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 .
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 12-14 and 16-21 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 12 and 21 recite the limitation “a clamp”. The specification does not describe a clamp, or a structural element equivalent to a clamp. Rather, the specification only recites that the protective material may be bonded with the swellable material to form a single structure, and in embodiments, the bond is formed by a suitable method including but not limited to a mechanical method such as clamping the protective material and the swellable material together (paragraph 0032), and wherein the protective material and the swellable material are clamped together (paragraph 0046 & 0055). Based on the specification, applicant is using the term clamping or clamped as a verb. Furthermore, a definition of the term clamp (clamped; clamping) used as a verb is to hold tightly (Merriam-Webster Dictionary, https://www.merriam-webster.com/dictionary/clamped). Thus, the term clamp used as a noun is considered new matter as there are no structural elements of a clamp described in the specification. Therefore, the claims contain 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 at the time the application was filed, had possession of the claimed invention.
Claims 13, 14 and 16-20 are rejected for being dependent upon a rejected base claim.
Claim Rejections - 35 USC § 102
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 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, 3, 6, 12-14 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nutley et al. (US 7,896,085).
As concerns claim 1, Nutley shows a method comprising: inserting into a wellbore a packer assembly (90) comprising: a protective material (70); a swellable material (112); a tubular (16); and an end ring (92); wherein the swellable material is disposed on the tubular, wherein the protective material is disposed on the swellable material and at least partially covering a portion of the swellable material, and wherein the swellable material and the protective material abut the end ring (Fig. 7A-7C); contacting the swellable material with a swelling fluid (Fig. 7B & 7C); swelling the swellable material to expand the protective material against a wellbore wall (Fig. 7C); and forming a seal between the protective material and the wellbore wall (Fig. 7C; col 7, ln 50-57).
As concerns claim 3, Nutley shows wherein the swellable material and the end ring extends over (radially) the protective material (Fig. 7A-7C).
As concerns claim 6, Nutley shows wherein the protective material and the swellable material are clamped together (Fig. 6 & 7A-7C; the protective material and the swellable material are held tightly between the end rings).
As concerns claim 12, Nutley shows a wellbore packer assembly (90) comprising: a protective material (70); a swellable material (112); and a tubular (16); wherein the swellable material is disposed on the tubular, wherein the protective material is disposed on the swellable material, and wherein the protective material covers at least a portion of the swellable material (Fig. 7A-7C), and wherein the protective material and the swellable material are clamped together (Fig. 6 & 7A-7C; the protective material and the swellable material are held tightly between the end rings).
As concerns claim 13, Nutley shows wherein the protective material is disposed between an endcap (92) and the swellable material (Fig. 7A-7C).
As concerns claim 14, Nutley shows wherein the protective material is disposed between an endcap (92) and the swellable material and the endcap extends over (radially) the protective material (Fig. 7A-7C).
As concerns claim 21, Nutley shows a method comprising: inserting into a wellbore a packer assembly (90) comprising: a protective material (70); a swellable material (112); and a tubular (16); wherein the swellable material is disposed on the tubular, wherein the protective material is disposed on the swellable material and at least partially covering a portion of the swellable material (Fig. 7A-7C), and wherein the protective material and the swellable material are clamped together (Fig. 6 & 7A-7C; the protective material and the swellable material are held tightly between the end rings); contacting the swellable material with a swelling fluid (Fig. 7B & 7C); swelling the swellable material to expand the protective material against a wellbore wall (Fig. 7C); and forming a seal between the protective material and the wellbore wall (Fig. 7C; col 7, ln 50-57).
Claims 12-14, 16, 17, 20 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kutac (US 2011/0259578).
As concerns claim 12, Kutac shows a wellbore packer assembly (10) comprising: a protective material (20); a swellable material (14, 32); and a tubular (12); wherein the swellable material is disposed on the tubular, wherein the protective material is disposed on the swellable material, and wherein the protective material covers at least a portion of the swellable material (Fig. 1 & 2), and wherein the protective material and the swellable material are clamped together (paragraph 0015; the protective material and the swellable material are bonded together and held tightly between the end rings).
