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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/26/2026 has been entered.
Response to Amendment
Applicant's arguments filed 1/26/2026 have been fully considered but they are not persuasive. Firstly addressing the Affidavit filed on 1/26/2026. It is noted that the experiments performed only addressed a coating thickness of 5 micrometers and 12 micrometers. Such experiments are clearly not significant in scope to render the claimed 10-30 micrometer range distinguishing. A single data point of 12 is not sufficient to establish properties for a range of 10-30. Nothing on the lower end between 5 and 10 or above 30 has been tested. The affidavit is thus not sufficient to establish unexpected results for a range of 10-30 micrometers.
Applicant’s arguments have been considered. A new ground of rejection is presented below. The newly applied Paxton reference, specifically teaches the claimed fluorinated parylene and thickness of the current claims.
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 1, 7, 10, 11, 15, 16 and 18-20 are 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.
In claim 1, the positioning of the tetrafluoro formula makes the claim confusing, since after the formula, the claims teach “the following formula”, wherein no formula is following.
The way claims 1 and 15 are written is confusing, since they indicate broadly ranging formulas, then limit the formula to a fluoro parylene species. Furthermore, the term fluorinated poly-(p-xylene) may include other species than that of the tetrafluoro species shown, since this can include fluorine bonded to the benzene atom instead of the carbon chain shown.
In claims 1 and 15 R1 can have different definitions. It is recommended that applicant condense the claims to show what is actually being claimed.
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 (i.e., changing from AIA to pre-AIA ) 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, 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.
Claim(s) 1, 7, 11, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Paxson (US 2018/0334607 in view of Ren (US 2021/0253773).
Regarding claims 1, Paxson teaches a downhole tool which comprises a coating and a dissolvable polymer, wherein the coating can comprise Parylene HT, which is the fluoro parylene taught in claim 1 (0050). The coating may have a thickness of from 10 to 100 micrometers (0045), overlapping and rendering obvious the claimed 10 to 30 micrometers claimed (see MPEP 2144.05 I). The dissolvable material may include polymers (0038, 0040). Paxson differs in not specifically the number of monomer groups in the polymer, however it would be obvious to one of ordinary skill in the art to vary the amount of monomers in the polymer in order to withstand downhole temperatures and pressures, and ensure timely delivery of the polymer to the downhole environment (see 0042 of Paxson which indicates that one of ordinary skill would provide conditions for timely delivery of the dissolvable polymer to the downhole environment and that the coating (barrier) can have low enough solubility, such that the coating has a desired lifetime (0049) ).
Paxson differs from the current invention in that the polymer is not disclosed as a polyurethane. Ren teaches that polyester-polyurethane is used as water dissolvable polymer compound in a tool for wellbore operations (0031-32). It would be obvious to one of ordinary skill in the art to utilize the coating of Paxton on the soluble polymer compound of Ren, since such would give the ability to control the dissolution of the water soluble polymer in the wellbore, with a reasonable expectation of success.
Regarding claim 7, Paxton teaches the coating may be conformal (0007).
Regarding claims 11, the same downhole tools are taught by Paxson (0007).
Regarding claim 12, , Paxson teaches a downhole tool within the scope of the claim (0007) which comprises a coating and a dissolvable polymer, wherein the coating can comprise Parylene N, which is poly(p-xylene) (0050). The coating may have a thickness of from 10 to 100 micrometers (0045), overlapping and rendering obvious the claimed 10 to 30 micrometers claimed (see MPEP 2144.05 I). The dissolvable material may include polymers (0038, 0040). Given that the coating has similar thickness as in the current invention, such would be expected to have similar degradation properties as claimed. Paxson differs in not specifically the number of monomer groups in the polymer, however it would be obvious to one of ordinary skill in the art to vary the amount of monomers in the polymer in order to withstand downhole temperatures and pressures, and ensure timely delivery of the polymer to the downhole environment (see 0042 of Paxson which indicates that one of ordinary skill would provide conditions for timely delivery of the dissolvable polymer to the downhole environment and that the coating (barrier) can have low enough solubility, such that the coating has a desired lifetime (0049) ).
Paxson differs from the current invention in that the polymer is not disclosed as a polyurethane. Ren teaches that polyester-polyurethane is used as water dissolvable polymer compound in a tool for wellbore operations (0031-32). It would be obvious to one of ordinary skill in the art to utilize the coating of Paxton on the soluble polymer compound of Ren, since such would give the ability to control the dissolution of the water soluble polymer in the wellbore, with a reasonable expectation of success.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Paxson in view of Ren as applied to claim 1 above, further in view of Rytlewski (US 2007/0044958).
Regarding claim 10, Paxson is taught above. Paxson does not specifically teach that the coating is adhered to a primed surface of the soluble polymer. Rytlewski ‘958 teaches that a primer may be used when adhering a coating to a polymer for use in downhole operations (0071). It would be obvious to one of ordinary skill in the art to use a primer to enhance adhesion in the invention of Paxson as taught by Rytlewski ‘958, since such is taught for the same purpose of utilizing coated polymeric material in downhole operations.
Claim 15, 16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Paxson in view of Rytlewski (US 2007/0044958).
Regarding claims 15, Paxson teaches a downhole tool which comprises a coating and a dissolvable polymer, wherein the coating can comprise Parylene HT, which is the fluoro parylene taught in claim 1 (0050). The coating may have a thickness of from 10 to 100 micrometers (0045), overlapping and rendering obvious the claimed 10 to 30 micrometers claimed (see MPEP 2144.05 I). The dissolvable material may include polymers (0038, 0040). Paxson differs in not specifically the number of monomer groups in the polymer, however it would be obvious to one of ordinary skill in the art to vary the amount of monomers in the polymer in order to withstand downhole temperatures and pressures, and ensure timely delivery of the polymer to the downhole environment (see 0042 of Paxson which indicates that one of ordinary skill would provide conditions for timely delivery of the dissolvable polymer to the downhole environment and that the coating (barrier) can have low enough solubility, such that the coating has a desired lifetime (0049) ).
Paxson does not specifically teach that the coating is adhered to a primed surface of the soluble polymer. Rytlewski ‘958 teaches that a primer may be used when adhering a coating to a polymer for use in downhole operations (0071). It would be obvious to one of ordinary skill in the art to use a primer to enhance adhesion in the invention of Paxson as taught by Rytlewski ‘958, since such is taught for the same purpose of utilizing coated polymeric material in downhole operations.
Regarding claim 16, the same downhole tools are taught by Paxton (0007).
Regarding claim 20, Paxton teaches that the coating may comprise thermoplastic polymers, such as acrylates and methacrylates.
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Paxson in view of Rytlewski (US 2007/0044958) as taught for claim 15 and further in view of Ren.
Paxson in view of Rytlewski is taught above. Paxton differs from the current invention in that a specific dissolvable polymer is not disclosed. Ren teaches that polyester-polyurethane is used as water dissolvable polymer compound in a tool for wellbore operations (0031-32). With regard to claim 18, polyester-polyurethane is a thermoplastic polymer. It would be obvious to one of ordinary skill in the art to utilize the coating of Paxton on the soluble polymer compound of Ren, since such would give the ability to control the dissolution of the water soluble polymer in the wellbore, with a reasonable expectation of success.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP C TUCKER whose telephone number is (571)272-1095. The examiner can normally be reached M-F 8-4:30.
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/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745