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 Amendment
The Amendment filed 10/14/25 has been entered. Claims 1-16 and 19-22 are pending in the application, of which claims 6-9, 15, and 16 are withdrawn. Claims 17 and 18 are canceled and claims 19-22 are new. As such, the claims being examined are claims 1-5, 10-14, and 19-22. Applicant’s amendments to the claims have overcome each and every 112(b) rejection previously set forth in the Non-Final Office Action mailed 7/11/25. However, in light of new claims 20 and 22, there is new grounds for rejection under 35 U.S.C. 112(b).
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 20 and 22 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 pre-AIA the applicant regards as the invention. Claims 20 and 22 recite the limitation wherein the annulus intervention insertion device is fed or inserted “into the annulus to indicate whether debris or an obstruction exists.” The term “to indicate whether debris or an obstruction exists” is indefinite in that it is unclear as to how the mere presence of the annulus intervention insertion device can indicate whether debris or an obstruction exists. For example, does the annulus intervention insertion device have a camera, a monitor, a sensor, etc.? For purposes of examination, claims 20 and 22 will be understood to be written as “to indicate by the depth of its extension into the annulus whether debris or an obstruction exists…” (see paragraph [0022] in the Specification).
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 1-5, 10-14, and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Larson et al. (US 4,802,534- cited previously) in view of Badalamenti et al. (US 2006/0016599).
With respect to independent claim 1, Larson discloses a method of sealing within an annulus outside the casing of a subterranean wellbore (Abstract), comprising:
feeding an annulus intervention insertion device into a wellbore comprising a casing and annulus (Abstract, col. 2 lines 45-47, and col. 5 lines 13-19); introducing a sealing material into the wellbore comprising a casing and annulus by means of the annulus intervention insertion device, the annulus intervention insertion device comprising a hose configured to introduce the sealing material into the wellbore comprising a casing and annulus (Abstract, col. 2 lines 45-47, and col. 5 lines 13-19); providing a controlling device disposed inside the wellbore at a sealing depth by suspending means (Abstract, col. 2 lines 35-42, and col. 7 lines 13-18); wherein the controlling device affects physical properties of the sealing material to cause the sealing material to move to one or more required positions (Abstract, col. 2 lines 40-42 and 50-65, and col. 7 lines 13-18); holding the sealing material in a position at the sealing depth by the device (Abstract, col. 2 lines 50-65, and col. 7 lines 13-18); and allowing the sealing material to harden and set in the annulus at the position (Abstract and col. 2 lines 31-34).
Regarding claim 1, Larson discloses wherein the controlling device is disposed inside the wellbore by a suspending means (Abstract, col. 2 lines 35-42, and col. 7 lines 13-18). However, he fails to expressly disclose wherein the suspending means may be “a wireline or cable or coiled tubing,” as instantly claimed. The Office considers it well known and established in the art that common “suspending means,” as disclosed by Larson, includes wirelines, cable, or coiled tubing, as instantly claimed.
Further regarding claim 1, Larson discloses a method of cementing comprising introducing a sealing material into a wellbore comprising a casing and annulus, wherein the sealing material is a cement comprising magnetic particles and, more specifically, wherein the sealing material is “pumped through the piping… to the bottom of the wellbore and then upwardly through the annulus separating the casing and the walls of the formation” (col. 5 lines 13-19). However, Larson fails to expressly disclose whether the piping is within the casing or within the annulus separating the casing and walls of the formation, i.e., whether the sealing material is introduced into the casing or “directly into the annulus” as claimed. Badalamenti teaches a method of cementing comprising introducing a sealing material into a well, wherein the sealing material is introduced directly into the annulus (Abstract, [0061], [0062], and Figure 5). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to consider introducing the sealing material disclosed by Larson in the manner of introducing sealing material taught by Badalamenti (i.e., “reverse cementing”) since it amounts to nothing more than the simple substitution of one known equivalent technique for another, used for a comparable device in a comparable situation. It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to make this simple substitution as it has been held “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless it actual application is beyond his or her skill... [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions." KSR at 1396 Furthermore, Larson discloses wherein the sealing material is introduced “by any convenient technique” (col. 5 lines 13-14), and Badalamenti teaches wherein a common and well-known technique is reverse cementing, i.e., introducing cement directly into the annulus. Moreover, Larson discloses wherein the sealing material is “pumped through the piping… to the bottom of the wellbore and then upwardly through the annulus separating the casing and the walls of the formation” (col. 5 lines 13-19); whether the piping is within the casing or within the annulus separating the casing and walls of the formation amounts to nothing more than choosing from a finite number of possible and predictable solutions, as it has been taught "When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person having ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR at 1397 With respect to depending claim 2, Larson discloses wherein the sealing material is magnetorheological cement (Abstract and col. 2 lines 66-68); and wherein the controlling device is an electromagnet that is activated to induce a magnetic field, such that the magnetic field affects the physical properties of the magnetorheological cementitious material (Abstract and col. 2 lines 31-42 and 47-65).
