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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 16, 2026 has been entered.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 (or as subject to pre-AIA 35 USC 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 USC 102(b)(2)(C) for any potential 35 USC 102(a)(2) prior art against the later invention.
Claims 1-3, 5-13, 15-25 and 27-29 are rejected under 35 USC 103 as being unpatentable over Olin et al. (US 10,352,110 B2) (“Olin”) and Mani et al. (US 2020/0362660 A1) (“Mani”), and further in view of Holderman et al. (US 8,136,589 B2) (“Holderman”).
Referring to claims 1, 5, 6, 11, 15 and 16: Olin teaches a well system, comprising:
a wellbore 104 located in a subterranean formation 102; and
a downhole device positioned within the wellbore with a conveyance, the downhole device including:
a tubular housing 206, the tubular housing having a length (L) and a sidewall thickness (t) defining an inside diameter (ID) and outside diameter (OD) (Figs. 6A and 6B); and
a control line bypass channel 232 located in the outside diameter (OD) of the sidewall thickness (t) and extending along an entirety of the length (L), the control line bypass channel open to an exterior of the tubular housing along the entirety of the length (L) (FIG. 2);
an axial retention mechanism 226, 206 positioned in a base (the bottom of 232 in FIG. 4C) of the control line bypass channel, the axial retention mechanism configured to axially fix a control line within the control line bypass channel (column 7, lines 22-26); and
one or more control lines 210 (column 5, lines 14-31) located within the control line bypass channel.
While Olin teaches the sidewall thickness (t) varies along the tubular housing (see the slope along 206 in Figs. 3A and 3B), and Olin may teach the sidewall thickness (t) varies around the tubular housing based on the dimensions shown in Figs. 6A and 6B, Olin does not specifically teach the sidewall thickness (t) varies around the tubular housing. Mani teaches a tubular housing 42, the tubular housing having a length (L) and a sidewall thickness (t) defining an inside diameter (ID) an outside diameter (OD); and a control line bypass channel 60 located in the sidewall thickness (t), wherein the sidewall thickness (t) varies around the tubular housing, wherein the sidewall has a greater sidewall thickness 56 (t1) near the control line bypass channel and a lesser sidewall thickness 58 (t2) distal the control line bypass channel, and wherein the inside diameter (ID) is eccentric to the outside diameter (OD), thereby providing the varying sidewall thickness (FIG. 6). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the sidewall thickness taught by Olin to vary around the tubular housing as taught by Mani with a reasonable expectation of success in order to provide room and accommodate for a plurality of control lines (Mani - ¶ [0021] and [0028]).
While Olin teaches an axial retention mechanism, as described above, Olin and Mani do not specifically teach the axial retention mechanism configured to frictionally and axially fix the control line within the control line bypass channel without the use of an end fitting in the tubular housing. Holderman teaches a downhole device 100 comprising a tubular housing 106 having a length and a sidewall thickness defining an ID and an OD, a control line bypass channel 134 located in the OD, the channel open to an exterior of the tubular housing (Figs. 2-3); and an axial retention mechanism (any one of the pairs of receiving arms shown in Figs. 5A-6B) positioned in the control line bypass channel, the axial retention mechanism configured to frictionally (based on the spring biasing force of the arms; column 6, lines 4-25) and axially fix a control line 146 within the control line bypass channel without the use of an end fitting in the tubular housing. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device taught by Olin and Mani to include an axial retention mechanism positioned in the control line bypass channel, configured to frictionally and axially fix the control line within the control line bypass channel without the use of an end fitting in the tubular housing as taught by Holderman with a reasonable expectation of success since it is well known in the art to use a variety of retention mechanisms, such as mechanical or frictional, to obtain a predictable result, namely, securely holding the cable in place to prevent damage.
Referring to claims 2 and 12: Olin teaches the tubular housing is a tubular housing of a centralizer (column 7, lines 27-34).
Referring to claims 3 and 13: Olin does not specifically teach the tubular housing is a tubular housing of an inflow control device. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the tubular housing taught by Olin to be a tubular housing of an inflow control device with a reasonable expectation of success since it is very well known in the art to need to control fluid flow and flow paths downhole within the system and an effective, well-known way to provide such control is by using an ICD.
