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 8-13, filed 10/06/2025, 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 Therefore, the rejection has been withdrawn.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 Godfrey et al. (US 2014/0083702 A1).
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 1, 3, 5-7, 9-11, 13-16, 18, 20, 22, 26-28, and 30 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.
Regarding claims 1 and 30, it is unclear what how the “perimeter length” of the wall structure can vary along the longitudinal axis in the non-expanded configuration. Perimeter length is taken to mean the length of the wall structure that touches the well bore wall when expanded. The length of the wall structure does not appear to vary but the height of the wall structure does. For the purposes of the examination, it is believed that this should be the “outer gauge perimeter.”
Regarding claims 3 and 7, it is unclear if the first, second, and third “inner perimeter length” are separate lengths from the “perimeter length” or if it is a subset of the “inner perimeter length.” For the purposes of the examination, it is believed to be a subset of the “inner perimeter length” of claim 1.
Regarding claim 10, it is unclear what the “greater thickness” at a transition area between the first and third sections and/or between the third and second sections is being compared to. For the purposes of examination, it is assumed that the greater thickness is being compared to the respective thickness of the first or second sections.
Claims 5-6, 9, 11, 13-16, 18, 20, 22, and 26-28 are rejected for depending on a rejected independent claim.
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, and 26-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Godfrey et al. (US 2014/0083702 A1), hereinafter Godfrey.
Regarding claim 1 as best understood, Godfrey discloses an expansion apparatus (300, fig. 3a-d, par. 0045-0046) comprising:
an expandable element (120, fig. 3a-d and fig. 5-10, par. 0045-0046) having a monolithic wall structure (fig. 3a-b) circumscribing a longitudinal axis (fig. 3a-b) and enclosing a space for receiving a pressurised fluid for use in inflating the expandable element (par. 0045-0046) between a non -expanded configuration (fig. 3a) and an expanded configuration (fig. 3b);
the wall structure (see annotated fig. 3A1, 3A2, and 3B) being 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. 3A, wherein the outer length of 120 is greater than the height of 120, see annotated fig. 3A1), wherein the outer gauge perimeter is defined by an outer envelope of the wall structure (see annotated fig. 3A1), and
wherein expansion during inflation is achieved by reforming the initial nonexpanded
profile of the wall structure to increase the outer gauge perimeter (see annotated fig. 3B), and
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wherein the perimeter length of the wall structure resulting from formation by additive manufacturing varies along the longitudinal axis in the non-expanded configuration (see annotated fig. 3A2).
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Annotated Fig. 3A1
Annotated Fig. 3A2
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Annotated Fig. 3B
Regarding claim 3, as best understood, Godfrey further discloses wherein the wall structure comprises:
a first perimeter length at a first axial location;
a second perimeter length at a second axial location; and
a third perimeter length at a third axial location which is intermediate the first
and second axial locations, wherein the third perimeter length is greater than the first
and second perimeter lengths (the length of edge of 120 that is expanded in 3B, see annotated fig. 3A and 3B).
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Annotated Fig. 3A and 3B
Regarding claim 5, Godfrey further discloses wherein:
a first flank angle is formed between the longitudinal axis and a line connecting
the first axial location and the third axial location,
a second flank angle is formed between the longitudinal axis and a line connecting the second axial location and the third axial location, and
the first flank angle and the second flank angle are equal (see annotated Fig. 3A3).
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Annotated Fig. 3A3
Regarding claim 6, Godfrey further discloses,
wherein an inner perimeter length of the wall structure varies along the longitudinal axis (the height of 120, see annotated fig. 3A and 3B).
Regarding claim 7, as best understood, Godfrey further discloses,
wherein the wall structure comprises:
a first inner perimeter length at a first axial location;
a second inner perimeter length at a second axial location; and
a third inner perimeter length at a third axial location which is intermediate the
first and second axial locations,
wherein the third inner perimeter length is greater than the first and second inner perimeter lengths (the height of 120, see annotated fig. 3A and 3B).
Regarding claim 9, Godfrey further discloses,
wherein the wall structure comprises:
a first section;
a second section; and
a third section, the third section being longitudinally intermediate the first and second sections (see annotated fig. 3A and 3B).
Regarding claim 10 as best understood, Godfrey further discloses wherein the wall structure has a greater thickness at a transition area between the first and third sections and/or between the third and second sections (see annotated Fig. 3A2 and 3A3).
Regarding claim 11, Godfrey 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. 3A and 3B); and
the outer gauge perimeter remains constant through the third section (see annotated Fig. 3A and 3B).
