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
Regarding claim 14, applicant argues that Harkins et al. (U.S. 8,800,646B2) fail to teach the method step of introducing a tubing hanger into the tubing head, such that the tubing hanger and production tubing attached thereto are supported by the load shoulder and the load shoulder transfers load from the tubing hanger to the tubing head.
Examiner agrees that this is not taught by Harkins et al. Harkins discloses all the features of claim 14 with regards to the plug limitations and also the use of an annular recess 163 for supporting tubular elements, such as sleeve 150. Therefore, annular recess 163 is a useful feature for supporting tubular structures lowered in the wellbore. Harkins et al. also fail to teach the introduction of a shoulder into the tubing head since the shoulder of Harkins et al. is not introduced in the tubing head as the shoulder is “integral” to the tubing head. Secondary reference Smith (U.S. 6,484,382 B1) teach the introduction of load a shoulder (22, figs. 2-4, note that it is represented by element 18 in fig. 1. Also refer to col. 6, line 5) comprising a plurality of shoulder segments (54, 56, 58, see fig. 2 and refer to col. 6, lines 5-40) in the annular groove (16) to support tuning hangers and casing hangers (refer to col. 1, lines 25-28). This type of shoulder enables the wellhead to be able to support enormous weight of suspended string of casing or tubing in the wellhead (refer to col. 5, lines 10-20). Therefore, it would be obvious to modify the annular groove area of Harkins et al. to introduce a shoulder for supporting heavy weight tubular structures.
Smith teaches the introduction of a tubing hanger (see annotated fig. 1 below) into the tubing head (10, fig. 1), such that the tubing hanger (see annotated fig. 1 below) and production tubing attached thereto (col. 1, lines 40-42 “A removable hanger, having a casing or tubing suspended therefrom, us rested on the load shoulder”) are supported by the load shoulder (22, figs. 2-4, note that it is represented by element 18 in fig. 1. Also refer to col. 6, line 5) and the load shoulder transfers load from the tubing hanger to the tubing head (10, as shown in fig. 1). As stated in the 112b rejection below, the step of introducing the tubing hanger into the tubing head can only happen after the retrieval of the casing isolation plug, so it would have been obvious to one of ordinary skilled in the art to have substituted the retain sleeve 150 of Harkins et al. with a tubing hanger, as taught by
Smith, to introduce the step of introducing a tubing hanger into the tubing head, for the purpose of completing and producing the well.
Applicant’s arguments with respect to claim 21 have been considered but are moot because the new ground of rejection does not rely on at least one reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Claim 21 is now rejected in view of Alandy (U.S. 4,653,589).
System claims 18 and 25 are rejected over 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. See the 112(a) rejection below.
Claim Objections
The claims are objected to because of the following informalities:
The claim set is missing claim 22. The claims go from claim 21 to claim 23 without including claim 22.
Appropriate correction is required.
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 18-20 and 25-27 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.
Regarding claim 18: Claim 18 recites:
“a tubing hanger disposed within the bore of the tubing head”,
“supporting a string of production tubing”;
“a casing isolation plug disposed within the wellhead housing”;
Wherein “the casing isolation plug may be removed from the wellhead housing by passing from the first end to the second end of the tubing head”.
However, the specification does not reasonably convey to one of ordinary skill in the art that applicant had possession, at the time of filing, of a system including both (1) the tubing hanger disposed within the bore of the tubing head and supporting production tubing, and simultaneously (2) the casing isolation plug disposed within the wellhead housing and removable through the tubing head as claimed.
In particular, the specification fails to disclose a single embodiment showing the claimed arrangement in which the tubing hanger and associated production tubing are positioned within the tubing head while the casing isolation plug remains disposed within the wellhead housing and removable upwardly through the tubing head. Accordingly, the originally filed disclosure does not provide adequate written description support for the full scope of the system of claim 18 because the claim appears to combine features from separate embodiments without sufficient disclosure of their integration into the claimed configuration.
Claims 19-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as being dependent on rejected claim 18.
Regarding claim 25: similarly, system claim 25 recites:
“a tie back hanger…disposed with the bore of the tubing hanger”;
“supporting a string of frac casing”;
“a casing isolation plug disposed within the wellhead housing…wherein…the casing isolation plug may be removed from the wellhead housing by passing from the first end to the second end of the tubing head”.
Claim 25 is also fails to disclose a single embodiment showing the claimed arrangement in which the tie back hanger and associated frac casing are positioned within the tubing head while the casing isolation plug remains disposed within the wellhead housing and removable upwardly through the tubing head. Accordingly, the originally filed disclosure does not provide adequate written description support for the full scope of the system of claim 25.
