DETAILED ACTION
The amendments filed on 07/14/2025 have been entered.
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.
patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Henriksen et al. (US 20080035350) and Alshaikh et al. (US 11536113).
Regarding claims 1, 13, Henriksen discloses a system for controlling a flow of fluid within a wellbore (10) (fig 1), the system comprising: an inflow control device (ICD) (110) configured to modulate an inflow of hydrocarbons within the wellbore ([0045]-[0046], figs 12-15); and a sleeve (112) that is (i) slidably disposed adjacent to the ICD (figs 12-15) and (ii) connected to an elastic material (92) with a thermal memory ([0046]), wherein the elastic material changes its shape based on a change in temperature ([0046]), wherein the sleeve is configured to: based on (i) the elastic material being in a compressed state below a temperature threshold (fig 12, [0046]) and (ii) the sleeve being at a first position relative to the ICD, allow a fluid communication between the ICD and outside the wellbore (fig 12, [0046]), and based on (i) the elastic material being in a stretched state at or above the temperature threshold and (ii) the sleeve being at a second position relative to the ICD, block the fluid communication between the ICD and outside the wellbore (fig 13, [0046]).
Henriksen appears to be silent regarding a sliding rail that is disposed within the ICD and guides a sliding of the sleeve.
Alshaikh teaches a sliding rail that is disposed within the ICD and guides a sliding of the sleeve (214) (col 14, lines 53-61 discloses the slidling sleeve 214 may move on tracks).
Before the effective filling date, it would have been obvious to one of ordinary skill in the art, having the teachings of Henriksen and Alshaikh before him or her, to modify the apparatus/method disclosed by Henriksen to include the rail as taught by Alshaikh in order to allow consistent motion of the valve member.
Regarding claim 2, Henriksen further discloses that the second position corresponds to a position where the sleeve is slid into the ICD (fig 13), thereby shutting the fluid communication between the ICD and outside the wellbore (fig 13, [0046]).
Regarding claims 3, 14 Henriksen further discloses that based on a fluid (fluid around 92,[0046], [0003], figs 12-13) having a temperature at or above the threshold heating up the elastic material ([0046]), the elastic material stretches out from the compressed state to the stretched state, and wherein, based on the elastic material being stretched, the sleeve is moved from the first position to the second position ([0046], figs 12-13).
Regarding claims 4, 15, Henriksen further discloses that the fluid includes formation water ([0003]).
Regarding claim 10, Henriksen further discloses that a housing (20) that is disposed within the wellbore (fig 1) and defines an opening (opening @ 34) that is in fluid communication with outside the wellbore (fig 1 ), wherein the ICD and the sleeve are disposed within the housing ([0033]-[0034]).
Regarding claim 11, Henriksen further discloses a casing (casing disclosed in [0033]) disposed within the wellbore, wherein the housing is integrated into the casing ([0033], fig1).
Regarding claim 12, Henriksen further discloses that the housing is disposed within the casing ([0033], fig 1).
Claims 5-7 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Henriksen et al. (US 20080035350) and Alshaikh et al. (US 11536113) as applied to claim 1 above, and further in view of Hallundbaek et al. (US 20140367123)
Regarding claims 5, 16, the combination of Henriksen and Alshaikh is silent regarding the fact that the elastic material is a wire made of nitinol or nickel and titanium mixture.
Hallundbaek teaches that the elastic material is a wire made of nitinol or nickel and titanium mixture ([0033])
Before the effective filling date, it would have been obvious to one of ordinary skill in the art, having the teachings of Henriksen, Alshaikh and Hallundbaek before him or her, to modify the apparatus/method disclosed by the combination of Henriksen and Alshaikh to include nickel and titanium as taught by Hallundbaek in order to achieve an improved downhole system for sealing off an opening ([0005]).
Regarding claims 6, 17 Henriksen further discloses that the wire is in a form of a spring (92) (figs 12-13).
Regarding claim 7, Henriksen further discloses that the threshold temperature changes and the sleeve moves to the second position based on changed threshold temperature (figs 12-13). The combination of Henriksen and Hallundbaek teaches that based on a change in a composition ratio of nickel and titanium of the elastic material, the threshold temperature changes (this limitation is an inherent material property, see Hallundbaek [0033]).
Allowable Subject Matter
Claims 9 and 20-22 are allowed.
Claim 19 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 07/14/2025 have been fully considered but they are not persuasive.
Applicant states that Alshaikh does not describe or suggest that it’s track is dispoised within the ICD that is configured to modulate an inflow of hydrocarbon within the wellbore. The examiner respectfully disagrees. In fact, in claim 1, the applicant claims “a sliding rail that is disposed within the ICD and guides a sliding of the sleeve”. Furthermore, in col 14, lines 53-61, Alshaikh teaches aligning the sliding sleeve on tracks to guide the sliding sleeve.
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 DANY E AKAKPO whose telephone number is (469)295-9255. The examiner can normally be reached M-F 9am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached on (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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/DANY E AKAKPO/Examiner, Art Unit 3672
09/29/2025