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 .
Status of Claims
The following is a Final Office action in response to the communication filed on 10/1/2025. Claims 1—20 are currently pending.
Information Disclosure Statement
Information Disclosure Statement received 01/03/2024 and 10/25/2024 has been reviewed and considered.
Response to Arguments
Applicant's arguments and amendments filed 10/1/2025 in response to the objection to claim 9 have been fully considered and are persuasive. The objection to claim 9 is withdrawn.
Applicant's arguments and amendments filed 10/1/2025 in response to the rejection of claims 11—14 under 35 U.S.C. 112(b) have been fully considered and are persuasive. The rejection of record to claim 11—14 under 35 U.S.C. 112(b) is withdrawn. However, a new rejection is issued as provided below.
Applicant's arguments and amendments filed 10/1/2025 in response to the rejection of claims 1—4, 7—9, and 15—18 under 35 U.S.C. 102(a) have been fully considered. The amendments are persuasive in overcoming the rejection of record; however, the prior art of record still reads on the amended claims. As such, the rejection of claims 1—4, 7—9, and 15—18 under 35 U.S.C. 102(a) is maintained as modified below.
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 11—14 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.
Claim 11 recites the claim elements of “a selective sleeve,” and “a bottom sleeve.” Claim 11 subsequently recites the limitation “shifting the sleeve to uncover the check valve when the apparatus is positioned downhole.” The claim is indefinite because it is unclear which sleeve of the two recited sleeves is intended to perform the above recited limitation. Claims 12—14 depend from claim 11 and are therefore rejected under 35 U.S.C. 112(b) for depending from an indefinite base claim. Appropriate correction is requested.
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)(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.
Claim(s) 1—4, 7—9, and 15—18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Published US Patent Application to Coon (US 20140224471 A1).
Regarding claim 1, Coon discloses [a]n apparatus for controlling flow back (“well treatment tubular,” of FIG. 1 which includes inflow control features) through a conduit (tubular body 10/10a/10b of “well treatment tubular” in FIG. 1), the apparatus comprising: a selective sleeve disposed within the conduit (sleeve 56), a bottom sleeve (sleeve 16) coupled to the selective sleeve (sleeve 56 and sleeve 16 are coupled by tubular body 10), the conduit comprising a check valve (check valve 46); wherein a shearable element locks the bottom sleeve to the conduit (holding mechanism 20, para. [0022], “[s]leeve 16 is normally held in a port closing position by a holding mechanism 20, such as a shear pin, but can be moved if sufficient force is applied to overcome the holding force of mechanism 20.”), an inflow control device (inflow controller 40 including choking orifice 44) fluidically connected to the conduit (para. [0029], “[i]nflow controller 40 controls in some way the inwardly directed flow of fluids, which are those passing from outer surface 10 d to inner bore 12.”) wherein the selective sleeve (sleeve 56) is configured to leave the check valve covered when the apparatus is introduced into a wellbore (para. [0033], “[s]leeve 56 can move between the retracted position and the reclosing position by application of a force to move the sleeve.”; para. [0046], “[i]f the stage starts to produce too much water and, thus, makes this interval uneconomic or if it otherwise of interest to close off production through that interval, port 38 can be closed by closing sleeve 56 moved by a shifting tool 60 (FIG. 6). Shifting tool may be a standard B shifting tool, as shown, or another type of shifting tool. The sleeve may be gripped by use of gland 62.” Examiner notes that sleeve 56 is configured for multiple articulations between a closed configuration and an open configuration. As such, whether or not Coon recites the intended usage of running the tool in a well with the check valve covered by the sleeve (e.g., closed position as depicted in FIG. 1), the sleeve 56 is configured to be opened and closed multiple times and is therefore capable of performing the recited configuration.).
Regarding claim 2, Coon discloses wherein the inflow control device is closed to fluid flow when the check valve is uncovered (para. [0029], “inflow controller 40 includes a screen 42 and a choking orifice 44, better known as an Inflow Control Device (ICD)… In one embodiment, the inflow controller is adjustable and in one embodiment remotely adjustable, such as while the apparatus is positioned downhole.” The inflow controller is actuated separately from the selective sleeve and therefore may be opened or closed.).
Regarding claim 3, Coon discloses wherein the selective sleeve is configured to leave the check valve uncovered when a packer is set in a wellbore (para. [0028], “tubular body 10 may carry packers 41 that are settable to isolate the segment of the well accessed by ports 14, 38 from other segments of the well.” While packers may be included on the tool string, the ports of the well treatment tubular, and the well treatment tubular, itself, are not used to set the packers. As such, the packers are understood to be settable while the tool is in the run-in-hole configuration where closing sleeve 56 is in the open position); wherein the inflow control device is closed to fluid flow when the check valve is uncovered (para. [0029], “inflow controller 40 includes a screen 42 and a choking orifice 44, better known as an Inflow Control Device (ICD)… In one embodiment, the inflow controller is adjustable and in one embodiment remotely adjustable, such as while the apparatus is positioned downhole.” The inflow controller is actuated separately from the selective sleeve and therefore may be opened or closed.).
