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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/15/26 has been entered.
The amended claims filed 12/9/25 are acknowledged; claims 1-20 are currently pending.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the arrangement of the first and second valves relative to the first and second packers as described in claims 1 and 11 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 11 claim a first and second valve and a first and second packer. Based on the amended language and the language regarding the diverter sleeve, it appears the claims require the order to go (from uphole to downhole): first packer, both valves, second packer. This arrangement is not shown in the drawings and not supported by the Specification. The disclosure appears to show the first and second valves on different sides of at least one packer. See, for example, Fig. 2 which shows packer 208 – valve 214 – packer 208 – valve 214 or Fig. 3 which shows valve 312 – packer 208 – valve 214 – packer 208. Applicant vaguely references Figs. 2-5 and the “descriptions thereof in the application as filed” as support for the amendment. The broad reference does not demonstrate the inventor had the claimed invention at the time the application was filed.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 2, 7, 8, 10-12, 17, 18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Donald et al. (US 20100206576) in view of Smith et al. (US 8640769).
As the claims now recite unsupported limitations, the following rejections are made with the Office’s best attempt at interpreting the claims in the interest of compact prosecution.
CLAIM 1: Donald discloses a downhole completion assembly. The assembly comprises at least a portion of a production tubing installed in a wellbore that extends from a terranean surface into a subterranean formation (in production bore 1). The production tubing comprising one or more downhole production valves (12, 15, etc.); a fluid conduit (216/217 to apparatus 213) installed in the wellbore adjacent the production tubing (see Fig. 17), the fluid conduit fluidly coupled, at an uphole end, to a hydraulic fluid source and a chemical inhibitor fluid source (see paragraph 0181, 0234). The fluid conduit fluidly coupled, at a downhole end, to the production tubing (see Fig. 17). A diverter sleeve (“fluid diverter for use with a manifold…” see paragraphs 0194-201) is installed in or to the fluid conduit within the wellbore adjacent the one or more production valves and configured to operate: in a first state to circulate a chemical inhibitor fluid from the chemical inhibitor fluid source, through the fluid conduit, and to the production tubing based on a first fluid pressure in the diverter sleeve, and in a second state to circulate a hydraulic fluid from the hydraulic fluid source, through the fluid conduit, and to the one or more downhole production valves based on a second fluid pressure in the diverter sleeve greater than the first fluid pressure (diverter paths selected by opening and closing the valves, which changes the fluid pressure to activate the valves).
Donald fails to disclose the diverter sleeve installed downhole of a wellhead.
Smith discloses a control line assembly for downhole equipment.
Smith discloses a diverter sleeve (174)) downhole of the wellhead (see Fig. 8). The sleeve is near the safety valve.
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 location of the assembly of Donald to be placed downhole as taught in Smith with a reasonable expectation of success as Smith teaches the need to control fluid flow in a downhole location and directs fluid from a source in a similar location.
The Donald-Smith combination fails to disclose the claimed valves and packers in the claimed order.
One of ordinary skill in the art before the effective filing date of the claimed invention before the effective filing date to arrange the known valves and packers in the claimed arrangement as a rearrangement of parts as each valve and packer would perform their typical function in controlling fluid flow. See MPEP 2144.04(VI)(C).
CLAIM 2: The diverter sleeve comprises: an outer housing that includes a connection coupled to the fluid conduit (see Fig. 4a, connector on outlet); an inner housing that defines a flow path in fluid communication with the fluid conduit (see Fig. 4a showing flow path through housing); a first fluid connector fluidly coupled between the flow path and the production tubing (see Fig. 4a); and a second fluid connector fluidly coupled between the flow path and the first and second downhole production valves (see Fig. 4a, valves attached to outlets).
CLAIM 7: A chemical injection valve is fluidly coupled to the first fluid connector and the production tubing (see paragraph 0069).
CLAIM 8: The diverter sleeve comprises one or more seal stacks configured to provide a pressure tight isolation between the outer housing and the inner housing (see paragraph 0126).
