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 .
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.
Claim 10 is 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 10
The metes and bounds of claim 10 are unclear as the claim language recites “a first seat” however, newly amended claim 1 introduces “at least one seat” rending the claim ambiguous if the referenced seats are the same seats or if claim 10 is further defining the at least one seat. Therefore, the metes and bounds of claim 10 are ambiguous in light of newly amended limitations of claim 1.
Claim 10 is rejected on this basis.
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 against the at least one seat and expand radially 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, the tool further comprising:
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);
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 Funk (US Pat No 5568837) and Dallas (US Pat No 6626245)
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 assembly.
However, Funk discloses: at least one seat (Funk Fig 11; 92); the 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 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).
sealing a portion of an annulus between the mandrel and the wellbore tubing with the at least one cup (Funk Col 6 line 11-12 Cups are formed of an elastomeric material Col 6 line 19-34 the cups are configured to compress to allow for wellbore fluid to flow past from below but not from above by sealing against the wellbore casing)
compressing the at least one cup against the at least one seat in response to circulating the pressurized fluid to expand the at least one cup radially against the wellbore tubing (Funk Col 6 line 11-12 Cups are formed of an elastomeric material Col 6 line 19-34 the cups are configured to compress to allow for wellbore fluid to flow past from below but not from above by sealing against the wellbore casing);
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.
Dallas et al teaches a wellbore isolation method but does not disclose pressure testing the well head.
However, Dallas (‘245) teaches that once the well head isolation system is installed usually pressure testing the wellhead with the pressurized fluid occurs(‘248 col 8 line 13-26).
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 pressure testing the wellhead as taught by ‘245 for the purpose of ensuring the wellhead and BOP are properly sealed.
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 (Funk col 6 line 19-20 cups diameter is greater than the diameter of the casing).
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.
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 (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 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 (Funk Col 6 line 19-34 the cups are configured to compress to allow for wellbore fluid to flow past in the uphole direction only).
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 (Funk Col 6 line 19-34 the cups are configured to compress to allow for wellbore fluid to flow past);
and sealing another portion of the annulus by compressing the second cup against 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 downhole of the second cup and abutting the downhole end of the second cup (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)
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
Applicant’s amendments, filed 04/13/2026, with respect to Claims 1-22 (35 USC 112b) have been fully considered and are persuasive. The rejection of claims of 1-22 has been withdrawn.
However, in light of the amendments, a new rejection under 35 USC 112b and 112d has been found for claims 10 (112b) and 6 & 9 (112d).
Applicant's amendments and arguments filed 04/13/2026 have been fully considered but they are not persuasive.
Examiner appreciates the amendments, however, respectfully disagrees with applicants arguments as Dallas is relied on to teach the surface equipment and only refers to a generic pack off assembly (Dallas Col 1 line 41-45) and 60 is merely a seal applied to the surface equipment, best shown in Fig 5. Funk is relied on to teach the downhole equipment such as the details on the subbing cups which would be attached downhole of the invention of Dallas.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that Funks cups would not energize from a downward fluid force Examiner respectfully disagrees as the design of Funk allows fluid in the uphole direction, and would expand due to a force applied in the downhole direction, 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.
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.
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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/NICHOLAS D WLODARSKI/ Examiner, Art Unit 3672
/Nicole Coy/ Supervisory Patent Examiner, Art Unit 3672
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