Referring to claims 7 and 17: Olin teaches including a radial retention mechanism 214 extending across the control line bypass channel.
Referring to claims 8, 9, 18 and 19: Olin teaches the radial retention mechanism is a retention clip mechanism 214 to move from an open position acceptable of one or more control lines to a closed position retaining the one or more control lines (column 10, lines 34-61), wherein the retention clip mechanism is configured to engage with a related feature 215 in the tubular housing to retain the retention clip mechanism in the closed position. Olin also teaches pins are known (column 12, lines 20-23). However, Olin does not specifically teach the radial retention mechanism is a retention clip mechanism rotatable about a pin. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the mechanism taught by Olin to be rotatable about a pin with a reasonable expectation of success because such a modification would only require a simple substitution of one known element, namely a fastener, for another.
Referring to claims 10 and 20: Olin teaches the control line bypass channel is a first control line bypass channel, and further including a second control line bypass channel 232 located in the outside diameter (OD) of the sidewall thickness (t) and extending along an entirety of the length (L), wherein a second one or more control lines 210 is located in the second control line bypass channel (Figs. 6A and 6B).
Referring to claim 21: Olin teaches a method, comprising:
obtaining a downhole device 200, the downhole device including:
a tubular housing 206, the tubular housing having a length (L) and a sidewall thickness (t) defining an inside diameter (ID) and outside diameter (OD); and
a control line bypass channel 232 located in the outside diameter (OD) of the sidewall thickness (t) and extending along an entirety of the length (L), the control line bypass channel open to an exterior of the tubular housing along the entirety of the length (L) (FIG. 2);
positioning one or more control lines 210 within the control line bypass channel (column 5, lines 14-31);
an axial retention mechanism 226, 206 positioned in a base (at the bottom of 232, FIG. 4C) of the control line bypass channel, the axial retention mechanism configured to axially fix the control line within the control line bypass channel (column 7, lines 22-26); and
placing the downhole device having the one or more control lines within the control line bypass channel within a wellbore 104 formed through one or more subterranean formations 102.
While Olin teaches the sidewall thickness (t) varies along the tubular housing (see the slope along 206 in Figs. 3A and 3B), and Olin may teach the sidewall thickness (t) varies around the tubular housing based on the dimensions shown in Figs. 6A and 6B, Olin does not specifically teach the sidewall thickness (t) varies around the tubular housing. Mani teaches a tubular housing 42, the tubular housing having a length (L) and a sidewall thickness (t) defining an inside diameter (ID) an outside diameter (OD); and a control line bypass channel 60 located in the sidewall thickness (t), wherein the sidewall thickness (t) varies around the tubular housing. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the sidewall thickness taught by Olin to vary around the tubular housing as taught by Mani with a reasonable expectation of success in order to provide room and accommodate for a plurality of control lines (Mani - ¶ [0021] and [0028]).
While Olin teaches an axial retention mechanism, Olin and Mani do not specifically teach the axial retention mechanism configured to frictionally and axially fix the control line within the control line bypass channel without the use of an end fitting in the tubular housing. Holderman teaches a downhole device 100 comprising a tubular housing 106 having a length and a sidewall thickness defining an ID and an OD, a control line bypass channel 134 located in the OD, the channel open to an exterior of the tubular housing (Figs. 2-3); and an axial retention mechanism (any one of the pairs of receiving arms shown in Figs. 5A-6B) positioned in the control line bypass channel, the axial retention mechanism configured to frictionally (based on the spring biasing force of the arms; column 6, lines 4-25) and axially fix the control line 146 within the control line bypass channel without the use of an end fitting in the tubular housing. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device taught by Olin and Mani to include an axial retention mechanism positioned in the control line bypass channel, configured to frictionally and axially fix the control line within the control line bypass channel without the use of an end fitting in the tubular housing as taught by Holderman with a reasonable expectation of success since it is well known in the art to use a variety of retention mechanisms, such as mechanical or frictional, to obtain a predictable result, namely, securely holding the cable in place to prevent damage.
