Detailed Action
Status of Claims
Claims 1-7, 9-14, 16-23 are currently pending and addressed below.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/10/2026 has been entered.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-6 & 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dallas (US Pat No 6817423) in view of Funk (US Pat No 5568837)
Dallas discloses in claim 1. A wellhead isolation tool, comprising:
a hydraulic assembly (Combination of components from Dallas Fig 1 & 7; 72, 74, 118, 120, 16) comprising at least one hydraulic line fluidly (Dallas Fig 1; 72 & 74) coupled to a setting tool hydraulic ram (Dallas Fig 1; 118 & 120) that comprises a mandrel head (Dallas Fig 1; 16);
a mandrel (Dallas Fig 1; 12) coupled to the hydraulic ram (Dallas Fig 1; 12 is coupled to the mandrel head 16 and hydraulic ram), the mandrel comprising an uphole end coupled to the mandrel head, a downhole end configured to sting into a wellhead (Dallas col 6 line 54-58 the wellbore isolation tool is configured to insert the mandrel into a wellbore);
a packing assembly comprising a bore that is configured to receive the mandrel (Dallas col 5 line 35-38 Fig 1; 14 with packing rings 46)
and a pack-off assembly (Dallas col 1 line 41-45 a pack off assembly is positioned at the bottom end of the mandrel) coupled to the downhole end of the mandrel (Dallas col 1 line 41-45 a pack off assembly is positioned at the bottom end of the mandrel),
Dallas discloses a pack-off assembly but does not disclose that the pack off assembly is comprised of a cup assembly.
However, Funk discloses: and at least one seat (Funk Fig 11; 92) pack-off cup assembly (Funk Fig 8; 20) comprising at least one cup (Funk Fig 8; 72) mounted on the mandrel (Funk Fig 8; 96 coupler for mounting on the mandrel) uphole of the at least one seat (Funk Fig 11) and comprising a circular frustum (Funk Fig 11 shows a broken away view in longitudinal section through part of the cup assembly of Fig 8) that includes:
an uphole end defined by a first diameter (See attached Image below element D1);
a downhole end opposite the uphole end and defined by a second diameter less than the first diameter (See attached Image Below element D2), the at least one cup is positioned on the mandrel such that the downhole end abuts the at least one seat, the at least one cup configured to compress downwardly against the at least one seat to urge the uphole end toward the downhole end and expand radially away from the mandrel in response to circulation of a pressurized fluid in an annulus towards the downhole end (Funk Col 6 line 19-34 the cups are configured to compress to allow for wellbore fluid to flow past upwardly and expand and compress downward as the fluid flows downhole);
a bore that extends between the uphole end and the downhole end and is configured to receive a least a portion of the mandrel therethrough (Funk Fig 8; 96 coupler for mounting on the mandrel);
and a radial surface between the uphole and downhole ends (Funk Fig 11; 90).
As both Dallas and Funk both disclose a pack-off assembly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to substitute the generic pack off assembly of Dallas for the pack-off Cup assembly of Funk to achieve the predictable result of isolating a section of the wellbore.
Figure 1: Disclosing the cups of Funk having Diameters D1>D2 and D1=D3.
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Dallas et al discloses in claim 2. The wellhead isolation tool of claim 1,
wherein the at least one cup is a first cup, the pack-off cup assembly comprising a second cup mounted on the mandrel (Funk Fig 8; the at least one cup of Funk contains 3 cups labeled 72) and comprising a circular frustum (Funk Fig 11 shows a broken away view in longitudinal section through part of the cup assembly of Fig 8) that includes:
an uphole end defined by a third diameter (See attached Image above element D3);
a downhole end opposite the uphole end and defined by a fourth diameter (See attached Image above element D4) less than the third diameter;
a bore that extends between the uphole end and the downhole end and is configured to receive a least a portion of the mandrel therethrough (Funk Fig 8; 96 coupler for mounting on the mandrel);
and a radial surface between the uphole and downhole ends (Funk Fig 11; 90).