Regarding claim 4, Coon discloses wherein the check valve (check valve 46) allows flow into the conduit from a surrounding wellbore annulus but does not allow flow from the conduit into the surrounding wellbore annulus (para. [0030], “[i]n one embodiment, for example, port 38 may have a check valve 46 installed therein that only allows fluid to enter the tubing but restricts fluid from traveling from the tubing inner bore 12 outwardly toward outer surface 10 d.”).
Regarding claim 7, Coon discloses wherein the selective sleeve is configured to decouple from the bottom sleeve (both sleeve 16 and sleeve 56 may be articulated separately from each other such that they are decoupled when one of the sleeves is in the process of being articulated while the other is not).
Regarding claim 8, Coon discloses wherein the selective sleeve (sleeve 56) and the bottom sleeve (sleeve 16) are coupled with a collet, a shearable element, or a snap ring (sleeve 56 is coupled to the tool with snap ring 66 while sleeve 16 is coupled to the tool with holding mechanism 20 which may include a shear pin; para. [0022], “[s]leeve 16 is normally held in a port closing position by a holding mechanism 20, such as a shear pin.”).
Regarding claim 9, Coon discloses wherein a spring or atmospheric chamber (chamber 23b) are configured to shift the bottom sleeve in the downhole direction (chamber 23b functions to shift sleeve 22 downward to reclose port 14 where sleeve 22 and sleeve 16 may in some scenarios, be fashioned to be a single sleeve; para. [0023], “[w]hile reclosing of port 14 could be effected through a portion of sleeve 16 (i.e. further movement of sleeve 16 to again overlie port 14), in this embodiment reclosing sleeve 22 is a separate component from sleeve 16.”).
Regarding claim 15, Coon discloses [a] system for controlling flow back (“well treatment tubular,” of FIG. 1 which includes inflow control features and packer(s) 41) through a conduit (tubular body 10/10a/10b of “well treatment tubular” in FIG. 1), the system comprising: an apparatus comprising: a selective sleeve (sleeve 56) disposed within the conduit (see FIG. 1, sleeve 56 is disposed between two portions of tubular body 10), a bottom sleeve (sleeve 16) coupled to the selective sleeve (sleeve 56 and sleeve 16 are coupled by tubular body 10), the conduit comprising a check valve (check valve 46); wherein a shearable element locks the bottom sleeve to the conduit (holding mechanism 20, para. [0022], “[s]leeve 16 is normally held in a port closing position by a holding mechanism 20, such as a shear pin, but can be moved if sufficient force is applied to overcome the holding force of mechanism 20.”), and an inflow control device (inflow controller 40 including choking orifice 44) fluidically connected to the conduit (para. [0029], “[i]nflow controller 40 controls in some way the inwardly directed flow of fluids, which are those passing from outer surface 10 d to inner bore 12.”), wherein the selective sleeve (sleeve 56) is configured to leave the check valve covered when the apparatus is introduced into a wellbore (para. [0033], “[s]leeve 56 can move between the retracted position and the reclosing position by application of a force to move the sleeve.”; para. [0046], “[i]f the stage starts to produce too much water and, thus, makes this interval uneconomic or if it otherwise of interest to close off production through that interval, port 38 can be closed by closing sleeve 56 moved by a shifting tool 60 (FIG. 6). Shifting tool may be a standard B shifting tool, as shown, or another type of shifting tool. The sleeve may be gripped by use of gland 62.” Examiner notes that sleeve 56 is configured for multiple articulations between a closed configuration and an open configuration. As such, whether or not Coon recites the intended usage of running the tool in a well with the check valve covered by the sleeve (e.g., closed position as depicted in FIG. 1), the sleeve 56 is configured to be opened and closed multiple times and is therefore configured to perform the recited limitation.); and a packer (packer 41).
Regarding claim 16, Coon discloses wherein the inflow control device is closed to fluid flow when the check valve is uncovered (para. [0029], “inflow controller 40 includes a screen 42 and a choking orifice 44, better known as an Inflow Control Device (ICD)… In one embodiment, the inflow controller is adjustable and in one embodiment remotely adjustable, such as while the apparatus is positioned downhole.” The inflow controller is actuated separately from the selective sleeve and therefore may be opened or closed.).