Claims 26-27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as being dependent on rejected claim 25.
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 14, 16-17, 21, and 23-24 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 claim 14: examiner notes that although method claims generally do not require a particular order of steps, claim 14 recites:
“introducing a tubing hanger into the tubing head, such that the tubing hanger and production tubing attached thereto are supported by the load shoulder and the load shoulder transfers load from the tubing hanger to the tubing head” and
retrieving the casing isolation plug from the wellhead housing and from the lower end to the upper end of the throughbore of the tubing head, such that the casing isolation plug passes through an inner diameter of the load shoulder”.
The claim is unclear because, once the tubing hanger and production tubing are installed, it is unclear how the casing isolation plug can thereafter be retrieved upwardly through the tubing head and pass the production tubing attached to the tubing hanger. Thus, the later recited retrieval step appears logically incompatible with the earlier-recited installation of the tubing hanger and attached production tubing. Accordingly, the claim flails to clearly set forth the required sequence of steps and renders the scope of the claim indefinite.
Regarding claim 21: similarly, claim 21 recites:
“introducing a tie back hanger into the tubing head, such that the tie back hanger and frac casing attached thereto are supported by the load shoulder and the load shoulder transfers load from the tie back hanger to the tubing head”; and
“retrieving the casing isolation plug…such that the casing isolation plug passes through an inner diameter of the load shoulder”.
This claim is unclear because once the tie back hanger and frac casing are installed, it is unclear how the casing isolation plug can thereafter be retrieved upwardly through the tubing head and pass the frac casing attached to the tie back hanger. Thus, the later-recited retrieval step appears logically incompatible with the earlier recited installation of the tie back hanger and attached frac casing.
Claims 16-17 and 23-24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being dependent on rejected claim 14.
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.
Claims 14, 16-17, and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Harkins et al. (U.S. 8,800,646B2), in view of Smith (U.S. 6,484,382 B1).
Regarding claim 14, Harkins et al. disclose a method to isolate a wellbore (see fig. 1 and refer to col. 4, line 50-col. 5, line 5), the method comprising:
introducing a casing isolation plug (102, figs. 2-3, 5, and refer to col. 5, lines 6-24) into the wellbore through a wellhead housing (25; see figs. 1-3);
a shoulder (“annular recess 163”; see fig. 3 and refer to col. 5, lines 43-45) in a tubing head (24) having an upper end and a lower end (upper and lower end of “tubing spool 24”; see figs. 1 and 3) and a throughbore (“tubing spool bore 34”; see fig. 1 and refer to col. 4, line 18) from the upper end to the lower end (as shown in figs. 1 and 3);
coupling the lower end of the tubing head (24) to the wellhead housing (25; see fig. 3 and refer to col. 5, lines 30-32); and
retrieving the casing isolation plug (102) from the wellhead housing (25) and from the lower end to the upper end of the throughbore of the tubing head (24), such that the casing isolation plug (102) passes through an inner diameter of the load shoulder (163; see fig. 5, step 218, and refer to col. 6, lines 60-65).
Harkins et al. further teach that “annular recess 163” is configured to solely retain sleeve 150 (col. 5, lines 43-45).
However, Harkins et al. fail to teach introducing a shoulder into the tubing head. in other words, the shoulder of Harkins et al. is not introduced in the tubing head as the shoulder is “integral” to the tubing head. Harkins et al. also fail to teach introducing a tubing hanger into the tubing head, such that the tubing hanger and production tubing attached thereto are supported by the load shoulder and the load shoulder transfers load from the tubing hanger to the tubing head.
