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 amendment dated 8/11/2025 have been entered. The amendments have resolved the previously presented claim objections.
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The examiner notes that Colley (US 12000254 B1) has been newly cited to teach the limitation missing from the base reference Duke and is a modification to the generic coupling feature between the wiper plug and flapper of Duke. Colley additionally teaches the benefits of this dovetail rail/slot arrangement as it “allow[s] the flapper to be securely and reliably mounted to flapper arm while at the same time allow easy replacement of worn flappers” (Column 17, lines 36-38); and the strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983).
The examiner acknowledges a number of references/modifications have been made to Duke; however, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).
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. Claim 1 recites a dovetail rail and dovetail slot. Therefore, the dovetail rail and dovetail slot must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-4, and 7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “an internal bore comprising a dovetail rail”. Para 0022 is the only location in the original disclosure which discusses the dovetail rail and does so only in describing it as a part of the wiper plug 202 (not any specific sub-element of the wiper plug). The dovetail rail is similarly not shown in the original drawings. Consequently, the claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 3-4 and 7 are rejected for depending from a rejected claim.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 3-4, and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duke (US 4164980 A), in view of Nanney (US 20210140275 A1), in view of Saraya (US 20210032956 A1), in view of Andrigo (US 20160312566 A1), in view of Colley (US 12000254 B1).
Regarding claim 1, Duke teaches a system for removing contaminants from a tubular pipe in a well having a portion of a bore of the tubular pipe containing the contaminants, the system comprising:
a wiper plug (Fig 1, 3, wiper 10) having an internal bore (Fig 3, internal bore labelled as 82a including bore portion containing flapper 86) and an external profile (Fig 3, external profile, seen including 84) comprising:
a plurality of wipers on an upper end of the wiper plug on the external profile (Fig 3, wipers 84 at the upper end of plug 10, body portion labelled as 82a),
a valve (Fig 3, flapper 86) disposed at the lower end of the wiper plug and translationally coupled to the internal bore (Fig 3, flapper valve 86 coupled to lower end/body 82 via pivot 88),
wherein the valve is a unidirectional flow valve configured to selectively control uphole and downhole flow of a fluid through the internal bore and-dis-posed within the wiper plug (Fig 3, Column 4, lines 34-44),
wherein the unidirectional flow valve is a flapper valve (Fig 3, flapper valve 86).
Duke is silent on wherein the plurality of wipers comprise a radially retractable bypass surface adapted to permit pressure passage of pressure applied to a fin bypass side,
wherein the plurality of wipers comprises a first wiper and a second wiper, and wherein the first wiper has a first outside diameter that is different from a second outside diameter of the second wiper.
Nanney teaches wherein the plurality of wipers comprise a radially retractable bypass surface (Fig 5-6, radially outward surface of 40,47 is moved radially inward as seen) adapted to permit pressure passage of pressure applied to a fin bypass side (Fig 5-6, downhole side of 40,47 has moved by 40,46 and results in the radially inward movement),
wherein the plurality of wipers comprises a first wiper (Fig 3, at least 40,47) and a second wiper (Fig 3, at least 40,46), and wherein the first wiper has a first outside diameter that is different from a second outside diameter of the second wiper (Fig 3, the radius and thus the OD are different).
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 Duke as modified by having at least first and second wipers with different outside diameters for each wiper with the recited functionality as disclosed by Nanney “enhance durability of the wiper plugs by selectively limiting engagement of one or more fins with the inner surface of the casing” (Para 0024).
While Duke teaches wherein the valve comprises a shearable element ( Fig 3, shearable element 90) configured to hold the valve in a closed position (Fig 2, shearable element 90 is intact and retains pressure, see also Column 4, lines 34-44) and to break from increasing pressure upon the wiper plug to allow the valve to move from the closed position to an open position (Fig 3, Column 4, lines 46-47, “sufficient pressure can be built up across the plug 10 to effect rupture of the element 90”), Duke is silent on the shearable element being a plurality of shear pins.
