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 .
Status of Claims
This action is in reply to the Applicant’s claims, filed on 09/26/2025.
Claims 1, 4, 9, 11, 16, and 20 have been amended.
Claims 1-20 are currently pending and have been examined.
Response to Amendment
The amendment filed 09/26/2025 has been entered. Claims 1-20 remain pending in the application. Applicant’s amendments to the claims 1-20 have partially overcome the objections and rejections previously set forth in the Final Office Action dated 06/26/2025.
Applicant’s amendments to claims 4 and 20 have overcome the objections previously set forth and amendments to claims 11-14 have overcome the prior art rejections.
Applicant’s amendments and argument to claims 1-3, 5-10 and 15-20 have been considered and are not persuasive. Therefore, the previous rejections are maintained (and repeated below with amended language added for clarity).
Regarding applicants’ argument that Corre does not teach "one or more unimpeded flow channels formed on the outer surface" since the rejection relies on multiple components from the same prior art reference to reject a single element of the claim, the argument has been considered but is not persuasive. A prior art reference may be relied upon for all that it teaches to one of ordinary skill in the art, including the combination of its teachings, even if disclosed by different parts of the reference. It is proper to consider the reference as a whole and the combination of the components to perform the same function as the claimed element. Therefore, the amendments do not overcome the prior art rejections. For the foregoing reasons, that arguments provided in the response dated 09/26/2025 are not persuasive and the rejections maintained.
However, upon further consideration, the amendments introduce new issues that a new grounds of rejection is made for claims 1-4 and 11-14. The new grounds of rejection also overturns the previously allowed claim 4 as a prior art rejection is made.
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.
Claims 1-2, 5, 15-16, and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Corre et al. (US7,874,356), in the first interpretation.
Claim 1. Corre, in the first interpretation, discloses: A downhole packer apparatus (26 packer, Fig. 1-4), comprising:
at least one packer disposed along a downhole sampling tool (packer used to collect formation fluid, Col. 2, lines 448-49), wherein an outer surface of the at least one packer includes an uneven surface portion (outer surfaces of 56 sealing element and 40 anti-expansion device create an uneven surface across the length of the packer, Fig. 3), wherein the uneven surface portion has one or more unimpeded flow channels formed on the outer surface locatable between the outer surface of the at least one packer (40 anti-expansion device or 58 localized regions are on the outer surface create unimpeded flow channels, Fig. 4), and a facing wellbore wall (32 wellbore wall, Fig. 3) the unimpeded flow channels promoting radial flow (58 localized region creates unimpeded circumferential and radial flow channels) of formation fluids (formation sample fluids, Col. 3, lines 8-9) to one or more surface conduits (48 sample collector, Fig. 2) leading to flow lines (50 flow passages, Fig. 2) located inside the at least one packer.
Claim 2. Corre, in the first interpretation, discloses: The apparatus of claim 1, wherein the uneven surface portion includes grooves (58 localized regions creates grooves, Fig. 4), in the outer surface to thereby define the one or more unimpeded flow channels.
Claim 5. Corre, in the first interpretation, discloses: The apparatus of claim 1, wherein the one or more unimpeded flow channels are multiple non-intersecting channels that are and separated from each other along the uneven surface portion (multiple 58 localized regions are non-intersecting and separated by even surfaces 56 sealing element).
Claim 15. Corre, in the first interpretation, discloses: The apparatus of claim 1, wherein the downhole packer apparatus is included in a system for drilling operations of a subterranean formation (inherent to collecting downhole formation samples as a drilling operation is required to access the subterranean formation).
Claim 16. Corre, in the first interpretation, discloses: A method (Col. 1, lines 26-37), comprising:
obtaining a formation sample (formation sample fluids, Col. 3, lines 8-9) using a downhole packer apparatus (26 packer, Fig. 1-4), deployed within a borehole of a system for drilling operations of a subterranean formation (22 wellbore, Fig. 1), including:
disposing the downhole packer apparatus along a downhole sampling tool (packer used to collect formation fluid, Col. 2, lines 48-49), wherein the downhole packer apparatus includes at least one packer (center outer surfaces of 56 sealing elements and 40 anti-expansion devices create a packer illustrated as surfaces 56-40-56; Fig. 3), wherein an outer surface of the at least one packer includes an uneven surface portion having one or more unimpeded flow channels (58 localized region creates unimpeded circumferential and radial flow channels on the outer surface) formed on the outer surface locatable between the outer surface of the at least one packer and a facing wellbore wall (center outer surfaces of 56 sealing elements and 40 anti-expansion devices create an uneven surface in the middle of the apparatus illustrated as surfaces 56-40-56; Fig. 3), the unimpeded flow channels flow promoting radial flow of formation fluids (34 fluid flow is radial, Fig. 1) to one or more surface conduits (48 sample collector, Fig. 2) leading to sample flow lines (50 flow passages, Fig. 2) located inside the at least one packer (Col 2, lines 16-21);
isolating a sampling zone of the subterranean formation adjacent to the borehole to create a fluid seal between the downhole packer apparatus and a wall of the borehole; and collecting the formation fluids into the one or more surface conduits to provide the formation sample (Col. 2, lines 48-50).