Dallas et al discloses in claim 3. The wellhead isolation tool of claim 2, wherein the first and third diameters are substantially equal, and the second and fourth diameters are substantially equal (Funk Fig 11 and Attached image above).
Dallas et al discloses in claim 4. The wellhead isolation tool of claim 1, wherein the at least one cup is formed of a sealing material (Funk Col 6 line 11-12 Cups are formed of an elastomeric material) configured to fluidly seal against a portion of the wellhead (Funk col 6 line 19-20 cups diameter is greater than the diameter of the casing).
Dallas et al discloses in claim 5. The wellhead isolation tool of claim 4, wherein the sealing material comprises at least one elastomer (Funk Col 6 line 11-12 Cups are formed of an elastomeric material).
Dallas et al discloses in claim 6. The wellhead isolation tool of claim 1, wherein the at least one cup is configured to compress in response to circulation of the pressurized fluid in the annulus between the mandrel and the wellhead when the mandrel is stung into the wellhead (Funk Col 6 line 19-34 the cups are configured to compress to allow for wellbore fluid to flow past).
Dallas et al discloses in claim 9. The wellhead isolation tool of claim 1, wherein the at least one cup is configured to compress against the at least one seat in response to circulation of the pressurized fluid in the annulus between the mandrel and the wellhead when the mandrel is stung into the wellhead (Funk Col 6 line 19-34 the cups are configured to compress to allow for wellbore fluid to flow past upwardly and expand and compress downward as the fluid flows downhole).
Dallas et al discloses in claim 10. The wellhead isolation tool of claim 1, wherein the at least one cup is a first cup and the at least one seat comprises a first seat (Funk Fig 11; 92) positioned on the mandrel, the first cup positioned on the mandrel such that the downhole end of the first cup abuts the first seat ((Funk Fig 11; 92 downhole end of 72 abuts the seat), the tool further comprising:
a second cup mounted on the mandrel (Funk Fig 8; the at least one cup of Funk contains 3 cups labeled 72) and comprising a circular frustum (Funk Fig 11 shows a broken away view in longitudinal section through part of the cup assembly of Fig 8) that includes:
an uphole end defined by a third diameter (See attached Image above element D3);
a downhole end opposite the uphole end and defined by a fourth diameter (See attached Image above element D4) less than the third diameter;
a bore that extends between the uphole end and the downhole end and is configured to receive a least a portion of the mandrel therethrough (Funk Fig 8; 96 coupler for mounting on the mandrel);
and a radial surface between the uphole and downhole ends.
and a second seat (Funk Fig 11; each respective cup rests on a seat with the middle cup resting on the seat of the bottom hole cup, identified as the first cup) positioned on the mandrel and spaced apart from the first seat, the second cup positioned on the mandrel such that the downhole end of the second cup abuts the second seat (Funk Fig 11; each respective cup rests on a seat with the middle cup resting on the seat of the bottom hole cup, identified as the first cup).