Smith, similarly to Harkins et al., teaches a tubing head (see fig. 1 and refer to col. 1, lines 19-23: “this invention is concerned with a method for providing an internal circumferential shoulder in a cylindrical passage way and is exemplified by an installable load shoulder for a tubing or casing head, that is also frequently called a wellhead”) comprising:
a tubing head body (10, fig. 1) defining a bore (12, 14) and an annular groove (16, fig. 1 and col. 5, line 1); and
introducing a shoulder (22, figs. 2-4, note that it is represented by element 18 in fig. 1. Also refer to col. 6, line 5) comprising a plurality of shoulder segments (54, 56, 58, see fig. 2 and refer to col. 6, lines 5-40) in the annular groove (16) to support tuning hangers and casing hangers (refer to col. 1, lines 25-28). This type of shoulder enables the wellhead to be able to support enormous weight of suspended string of casing or tubing in the wellhead (refer to col. 5, lines 10-20).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the claimed invention to have modified the annular groove area of Harkins et al. to introduce a shoulder, as taught by Smith, for the predictable result of supporting the sleeve, or other sleeves such as tuning hangers and casing hangers (refer to col. 1, lines 25-28) and enabling the wellhead to be able to support enormous weight of suspended string of casing or tubing in the wellhead (refer to col. 5, lines 10-20).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the claimed invention to have substituted the retain sleeve 150 of Harkins et al. with a tubing hanger, as taught by Smith, for the predictable result of supporting casing or tubing strings during the well completion process thereby enabling the wellhead to be able to support enormous weight of the suspended string of casing or tubing in the wellhead (refer to col. 5, lines 10-20).
Smith also teaches introducing a tubing hanger (see annotated fig. 1 below) into the tubing head (10, fig. 1), such that the tubing hanger (see annotated fig. 1 below) and production tubing attached thereto (col. 1, lines 40-42 “A removable hanger, having a casing or tubing suspended therefrom, us rested on the load shoulder”) are supported by the load shoulder (22, figs. 2-4, note that it is represented by element 18 in fig. 1. Also refer to col. 6, line 5) and the load shoulder transfers load from the tubing hanger to the tubing head (10, as shown in fig. 1).
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As stated in the 112b rejection above, the step of introducing the tubing hanger into the tubing head can only happen after the retrieval of the casing isolation plug, so it would have been obvious to one of ordinary skilled in the art before the effective filing date of the claimed invention to have substituted the retain sleeve 150 of Harkins et al. with a tubing hanger, as taught by Smith, to introduce the step of introducing a tubing hanger into the tubing head, such that the tubing hanger and production tubing attached thereto are supported by the load shoulder and the load shoulder transfers load from the tubing hanger to the tubing head, as taught by Smith, for the purpose of completing and producing the well.
Regarding claim 16, the combination of Harkins et al. and Smith teach all the features of this claim as applied to claim 14 above; Smith further teaches wherein the tubing head (10) is formed from a first material (col. 5, lines 6-10: “steel”) and the load shoulder (22) is formed from a second material that is different than the first material (refer to col. 5, lines 13-29: “high strength material, such as high strength metal alloy” for supporting enormous weight of suspended string. Also note the different cross-hatching in figs. 4 and 6-7 and the discussion in col. 5, lines 13-29 suggesting that the load should is made from a high strength alloy to withstand the enormous weight requirement in deep wells).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the claimed invention to have modified the tubing head of Harkins et al. such that the tubing head body is formed from a first material and the installable shoulder is formed from a second material that is different than the first material., as taught by Smith, for the purpose of enabling the wellhead to be able to support enormous weight of suspended string of casing or tubing in the wellhead and deep well applications (refer to col. 5, lines 10-20).
Regarding claim 17, the combination of Harkins et al. and Smith teach all the features of this claim as applied to claim 14 above; Smith further teaches wherein introducing the load shoulder into the tubing head comprises introducing a plurality of shoulder segments (54, 56, 58, see fig. 2 and refer to col. 6, lines 5-40) into the tubing head to collectively form an annular ring within the tubing head (see figs. 2-7).
Regarding claim 23, the combination of Harkins et al. and Smith teach all the features of this claim as applied to claim 14 above; Smith further teaches wherein the tubing head (10) is formed from a first material (col. 5, lines 6-7: “steel”) and the load shoulder (22) is formed from a second material that is different than the first material (col. 5, lines 12-29: “high strength material, such as high strength metal alloy” . Also the different cross-hatching in figs. 4 and 6-7 and the discussion in col. 5, lines 12-29 suggesting that the load shoulder needs to be made from a high strength alloy to withstand the enormous weight requirement in deep wells).
Regarding claim 24, the combination of Harkins et al. and Smith teach all the features of this claim as applied to claim 14 above; Smith further teaches wherein introducing the load shoulder into the tubing head comprises introducing a plurality of shoulder segments (54, 56, 58, see fig. 2 and refer to col. 6 lines 5-40) into the tubing head (10) to collectively form an annular ring within the tubing head (22, see fig. 2 and refer to col. 6, lines 5-40).
Claims 21 is rejected under 35 U.S.C. 103 as being unpatentable over Harkins et al. (U.S. 8,800,646B2), in view of Smith (U.S. 6,484,382 B1) and Alandy (U.S. 4,653,589).