As concerns claim 13, Kutac shows wherein the protective material (20) is disposed between an endcap (16, 18) and the swellable material (Fig. 1 & 2).
As concerns claim 14, Kutac shows wherein the protective material (20) is disposed between an endcap (16, 18) and the swellable material (14, 32) and the endcap extends over (radially) the protective material (Fig. 1 & 2).
As concerns claim 16, Kutac shows wherein the protective material is bonded to the swellable material by vulcanization (paragraph 0015).
As concerns claim 17, Kutac shows wherein the protective material is bonded to the swellable material through a chemical additive (paragraph 0015).
As concerns claim 20, Kutac shows wherein the protective material is a swellable material (paragraph 0022).
As concerns claim 21, Kutac shows a method comprising: inserting into a wellbore a packer assembly (10) comprising: a protective material (20); a swellable material (14, 32); and a tubular (12); wherein the swellable material is disposed on the tubular, wherein the protective material is disposed on the swellable material and at least partially covering a portion of the swellable material (Fig. 1 & 2), and wherein the protective material and the swellable material are clamped together (paragraph 0015; the protective material and the swellable material are bonded together and held tightly between the end rings); contacting the swellable material with a swelling fluid (paragraph 0013 & 0014); swelling the swellable material to expand the protective material against a wellbore wall (Fig. 2); and forming a seal between the protective material and the wellbore wall (Fig. 2; paragraph 0018).
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.
Claims 2, 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Nutley as applied to claim 1 above, and further in view of Glaesman et al. (US 11,634,962).
As concerns claim 2, Nutley shows wherein the wellbore penetrates a subterranean formation (downhole apparatus for use in hydrocarbon wells). Nutley discloses the claimed invention except for wherein the wellbore penetrates a subterranean formation comprising a carbon dioxide injection zone and wherein the seal isolates the carbon dioxide injection zone. Glaesman teaches wherein a wellbore penetrates a subterranean formation comprising a carbon dioxide injection zone and wherein the seal isolates the carbon dioxide injection zone (Fig. 2; col 1, In 29 - col 2, In 12; col 3, In 10 - col 4, In 58). One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Nutley, as taught by Glaesman, to utilize the wellbore packer assembly in a wellbore that penetrates a subterranean formation having a carbon dioxide injection zone and isolate the carbon dioxide injection zone for the expected benefit of preventing carbon dioxide to be released into the atmosphere during well operations. Thus, one of ordinary skill in the art would have recognized that utilizing the wellbore packer assembly in a wellbore that penetrates a subterranean formation having a carbon dioxide injection zone and isolate the carbon dioxide injection zone would have provided predictable results and a reasonable expectation of success. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since the expected result of this configuration improves versatility/adaptability/efficiency of the wellbore packer assembly design.
As concerns claim 4, the combination teaches protecting the swellable material from a material changing fluid by preventing the material changing fluid from flowing across the seal (Glaesman: col 3, In 10 - col 4, In 58).
As concerns claim 5, the combination teaches wherein the swellable material is protected from a material change selected from the group consisting of hardening, softening, embrittlement, volume change, and combinations thereof (Glaesman: col 3, In 10 - col 4, In 58).
Claims 7, 8, 11, 16, 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Nutley as applied to claims 1 and 12 above, and further in view of Kutac.
As concerns claims 7 and 16, Nutley discloses the claimed invention except for wherein the protective material is bonded to the swellable material by vulcanization. Kutac teaches wherein a protective material (20) is bonded to a swellable material (14, 32) by vulcanization (paragraph 0015). One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Nutley, as taught by Kutac, to bond the protective material to the swellable material by vulcanization for the expected benefit of minimizing or preventing extrusion of the swellable material in an undesirable direction. Thus, one of ordinary skill in the art would have recognized that bonding the protective material to the swellable material by vulcanization would have provided predictable results and a reasonable expectation of success. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since the expected result of this configuration improves versatility/adaptability/efficiency of the wellbore packer assembly design.
