DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/17/2025 has been entered. Claims 1-3 and 5-15 are pending with claim 4 being currently cancelled..
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 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 of this title, 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 1-2, 5-10, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Lallemand et al. (US 20190153852) in view of Cambus (US 20070167331) and in view. of Sano et al. (US 4545702).
Regarding claim 1: Lallemand discloses a method of performing an operation in a borehole ([0002]-[0004]). Lallemand discloses conveying a work string 20 into the borehole, the work string including a milling section 50 and a packer section (Figs. 1-2B; [0020], [0031], [0036]). Lallemand discloses that the packer section includes a packer 202 and a cover 204 that protects the packer from the borehole (Figs. 2A, 2B; [0034], [0036]). Lallemand discloses milling a section of the borehole with the milling section [0034]). Lallemand discloses exposing the packer to the borehole and expanding the packer (Figs. 2A, 2B; [0034], [0036], [0038]). Lallemand discloses increasing a fluid pressure at an uphole side of the packer of a hydraulic fluid in a hydraulic chamber of the work string to uncover the packer (Fig. 4; [0056] – Lallemand teaches a separate “hydraulic chamber” in the form of pump 432 and control device 490; both can be downhole and have a separate hydraulic fluid).
As discussed above, Lallemand discloses activating a pump 432 to increase a fluid pressure at an uphole side of the packer (see above; Fig. 4; [0056]) but does not explicitly disclose activating a pump via a signal from a downhole battery-operated timing device. Cambus discloses activating a pump via a signal from a downhole battery-operated timing device (Figs. 4, 5; [0035]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have modified Lallemand so as to activate a pump via a signal from a downhole battery-operated timing device as taught by Cambus. As Lallemand and Cambus both disclose directing/controlling a fluid through the activation of a downhole pump, as Lallemand is silent regarding the activation details (i.e. silent regarding a power source), and as Cambus explicitly discloses activating a pump via a signal from a downhole battery-operated timing device, it would have been within routine skill to have a selected a specific manner of activation from a finite selection of activation modes (i.e. electric lines, hydraulic lines, or battery). Such a simple substitution/addition would have been obvious to one having ordinary skill in the art and such a simple substitution/addition would have been predictable with a reasonable expectation for success and with no unexpected results.
Lallemand, as modified by Cambus, does not explicitly disclose to move the packer axially with respect to the work string in a downhole direction and out from underneath the cover to an exposed location to expose the packer to the borehole. Sano discloses increasing a fluid pressure at an uphole side of the packer to move the packer axially with respect to the work string in a downhole direction and out from underneath the cover to an exposed location to expose the packer to the borehole (Figs. 3, 4). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have modified Lallemand, as modified by Cambus, so as to move the packer axially with respect to the work string in a downhole direction and out from underneath the cover to an exposed location to expose the packer to the borehole as taught by Snow. As Lallemand and Sano both disclose exposing the packer to the borehole by uncovering the packer by increasing a fluid pressure at an uphole side of the packer, as packers and their operation are very well known in the art, and as Sano explicitly discloses to move the packer axially with respect to the work string in a downhole direction and out from underneath the cover to an exposed location to expose the packer to the borehole, it would have been within routine skill to have a selected a specific packer configuration (i.e. a packer that slides with respect to the work string to be exposed) from a finite selection of packer configurations (i.e. packer moves or cover moves). Such a simple substitution/addition would have been obvious to one having ordinary skill in the art and such a simple substitution/addition would have been predictable with a reasonable expectation for success and with no unexpected results.
Regarding claim 2: Lallemand discloses that milling the borehole further comprises rotating the work string ([0003], [0020], [0037]).
Regarding claim 5: Lallemand, as modified by Cambus, and Sano, discloses that the packer is disposed on a telescoping sub (Sano – 5) within the cover and moving the packer further comprises moving the telescoping sub axially with respect to the work string in the downhole direction and out from underneath the cover to expose the packer (Sano – Figs. 3, 4).
Regarding claim 6: Lallemand discloses milling the borehole and inflating the packer in a same run (Figs. 1, 2A, 2B; [0038] – the packer is covered during the milling and then uncovered to be set – thus; the same run).
Regarding claim 7: Lallemand discloses that the work string further comprises a bottomhole assembly 90 and the packer is disposed on the bottomhole assembly (Figs. 1, 2A, 2B; [0020], [0034]).
Regarding claim 8: Lallemand discloses that the cover is one of: (i) a sleeve; and (ii) a shroud (Figs. 2A, 2B; [0034], [0045]).
Regarding claim 9: Lallemand, as modified by Cambus and Sano, discloses a work string (Lallemand – 20), a milling section (Lallemand – 50) for milling within a borehole, a packer section (Lallemand – 200; Sano - 7) including a packer (Lallemand – 202; Sano 7) and a cover (Lallemand – 204; Sano - 6) that protects the packer from the borehole, and a hydraulic chamber (see above - Lallemand teaches a separate “hydraulic chamber” in the form of pump 432 and control device 490; both can be downhole and have a separate hydraulic fluid) including a hydraulic fluid on an uphole side of the packer, that a pressure of the hydraulic fluid is increased to move the packer axially with respect to the work string in a downhole direction and out from underneath the cover to an exposed location at which the packer can be expanded within the borehole (see above; Lallemand - Figs. 1-2B, 4; [0002]-[0004], [0020], [0031], [0036], [0038], [0056]; Sano – Figs. 3, 4). Lallemand, as modified by Cambus and Sano, discloses a pump (Lallemand – 432; Cambus – 36) configured to control the pressure of the hydraulic fluid (Lallemand – [0056]) and a downhole battery-operated timing device (Cambus – 40, 42) configured to activate the pump (Lallemand – Fig. 4; [0056]; Cambus – Figs. 4, 5; [0035]). .