Regarding claim 17, Coon discloses wherein the selective sleeve is configured to leave the check valve uncovered when a packer is set in a wellbore (para. [0028], “tubular body 10 may carry packers 41 that are settable to isolate the segment of the well accessed by ports 14, 38 from other segments of the well.” While packers may be included on the tool string, the ports of the well treatment tubular, and the well treatment tubular, itself, are not used to set the packers. As such, the packers are understood to be settable while the tool is in the run-in-hole configuration where closing sleeve 56 is in the open position); wherein the inflow control device is closed to fluid flow when the check valve is uncovered (para. [0029], “inflow controller 40 includes a screen 42 and a choking orifice 44, better known as an Inflow Control Device (ICD)… In one embodiment, the inflow controller is adjustable and in one embodiment remotely adjustable, such as while the apparatus is positioned downhole.” The inflow controller is actuated separately from the selective sleeve and therefore may be opened or closed.).
Regarding claim 18, Coon discloses wherein the check valve (check valve 46) allows flow into the conduit from a surrounding wellbore annulus but does not allow flow from the conduit into the surrounding wellbore annulus (para. [0030], “[i]n one embodiment, for example, port 38 may have a check valve 46 installed therein that only allows fluid to enter the tubing but restricts fluid from traveling from the tubing inner bore 12 outwardly toward outer surface 10 d.”).
Claim(s) 5 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by a separate mapping using Published US Patent Application to Coon (US 20140224471 A1).
Regarding claim 5, Coon discloses [a]n apparatus for controlling flow back (“well treatment tubular,” of FIG. 1 which includes inflow control features) through a conduit (tubular body 10/10a/10b of “well treatment tubular” in FIG. 1), the apparatus comprising: a selective sleeve disposed within the conduit (sleeve 56), a bottom sleeve (sleeve 16) coupled to the selective sleeve (sleeve 56 and sleeve 16 are coupled by tubular body 10), the conduit comprising a check valve (check valve 46); wherein a shearable element locks the bottom sleeve to the conduit (holding mechanism 20, para. [0022], “[s]leeve 16 is normally held in a port closing position by a holding mechanism 20, such as a shear pin, but can be moved if sufficient force is applied to overcome the holding force of mechanism 20.”), an inflow control device (port 14) fluidically connected to the conduit (port 14 may relay fluid between the inner portion of the conduit and the outer portion of the conduit), wherein the selective sleeve (sleeve 56) is configured to leave the check valve covered when the apparatus is introduced into a wellbore (para. [0033], “[s]leeve 56 can move between the retracted position and the reclosing position by application of a force to move the sleeve.”; para. [0046], “[i]f the stage starts to produce too much water and, thus, makes this interval uneconomic or if it otherwise of interest to close off production through that interval, port 38 can be closed by closing sleeve 56 moved by a shifting tool 60 (FIG. 6). Shifting tool may be a standard B shifting tool, as shown, or another type of shifting tool. The sleeve may be gripped by use of gland 62.” Examiner notes that sleeve 56 is configured for multiple articulations between a closed configuration and an open configuration. As such, whether or not Coon recites the intended usage of running the tool in a well with the check valve covered by the sleeve (e.g., closed position as depicted in FIG. 1), the sleeve 56 is configured to be opened and closed multiple times and is therefore capable of performing the recited configuration), wherein the selective sleeve is configured to cover the check valve (sleeve 56 operates separately from sleeve 16 and is therefore configured to be closed when sleeve 16 is open) when the inflow control device is opened such that a fluid may flow into or out of the conduit through the inflow control device (port 14 does not include a check valve such that fluid may pass either direction through the port).
Regarding claim 19, Coon discloses [a]n apparatus for controlling flow back (“well treatment tubular,” of FIG. 1 which includes inflow control features) through a conduit (tubular body 10/10a/10b of “well treatment tubular” in FIG. 1), the apparatus comprising: a selective sleeve disposed within the conduit (sleeve 56), a bottom sleeve (sleeve 16) coupled to the selective sleeve (sleeve 56 and sleeve 16 are coupled by tubular body 10), the conduit comprising a check valve (check valve 46); wherein a shearable element locks the bottom sleeve to the conduit (holding mechanism 20, para. [0022], “[s]leeve 16 is normally held in a port closing position by a holding mechanism 20, such as a shear pin, but can be moved if sufficient force is applied to overcome the holding force of mechanism 20.”), and an inflow control device (port 14) fluidically connected to the conduit (port 14 may relay fluid between the inner portion of the conduit and the outer portion of the conduit) wherein the selective sleeve (sleeve 56) is configured to leave the check valve covered when the apparatus is introduced into a wellbore (para. [0033], “[s]leeve 56 can move between the retracted position and the reclosing position by application of a force to move the sleeve.”; para. [0046], “[i]f the stage starts to produce too much water and, thus, makes this interval uneconomic or if it otherwise of interest to close off production through that interval, port 38 can be closed by closing sleeve 56 moved by a shifting tool 60 (FIG. 6). Shifting tool may be a standard B shifting tool, as shown, or another type of shifting tool. The sleeve may be gripped by use of gland 62.” Examiner notes that sleeve 56 is configured for multiple articulations between a closed configuration and an open configuration. As such, whether or not Coon recites the intended usage of running the tool in a well with the check valve covered by the sleeve (e.g., closed position as depicted in FIG. 1), the sleeve 56 is configured to be opened and closed multiple times and is therefore capable of performing the recited configuration), and a packer (packer 41), wherein the selective sleeve is configured to cover the check valve (sleeve 56 operates separately from sleeve 16 and is therefore configured to be closed when sleeve 16 is open) when the inflow control device is opened such that a fluid may flow into or out of the conduit through the inflow control device (port 14 does not include a check valve such that fluid may pass either direction through the port).
