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 .
Response to Arguments
Applicant's arguments filed 09/18/2025 have been fully considered but they are not persuasive. Applicant’s argument that the piston is attached to the reservoirs in a monolithic structure in Beall and thus Beall cannot be said to have a converter module connected to a pre-manufactured downhole tool is not persuasive since “pre-manufactured” only means that the tool was manufactured and the converter module of fig. 1 below is connected to the tool which includes 10, 12, 14, and other elements of fig. 1 of Beall not included in fig 1 below and line 44 is the balance line which connected the two as claimed.
Election/Restrictions
Claims 14 and 15 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/18/2025.
Claim Rejections - 35 USC § 112
Claim 1, 3, and 12 iare 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 1 recites a “balance pressure chamber” which has a balance line port but the spec refers to this chamber as a balance line chamber, and subsequent claims also refer to this as the balance line chamber, so claim 1 should be amended to recite “balance [[pressure]] line chamber” and subsequent claim 3 should be amended to be consistent with the antecedent basis. Claim 12 recites first second and third chambers, wherein the second chamber is the balance line chamber, and thus amendments should be made to fix this antecedent basis issue.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-6, 8-10, 12, 13, 16-19 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Beall (US 6109351 A).
With respect to claim 1, Beall discloses a borehole system having a string (SSVs are mounted in boreholes having strings, abstract, Beall), the string comprising: a converter module (elements shown in fig. 1 below) including a piston (50) defining a balance line chamber (58) having a balance line port (second port of fig. 1 below), the module configured to connect to a pre-manufactured downhole tool (10, 12, 14, and other elements of fig. 1 of Beall not included in fig 1 below) to form a fluidic connection between the balance line port and a balance line (44) of the downhole tool, the module is configured to provide a source of converter module pressure from the balance pressure chamber to the downhole tool via the balance line (via 48, 52, 46, and balance line 44).
Fig. 1
PNG
media_image1.png
846
584
media_image1.png
Greyscale
With respect to claim 2, Beall discloses wherein the downhole tool is configured to receive hydraulic control pressure from a surface location by a hydraulic control line (16), and the converter module is configured to replace hydrostatic pressure from the hydraulic control line (col. 3 ll. 35-58).
With respect to claim 3, Beall discloses wherein the converter module includes a stored energy source (48) on one end of the piston and a balance line chamber (58) in fluidic communication with the opposite end of the piston, the stored energy source configured to push the piston further into the balance line chamber upon a decrease of pressure within the balance line chamber (shown in fig. 3).
With respect to claim 4, Beall discloses wherein the stored energy source includes a nitrogen charge (shown in fig. 1, col. 3 ll. 1-4).
With respect to claim 5, Beall discloses wherein the converter module includes a first dynamic (54) seal and a second dynamic seal (56) on the piston, and a seal chamber between the first and second dynamic seals is fluidically connectable to a hydraulic control line (shown in figs, 1, 2).
With respect to claim 6, Beall discloses wherein the converter module includes a housing having a first section and a second section (shown in fig. 1 above), the housing having the balance line chamber and the seal chamber and supporting the piston within the first section to form the seal chamber (shown in figs. 1, 2), wherein a leak path connecting the balance line chamber and seal chamber is formed when the second dynamic seal enters the second section (shown in fig. 3, coll. 5 ll. 1-3).
With respect to claim 8, Beall discloses the downhole tool (piston 10, spring 14, 12, and member acted on by 12), and a hydraulic control line (16) fluidically connected to the downhole tool to provide hydraulic control pressure on a first end of a piston (10) in the downhole tool, the converter module pressure acting on a second end of the piston in the downhole tool (shown in figs. 1-3, col. 3 ll. 15-58).
With respect to claim 9, Beall discloses wherein the downhole tool is a safety valve having a flapper (col. 2 ll. 45-55), wherein the safety valve is configured to receive hydraulic pressure through the hydraulic control line to open the flapper, compress a power spring (14) within the safety valve, and force balance fluid into the balance line chamber to push upon the piston in the converter module (col. 3 l. 15 – col. 4 l. 40).
With respect to claim 10, Beall discloses wherein the hydraulic control line is fluidically connected to a seal chamber in the converter module between two dynamic seals on the piston within the converter module (shown in figs. 1-3, fig. 1 above).
With respect to claim 12, Beall discloses wherein the converter module comprises: a housing having a first port and a second port (see fig. 1 above), and further having a first chamber (generally indicated at 48), a second chamber (indicated generally at 58), and a third chamber (seal chamber of fig. 1 above); the piston disposed within the housing, the piston having a first end (upper end fig. 1) and a second end (lower end fig. 1), the first chamber adjacent the first end of the piston, and the second chamber adjacent the second end of the piston (shown in fig. 1 above); a first dynamic seal (54) capable of sealing the piston within at least a portion of the housing and a second dynamic seal (56) capable of sealing the piston within at least a portion of the housing, the third chamber disposed between the first and second dynamic seals (shown in fig. 1, fig. 1 above); wherein the first port is fluidically accessible to the third chamber and is fluidically connectable to a source of pressure (shown in fig. 1), and the second port is fluidically accessible to the second chamber and is fluidically connectable to the downhole tool (shown in fig. 1).
With respect to claim 13, Beall discloses wherein the housing includes a first section and a second section (fig. 1 above), the second dynamic seal seals the piston to the housing when the second dynamic seal is in the first section of the housing (fig. 1 above), and the second chamber and the third chamber are fluidically connected when the second dynamic seal is positioned in the second section of the housing (shown in fig. 3).
The limitations of claims 16-18 are substantially similar to those of claims 1-6, 8-10, 12, and 13, rejected supra.
With respect to claim 19, Beall discloses a method of changing a source of balance line pressure in a balance line type downhole tool, the method comprising: fluidically connecting the second chamber of the converter module of claim 16 to a balance line (44) of the downhole tool (shown in figs. 1-2).
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) 7 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beall in light of Vick (US 20200048988 A1).
With respect to claims 7 and 11, Beall discloses a first chamber (indicated at 48 in fig. 1) with compressed gas within the housing wherein the gas acts against the piston towards the balance line chamber (shown in fig. 1), wherein the first chamber has a lower pressure than a pressure of a hydraulic control line of the downhole tool (col. 3 ll. 49-52).
However, Beall fails to disclose a spring in the first chamber.
Nevertheless, Vick discloses that a spring is an obvious substitution for/combination with compressed gas (pgph. 30, Vick) as a biasing member in a downhole tool.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have used a spring instead of or in addition to the compressed gas in Beall as a biasing member since Vick states that this is an obvious substitution/combination (pgph. 30, Vick), and since this is the simple substitution of one prior art device for another with predictable results and a reasonable expectation for success.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beall in light of Reid (US 20210246761 A1).
With respect to claims 20, Beall fails to specifically disclose including the downhole tool and converter module within a downhole string.
Nevertheless, Reid discloses this (100 and 12 in 10, fig. 4, pgph. 17).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have included the members of Beall within a string as taught by Reid since this is the application of a known technique in a similar device to improve it in the same way with predictable and obvious results.
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 KIPP CHARLES WALLACE whose telephone number is (571)270-1162. The examiner can normally be reached Monday - Friday 12:00 PM - 8:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at (571) 272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KIPP C WALLACE/Primary Examiner, Art Unit 3674 12/17/2025