Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments and Amendments
Applicant's arguments filed 05/09/2025 have been fully considered but they are not persuasive.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references with respect to the alloy beads placement and when the beads are melted, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Spencer teaches the use of an alloy shot and heating the alloy downhole in order to form a seal at the desired location (par. 0044-0043 of Spencer).
In response to applicant's amendment to include the chemical reaction heater limitation in the independent claims. This has already been rejected in dependent claims. It is noted there is no specific argument related to the chemical reaction heater and allowability.
The claim objections and previous 112B rejections for claims 23, 33, and 36 have been withdrawn.
Unless otherwise repeated below, all other objections and rejections previously presented have been withdrawn.
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 4-5, 10-11, and 21 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 4 and 21 recite the limitation " multiple heaters.” It is unclear if this is the chemical reaction heater in the independent claims or a different heater that is part of the heating tool.
Claims 10-11 recite the limitation " the tool" in line 3 of each. There is insufficient antecedent basis for this limitation in the claim since the claims that 10 and 11 depend on do not have the element of “an annular seal repair tool assembly" or “the tool.”
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, 6-11, 16, 18-20, 22, 27-29, and 32-36 are rejected under 35 U.S.C. 103 as being unpatentable over Tonnessen et al. (US 2012/0085539 A1), hereinafter Ton in view of Spencer (US 20030019867 A1), hereinafter Spencer further in view of Bouldin et al. (US 20220018201 A1), hereinafter Boulden.
Regarding claim 1, Ton discloses a method of repairing a leaking annular seal (par. 0003 and 0007) located within an annulus (12, fig. 17) that encircles an oil/gas wellbore tubular body (4, fig. 17), said method comprising the following steps:
deploying a heating tool comprising at least one heater downhole (par. 0154) via the tubular body (142b, par. 0152 and 0154, fig. 7 and 17, wherein 142b is part of 28 which is within casing 4) to a downhole target region that is proximal to the alloy sealing area (fig. 17);
positioning a deflector (192+210, fig. 1 and 17, see also par. 0156-0157) in the downhole target region (6, fig. 17) so that the deflector is up-hole of the annular seal (210 is uphole of holes 236, fig. 1 and 17) and down-hole of a portion of the tubular body wall that comprises one or more openings (192 is at least partially below holes 236, fig. 17);
delivering alloy to the downhole target region via the tubular body such that the deflector redirects the alloy beads radially outwards towards said one or more openings and into the annulus (par. 0168-0170, fig. 17); and
operating said heating tool to increase the temperature within the tubular body to a temperature that is sufficient to melt the solid metal (par. 0154) and allowing the molten alloy to cool and form an alloy plug that repairs the leaking annular seal (4, par. 0134, 0159, and 0170, fig. 17).
Ton discloses a heating tool and solid metal that is heated downhole (par. 0154) and an annular seal (4, fig. 17, par. 0170). However, Ton fails to explicitly disclose that the solid metal are alloy beads which are placed in the annulus on top of an annular seal, which is then heated to repair the leaking annular seal. Spencer teaches a similar device in the same field of sealing an annulus wherein the solid metal are alloy beads (104, par. 0032 of Spencer) which are placed in the annulus on top of an annular seal (115, par. 0042, fig. 2 of Spencer; see also 210, par. 0050, fig. 21 of Spencer), which is then heated (par. 0043, fig. 2 of Spencer) to repair the leaking annular seal (par. 0044, fig. 2 of Spencer). It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ton to incorporate the method of melting and placing the metal of Spencer in order to better control the placement and amount of metal used in the seal (par. 0042, fig. 2 of Spencer).
Further regarding claim 1, Ton as currently modified by Spencer teaches a deflector (192+210, fig. 1 and 17, see also par. 0156-0157 of Ton) and a heating tool (par. 0154 of Ton). However, Ton as currently modified by Spencer fails to explicitly disclose a deflector arranged uphole of the annular seal and the heating tool. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have tried positioning the heating tool below the deflector since the only options are above and below, and either will work in the current situation as long as the heater is close enough to the metal alloy to melt it.
Further regarding claim 1, Ton as currently modified by Spencer teaches a heating tool that is a induction heater (par. 0043, fig. 2 of Spencer). However, Ton in view of Spencer fails to explicitly teach wherein the heating tool comprises one or more chemical reaction heaters. Bouldin teaches a similar device in the same field of leak repair wherein the heater can be a chemical heater or an induction heater (par. 0041 of Bouldin). It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ton in view of Spencer to simply substitute the induction heater of Spencer with the chemical heater of Bouldin to yield the predictable result of heating up the alloy (par. 0041 – 0043 of Bouldin).