Referring to claim 22: Olin teaches a radial retention mechanism 214 extending across the control line bypass channel, and further wherein positioning the one or more control lines within the control line bypass channel includes securing the one or more control lines within the control line bypass channel using the radial retention mechanism (column 10, lines 34-61).
Referring to claims 23 and 24: Olin does not specifically teach the centralizer includes a plurality of circumferentially set apart centralizer extension portions, and further wherein the control line bypass channel is located between ones of the plurality of circumferentially set apart centralizer extension portions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the centralizer taught by Olin to comprise a plurality of circumferentially set apart centralizer extension portions with the control line bypass channel located between ones of the plurality of circumferentially set apart centralizer extension portions with a reasonable expectation of success since such a centralizer design is very well known in the art, and by placing the control line bypass channel between the extension portions, the control line would be better protected from damage, thereby saving time and money on repairs.
Referring to claim 25: Olin and Mani do not specifically teach the axial retention mechanism comprises a replaceable insert configured to be swapped out to accommodate different sizes or shapes of control lines. Holderman teaches the axial retention mechanism comprises inserts configured to accommodate different sizes or shapes of control lines (Figs. 5A-7B). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device taught by Olin and Mani to include an insert configured to accommodate different sizes or shapes of control lines as taught by Holderman with a reasonable expectation of success in order to not have to replace or reconfigure the entire device in the event a different sized control line needs to be deployed. Further, Holderman does not specifically teach a replaceable insert configured to be swapped out. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device taught by Olin, Mani and Holderman to include a replaceable insert configured to be swapped out with a reasonable expectation of success in order to not have to replace or reconfigure the entire device in the event a different sized control line needs to be deployed.
Referring to claim 27: Olin teaches the axial retention mechanism includes a control line shaped channel configured to at least partially surround and frictionally and axially fix the control line within the control line bypass channel (once modified as with claim 1 above), the control line shaped channel having a non-circular cross-section (see the U-shape cross-section, Figs. 4B-4C).
Referring to claim 28: Olin teaches the tubular housing is formed as a multi-piece assembly (FIG. 2), and the control line bypass channel is formed at an interface between two or more pieces of the tubular housing (Figs. 3A-3B).
Referring to claim 29: Olin teaches protecting the system and the control line (column 3, lines 11-14 and 38-40) and including covers 218, 220 for protection. Mani teaches protecting the system [0024]. Holderman teaches protecting the control line (Abstract; column 1, lines 7-12) and that downhole environments may cause wear (column 1, lines 20-32). However, Olin, Mani and Holderman do not specifically teach the control line bypass channel further comprises a protective coating or liner configured to reduce wear on the control line during installation and operation. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device taught by Olin, Mani and Holderman to include the control line bypass channel further comprises a protective coating or liner configured to reduce wear on the control line during installation and operation with a reasonable expectation of success since the thrust of the 3 references is protecting the system and its control line, plus the fact that it is extremely well known in the art that downhole environments can be abrasive and damaging to tools.
Allowable Subject Matter
Claim 31 is allowed.
Claims 26 and 30 are 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.
Response to Arguments
Applicant’s arguments, see page 8, filed April 16, 2026, with respect to the objection to claim 30 and the 35 USC 112 rejections have been fully considered and are persuasive. The claim objection and the 35 USC 112 rejections have been withdrawn.
Applicant's arguments filed regarding the 35 USC 103 rejections have been fully considered but they are not persuasive. Regarding applicant’s arguments that the combination of Olin, Mani and Holderman does not teach an axial retention mechanism positioned in a base of the control line by pass channel as now claimed in amended independent claims 1, 11 and 21, the examiner respectfully disagrees. As also stated above, Olin does teach an axial retention mechanism 226, 206 positioned in a base of the control line by pass channel 232, where the base is at the bottom (radially innermost) of 232 (FIG. 4C). As a note, details pointing out basis in the current application (in the Specification and/or Drawings) for the amended claims should be disclosed in the Remarks, which was not presented in the most recent Remarks.
Claims 1-3, 5-13, 15-25 and 27-29 stand rejected, as further explained above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE A LOIKITH whose telephone number is (571)270-7822. The examiner can normally be reached M-F 9am-5:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Catherine Loikith/Primary Examiner, Art Unit 3674
28 May 2026
Prosecution Insights