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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/7/2025 with claims from 8/13/2025 has been entered.
Response to Arguments
Applicant's arguments filed 8/13/2025 have been fully considered.
Applicant’s amendments have introduced new matter and clarity issues, resulting in 112 rejections, see below.
Applicant argues that the anchor/packer assembly of Buyaert does not have all the elements of current claim 30.
The Examiner disagrees.
Applicant’s claims recite structure and intended use for the structure. Buyaert as modified, is interpreted as disclosing the structure, and is capable of being used for the intended use. Consequently Buyaert anticipates the claims.
Furthermore, Applicant argues that US 5462120 A to Gondouin does not teach a bridge plug. Gondouin is not relied upon for teaching a bridge plug.
It is suggested to applicant to amend the claims and positively claim the wellbore, the annular seal outside casing, and the one or more openings in the casing located uphole of the annular seal. Positively claiming the tool and wellbore as part of a system would overcome the prior art.
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 30-40 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 30 is amended to recite “a deflector configured to redirect alloy beads delivered through said wellbore tubular body downhole and redirect them radially outwards in all directions towards the tubular body wall whereby said alloy beads are distributed around said existing annular seal, wherein the deflector is arranged up-hole of the bridge plug.”
While, see below, there are some clarity issues, there appears to be an aspect of the limitation that is not supported by the originally filed specification. Specifically “whereby said alloy beads are distributed around said existing annular seal.” The examiner finds support for “wherein the alloy beads accumulate on top of the annular seal” [0011],[0025], “the up-hole face of the annular seal” [0017].[0021], “] Once the alloy beads 11 have been delivered into the annulus and onto the annular seal 4” [0102] However, the examiner does not find support for “around” the annular seal.
The Examiner with examine the claims, as if they read “on” the annular seal.
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 30-40 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.
Claim(s) 30 is/are rejected as indefinite because they claim both an apparatus and method of using an apparatus. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 97 USPQ2d 1737 (Fed. Cir. 2011). In Katz, a claim directed to "[a] system with an interface means for providing automated voice messages...to certain of said individual callers, wherein said certain of said individual callers digitally enter data" was determined to be indefinite because the italicized claim limitation is not directed to the system, but rather to actions of the individual callers, which creates confusion as to when direct infringement occurs. Katz, 639 F.3d at 1318 (citing IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384, 77 USPQ2d 1140,1145 (Fed. Cir. 2005), in which a system claim that recited "an input means" and required a user to use the input means was found to be indefinite because it was unclear "whether infringement occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means."); Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) (claim directed to an automatic transmission workstand and the method of using it held ambiguous and properly rejected under 35 U.S.C. 112, second paragraph).
Claim 30 is amended to recite “a deflector configured to redirect alloy beads delivered through said wellbore tubular body downhole and redirect them radially outwards in all directions towards the tubular body wall whereby said alloy beads are distributed around said existing annular seal, wherein the deflector is arranged up-hole of the bridge plug.”
The limitation positively claims a deflector arranged up-hole of the bridge plug, where the deflector is configured to “redirect alloy beads delivered through said wellbore tubular body downhole and redirect them radially outwards towards the tubular body wall”. However the limitation “whereby said alloy beads are distributed around said existing annular seal” is unclear. It is not clear if this limitation is part of the “configured to” limitaion, and/or a step of distributing alloy beads.
As best understood, it is suggested to amend the claim to
“a deflector configured to redirect alloy beads delivered through said wellbore tubular body downhole and redirect them radially outwards in all directions towards the tubular body wall whereby said deflector is further configured to distribute said alloy beads on said existing annular seal, wherein the deflector is arranged up-hole of the bridge plug.”
Or
“a deflector configured to redirect alloy beads delivered through said wellbore tubular body downhole, [[and]] redirect them radially outwards in all directions towards the tubular body wall and distribute[[d]] said alloy beads on said existing annular seal, wherein the deflector is arranged up-hole of the bridge plug.”
Dependent claims are likewise rejected.
The claims are examined as per the first suggestion.
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.