CLAIM 10: The hydraulic fluid comprises oil (“oil and gas well”), and the chemical inhibitor fluid is configured to remove or reduce scale or asphaltene in the production tubing (see paragraph 0234).
CLAIMS 11, 12, 17, 18, and 20: These methods are inherent to the above structures.
Claims 9 and 19: Donald fails to disclose wherein the first fluid pressure is between 3,000 and 4,000 psig, and the second fluid pressure is between 9,000 and 10,000 psig; instead is silent to the pressures.
Examiner takes official notice that the claimed ranges are well known in the art as downhole pressures.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the claimed pressure ranges as activation means as Donald teaches using pressure to activate downhole tools (see paragraph 0221) and the claimed pressures are in the common range of downhole pressures.
Claim(s) 3-6 and 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Donald in view of Smith in further view of Hoffman et al. (US 20020139539).
CLAIMS 3 and 13: Donald-Smith discloses the elements of claims 2 and 12 as discussed above; further disclosing a plug positioned in the flow path and movable based at least in part on a fluid pressure force in the flow path (see paragraph 0198 discussing a plug at bottom).
Donald fails to disclose the diverter sleeve comprises: a plug positioned in the flow path and moveable based at least part on a fluid pressure force in flow path; and a spring positioned to exert a spring force on the plug opposite the fluid pressure force.
Hoffman discloses a downhole tool with a diverter.
Hoffman discloses a plug (300) with a spring member (325) that exerts a biasing force opposite the fluid pressure.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the diverter of Donald-Smith to use the activation means of Hoffman as a combination of known prior art elements in which the spring would serve the same purpose of modifying the active fluid path.
CLAIMS 4 and 14: Donald fails to disclose wherein in the first state, the first fluid pressure generates the fluid pressure force on the plug, and the spring force is sufficient to urge the plug to fluidly seal the second fluid connector and fluidly couple the flow path to the first fluid connector to circulate the chemical inhibitor fluid through the flow path and to the production tubing, and in the second state, the second fluid pressure generates the fluid pressure force on the plug, and the fluid pressure force is sufficient to urge the plug to fluidly seal the first fluid connector and fluidly couple the flow path to the second fluid connector to circulate the hydraulic fluid through the flow path and to the first and second downhole production valves (claim 4) or operating the system (claim 14).
Hoffman discloses a plug (300) with a spring member (325) that shifts the assembly from a first state to a second state by urging the plug to fluidly seal or not and change the fluid path (paragraph 0023, Fig. 5).
CLAIMS 5 and 15: Hoffman discloses the diverter sleeve comprises: a pair of uphole flanges comprising a first uphole flange configured to abut a second uphole flange to limit an uphole movement distance of the plug when the spring force is sufficient to urge the plug to fluidly seal the second fluid connector and fluidly couple the flow path to the first fluid connector; and a pair of downhole flanges comprising a first downhole flange configured to abut a second downhole flange to limit a downhole movement distance of the plug when the fluid pressure force is sufficient to urge the plug to fluidly seal the first fluid connector and fluidly couple the flow path to the second fluid connector (see Fig. 5 showing flanges around plug.
CLAIMS 6 and 16: The diverter sleeve comprises a fluid outlet formed through the inner housing, where the fluid outlet is positioned to fluidly couple the flow path with the first fluid connector when the spring force is sufficient to urge the plug to fluidly seal the second fluid connector and fluidly couple the flow path to the first fluid connector, and the fluid outlet is positioned to fluidly couple the flow path with the second fluid connector when the fluid pressure force is sufficient to urge the plug to fluidly seal the first fluid connector and fluidly couple the flow path to the second fluid connector (see Fig. 4A of Donald).
Response to Arguments
Applicant's arguments filed 12/9/25 have been fully considered but they are not persuasive.
As discussed above, the amended language generates an issue of new matter.
However, as best understood by the Office, the claims are a rearrangement of parts of a known structure. The rearrangement does not change the function of the parts individually or as a whole, and therefore unpatentable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK F LAMBE whose telephone number is (571)270-1932. The examiner can normally be reached M-Th 10-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Anderson can be reached at (571)270-5281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK F LAMBE/Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676
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