Regarding claim 21, Harkins et al. disclose method to isolate a wellbore (see fig. 1 and refer to col. 4, line 50-col. 5, line 5), the method comprising:
introducing a casing isolation plug (102, figs. 2-3, 5, and refer to col. 5, lines 6-24) into the wellbore through a wellhead housing (25; see figs. 1-3);
a shoulder (“annular recess 163”; see fig. 3 and refer to col. 5, lines 43-45) in a tubing head (24) having an upper end and a lower end (upper and lower end of “tubing spool 24”; see figs. 1 and 3) and a throughbore (“tubing spool bore 34”; see fig. 1 and refer to col. 4, line 18) from the upper end to the lower end (as shown in figs. 1 and 3);
coupling the lower end of the tubing head (24) to the wellhead housing (25; see fig. 3 and refer to col. 5, lines 30-32); and
retrieving the casing isolation plug (102) from the wellhead housing (25) and from the lower end to the upper end of the throughbore of the tubing head (24), such that the casing isolation plug (102) passes through an inner diameter of the load shoulder (163; see fig. 5, step 218, and refer to col. 6, lines 60-65).
Harkins et al. further teach that “annular recess 163” is configured to solely retain sleeve 150 (col. 5, lines 43-45).
However, Harkins et al. fail to teach introducing a shoulder into the tubing head. in other words, the shoulder of Harkins et al. is not introduced in the tubing head as the shoulder is “integral” to the tubing head. Harkins et al. also fail to teach introducing a tie back hanger into the tubing head, such that the tie back hanger and frac casing attached thereto are supported by the load shoulder and the load shoulder transfers load from the tie back hanger to the tubing head.
Smith, similarly to Harkins et al., teaches a tubing head (see fig. 1 and refer to col. 1, lines 19-23: “this invention is concerned with a method for providing an internal circumferential shoulder in a cylindrical passage way and is exemplified by an installable load shoulder for a tubing or casing head, that is also frequently called a wellhead”) comprising:
a tubing head body (10, fig. 1) defining a bore (12, 14) and an annular groove (16, fig. 1 and col. 5, line 1); and
introducing a shoulder (22, figs. 2-4, note that it is represented by element 18 in fig. 1. Also refer to col. 6, line 5) comprising a plurality of shoulder segments (54, 56, 58, see fig. 2 and refer to col. 6, lines 5-40) in the annular groove (16) to support tuning hangers and casing hangers (refer to col. 1, lines 25-28). This type of shoulder enables the wellhead to be able to support enormous weight of suspended string of casing or tubing in the wellhead (refer to col. 5, lines 10-20).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the claimed invention to have modified the annular groove area of Harkins et al. to introduce a shoulder, as taught by Smith, for the predictable result of supporting the sleeve, or other sleeves such as tuning hangers and casing hangers (refer to col. 1, lines 25-28) and enabling the wellhead to be able to support enormous weight of suspended string of casing or tubing in the wellhead (refer to col. 5, lines 10-20).
However, the combination of Harkins and Smith fail to teach introducing a tie back hanger into the tubing head, such that the tie back hanger and frac casing attached thereto are supported by the load shoulder and the load shoulder transfers load from the tie back hanger to the tubing head.
Alandy teaches a method and apparatus comprising introducing a tie back hanger (180, fig. 2) into the tubing head/wellhead (80, fig. 2), such that the tie back hanger (180, fig. 2) and casing (186, fig. 2) attached thereto are supported by a load shoulder (the “shoulder on which hanger 180 is seating) and the load shoulder transfers load from the tie back hanger to the tubing head/wellhead (80, fig. 2; refer to abstract).
As stated in the 112b rejection above, the step of introducing the tie back hanger into the tubing head can only happen after the retrieval of the casing isolation plug, so it would have been obvious to one of ordinary skilled in the art before the effective filing date of the claimed invention to have modified the method of Harkins et al., as modified by Smith, to substitute the retain sleeve with the introduction step of a tie back hanger into the tubing head, such that the tie back hanger and frac casing attached thereto are supported by the load shoulder and the load shoulder transfers load from the tie back hanger to the tubing head, as taught by Smith, for the purpose of completing and producing the well.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Lang (U.S. 5,984,008).
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 YANICK A AKARAGWE whose telephone number is (469)295-9298. The examiner can normally be reached M-TH 7:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached on (571) 272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YANICK A AKARAGWE/Primary Examiner, Art Unit 3672
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