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 Amendment
Applicant's arguments filed 6/02/2026 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 10-12 micrometer range distinguishing. A single data point of 12 is not sufficient to establish properties for a range of 10-12. Nothing on the lower end between 5 and 10 or above 12 has been tested. There is no showing for 10 micrometers or anything slightly above 12 or below 10 to show unexpected properties. The affidavit is thus not sufficient to establish unexpected results for a range of 10-12 micrometers. Furthermore, the Affidavit is attempting to show unexpected properties for a range of 10-12 micrometers, wherein such range is not taught as having unexpected properties in applicants’ specification, thus the claimed range is new matter.
Applicant’s arguments with the prior art rejections are noted but not deemed persuasive.
Applicant’s initial arguments against Ren are noted, but it has been held that nonobviousness cannot be established by individually attacking references (MPEP 2145 IV). Ren has been used in a combination with Paxson which in combination teaches or renders obvious the claimed features.
Contrary to applicant’s arguments Paxson is not limited to metal alloys as the degradable substrate. Paxson clearly teaches that the coated degradable substance may be a polymer which can degrade or dissolve (see Paxson 0041). Argument is made that Paxson does not teach withstanding fracturing conditions or permitting dissolution at a particular temperature. Contrary to applicant’s arguments, Paxson teaches use in fracturing environments (0010, 0012), and since the coating of Paxson overlaps in thickness and renders obvious the claimed thickness would obviously permit dissolution at the claimed temperatures.
As noted above, unexpected results are not supported by applicant’s submissions. Again, since the coating of Paxson overlaps in thickness and renders obvious the claimed thickness would obviously have integrity at 140 degrees C and permit dissolution at the claimed 95 digress temperatures.
With respect to the argument that parylene HT is listed among a group of possible coatings, such group is so small that the use of Parylene HT would be instantly envisaged by one of ordinary skill in the art.
Applicant argues that the use of a primer is shown to have unexpected results by the affidavit, however such does not show any unexpected result over the prior art. The benefit of using a primer to help prepare for attaching one substance to another is well known.
Applicant argues that the rejection of claim 15 is not proper because it does not address a polyurethane, however the claim does not include a polyurethane, only a dissolvable polymer.
Applicant argues Long felt need and commercial success but has not provided any evidence by Declaration or Affidavit to support these allegations,
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. 7, 10-12, 15, 16 and 18-20 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. Applicant has amended the claims to indicate that the coating thickness is from 10-12 micrometers. Applicants’ specification teaches that the thickness of the coating ranges from 0.001 to 100 micrometers. The specification fails to teach the range 10-12, although mentioning 12 Micrometers passed a specific test. Application has filed an affidavit attempting to show unexpected results for the range of 10-12. Applicant is thus attempting to show that 10-12 is a different invention from the 0.001 to 100 originally disclosed in the specification. The attempt to show the unexpected results thus renders the claimed 10-12 new matter.
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 12 micrometers claimed (see MPEP 2144.05 I), thus such would obviously have similar degradation properties. The dissolvable material may include polymers (0038, 0040, 0041). 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). Both Paxson and Ren teach plugs in fracturing operations. 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).
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 12 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. Both Paxson and Ren teach plugs in fracturing operations. 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.
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 PHILIP C TUCKER whose telephone number is (571)272-1095. The examiner can normally be reached M-F 8-4:30.
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, Alexa Neckel can be reached at 571-272-2450. 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.
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745
Prosecution Insights