Regarding claim 2, Ton in view of Spencer and Bouldin teaches wherein the annular seal comprises a cement seal and/or an annular packer (115, par. 0042, fig. 2 of Spencer).
Regarding claim 3, Ton in view of Spencer and Bouldin teaches wherein said heating tool (par. 0154 of Ton) is deployed to a location within the wellbore tubular body (4, fig. 17 of Ton) that is proximal to and up-hole of the annular seal (142b which is part of 28, par. 0152 and 0154, fig. 7 and 17 of Ton).
Regarding claim 6, Ton in view of Spencer and Bouldin teaches wherein the heating tool and the deflector are provided as an annular seal repair tool assembly that is deployed downhole via a common delivery support that is connected to delivery means located above-ground at the surface of the wellbore (par. 0035-0037 of Ton).
Regarding claim 7, Ton in view of Spencer and Bouldin teaches wherein the common delivery support used to deploy the annular seal repair tool assembly downhole is selected from: coiled tubing, pipe, slick line and wireline (par. 0035-0037 of Ton).
Regarding claim 8, Ton in view of Spencer and Bouldin teaches wherein the delivery of the alloy beads (104, par. 0032 and 0044 of Spencer) is achieved by dumping the alloy beads into the wellbore tubular body from a location above-ground at the surface of the wellbore (142b, par. 0152 of Ton, wherein “dumping the alloy beads into the wellbore tubular body from a location above-ground at the surface” is taken to include a body containing the alloy which is then placed into the wellbore).
Regarding claim 9, Ton in view of Spencer and Bouldin teaches wherein the delivery of the alloy beads (104, par. 0032 and 0044 of Spencer) is achieved by a dump bailer deployed downhole (144 + 148 + 156 + 160, par. 0152-0153 of Ton) via the tubular body (142b, par. 0152 of Ton), said dump bailer forming part of the annular seal repair tool assembly (2, fig. 7 and 17, par. 0152-0153 of Ton).
Regarding claim 10, Ton in view of Spencer and Bouldin teaches wherein the delivery of the alloy beads (104, par. 0032 and 0044 of Spencer) is achieved via a coiled tubing or pipe (par. 0035-0037 of Ton) that is used to deploy the tool (2, fig. 7 and 17, par. 0152-0153 of Ton).
Regarding claim 11, Ton in view of Spencer and Bouldin teaches further comprising forming one or more openings (236, par. 0159 and 0165, fig. 13 of Ton) in the portion of the tubular body wall (4 which has holes 236, fig. 17, par. 0159 and 0169 of Ton) that is located up-hole from the annular seal (192+210 is uphole of holes 236, fig. 1 and 17, par. 0159 of Ton), wherein said one or more openings are formed prior to the delivery of the alloy beads using a hole making tool that forms part of the tool (32, par. 0159-0160 and 0165, fig. 13 of Ton).
Regarding claim 16, Ton in view of Spencer and Bouldin teaches wherein the deflector (192+210, fig. 1 and 17, see also par. 0156-0157 of Ton) is deployed downhole in an unexpanded or partially expanded state (192+210, fig. 11, par. 0163 of Ton) and then expanded (192+210, fig. 12, par. 0164 of Ton) towards the tubular body wall in the downhole target region (4 which has holes 236, fig. 17, par. 0159 and 0169 of Ton) so as to increase the extent to which the deflector redirects the alloy beads (par. 0170 of Ton).
Regarding claim 18, Ton in view of Spencer and Bouldin teaches wherein the alloy beads are provided in the form of a low melting alloy that has melting point of less than 300'C (par. 0047 of Spencer, see also par. 0032).
Regarding claim 19, Ton in view of Spencer and Bouldin teaches wherein the alloy beads are provided in the form of a bismuth based alloy (par. 0045 of Spencer).
Regarding claim 20, Ton discloses a downhole annular seal repair tool assembly (2, fig. 17) for use in forming an alloy plug (151, fig. 17, par. 0170) on an existing annular seal (4, fig. 17, par. 0170) that substantially encircles an oil/gas wellbore tubular body (fig. 17), said assembly comprising:
a delivery support connection point (16, fig. 17, par. 0134, 0137, and 0163), by which the assembly (2, fig. 17, par. 0134, 0137, and 0163) is connectable to delivery means via a delivery support (10, fig. 17, par. 0134, 0137, and 0163) such that the assembly can be delivered to (fig. 11, par. 0163) and retrieved from a downhole target region of the wellbore via the tubular body (fig. 18, par. 0171);
a heating tool having at least one heater (par. 0154), said heating tool configured to increase the temperature within the tubular body to temperature that is sufficient to melt the solid metal (par. 0154) so as to enable the formation of the alloy plug on the existing annular seal (4, par. 0134, 0159, and 0170, fig. 17); and
a deflector (192+210, fig. 1 and 17, see also par. 0156-0157), wherein the deflector is configured to obstruct alloy beads delivered downhole and redirect them radially outwards towards the walls of the wellbore tubular body (par. 0168-0170, fig. 17).