Regarding claim 13, Godfrey further discloses, wherein the expandable element is hollow (120, fig. 3a-d par. 0045-0046), the expansion apparatus is longitudinally asymmetric, the expandable element is substantially inelastic, or combinations thereof (see citation for hollow).
Regarding claim 16, Godfrey further discloses wherein the wall structure comprises folds, and wherein the folds are circumferentially distributed (612 and 614, fig. 6B, par. 0050).
Regarding claim 26, Godfrey discloses a method of providing a seal, the method comprising: locating the expansion apparatus of claim 1 in a wellbore (fig. 3A and 3C, par. 0045-0046); and inflating the expansion apparatus in the wellbore to provide the seal (fig. 3B and 3D, par. 0045-0046).
Regarding claim 27, Godfrey further discloses, wherein inflating further comprises increasing the outer gauge perimeter of the wall structure of the expansion apparatus (fig. 3A-D, par. 0045-0046).
Regarding claim 28, Godfrey further discloses, wherein inflating further comprises providing the seal with a surface of the expansion apparatus or a sleeve surrounding the expansion apparatus (wherein 120 creates a seal as it contacts 114, fig. 3B, par. 0045-0046).
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.
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 18, 20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over by Godfrey et al. (US 2014/0083702 A1), hereinafter Godfrey in view of Head (5,327,962), hereinafter Head.
Regarding claim 18, Godfrey discloses claim 16.
Godfrey discloses the above, but fails to explicitly disclose wherein at least one of the folds define a generally serpentine cross-section in a circumferential direction, and the folds extend longitudinally.
Head teaches a similar device in the same field of downhole seals wherein at least one of the folds define a generally serpentine cross-section in a circumferential direction, and the folds extend longitudinally (see annotated fig. 8.1 of Head).
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 folds of Godfrey with the shape of Head of a generally serpentine cross-section in a circumferential direction in order to allow for a larger expansion (col. 4 lines 61-64 of Head; see also col. 4 lines 9-31 and col. 5 lines 16-28 of Head).
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Annotated fig. 8.1
Regarding claim 20, Godfrey discloses claim 16.
Godfrey discloses the above, but fails to explicitly disclose wherein each fold has an associated depth and the fold depth varies along the longitudinal axis of the wall structure, or wherein each fold has a generally arcuate section with axially extending sections extending from end thereof.
Head teaches a similar device in the same field of downhole seals wherein each fold has an associated depth and the fold depth varies along the longitudinal axis of the wall structure, or wherein each fold has a generally arcuate section with axially extending sections extending from end thereof (see annotated fig. 8.2 of Head).
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 folds of Godfrey with the shape of Head wherein each fold has a generally arcuate section with axially extending sections extending from end thereof in order to allow for a larger expansion (col. 4 lines 61-64 of Head; see also col. 4 lines 9-31 and col. 5 lines 16-28 of Head).
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Annotated fig. 8.2
Regarding claim 22, Godfrey discloses a wall structure (see annotated fig. 3A1, 3A2, and 3B).
Godfrey discloses the above, 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 Godfrey with an added outer layer of Head in order to allow for 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 by Godfrey et al. (US 2014/0083702 A1), hereinafter Godfrey in view of Murphree et al. (US 20160312567 A1), hereinafter Murphree.
Regarding claim 30, as best understood, Godfrey discloses a method of manufacturing an expansion apparatus (300, fig. 3a-d, par. 0045-0046), the method comprising:
the expansion apparatus (300, fig. 3a-d, par. 0045-0046) comprising an expandable element (120, fig. 3a-d and fig. 5-10, par. 0045-0046) having a monolithic wall structure (fig. 3a-b) circumscribing a longitudinal axis (fig. 3a-b) and enclosing a space for receiving a pressurised fluid for use in inflating the expandable element (par. 0045-0046) between a non-expanded configuration (fig. 3a) and an expanded configuration (fig. 3b),
the wall structure (see annotated fig. 3A1, 3A2, and 3B) 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. 3A, wherein the outer length of 120 is greater than the height of 120, see annotated fig. 3A1), wherein the outer gauge perimeter is defined by an outer envelope of the wall structure (see annotated fig. 3A1),
wherein the initial non-expanded profile is reformable by inflation to increase the
outer gauge perimeter (see annotated fig. 3B, par. 0045-0046), and
wherein the perimeter length of the wall structure as a result of the forming step varies along the longitudinal axis in the non-expanded configuration (see annotated fig. 3A2).
Godfrey 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 Godfrey 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.
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
/Nicole Coy/Supervisory Patent Examiner, Art Unit 3672