8
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 30-33 is/are rejected under 35 U.S.C. 102a1 as being anticipated by US 20020070018 A1 to Buyaert as evidenced by US 4397355 A to McLamore, in view of US 5462120 A to Gondouin.
Regarding claim 30: Buyaert discloses 30. (Original) A bridge plug assembly for use in forming an alloy plug on an existing annular seal that encircles an oil/gas wellbore tubular body (note “for use in forming an alloy plug on an existing annular seal that encircles an oil/gas wellbore tubular body” is considered the indented use of the bridge plug assembly, and an "[A]pparatus claims cover what a device is, not what a device does" MPEP 2114. A functional claim limitation is considered met if the apparatus of the prior art can perform the function., furthermore the “alloy plug” and “existing annular seal” are not considered to be positively claimed. ), said assembly comprising:
a bridge plug 34 operable to expand against and engage with the wellbore tubular body such that the bridge plug is retained in position within the wellbore tubular body ([0034],); (See US 4397355 A to McLamore , who teaches a whipstock with an anchor packer with a mandrel 24 having tubular bore 26 and this is considered a bridge plug (Col 2, lines 35-51). This is considered evidence that element 34 can be considered to be a bridge plug)
a deflector 22 configured to redirect alloy beads delivered through said wellbore tubular body downhole and redirect them radially outwards towards the tubular body wall whereby said deflector is further configured to distribute said alloy beads on said existing annular seal, wherein the deflector is arranged up-hole of the bridge plug. (Figure 3, Note whipstock 22 is interpreted as capable of performing the claimed functionality of “obstruct alloy beads delivered downhole and redirect them radially outwards towards the tubular body wall and distribute them on an existing annular seal.” The deflector of Buyaert meets the limitations and could be used in a method for performing “forming an alloy plug on an existing annular seal that encircles an oil/gas wellbore tubular body” ).
However Buyaert fails to disclose “in all directions” and whereby said deflector is further configured to distribute said alloy beads on said existing annular seal.
Gondouin teaches a twin whipstock 3 with a cone shape (Figures 1 and 8)
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Buyaert and use a whipstock shape in the style of Gondouin, in view of Gondouin, so as to allow the drilling of a multiple windows in different directions from the same location (Case 1, Col 4, line 35- Col 5, line 50)
Furthermore this would amount to no more than Simple substitution of one known element for another to obtain predictable results.
The modification above is interpreted as being capable of performing the claimed functional use, as the space around the cone may be filled with cement or other drillable material that appear to be distributed in all directions.
Regarding claim 31: Buyaert discloses 31. (Original) The bridge plug assembly of claim 30, further comprising a delivery support connection point 60, by which the assembly is connectable to delivery means via a delivery support such that said assembly can be delivered to and retrieved from a downhole target region of a wellbore tubular body.([0036],[0039], and [0041] )
Regarding claim 32: Buyaert discloses 32. (Original) The bridge plug assembly of claim 31, further comprising a delivery support 55 connected to the delivery support connection point and wherein the deflector is located on the delivery support; wherein preferably the delivery support is selected from: coiled tubing, pipe, slick line and wireline.(“Wellbore string” 55 is interpreted as pipe)
Regarding claim 33: Buyaert discloses 33. (Original) The bridge plug assembly of claim 30, 31 or 32, wherein the deflector comprises an up-hole facing surface that comprises at least one sloped region.(Figure 3)
Regarding claim 34: Buyaert discloses the claimed invention except wherein the up-hole facing surface of the deflector is cone shaped and the apex of the cone is located at the central axis of the deflector.
Gondouin teaches a twin whipstock 3 with a cone shape with the apex of the cone is located at the central axis of the deflector. (Figures 1 and 8)
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Buyaert and use a whipstock in the style of Gondouin, in view of Gondouin, so as to allow the drilling of a multiple windows in different directions from the same location (Case 1, Col 4, line 35- Col 5, line 50)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN MACDONALD whose telephone number is (571)272-8763. The examiner can normally be reached M-F 9:00-5:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at (571) 272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A MACDONALD/ Primary Examiner, Art Unit 3674
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