Saraya teaches the shearable element being a plurality of shear pins (Fig 1, within flapper 122, there is a removable element, retained by shear pins 126, see also Abstract, Para 0001).
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 Duke by having shearable element be a plurality of shear pins as disclosed by Saraya because Duke only teaches a generic shearable element, one would looks to known pressure responsive means to open a flapper valve, such as the shear pins retaining a housing as taught by Saraya, which is implementable with predictable results in a downhole environment.
Duke as modified is silent on the recited particulars of the landing profile and nipple.
Andrigo teaches a landing profile on a lower end of the wiper plug on the external profile for positioning the wiper plug in the tubular pipe (Fig 5a, 6a, profile 36, specifically, the individual segments), and configured to travel down in the tubular pipe (Fig 5a, 6a, profile is coupled to wiper plug and travels therewith),
wherein the landing profile comprises at least two arms configured to extend outward from the external profile (Fig 6a, latch 36, there are a plurality seen which extend from the external profile, as seen);
a nipple (Fig 5a, nipple 40) comprising a latch profile configured to cooperate with the landing profile of the wiper plug for holding the wiper plug at a landing position in the tubular pipe (Fig 5a, groove in 40 which engages with landing profile 36), wherein the at least two arms lock (Fig 6a, at least two arms seen), using at least one locking dog and a spring mechanical locking mechanism, the wiper plug to the nipple (Fig 5a, 6a, Para 0053, latch is “spring loaded and cammed into a more secure engagement with the latching features formed within receptacle 40”).
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 Duke by having the particulars of the landing profile and nipples as disclosed by Andrigo “to provide bi-directional fluid flow resistance” (Para 0027) and thereby limited inadvertent displacement from its downhole position.
Duke as modified is silent on the internal bore comprising a dovetail rail and the valve comprising a dovetail slot, wherein the valve is translationally coupled to the dovetail rail of the internal bore.
Colley teaches the internal bore comprising a dovetail rail (Fig 8A, mounting 75 would be within the bore and has a dovetail rail indicated at 87) and the valve comprising a dovetail slot (Fig 8A, valve 76 has dovetail slot indicated at 87), wherein the valve is translationally coupled to the dovetail rail of the internal bore (Fig 8A, valving 76 is translationally coupled to the rail, see also Column 17, lines 31-38).
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 Duke by having the particulars of dovetail rail and slot as disclosed by Colley because it “allow[s] the flapper to be securely and reliably mounted to flapper arm while at the same time allow easy replacement of worn flappers” (Column 17, lines 36-38).
Regarding claim 3, Duke as modified by Andrigo teaches wherein the spring mechanical locking mechanism is disposed on the wiper plug (Fig 6a, latch 36, there are a plurality seen which extend from the external profile, as seen, Para 0053, latch is “spring loaded and cammed into a more secure engagement with the latching features formed within receptacle 40”) and configured to trigger the at least two arms to extend out from the external profile and to engage the latch profile (Fig 5a, groove in 40 which engages with landing profile 36, see also Para 0053).
Regarding claim 4, Duke teaches wherein the tubular pipe is production tubing (Fig 1, 3, tubular C; the examiner notes the present claim is an apparatus claim and the tubular C meets all of the structural requirements recited).
Regarding claim 7, Duke as modified teaches wherein at least one of the plurality of wipers comprises a fin (Para 0038 of Nanney, wipers are fins), and wherein an exterior peripheral surface of the fin comprises a radially expandable sealing surface adapted to seal against an inner surface of the tubular pipe (Para 0038 of Nanney, “Leading fin 46 is biased into sealing engagement with casing 50 by its own resiliency as well as the resiliency of the remaining flexed fins 47, 48.”).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THEODORE N YAO whose telephone number is (571)272-8745. The examiner can normally be reached typically 8am-4pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, TARA SCHIMPF can be reached at (571) 270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THEODORE N YAO/Primary Examiner, Art Unit 3676