With respect to depending claim 3, which is dependent upon claim 2, Larson discloses wherein the electromagnet is configured to produce magnetic forces that create a magnetic field to effect and control the movement of magnetorheological cementitious material inside the annulus (Abstract and col. 2 lines 31-50).
With respect to depending claim 4, which is dependent upon claim 2, Larson discloses wherein the magnetic field has a magnetic strength and increasing the magnetic field strength will result in leading the magnetorheological cementitious material into gaps and crevices for cementation of the magnetorheological cementitious material in the annulus (Abstract and col. 2 lines 31-42 and 47-65).
With respect to depending claim 5, which is dependent upon claim 2, Larson discloses wherein the magnetic field has a magnetic field strength and increasing the magnetic field strength will lead to setting of the magnetorheological cementitious material in the annulus (Abstract and col. 2 lines 31-42 and 47-65). However, Larson fails to expressly recite wherein the increase in magnetic field strength leads to an increase in viscosity of the magnetorheological cementitious material which in turn leads to the setting of said magnetorheological cementitious material. Since Larson discloses the same composition as claimed, the material, if subjected to an increasing magnetic field, would naturally act in the same manner as claimed, i.e., it would lead to an increase in viscosity. If there is any difference between the composition of Larson and that of the instant claims, the difference would have been minor and obvious insofar as because it has been held "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775,227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934). With respect to independent claim 10, Larson discloses a cementing system for sealing within an annulus outside the casing of a subterranean well (Abstract), comprising: a sealing material introduced into a wellbore comprising a casing and annulus by means of an annulus intervention insertion device comprising a hose configured to introduce the sealing material into the wellbore comprising a casing and annulus (Abstract, col. 2 lines 45-47, and col. 5 lines 13-19); and a controlling device disposed inside the wellbore at a sealing depth by suspending means (Abstract, col. 2 lines 35-42, and col. 7 lines 13-18); wherein the sealing material has physical properties and the sealing material is manipulated by the controlling device to cause the sealing material to move to the required positions, such that the sealing material is held in a position at the sealing depth by the device, the position above a base of the annulus (Abstract, col. 2 lines 40-42 and 50-65, and col. 7 lines 13-18); and the sealing material is allowed to harden and set in the annulus at the position (Abstract and col. 2 lines 31-34).
Regarding claim 10, Larson discloses wherein the controlling device is disposed inside the wellbore by a suspending means (Abstract, col. 2 lines 35-42, and col. 7 lines 13-18). However, he fails to expressly disclose wherein the suspending means may be “a wireline or cable or coiled tubing,” as instantly claimed. The Office considers it well known and established in the art that common “suspending means,” as disclosed by Larson, includes wirelines, cable, or coiled tubing, as instantly claimed.
Further regarding claim 10, Larson discloses a method of cementing comprising introducing a sealing material into a wellbore comprising a casing and annulus, wherein the sealing material is a cement comprising magnetic particles and, more specifically, wherein the sealing material is “pumped through the piping… to the bottom of the wellbore and then upwardly through the annulus separating the casing and the walls of the formation” (col. 5 lines 13-19). However, Larson fails to expressly disclose whether the piping is within the casing or within the annulus separating the casing and walls of the formation, i.e., whether the sealing material is introduced into the casing or “directly into the annulus” and “fed into the annulus” as claimed. Badalamenti teaches a method of cementing comprising introducing a sealing material into a well, wherein the sealing material is introduced directly into the annulus (Abstract, [0061], [0062], and Figure 5). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to consider introducing the sealing material disclosed by Larson in the manner of introducing sealing material taught by Badalamenti (i.e., “reverse cementing”) since it amounts to nothing more than the simple substitution of one known equivalent technique for another, used for a comparable device in a comparable situation. It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to make this simple substitution as it has been held “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless it actual application is beyond his or her skill... [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions." KSR at 1396 Furthermore, Larson discloses wherein the sealing material is introduced “by any convenient technique” (col. 5 lines 13-14), and Badalamenti teaches wherein a common and well-known technique is reverse cementing, i.e., introducing cement directly into the annulus. Moreover, Larson discloses wherein the sealing material is “pumped through the piping… to the bottom of the wellbore and then upwardly through the annulus separating the casing and the walls of the formation” (col. 5 lines 13-19); whether the piping is within the casing or within the annulus separating the casing and walls of the formation amounts to nothing more than choosing from a finite number of possible and predictable solutions, as it has been taught "When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person having ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR at 1397
With respect to depending claim 11, Larson discloses wherein the sealing material is magnetorheological cement (Abstract and col. 2 lines 66-68) and the controlling device is an electromagnet that is activated to induce a magnetic field, such that the magnetic field affects the physical properties of the magnetorheological cementitious material (Abstract and col. 2 lines 31-42 and 47-65).