Claim 18. Corre, in the first interpretation, discloses: The method of claim 16, wherein isolating the sampling zone includes (zone isolated between proximal and distal 56 sealing elements, Fig. 4) expanding (expanded radially, Col. 2, lines 50-51) upper and lower packers (proximal and distal 56 sealing elements, Fig. 4) of the downhole packer apparatus and disposed along the downhole sampling tool, wherein the packer is a central packer (center outer surfaces of 56 sealing elements and 40 anti-expansion devices create a packer illustrated as surfaces 56-40-56; Fig. 3) located between the upper and lower packers.
Claim 19. Corre, in the first interpretation, discloses: The method of claim 16, wherein isolating the sampling zone includes expanding a chamber (42 expandable element, Fig. 4) underlying an even surface portion of the packer (56 sealing elements, Fig. 4), wherein the packer is one of an upper or lower packer of the downhole packer apparatus (proximal and distal 56 sealing elements, Fig. 4).
Claim 20. Corre, in the first interpretation, discloses: The method of claim 16, wherein isolating the sampling zone includes expanding a chamber underlying an even surface portion a second packer (one of the proximal and distal 56 sealing elements, Fig. 4), wherein the second packer is the other of a lower or upper packer of the downhole packer apparatus (Fig. 4).
Claims 1-4 ,and 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Corre et al. (US9428987), in the second interpretation.
Claim 1. Coore, in the second interoperation, discloses: A downhole packer (20 packer assembly, Fig. 1-6) apparatus, comprising: at least one packer (24 inflatable packer with 26 or 126 outer flexible skin of expandable material, Fig. 1-6) disposed along a downhole sampling tool (packer used to collect formation fluids; Col.2, lines 18-36), wherein an outer surface of the at least one packer includes an uneven surface portion (outer surface comprising of 126 and 40 and 42 expansion rings is uneven, Fig. 3), wherein the uneven surface portion has one or more unimpeded flow channels formed on the outer surface (51-53 contiguous sections on the outer surface create unimpeded flow channels, Fig. 3) and locatable between the outer surface of the at least one packer and a facing wellbore wall (Fig. 4), the unimpeded flow channels promoting radial flow (51-53 contiguous sections creates unimpeded circumferential and radial flow channels) of formation fluids (sampled formation fluid, Col. 4, lines 41-42) to one or more surface conduits (32 of 132 sample drains, Fig. 3) leading to flow lines located inside the at least one packer (36 flow lines, Fig. 1).
Claim 2. Coore, in the second interoperation, discloses: The apparatus of claim 1, wherein the uneven surface portion includes grooves in the outer surface to thereby define the one or more unimpeded flow channels (44 groves, Fig. 5).
Claim 3. Coore, in the second interoperation, discloses: The apparatus of claim 1, wherein the uneven surface portion includes raised ridges on the outer surface to thereby define the one or more unimpeded flow channels (40 and 42 expansion rings are raised surfaces, Fig. 3).
Claim 4. Coore, in the second interoperation, discloses: The apparatus of claim 1, wherein the one or more unimpended flow channels defines a spirally-shaped channel pattern along the uneven surface portion (44 grooves create a spirally-shaped pattern, Fig. 5).
Claim 11. Corre discloses: A downhole packer apparatus, comprising:
a central packer (52 middle section of 24 packer between 40 expansion rings, Fig. 3) disposed along a downhole sampling tool, wherein an outer surface of the central packer includes an uneven surface portion and the uneven surface portion has one or more unimpeded flow channels formed on the outer surface and locatable between the outer surface and a facing wellbore wall, the unimpeded flow channels promoting radial flow of formation fluids to one or more surface conduits leading to flow lines located inside the central packer and formed by the addition of or removal of material to the uneven surface portion (44 grooves are inherently created by the removal of material, Fig. 5); and
second (126 expanding section or 42 expansion ring or 51 section or combination of 126, 42 and 51 on the proximal end of packer; Fig. 3) and third packers (126 expanding section or 42 expansion ring or 53 section or combination of 126, 42, and 53 on the distal end of packer, Fig. 3) disposed along the downhole sampling tool, the second and third packers longitudinally spaced apart (Fig. 3) with the central packer located there-between (Fig. 3; see previously rejected claim 1 of Corre in the second interpretation).