Claim(s) 11-14, 17-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dallas (US Pat No 6817423) in view of Adams (US Pub No 20210199006) and Funk (US Pat No 5568837)
Dallas discloses in claim 11. A method of pressure testing a wellhead, the method comprising:
installing a wellhead isolation tool on a wellhead, the wellhead isolation tool comprising:
a hydraulic assembly (Combination of components from Dallas Fig 1 & 7; 72, 74, 118, 120, 16) comprising at least one hydraulic line fluidly (Dallas Fig 1; 72 & 74) coupled to a setting tool hydraulic ram (Dallas Fig 1; 118 & 120) that comprises a mandrel head (Dallas Fig 1; 16);
a mandrel (Dallas Fig 1; 12) coupled to the hydraulic ram (Dallas Fig 1; 12 is coupled to the mandrel head 16 and hydraulic ram), the mandrel comprising an uphole end coupled to the mandrel head and a downhole end configured to sting into a wellhead (Dallas col 6 line 54-58 the wellbore isolation tool is configured to insert the mandrel into a wellbore);
a packing assembly comprising a bore that is configured to receive the mandrel (Dallas col 5 line 35-38 Fig 1; 14 with packing rings 46)
and a pack-off assembly (Dallas col 1 line 41-45 a pack off assembly is positioned at the bottom end of the mandrel) coupled to the downhole end of the mandrel (Dallas col 1 line 41-45 a pack off assembly is positioned at the bottom end of the mandrel),
operating the hydraulic assembly to insert the mandrel into the wellhead to sting the pack- off assembly into a wellbore tubing (Dallas col 6 line 54-58 the wellbore isolation tool is configured to insert the mandrel into a wellbore);
circulating a pressurized fluid into the annulus between the mandrel and the wellbore tubing towards the downhole end of the mandrel (Dallas col 6 line 11-15 circulating stimulation fluids pumped down through the well head);
Dallas discloses a pack-off assembly but does not disclose that the pack off assembly is comprised of a cup seal.
However, Adams teaches a cup seal which: at least one seat (Adams [0025] cups are backed against stops carried on the mandrel); the assembly comprising at least one cup (Adams Fig 2; 126’ & 126” [0018] cup seal for sealing between the bore and the downhole tool via hydrostatic pressure) mounted on the mandrel uphole of the at least one seat (Adams [0017]-[0018] & [0025] Elastomeric cups, 126’ & 126’’, are backed against stops on the mandrel); sealing a portion of an annulus between the mandrel and the wellbore tubing with the at least one cup (Adams Fig 2; 126’ & 126” [0018] cup seal for sealing between the bore and the downhole tool via hydrostatic pressure);
compressing the at least one cup downwardly against the at least one seat to urge the uphole end toward the downhole end in response to circulating the pressurized fluid to expand the at least one cup radially away from the mandrel and against the wellbore tubing (Adams [0017]-[0018] & [0025] Elastomeric cups, 126’ & 126’’, are backed against stops on the mandrel when placed under pressure from fluid being pumped down hole, the cups flare outward to form a fluid tight seal against a tubular); pressure testing the wellhead with the pressurized fluid (Adams Fig 3a-3c abstract [0033] method for pressure testing a well)
As both Dallas and Adams both disclose a seal assembly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to substitute the seal rings of Dallas for the Cup Seals of Adams to achieve the predictable result of sealing the wellbore between the downhole tool and the wellbore.
Furthermore, Adams teaches: pressure testing the wellhead with the pressurized fluid (Adams Fig 3a-3c abstract [0012] well known to do pressure testing in a well system [0033] method for pressure testing a well)
It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to have modified Dallas to include pressure testing the wellhead as taught by Adams for the purpose of ensuring proper integrity of the tubular string.
Dallas in view of Adams does not disclose the specifics of the shape of the cup seals.
However, Funk teaches a cup seal:
comprising a circular frustum (Funk Fig 11 shows a broken away view in longitudinal section through part of the cup assembly of Fig 8) that includes:
an uphole end defined by a first diameter (See attached Image below element D1);
a downhole end opposite the uphole end and defined by a second diameter less than the first diameter (See attached Image Below element D2), the at least one cup positioned on the mandrel such that the downhole end abuts the at least one seat (Funk Fig 11);
a bore that extends between the uphole end and the downhole end and is configured to receive a least a portion of the mandrel therethrough (Funk Fig 8; 96 coupler for mounting on the mandrel);
and a radial surface between the uphole and downhole ends (Funk Fig 11; 90).
It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to have modified Dallas et al. to include the specific cup shape as taught by Funk for the purpose of receiving fluid from the uphole end.