With respect to depending claim 12, which is dependent upon claim 11, Larson discloses wherein the electromagnet is configured to produce magnetic forces that create a magnetic field to effect and control the movement of magnetorheological cementitious material inside the annulus (Abstract and col. 2 lines 31-50).
With respect to depending claim 13, which is dependent upon claim 11, Larson discloses wherein increasing a strength of the magnetic field will result in leading the magnetorheological cementitious material into gaps and crevices for cementation of the magnetorheological cementitious material in the annulus (Abstract and col. 2 lines 31-42 and 47-65).
With respect to depending claim 14, which is dependent upon claim 11, Larson discloses wherein the magnetic field has a magnetic field strength and increasing the magnetic field strength will lead to setting of the magnetorheological cementitious material in the annulus (Abstract and col. 2 lines 31-42 and 47-65). However, Larson fails to expressly recite wherein the increase in magnetic field strength leads to an increase in viscosity of the magnetorheological cementitious material which in turn leads to the setting of said magnetorheological cementitious material. Since Larson discloses the same composition as claimed, the material, if subjected to an increasing magnetic field, would naturally act in the same manner as claimed, i.e., it would lead to an increase in viscosity. If there is any difference between the composition of Larson and that of the instant claims, the difference would have been minor and obvious insofar as because it has been held "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775,227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
With respect to depending claim 19, inasmuch as the combination of Larson and Badalamenti teaches feeding the annulus intervention insertion device into the annulus and introducing the sealing material directly into the annulus (Larson- Abstract, col. 2 lines 45-47, and col. 5 lines 13-19; Badalamenti- Abstract, [0061], [0062], and Figure 5), the act of performing said steps at “the sealing depth” amounts to nothing more than choosing from a finite number of possible and predictable solutions, as it has been taught "When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person having ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR at 1397 Furthermore, a person having ordinary skill in the art before the effective filing date of the claimed invention would find it obvious to perform said steps at “the sealing depth” since that is the treatment depth and selecting said depth would provide the best control over the components and sealing material.
With respect to depending claim 20, the combination of Larson and Badalamenti teaches feeding the annulus intervention insertion device into the annulus and introducing the sealing material directly into the annulus (Larson- Abstract, col. 2 lines 45-47, and col. 5 lines 13-19; Badalamenti- Abstract, [0061], [0062], and Figure 5). Although silent to wherein the depth of extension into the annulus indicates whether debris or an obstruction exists (see 112(b) rejection above), a person having ordinary skill in the art before the effective filing date of the claimed invention would consider it obvious that if when feeding or inserting the annulus intervention insertion device into the annulus it cannot be fed or inserted farther that some sort of blockage exists, inasmuch as debris or obstructions downhole are a common occurrence in the art.
With respect to depending claim 21, inasmuch as the combination of Larson and Badalamenti teaches feeding the annulus intervention insertion device into the annulus and introducing the sealing material directly into the annulus (Larson- Abstract, col. 2 lines 45-47, and col. 5 lines 13-19; Badalamenti- Abstract, [0061], [0062], and Figure 5), the act of performing said steps at “the sealing depth” amounts to nothing more than choosing from a finite number of possible and predictable solutions, as it has been taught "When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person having ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR at 1397 Furthermore, a person having ordinary skill in the art before the effective filing date of the claimed invention would find it obvious to perform said steps at “the sealing depth” since that is the treatment depth and selecting said depth would provide the best control over the components and sealing material.
With respect to depending claim 22, the combination of Larson and Badalamenti teaches feeding the annulus intervention insertion device into the annulus and introducing the sealing material directly into the annulus (Larson- Abstract, col. 2 lines 45-47, and col. 5 lines 13-19; Badalamenti- Abstract, [0061], [0062], and Figure 5). Although silent to wherein the depth of extension into the annulus indicates whether debris or an obstruction exists (see 112(b) rejection above), a person having ordinary skill in the art before the effective filing date of the claimed invention would consider it obvious that if when feeding or inserting the annulus intervention insertion device into the annulus it cannot be fed or inserted farther that some sort of blockage exists, inasmuch as debris or obstructions downhole are a common occurrence in the art.
Response to Arguments
Applicant’s arguments filed 10/14/25 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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.
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/AVI T SKAIST/Examiner, Art Unit 3674
/WILLIAM D HUTTON JR/Supervisory Patent Examiner, Art Unit 3674