As concerns claims 8 and 17, the combination teaches wherein the protective material is bonded to the swellable material by at least one chemical selected from a polymerization additive, a glue, and combinations thereof (Kutac: paragraph 0015).
As concerns claims 11 and 20, the combination teaches wherein the protective material is a swellable material (Kutac: paragraph 0022).
Claims 9, 10, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Nutley as applied to claims 1 and 12 above, and further in view of Porta (US 2014/0361497).
As concerns claims 9 and 18, Nutley shows wherein the protective material comprises an elastomeric material (col 8, ln 18-25). Nutley discloses the claimed invention except for wherein the protective material comprises hydrogenated nitrile butadiene rubber. Porta teaches wherein a protective material (420) comprises hydrogenated nitrile butadiene rubber (paragraph 0043). One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Nutley, as taught by Porta, to include hydrogenated nitrile butadiene rubber in the protective material for the expected benefit of utilizing one of many known elastomers that provide an effective seal when used in a wellbore packer assembly. Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. It is also common knowledge to choose a material that has sufficient strength, durability, flexibility, hardness, etc. for the application and intended use of that material. Thus, one of ordinary skill in the art would have recognized that utilizing hydrogenated nitrile butadiene rubber in the protective material in the wellbore packer assembly would have provided predictable results and a reasonable expectation of success. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since the expected result of this configuration improves versatility/adaptability/efficiency of the wellbore packer assembly design.
As concerns claims 10 and 19, Nutley shows wherein the swellable material comprises an elastomeric material (claim 1: a swellable elastomeric material). Nutley discloses the claimed invention except for wherein the swellable material comprises ethylene propylene diene monomer rubber. Porta teaches wherein a swellable material (436) comprises ethylene propylene diene monomer rubber (paragraph 0045). One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Nutley, as taught by Porta, to include ethylene propylene diene monomer rubber in the swellable material for the expected benefit of utilizing one of many known elastomers that provide an effective seal when used in a wellbore packer assembly. Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. It is also common knowledge to choose a material that has sufficient strength, durability, flexibility, hardness, etc. for the application and intended use of that material. Thus, one of ordinary skill in the art would have recognized that utilizing ethylene propylene diene monomer rubber in the swellable material in the wellbore packer assembly would have provided predictable results and a reasonable expectation of success. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since the expected result of this configuration improves versatility/adaptability/efficiency of the wellbore packer assembly design.
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kutac as applied to claim 12 above, and further in view of Porta.
As concerns claim 18, Kutac shows wherein the protective material comprises an elastomeric material (paragraph 0014 & 0022). Kutac discloses the claimed invention except for wherein the protective material comprises hydrogenated nitrile butadiene rubber. Porta teaches wherein a protective material (420) comprises hydrogenated nitrile butadiene rubber (paragraph 0043). One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Kutac, as taught by Porta, to include hydrogenated nitrile butadiene rubber in the protective material for the expected benefit of utilizing one of many known elastomers that provide an effective seal when used in a wellbore packer assembly. Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. It is also common knowledge to choose a material that has sufficient strength, durability, flexibility, hardness, etc. for the application and intended use of that material. Thus, one of ordinary skill in the art would have recognized that utilizing hydrogenated nitrile butadiene rubber in the protective material in the wellbore packer assembly would have provided predictable results and a reasonable expectation of success. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since the expected result of this configuration improves versatility/adaptability/efficiency of the wellbore packer assembly design.