Figure 2:Showing the diameters D1>D2 and D1=D3
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Dallas et al discloses in claim 12. The method of claim 11, wherein the at least one cup is a first cup, the pack-off cup assembly comprising a second cup mounted on the mandrel (Funk Fig 8; the at least one cup of Funk contains 3 cups labeled 72) and comprising a circular frustum (Funk Fig 11 shows a broken away view in longitudinal section through part of the cup assembly of Fig 8) that includes:
an uphole end defined by a third diameter (See attached Image above element D3);
a downhole end opposite the uphole end and defined by a fourth diameter (See attached Image above element D4) less than the third diameter;
a bore that extends between the uphole end and the downhole end and is configured to receive a least a portion of the mandrel therethrough (Funk Fig 8; 96 coupler for mounting on the mandrel);
and a radial surface between the uphole and downhole ends
the method comprising: sealing another portion of the annulus between the mandrel and the wellbore tubing with the second cup (Adams [0017]-[0018] & [0025] Elastomeric cups, 126’ & 126’’, are backed against stops on the mandrel when placed under pressure from fluid being pumped down hole, the cups flare outward to form a fluid tight seal against a tubular).
Dallas et al discloses in claim 13. The method of claim 11, comprising compressing the at least one cup in response to circulating the pressurized fluid in the annulus between the mandrel and the wellbore tubing (Adams [0017]-[0018] & [0025] Elastomeric cups, 126’ & 126’’, are backed against stops on the mandrel when placed under pressure from fluid being pumped down hole, the cups flare outward to form a fluid tight seal against a tubular).
Dallas et al discloses in claim 14. The method of claim 13, wherein compressing the at least one cup comprises flattening the at least one cup to increase the first diameter to further seal the portion of the annulus between the mandrel and the wellbore tubing (Adams [0017]-[0018] & [0025] Elastomeric cups, 126’ & 126’’, are backed against stops on the mandrel when placed under pressure from fluid being pumped down hole, the cups flare outward to form a fluid tight seal against a tubular).
Dallas et al discloses in claim 17. The method of claim 11, comprising sealing at least a portion of the wellbore tubing downhole of the at least one cup against circulation of the pressurized fluid into the wellbore tubing with the at least one cup (Adams [0017]-[0018] & [0025] Elastomeric cups, 126’ & 126’’, are backed against stops on the mandrel when placed under pressure from fluid being pumped down hole, the cups flare outward to form a fluid tight seal against a tubular).
Dallas et al discloses in claim 18. The method of claim 11, comprising circulating the pressurized fluid into the wellhead through a hydraulic secondary wing valve that comprises an inlet oriented orthogonally to the annulus (Dallas Fig 1; 74, 72).
Dallas et al discloses in claim 19. The method of claim 11, wherein the at least one cup is a first cup, the pack-off cup assembly comprising a second cup mounted on the mandrel (Funk Fig 8; the at least one cup of Funk contains 3 cups labeled 72) and comprising a circular frustum (Funk Fig 11 shows a broken away view in longitudinal section through part of the cup assembly of Fig 8) that includes:
an uphole end defined by a third diameter (See attached Image above element D3);
a downhole end opposite the uphole end and defined by a fourth diameter (See attached Image above element D4) less than the third diameter;
a bore that extends between the uphole end and the downhole end and is configured to receive a least a portion of the mandrel therethrough (Funk Fig 8; 96 coupler for mounting on the mandrel);
and a radial surface between the uphole and downhole ends.
sealing the portion of the annulus by compressing the first cup against a first seat positioned on the mandrel downhole of the first cup and abutting the downhole end of the first cup (Adams [0017]-[0018] & [0025] Elastomeric cups, 126’ & 126’’, are backed against stops on the mandrel when placed under pressure from fluid being pumped down hole, the cups flare outward to form a fluid tight seal against a tubular);
and sealing another portion of the annulus by compressing the second cup against a second seat (Adams [0017]-[0018] & [0025] Elastomeric cups, 126’ & 126’’, are backed against stops on the mandrel when placed under pressure from fluid being pumped down hole, the cups flare outward to form a fluid tight seal against a tubular)
Dallas et al discloses in claim 20. The method of claim 19, wherein the first and third diameters are substantially equal, and the second and fourth diameters are substantially equal (See image Above).