Claim 12. Corre, in the second interpretation, discloses: The apparatus of claim 11, wherein the uneven surface of the central packer extends over an entire longitudinal length of the central packer (center section 52 creates an uneven surface across the entire length of the central packer, illustrated as surfaces 40-52-40; Fig. 3).
Claim 13. Corre, in the second interpretation, discloses: The apparatus of claim 11, wherein the second and third packers have even surface portions that extend over entire longitudinal lengths of the second and third packers (even surface extends over the entire surface of 126 or 42 expansion ring when considered as single packer elements, Fig. 3).
Claim 14. Corre, in the section interpretation, discloses: The apparatus of claim 11, wherein one or both of the second and third packers, include uneven surface portions having flow channels locatable between the outer surface of the one packer and a facing wellbore wall (combination of 126 expanding section, 42 expansion ring, and 51 or 53 section on proximal and distal ends of packer can be second or third packer on the ends of the packer), the flow channels (51 or 53 sections create unimpeded circumferential and radial flow channels) promoting radial flow of formation fluids to surface conduits (134 guard drains, Fig. 3) leading to flow lines located inside the first and second packers (see previously rejected claim 11).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Corre et al. (US7,874,356), in the first interpretation, in view of Shwe (US5,549,159).
Claim 3. Corre, in the first interpretation, discloses: The apparatus of claim 1, uneven surface portions (outer surfaces of 56 sealing element and 40 anti-expansion device create an uneven surface, Fig. 3) defining the one of more unimpeded flow channels (58 localized region creates unimpeded circumferential and radial flow channels). Corre does not disclose: raised ridges on the outer surface.
Shwe teaches a formation testing tool with an inflatable seal with seal lips where the seal lips circumscribe the inflatable seal and define a flow channel between. Therefore, Shwe teaches: raised ridges on the outer surface (32 or 34 seal lips, Fig. 2)
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to add the seal lips of Shwe into the packer of Corre with a reasonable expectation of success to further define the flow channel and have internally reinforced lips that maintains the flow channel when sealed against the wellbore wall as suggested by Shwe (Col. 5, lines 39-54).
Claim 6-9 is rejected under 35 U.S.C. 103 as being unpatentable over Corre et al. (US7,874,356), in the first interpretation, in view of Baski (US2008/0179055).
Claim 6. Corre, in the first interpretation, discloses: The apparatus of claim 1, the one or more unimpeded flow channels are first channels, the uneven surface portion, and formation fluids. Corre does not disclose: second flow channels that promote substantially longitudinal flow of the formation fluids between the first channels.
Baski teaches one or more inflatable packers with a plurality of circumferential grooves and a plurality of parallel, spaced flow control grooves where the flow control grooves provide flow channels for fluid flow between the circumferential grooves and where one or more packers can be deployed in a well. Therefore, Baski teaches: second flow channels that promote substantially longitudinal flow (32 flow control grooves are longitudinal, Fig. 1).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to add the flow control grooves of Baski into the packer of Corre with a reasonable expectation of sucess to promote longitudinal flow between the circumferential flow channels to control flow velocity and pressure differences between the flow channels as suggested by Baski ([0054]).
Claim 7. Corre, in the first interpretation, discloses: The apparatus of claim 1, the packer is a first packer. Corre does not disclose: the apparatus further includes a second packer disposed along the downhole sampling tool and the first and second packers are longitudinally spaced apart, and wherein: the uneven surface portion of the first packer is located proximate to the second packer, the first packer surface further includes an even surface portion located distal to the second packer, and the even surface portion deters passage of the formation fluids between the even surface portion and the facing wellbore wall.
Baski further teaches: a second packer disposed along the downhole sampling tool and the first and second packers are longitudinally spaced apart (Fig. 5).
Further regarding the limitation: a second packer disposed along the downhole sampling tool and the first and second packers are longitudinally spaced apart, Corre discloses the claimed invention except for multiple packers deployed on the same work string. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to deploy more than one packer simultaneously, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Regarding the limitation, Corre, in the first interpretation, teaches (considering running multiple packers on the same work string as known to one having ordinary skill in the art): the uneven surface portion of the first packer is located proximate to the second packer (packers are proximate if deployed simultaneously), the first packer surface further includes an even surface portion (outer surface of 56 sealing element, Fig. 3) portion located distal to the second packer (first packer is located distal of the second packer), and the even surface portion deters passage of the formation fluids between the even surface portion and the facing wellbore wall (56 sealing element seals against 32 wellbore wall).