As concerns claim 19, Kutac shows wherein the swellable material comprises an elastomeric material (paragraph 0013, 0014 & 0022). Kutac discloses the claimed invention except for wherein the swellable material comprises ethylene propylene diene monomer rubber. Porta teaches wherein a swellable material (436) comprises ethylene propylene diene monomer rubber (paragraph 0045). One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Kutac, as taught by Porta, to include ethylene propylene diene monomer rubber in the swellable material for the expected benefit of utilizing one of many known elastomers that provide an effective seal when used in a wellbore packer assembly. Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. It is also common knowledge to choose a material that has sufficient strength, durability, flexibility, hardness, etc. for the application and intended use of that material. Thus, one of ordinary skill in the art would have recognized that utilizing ethylene propylene diene monomer rubber in the swellable material in the wellbore packer assembly would have provided predictable results and a reasonable expectation of success. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since the expected result of this configuration improves versatility/adaptability/efficiency of the wellbore packer assembly design.
Response to Arguments
Applicant's arguments filed 11/20/2025 have been fully considered but they are not persuasive.
In response to applicant’s argument that Nutley does not disclose wherein the swellable material and the protective material abut the end ring, the examiner respectfully disagrees. Nutley shows, in Fig. 7A-7C, wherein the swellable material (112) and the protective material (70) abut the end ring (92). Furthermore, Nutley describes that the end connector (92) which includes the mating portion (41) and the retaining portion (42) can be separate components (col 7, ln 2-4), or can be integrally formed or of unitary construction (col 7, ln 21-25). Thus, in one of the described embodiments, the swellable material (112) and the support structure (70) abut an integrally formed end connector (92). Therefore, Nutley meets the claim language.
In response to applicant’s argument that Nutley does not disclose swelling the swellable material to expand the protective material against a wellbore wall, the examiner respectfully disagrees. Nutley shows, in Fig. 7C, swelling the swellable material (112) to expand the protective material (70) against a wellbore wall (85). Furthermore, Nutley describes that Fig. 7B shows the support structure (70) and the swellable member (112) in an expanded condition, wherein the support structure is deployed to its expanded condition by expansion of the swellable member after exposure to wellbore fluids (col 7, ln 34-39), and Fig. 7C shows where the support structure (70) is fully expanded against the inner wall (85) of a bore (84) in which the assembly is located, such that the ends (86) of the leaves (78) have been fully expanded into contact with the wall (col 7, ln 40-44). Additionally, in response to applicant's argument that Nutley fails to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the term expand means volumetric increase of an elastomeric material) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Therefore, Nutley meets the claim language.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a clamp) are not described in the specification. The specification recites that the protective material may be bonded with the swellable material to form a single structure, and in embodiments, the bond is formed by a suitable method including but not limited to a mechanical method such as clamping the protective material and the swellable material together (paragraph 0032), and wherein the protective material and the swellable material are clamped together (paragraph 0046 & 0055). Based on the specification, applicant is using the term clamping or clamped as a verb. Furthermore, a definition of the term clamp (clamped; clamping) used as a verb is to hold tightly (Merriam-Webster Dictionary, https://www.merriam-webster.com/dictionary/clamped). The term clamp used as a noun is considered new matter as there are no structural elements of a clamp described in the specification, and therefore, not part of the claimed invention. Thus, one of ordinary skill in the art would have recognized that holding the protective material and the swellable material tightly together between the end rings, as seen in Fig. 6 & 7A-7C of Nutley, and bonding the protective material and the swellable material together and holding them tightly between the end rings, as taught by Kutac in paragraph 0015 and as seen in Fig. 1 & 2, would have been interpreted as clamping the protective material and the swellable material together. Therefore, Nutley and Kutac meet the claim language.
Conclusion
THIS ACTION IS MADE FINAL. 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 MATTHEW R BUCK whose telephone number is (571)270-3653. The examiner can normally be reached Monday-Thursday 6:30-5.
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, Nicole Coy can be reached at (571)272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW R BUCK/Primary Examiner, Art Unit 3672