Dallas et al discloses in claim 21. The method of claim 19, wherein installing the wellhead isolation tool on the wellhead comprises installing the wellhead isolation tool on the wellhead exclusive of the wellhead having a back pressure valve profile, a two way check valve profile, a test plug profile, or a tubing hanger landing profile (Dallas [0022] system can be installed on a Christmas tree and Dallas makes no mention of a “back pressure valve profile, a two way check valve profile, a test plug profile, or a tubing hanger landing profile”).
Dallas et al discloses in claim 22. The method of claim 19, wherein installing the wellhead isolation tool on the wellhead comprises installing the wellhead isolation tool on the wellhead exclusive of a drilling rig, a coil tubing unit, a snubbing unit, or a workover rig (Dallas [0022] system can be installed on a Christmas tree and Dallas makes no mention of a “ drilling rig, a coil tubing unit, a snubbing unit, or a workover rig” being required to install the system).
Claim(s) 7, 16 & 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dallas et al as applied to claims 1, 9 & 11 above.
In regards to claims 7, 16 & 23 It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the pressurized fluid of Dallas et al. from equal to or less than 15000 psi as applicant appears to have placed no criticality on the claimed range [0048] of the instant specification only requires that the pressurized fluid be up to 15,000 psi and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. In re Wertheim, 541F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
Applicants amendments filed 08/10/2026 have overcome the rejection under 35 USC 112 in regards to claim 10. The rejection of claim 10 under 35 USC 112 is withdrawn.
Applicant's arguments and amendments filed 08/10/2026 have been fully considered but they are not persuasive.
Examiner respectfully disagrees with the argument that “Funk reveals that one of ordinary skill in the art would interpret this reference as failing to teach or suggest the claimed mechanical deformation and radial expansion”. Examiners position is that the structure of Funk is substantially similar to applicants claims pack off cup design and the claim language does not disclose a structural or mechanical difference in the shape of the pack off cup assembly of the instant application compared to the pack off cup assembly of Funk that does not rely upon intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Therefore, Examiner respectfully disagrees with Applicants argument that “Funk reveals that one of ordinary skill in the art would interpret this reference as failing to teach or suggest the claimed mechanical deformation and radial expansion”.
In regards to Applicants argument that “Funk relies on inward radial compression to allow fluid bypass, in direct contrast to amended claim 1” Examiner respectfully disagrees with the assertion. The language of claim 1 relies on fluid flowing specifically flowing downhole and makes no claim regarding the movement of the pack off cup assembly with fluid flowing in the uphole direction. Examiners position is that when fluid flows downhole the cups of Funk would expand radially outward while when fluid flows in the uphole direction the cups of Funk would radially compress. Therefore, Examiner respectfully disagrees with Applicants argument that “Funk relies on inward radial compression to allow fluid bypass, in direct contrast to amended claim 1”.
Applicant’s amendments and arguments, filed 08/10/2026, with respect to the rejection(s) of claim(s) 11-14, 16-23 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Dallas (US Pat No 6817423) in view of Adams (US Pub No 20210199006) and Funk (US Pat No 5568837).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Dyer US Pat No 2,167,747: Fig 2 elements 21, 21, 30 column 2 line 54-55 to column 3 line 1-7 discloses the mechanics of fluid flowing downhole into a concave shape. “Rotary mud fills the cup 20 and exerts pressure upon its bottom wall 21 shoulder 25 and packing flange 30. The pressure is downward upon the bottom wall 21, and radially downward upon shoulder 25 and packing flange 30. The greater the pressure the tighter the packing flange is expanded against the wall of the casing, sealing off the mud above while the plug is being driven downwardly by the mud.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas D Wlodarski whose telephone number is (571)272-3970. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at (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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/NICHOLAS D WLODARSKI/Examiner, Art Unit 3672
/Nicole Coy/Supervisory Patent Examiner, Art Unit 3672