Claim 8. Corre, in the first interpretation, and Baski teach: The apparatus of claim 7. Corre discloses: an outer surface of the packer further includes a uneven surface portion with one or more channels locatable between the outer surface of the packer and the facing wellbore wall, the flow channels promoting the radial flow of the formation fluids to one or more surface conduits leading to flow lines located inside the packer (see rejection of claim 1). Corre does not teach: second packer.
Baski further teaches: second packer.
Regarding the limitations: second channels, second flow channels, second surface conduits, second flow lines; it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the second packer to have secondary channels, conduits and flow lines, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claim 9. Corre, in the first interpretation, and Baski teach: The apparatus of claim 8, uneven surface, even surface, even surface portion deters passage of the formation fluids between the even surface portion and the facing wellbore wall . Corre does not disclose: the second packer is located proximate to the first packer, the second packer further includes an second even surface portion distal to the first packer, and the second even surface portion deters passage of the formation fluids between the second even surface portion and the facing wellbore wall (second packer has all the same elements as the first packer; see rejection of claims 1 and 16).
Baski further teaches: second packer is located proximate to the first packer.
Regarding the limitations: second even surface; It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the second packer to includes an second even surface portion, and the second even surface portion deters passage of the formation fluids between the second even surface portion and the facing wellbore wall, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Corre et al. (US7,874,356), in the first interpretation, in view of in view of Bruce et al. (US9,353,606).
Claim 10. Corre, in the first interpretation, discloses: The apparatus of claim 1. Corre discloses: the packers (26 packer, Fig. 1-4) each have a first interior chamber underlying the even surface portions (chamber below 56 sealing element, Fig. 1), a second interior chamber underlying the uneven surface portion (chamber below outer surfaces of 56 sealing elements and 40 anti-expansion devices creates a packer, illustrated as surfaces 56-40-56; Fig. 3), and expanded to contact the facing wellbore wall (Col. 2, lines 50-53; Fig. 4). Corre does not disclose: the first and second interior chambers are connected by a pressure offset valve, the pressure offset valve set to prevent the second interior chambers to expand until the first interior chambers have expanded to contact the facing wellbore wall.
Bruce teaches an inflatable packer having chambers separated by a valve where the chambers are configured to expand independently and seal the wellbore wall. Therefore, Bruce teaches: chambers (chambers, Col. 6, lines 26-36) are connected by a pressure offset valve (valve, Col. 6, lines 20-21), the pressure offset valve set to prevent the second interior chambers to expand until the first interior chambers have expanded (expand in predetermined manner…expanding a first portion of the chamber…before expanding the remaining portion, Col. 6, line 32-36).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add the valving of Bruce into the packer apparatus of Corre with a reasonable expectation of success to control the expansion chambers to exert a predetermined amount of force on wellbore wall or expansion force on different chamber with different wall thicknesses as suggested by Bruce (Col. 6, lines 20-43; Col.10, lines 23-24).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Corre et al. (US7,874,356), in the first interpretation, in view of in view of Irani et al. (US2015/0337656).
Claim 17. Corre, in the first interpretation, discloses: The method of claim 16. Corre discloses: the sampling zone (56 sealing elements isolate and seal a sampling zone, Fig. 4) and inflating a chamber of the packer (expanded radially, Col. 2, lines 50-51) underlying the uneven surface portion (outer surfaces of 56 sealing elements and 40 anti-expansion devices create an uneven surface; Fig. 3), collection formation fluids (formation fluid, Col. 2, lines 48-49), and isolation the sampling zone (56 sealing elements isolate and seal a zone, Fig. 4). Corre does not disclose: removing a mudcake lining the wall including flowing drilling fluids, wherein the removing is before collecting the formation fluids and after the isolating of the sampling zone.
Irani teaches a system and method for collecting formation fluid during downhole operations where a cleansing fluid is used to remove the mudcake layer before taking a sample of formation fluid. Therefore, Irani teaches: removing a mudcake (560 mudcake layer, Fig. 5) lining the wall (104 wellbore, Fig. 5) including flowing drilling fluids (cleansing solution, [0062]) , wherein the removing is before collecting the formation fluids (prior to seating the sample tool, [0062]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add the cleaning operation of Irani into the method of Corre with a reasonable expectation of success such that the mudcake layer and any potential contaminates was removed from the sample area before sealing off the area and taking a sample as suggested by Irani ([0062]).
Conclusion
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/DANIEL T CRAIG/Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676