith).
Therefore it would have been obvious to one having ordinary skill in the art to angle the downhole vertical portion of the seat taught by Garcia as taught by Smith. This provides a camming surface against which the seat can engage and slide to aid in moving the seat radially outward (col 4:33-41 & col 4:55-58) as is the function of both references' retractable seats.
Conclusion
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/BLAKE MICHENER/
Primary Examiner, Art Unit 3676