DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments and Amendments
Applicant’s arguments, see pages 9-15, filed 05/21/2026, with respect to the rejection(s) of claim(s) 1, 3, 5-7, 9-11, 13, 16, 18, 20, 22, 26-28, and 30 under 35 USC § 102 and § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Howard et al. (3,272,517).
The 112 (b) rejections have been withdrawn.
Claim Rejections - 35 USC § 102
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 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.
(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.
Claims 1, 3, 5-7, 9-11, 13, 16, 18, 20, and 26-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Howard et al. (3,272,517), hereinafter Howard.
Regarding claim 1, Howard discloses an expansion apparatus (13, fig. 1-3, col. 2 lines 44-56) comprising:
an expandable element (16, fig. 1-3, col. 2 lines 44-56) having a monolithic wall structure (16b, fig. 1-2, col. 2 lines 56-60 and col. 3 lines 10-15) circumscribing a longitudinal axis (fig. 1-3) and enclosing a space for receiving a pressurised fluid for use in inflating the expandable element (inside of 16, fig. 1-3, col. 2 lines 44-56) between a non-expanded configuration (fig. 1, col. 2 lines 6-8 and col. 3 lines 66-69) and an expanded configuration (fig. 3, col. 2 lines 11-12);
the wall structure being defined by folds (18, fig. 2, col. 3 lines 10-15) formed by additive manufacturing (The claimed phrase “additive manufacturing” is being treated as a product by process limitation. As set forth in MPEP 2113, product by process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 USC 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. MPEP 2113.) to have an initial non-expanded profile in which a perimeter length of the wall structure is greater than an outer gauge perimeter of the wall structure (fig. 1 and 2 vs fig. 3, wherein in fig. 1 the folds 18 are still folded onto themselves), the initial non-expanded profile being a profile of the non-expanded configuration (fig. 1-2),
wherein the folds span a length of the wall structure (fig. 1-2),
wherein the perimeter length of the wall structure is defined by tracing an outer surface of the folds (effective circumference of 16b in fig. 1-2) and the outer gauge perimeter is defined by an outer envelope of the wall structure (total circumference of 16b in fig 2, including the internal folded parts of 18), and
wherein expansion during inflation is achieved by reforming the initial non- expanded profile of the wall structure to increase the outer gauge perimeter (fig. 3 vs 1, col. 3 lines 10-16, wherein in fig. 3 the folds 18 are no longer folded onto themselves), and
wherein the perimeter length of the wall structure (fig. 1) resulting from formation by additive manufacturing (see product by process above) varies along the longitudinal axis in the initial non-expanded profile (fig. 1, wherein the length of 16b varies from a smaller radius closer to 17 to a larger radius in the middle section of 16b).
Regarding claim 3, Howard further discloses wherein the wall structure comprises:
a first perimeter length at a first a longitudinal location (see annotated fig. 1);
a second perimeter length at a second longitudinal location (see annotated fig. 1); and
a third perimeter length at a third longitudinal axial location which is intermediate the first and second longitudinal locations, wherein the third perimeter length is greater than the first and second perimeter lengths (see annotated fig. 1).
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Regarding claim 5, Howard further discloses wherein:
a first flank angle is formed between the longitudinal axis and a line connecting the first longitudinal location and the third longitudinal-location (see annotated fig. 1),
a second flank angle is formed between the longitudinal axis and a line connecting the second longitudinal location and the third longitudinal location (see annotated fig. 1), and
the first flank angle and the second flank angle are equal (see annotated fig. 1).
Regarding claim 6, Howard further discloses wherein an inner perimeter length of the wall structure (length of inner side 16b of fig. 1-2, wherein the inner side 16b is closer to 16a) varies along the longitudinal axis (fig. 1, wherein the length of inner side 16b varies from a smaller radius closer to 17 to a larger radius in the middle section of 16b).
Regarding claim 7, Howard further discloses wherein the wall structure comprises:
a first inner perimeter length at a first longitudinal location (see annotated fig. 1.2);
a second inner perimeter length at a second longitudinal-location (see annotated fig. 1.2); and
a third inner perimeter length at a third longitudinal location which is intermediate the first and second longitudinal locations (see annotated fig. 1.2),
wherein the third inner perimeter length is greater than the first and second inner perimeter lengths (see annotated fig. 1.2).
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Regarding claim 9, Howard further discloses wherein the wall structure comprises:
a first section (area between L1 and L2, see annotated fig. 1.3);
a second section (area between L3 and L4, see annotated fig. 1.3); and
a third section (area between L2 and L3, see annotated fig. 1.3), the third section being longitudinally intermediate the first and second sections (see annotated fig. 1.3).
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Regarding claim 10, Howard further discloses wherein the wall structure has a greater thickness at a transition area between the first and third sections relative to the thickness of the wall structure in the first section and/or between the third and second sections relative to the thickness of the wall structure in the second section (see annotated fig. 1.3).
Regarding claim 11, Howard further discloses wherein at least one of:
the outer gauge perimeter increases or decreases through the first section and/or the second section (see annotated fig. 1.3); and
the outer gauge perimeter remains constant through the third section (see annotated fig. 1.3).