Ton discloses a heating tool (par. 0154) and solid metal that is heated downhole (par. 0154) and an annular seal (4, fig. 17, par. 0170). However, Ton fails to explicitly disclose that the solid metal are alloy beads which are placed in the annulus on top of an annular seal, which is then heated to repair the leaking annular seal. Spencer teaches a similar device in the same field of sealing an annulus wherein the solid metal are alloy beads (par. 0032 of Spencer) which are placed in the annulus on top of an annular seal (115, par. 0042, fig. 2 of Spencer; see also 210, par. 0050, fig. 21 of Spencer), which is then heated (par. 0043, fig. 2 of Spencer) to repair the leaking annular seal (par. 0044, fig. 2 of Spencer). It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ton to incorporate the method of melting and placing the metal of Spencer in order to better control the placement and amount of metal used in the seal (par. 0042, fig. 2 of Spencer).
Additionally, with this modification, it would be obvious to try when during the placement of the alloy beads the heaters are active, since the only options for the when to turn on the heater is before. During, or after the final placement of the alloy beads.
Further regarding claim 20, Ton as currently modified by Spencer teaches a deflector (192+210, fig. 1 and 17, see also par. 0156-0157) and a heating tool (par. 0154). However, Ton as currently modified by Spencer fails to explicitly disclose a deflector arranged up-hole of said heating tool. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have tried positioning the heating tool below the deflector since the only options are above and below, and either will work in the current situation as long as the heater is close enough to the metal alloy to melt it.
Further regarding claim 20, Ton as currently modified by Spencer teaches a heating tool that is a induction heater (par. 0043, fig. 2 of Spencer). However, Ton in view of Spencer fails to explicitly teach wherein the heating tool comprises one or more chemical reaction heaters. Bouldin teaches a similar device in the same field of leak repair wherein the heater can be a chemical heater or an induction heater (par. 0041 of Bouldin). It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ton in view of Spencer to simply substitute the induction heater of Spencer with the chemical heater of Bouldin to yield the predictable result of heating up the alloy (par. 0041 – 0043 of Bouldin).
Regarding claim 22, Ton in view of Spencer and Bouldin teaches wherein the deflector (192+210, fig. 1 and 17, see also par. 0156-0157 of Ton) comprises an up-hole facing surface that comprises at least one sloped region (192, fig. 1 and 17, see also par. 0156-0157 of Ton).
Regarding claim 27, Ton in view of Spencer and Bouldin teaches wherein the deflector (192+210, fig. 1 and 17, see also par. 0156-0157 of Ton) is configured to be expandable radially outwards (192+210, fig. 12, par. 0163-0164 of Ton) towards the tubular body wall (4, fig. 7 and 17).
Regarding claim 28, Ton in view of Spencer and Bouldin teaches wherein the mechanism by which the expansion of the deflector is achieved is selected from hydraulic means, pneumatic means, mechanical means and combinations thereof (hydraulically and mechanically, par. 0159 of Ton).
Regarding claim 29, Ton in view of Spencer and Bouldin teaches wherein the deflector (192+210, fig. 1 and 17, see also par. 0156-0157 of Ton) is urged to expand and/or contract by way of one or more resilient biasing means (120, par. 0158-0159 of Ton).
Regarding claim 32, Ton in view of Spencer and Bouldin teaches further comprising a delivery support selected from: coiled tubing, pipe, slick line and wireline (par. coiled tubing, 0037 of Ton).
Regarding claim 33, Ton in view of Spencer and Bouldin teaches wherein the delivery support is either coiled tubing or pipe (par. coiled tubing, 0037 of Ton) are configured to deliver alloy beads to the downhole target region of the wellbore (par. 0163, see also par. 0037 of Ton).
Regarding claim 34, Ton in view of Spencer and Bouldin teaches further comprising alloy bead (104, par. 0032 and 0044 of Spencer) delivery means in the form of a dump bailer (144 + 148 + 156 + 160, par. 0152-0153 of Ton) arranged up-hole of the deflector (fig. 1, 17, and 7 of Ton) and said heating tool (par. 0154 of Ton).