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.
Claim(s) 6 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published US Patent Application to Coon (US 20140224471 A1) as rejected in the first interpretation provided above.
Regarding claim 6, Coon may not explicitly disclose wherein the selective sleeve is configured to cover the check valve and the inflow control device to prevent fluid flow into or out of the conduit when in the closed configuration. However Coon discloses that the sleeves may be configured in a manner that the sleeve functions are interchangeable for occluding/exposing the different ports. For example, Coon discloses “[t]he inflow control mechanism may include a closing sleeve 56 to close port 38. While closing of port 38 could be achieved by a portion of sleeve 16 or sleeve 22 (i.e. further movement of one of these sleeves to overlie port 38), in this embodiment closing sleeve 56 is a separate component from the other two sleeves.” (Coon, para. [0033]). As such, it is understood that was is identified as the bottom sleeve could be modified to occlude both sets of flow paths at the same time. Based on the disclosure of Coon, it is obvious that Coon contemplated multiple configurations in which the sleeves may be separated or combined, as a matter of design, while still fulfilling the same functional objectives of occluding/exposing the various flow paths.
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 selective sleeve of Coon, as a matter of design, to provide a sleeve which occluded both sets of ports at the same time.
Regarding claim 20, Coon may not explicitly disclose wherein the selective sleeve is configured to cover the check valve and the inflow control device to prevent fluid flow into or out of the conduit when in the closed configuration. However Coon discloses that the sleeve or sleeves may be configured in a manner that the sleeve functions are interchangeable for occluding/exposing the different ports. For example, Coon discloses “[t]he inflow control mechanism may include a closing sleeve 56 to close port 38. While closing of port 38 could be achieved by a portion of sleeve 16 or sleeve 22 (i.e. further movement of one of these sleeves to overlie port 38), in this embodiment closing sleeve 56 is a separate component from the other two sleeves.” (Coon, para. [0033]). As such, it is understood that was is identified as the bottom sleeve could be modified to occlude both sets of flow paths at the same time. Based on the disclosure of Coon, it is obvious that Coon contemplated multiple configurations in which the sleeves may be separated or combined, as a matter of design, while still fulfilling the same functional objectives of occluding/exposing the various flow paths.
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 selective sleeve of Coon, as a matter of design, to provide a sleeve which occluded both sets of ports at the same time.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published US Patent Application to Coon (US 20140224471 A1) as applied to claim 1 under the first interpretation provided above, and in view of issued US Patent to Makowiecki et al., hereinafter “Makowiecki,” (US 8215404 B2).
Regarding claim 10, Coon may not explicitly disclose a second shearable element that locks the bottom sleeve to the conduit until the second shearable element is sheared. However, utilizing a plurality of shear elements (e.g., for redundancy) is known in the art and known to be interchangeable with other methods of coupling sleeves to mandrels. Makowiecki, which is in the same field of endeavor insofar as it is directed a tool with utilizes sleeves in preparing a wellbore for production, teaches the deficient limitation. For example, Makowiecki teaches “[a]n operating sleeve 30 is slidably disposed in housing 26 and is detachably connected thereto with a plurality of shear pins 31 or other means known in the art. An opening sleeve 32 is slidably received in housing 26 and is detachably connected thereto with shear pins 33 or other means.” (Makowiecki, Col. 3, Lines 44—49).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized a plurality of shear pins as described in Makowiecki instead of the single shear pin as disclosed in Coon in order the achieve the predictable result of selectively coupling a sleeve to a mandrel.
Allowable Subject Matter
The subject matter of claims 11—14 is not rejected by the cited prior art and constitutes allowable subject matter. Reasons for indicating allowable subject matter in claims 11—14 were provided on page 16 of the Non-Final Office Action dated 07/02/2025.
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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/U.L.N./Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676