Regarding claim 10: Lallemand discloses a rotary table 14 for rotating the work string for milling withing the borehole (Fig. 1; [[0020]).
Regarding claim 13: Lallemand, as modified by Cambus and Sano, discloses a telescoping sub (Sano – 5) within the cover that moves axially, that the packer is disposed on the telescoping sub and the telescoping sub moves axially with respect to the work string in the downhole direction and out from underneath the cover to expose the packer (Sano – Figs. 3, 4).
Regarding claim 14: Lallemand discloses that the work string further comprises a bottomhole assembly 90 and the packer is disposed on the bottomhole assembly (Figs. 1, 2A, 2B; [0020], [0034]).
Regarding claim 15: Lallemand, as modified by Cambus and Sano, discloses the packer Sano – 7) is one of: (i) an inflatable packer; and (ii) a high expansion element packer (Sano – Figs. 3, 4; col. 7, line 64).
Claims 3 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Lallemand et al. (US 20190153852), Cambus (US 20070167331), and Sano et al. (US 4545702), as applied to claims 1 and 9 above, and further in view of Mahajan et al. (US 20150354320).
Lallemand, Cambus, and Sano disclose the invention substantially as claimed and as discussed above.
Regarding claims 3 and 11: Lallemand, as modified by Cambus and Sano, discloses that a work string can have a variety of tools (Lallemand - [0002]) but is silent regarding an underreamer and thus does not explicitly disclose that the milling section further comprises an underreamer and expanding the borehole with the underreamer with the packer under the cover. Mahajan discloses that a downhole tool can include an underreamer, a pipe cutter, a section mill, a bypass valve, a whipstock anchor, a measuring-while-drilling (“MWD”) tool, a logging-while-drilling (“LWD”) tool, a bridge plug, a packer, a sidetracking system, other tools, or any combination of the foregoing ([0023)]. Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have added an underreamer to the assembly of Lallemand as modified by Cambus and Sano, to allow expanding the borehole with the underreamer, as taught by Mahajan, while the Lallemand/Cambus/Sano packer is under the cover. As drill strings and bottom hole assemblies are notoriously well known in the art, as underreaming is notoriously well-known in the art, as Lallemand, Cambus, Sano, and Mahajan teach some of the same tools in a tools string, and as Mahajan explicitly teaches an underreamer, it would have been within routine skill to have a selected a desired downhole tool to perform a desired operation from a finite selection of downhole tools. Such a simple substitution/addition would have been obvious to one having ordinary skill in the art and such a simple substitution/addition would have been predictable with a reasonable expectation for success and with no unexpected results.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Lallemand et al. (US 20190153852), Cambus (US 20070167331), and Sano et al. (US 4545702), as applied to claim 9 above, and further in view of Eldho et al. (US 20220127918).
Lallemand, Cambus, and Sano disclose the invention substantially as claimed and as discussed above.
Regarding claim 12: Lallemand discloses that the packer expands axially but is silent as to any actuation means and thus does not explicitly disclose a device for moving the packer axially and that the device is one of: (i) hydraulic pump; and (ii) a ball seat. Eldho discloses a device for moving the packer axially and that the device is one of: (i) hydraulic pump; and (ii) a ball seat ([0014) – packer is set using hydraulic pressure]. Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have added a hydraulic pump to the apparatus of Lallemand, as modified by Cambus and Sano, to provide a means for moving the packer axially and setting the packer as taught by Eldho. As the use and setting of packers is very well known in the art, as Lallemand discloses setting a packer (axial movement) but is silent as to the specific means, and as Eldho explicitly teaches the use of hydraulic pressure to expand a packer (axially), it would have been within routine skill to have a selected a desired packer actuation means from a finite selection of actuation means. Such a simple substitution/addition would have been obvious to one having ordinary skill in the art and such a simple substitution/addition would have been predictable with a reasonable expectation for success and with no unexpected results.
Response to Arguments
Applicants’ amendments and arguments, filed 12/17/2025, with respect to the previous rejections of claims 1-15 have been fully considered and they are at least partially persuasive. The objections/rejections that have been withdrawn are not repeated herein.
Applicants’ arguments, directed to claims 1-3 and 5-15 are moot because the arguments do not apply to any of the reference combinations being used in the current Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Rayssiguier et al. (US 20080236835) is found to disclose many of the limitations of the as-recited claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TARAS P BEMKO whose telephone number is (571)270-1830. The examiner can normally be reached on Monday-Friday 8:00-5:00 (EDT/EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached on 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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/Taras P Bemko/
Primary Examiner, Art Unit 3672
1/31/2026