Regarding claim 35, Ton in view of Spencer and Bouldin teaches further comprising hole making equipment configured to form one or more opening in the walls of the wellbore tubular body (32, fig. 13, par. 0159-0160 of Ton).
Regarding claim 36, Ton in view of Spencer and Bouldin teaches wherein the hole making equipment is selected from: a drill, a mechanical punch, a perforating gun, a saw or any other suitable cutting tools (par. 0165 of Ton, see also par. 0159-0160 of Ton).
Claims 4 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Tonnessen et al. (US 2012/0085539 A1), hereinafter Ton in view of Spencer (US 20030019867 A1), hereinafter Spencer further in view of Bouldin et al. (US 20220018201 A1), hereinafter Boulden further in view of Carragher et al. (US 2019/0085659 A1), hereinafter Carragher.
Regarding claim 4, Ton in view of Spencer and Bouldin teaches a heating tool, which must have at least one heater (par. 0154 of Ton). However, Ton fails to explicitly disclose wherein the heating tool comprises multiple heaters that are operated independently to provide heat at different times. Carragher teaches a similar device in the same field of downhole heating of a metal alloy wherein the heating tool comprises multiple heaters (par. 0081 of Carragher) that are operated independently (par. 0070-0081 of Carragher, wherein multiple heaters can be used and the heaters are adapted to ensure the heaters can fit through tight spaces and provide sufficient heat to the nearby alloy to melt it but also withdrawal while the alloy is liquid) to provide heat at different times (par. 0075 of Carragher). It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ton in view of Spencer to incorporate the multiple heaters that are operated independently of Carragher in order to ensure a complete seal (par. 0070-0081 of Carragher).
Regarding claim 21, Ton in view of Spencer and Bouldin teaches a heating tool, which must have at least one heater (par. 0154 of Ton). However, Ton fails to explicitly disclose wherein the heating tool comprises multiple heaters that are operated independently to provide heat at different times. Carragher teaches a similar device in the same field of downhole heating of a metal alloy wherein the heating tool comprises multiple heaters (par. 0081 of Carragher) that are operated independently (par. 0070-0081 of Carragher, wherein multiple heaters can be used and the heaters are adapted to ensure the heaters can fit through tight spaces and provide sufficient heat to the nearby alloy to melt it but also withdrawal while the alloy is liquid) to provide heat at different times (par. 0075 of Carragher). It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ton in view of Spencer to incorporate the multiple heaters that are operated independently of Carragher in order to ensure a complete seal (par. 0070-0081 of Carragher).
Claim 37 is rejected under 35 U.S.C. 103 as being unpatentable over Tonnessen et al. (US 2012/0085539 A1), hereinafter Ton in view of Spencer (US 20030019867 A1), hereinafter Spencer further in view of Bouldin et al. (US 20220018201 A1) further in view of Firmaniuk et al. (US 6341653 B1), hereinafter Firman.
Regarding claim 37, Ton in view of Spencer and Bouldin teaches claim 20). However, Ton in view of Spencer fails to explicitly teach a junk basket positioned at a leading end of the assembly. Firman teaches a similar device in the same field of workover wherein a junk basket positioned at a leading end of the assembly (12, fig. 2a, col. 4 lines 40-46 of Firman). It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ton in view of Spencer to include a junk basket in order to collect debris (col. 4 lines 40-46 of Firman).
Allowable Subject Matter
Claims 5, 12-15, 24-26, and 30-31 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 5 recites steps a through e - specifically, steps c through e are noted. The combination of pre-heating the downhole target region, but not raising the temperature to the point where the alloy beads are melting until the alloy beads have accumulated on top of the annular seal. These steps in combination, with the other limitations of the claims, are not taught in the prior art, so it would not be obvious to modify the prior art without undo hindsight.
Claims 12 and 24 teaches agitating or vibrating the downhole target region in order to assist in the passage of the alloy beads through said one or more openings into the annulus. It would not be obvious to modify the device, since no prior art was found that teaches this in combination with the other elements of the claims and the independent claims, nor is it obvious to add this in without undo hindsight. Claims 13-15 and 25-26 would be allowable because of their dependence on claims 12 and 24 respectively.
Claim 30 teaches the deflector comprises a canopy of flexible material connected to an umbrella spring mechanism. It would not be obvious to modify the device, since no prior art was found that teaches this in combination with the other elements of the claims and the independent claims, nor is it obvious to add this in without undo hindsight.
Claim 23 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Railey whose telephone number is (571)270-7353. The examiner can normally be reached M-F (8-4).
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/JENNIFER A RAILEY/Examiner, Art Unit 3676
/Nicole Coy/Supervisory Patent Examiner, Art Unit 3672