Regarding claim 13, Howard further discloses wherein the expandable element is hollow, the expansion apparatus is longitudinally asymmetric, the expandable element is substantially inelastic, or combinations thereof (fig. 1, col. 2 lines 44-56, wherein 16 is hollow, since it is later inflated with fluid).
Regarding claim 16, Howard further discloses wherein the folds are circumferentially distributed (fig. 2).
Regarding claim 18, Howard further discloses wherein at least one of the folds define a generally serpentine cross-section in a circumferential direction (fig. 2).
Regarding claim 20, Howard further discloses wherein each of the folds has an associated fold depth and the fold depth varies along the longitudinal axis of the wall structure, or wherein each of the folds has a generally arcuate section with axially extending sections extending from each end thereof.
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Regarding claim 26, Howard discloses a method of providing a seal, the method comprising:
locating the expansion apparatus of claim 1 (13, fig. 1-3, col. 2 lines 44-56; see claim 1) in a wellbore (fig. 1-3, col. 2 lines 44-56); and
inflating the expansion apparatus in the wellbore to provide the seal (col. 2 lines 44-56, fig. 1 and 3).
Regarding claim 27, Howard further discloses wherein inflating further comprises increasing the outer gauge perimeter of the wall structure of the expansion apparatus (fig. 3 vs 1, col. 3 lines 10-16, wherein in fig. 3 the folds 18 are no longer folded onto themselves).
Regarding claim 28, Howard further discloses wherein inflating further comprises providing the seal with a surface of the expansion apparatus or a sleeve surrounding the expansion apparatus (col. 2 lines 44 to col. 3 lines 16, fig. 3, wherein 16b creates a seal in fig. 3).
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.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Howard et al. (3,272,517), hereinafter Howard in view of Head (5,327,962), hereinafter Head.
Regarding claim 22, Howard discloses a wall structure (fig. 1-3), but fails to explicitly disclose a layer surrounding the wall structure, the layer configured to create a seal in the expanded configuration.
Head teaches a similar device in the same field of downhole seals wherein there is a layer surrounding the wall structure (11, fig. 1, col. 3 line 46 to col. 4 line 9), the layer configured to create a seal in the expanded configuration (11, fig. 1, col. 3 line 46 to col. 4 line 9).
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 the wall of Howard with an added outer layer of Head in order to achieve a wellbore seal while additionally allowing for advantageous chemical resistance to downhole fluids (col. 3 lines 48-55 of Head).
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Howard et al. (3,272,517), hereinafter Howard in view of Murphree et al. (US 20160312567 A1), hereinafter Murphree.
Regarding claim 30, Howard discloses a method of manufacturing an expansion apparatus, the method comprising:
the expansion apparatus (13, fig. 1-3, col. 2 lines 44-56) comprising an expandable element (16, fig. 1-3, col. 2 lines 44-56) having a monolithic wall structure (16b, fig. 1-2, col. 2 lines 56-60 and col. 3 lines 10-15) circumscribing a longitudinal axis (fig. 1-3) and enclosing a space for receiving a pressurised fluid for use in inflating the expandable element (inside of 16, fig. 1-3, col. 2 lines 44-56) between a non-expanded configuration (fig. 1, col. 2 lines 6-8 and col. 3 lines 66-69) and an expanded configuration (fig. 3, col. 2 lines 11-12),
the wall structure defined by folds (18, fig. 2, col. 3 lines 10-15), wherein the folds span a length of the wall structure (fig. 1-2), the wall structure having an initial non-expanded profile in which a perimeter length of the wall structure is greater than an outer gauge perimeter of the wall structure (fig. 1 and 2 vs fig. 3, wherein in fig. 1 the folds 18 are still folded onto themselves),
wherein the perimeter length of the wall structure is defined by tracing an outer surface of the folds (effective circumference of 16b in fig. 1-2) and the outer gauge perimeter is defined by an outer envelope of the wall structure (total circumference of 16b in fig 2, including the internal folded parts of 18), the initial non-expanded profile being a profile of the non-expanded configuration (fig. 1-2)
wherein the initial non-expanded profile is reformable by inflation to increase the outer gauge perimeter (fig. 3 vs 1, col. 3 lines 10-16, wherein in fig. 3 the folds 18 are no longer folded onto themselves), and
wherein the perimeter length of the wall structure (fig. 1) as varies along the longitudinal axis in the initial non-expanded profile (fig. 1, wherein the length of 16b varies from a smaller radius closer to 17 to a larger radius in the middle section of 16b).
Howard discloses the above, but fails to explicitly disclose the manufacturing technique of the device. Murphree teaches a similar device in the same field of downhole sealing wherein the device can be manufactured by any suitable technique including 3D printing (par. 0019 of Murphree). It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have simply substituted the generic manufacturing method of Howard for the particular method of 3D printing of Murphree in order to yield the predictable result of manufacturing the device by any suitable technique (par. 0019 of Murphree).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Greci et al. (US 11073004 B2) – well screen that has folds that expand
Fripp et al. (US 9212542 B2) – sealing system which varies longitudinally and has folds
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 Jennifer A Railey whose telephone number is (571)270-7353. The examiner can normally be reached M-F (8-4).
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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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/JENNIFER A RAILEY/Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676
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