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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 27, 2025 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 6 and 17 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 6 and 17 recite “wherein the first elastomer and the second elastomer are co-extruded layers” (or “outside layer” and “inside core” for claim 17) which is not supported in the specification and therefore considered new matter. This phrase is not located in the specification at all.
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.
Claims 6, 12, and 17 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.
Claims 6, 12, and 17 all recited that the layers or elastomers (depending on the claim language) are co-extruded or bonded together. The independent claims, from which these claims depend, already recite that the elastomers or layers are co-cured. Therefore, it is unclear how these limitations further limit the claims nor how the scope of the claim is different in this aspect. For the purposes of examination, the Examiner will interpret that art meeting these limitations if the structures are taught and will treat these limitations as product-by-process limitation.
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, 4-6, 9, 11-14, and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kocurek US Patent Application Publication 2010/0194049 hereinafter referred to as Kocurek.
Regarding claim 1, Kocurek discloses an apparatus (10) comprising a downhole tool (14, 24) for a wellbore (shown on Figure 1 and [0004]), the downhole tool having an elastomeric component (12) comprising an inside portion (106) comprising a first elastomer (54); and an outside portion (52) comprising a second elastomer (52) different than the first elastomer [0019], wherein the outside portion encloses the inside portion (as shown on Figure 6 and [0017]), wherein the first elastomer and the second elastomer are co-cured elastomers, wherein the elastomeric component comprises more of the first elastomer than the second elastomer (as shown on Figure 6 and [0017 - “within the larger parts (e.g., the first elastomer portion)”]), wherein the outside portion comprises a thickness of at least 0.5 millimeter (mm) (inherent for an annular seal as annuli are more than 0.5mm in width and the outside portion extends through the whole annular space as shown on Figures 1 and 6), and wherein the second elastomer is more resistant than the first elastomer to chemical corrosion (and gas diffusion and swelling) by fluids in the wellbore [0019].
Examiner recognizes the claim limitation of "co-cured elastomers" as a product-by-process claim. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) see MPEP 2113. Kocurek a first elastomer embedded in a second elastomer as claimed, and examiner believes that this will not result in a materially different product whether explicitly calling for a co-curing process or not. Applicant did not demonstrate a criticality between the process of forming the seal and the structural limitations of the seal.
Regarding claims 9, 13, 14, and 20, though the wording is slightly distinct, the above citations meet the limitations of claims 9, 13, 14, and 20 as well.
Regarding claim 4, Kocurek further discloses that the second elastomer has a greater resistance than the first elastomer to diffusion and swelling by the fluids [0019 - the second elastomer is more conducive to sealing and maintaining that seal].
Regarding claims 5, 11, and 18, Kocurek further discloses wherein the elastomer component comprises an o-ring [0014 - the seal is an annularly shaped seal so element (108) is considered an o-ring].
Regarding claims 6, 12, 17, and 19, Kocurek further discloses wherein the downhole tool comprises a packer (an annular seal as cited above), wherein the elastomers are co-extruded/bonded (as best understood the claim to mean).
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.
Claims 2, 3, 7, 8, 10, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kocurek as applied to claims 1, 9, and 13 above, and further in view of Buc Slay et al US Patent Application Publication 2005/0109502 hereinafter referred to as Buc.
Regarding claims 2, 3, 7, 8, 10, 15, and 16, Kocurek discloses wherein the second elastomer encompasses the first elastomer (as cited above) and wherein where in second elastomer has a greater resistance to gas diffusion (as cited above). Kocurek fails to disclose the specifically claimed materials or the use of fillers and/or fibers to reinforce the elastomers. Buc teaches an analogous seal system used in downhole wellbores wherein the elastomer can be chosen from a myriad of materials (including the claimed materials) [0010] and also teaches that the elastomer can additionally be reinforcing fibers [0011]. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to simply substitute the silent material of Kocurek with the specific material(s) taught by Buc to yield the predictable result of sealing downhole and surviving downhole conditions as taught by both Kocurek and Buc.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TARA SCHIMPF whose telephone number is (571)270-7741. The examiner can normally be reached Monday-Friday 7:30am - 3:30pm EST.
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/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676