DETAILED CORRESPONDENCE
This Action is in response to the applicant's reply of 1/21/2016. In view of the applicant's amendments, the previously presented objections to the specification, as well as all Section 35 USC 112(a) rejections have been withdrawn. Previously presented drawing objection have been withdrawn, unless restated herein. Previously presented 35 USC 112(b) rejections, have been withdrawn, unless restated herein.
Claims 1-21 are pending. Claims 4, 5, 14, and 15 have been withdrawn.
Response to Arguments
Applicant's arguments filed 1/21/2016have been fully considered but they are not persuasive.
Regarding Section I, the “dot matrix” appearance remains for almost all drawing lines on the figures to which the original objections were made, thus they remain objectionable.
Regarding Section II, the specification objections have been withdrawn.
Regarding Section III, the examiner has withdrawn the Section 112(a) rejections in light of the examiner’s current position that “electromagnet safety mechanism” is a generic placeholder modified by a structural modifier, such that a sufficiently descriptive disclosure has been provided in the present application with respect to the “electronic safety mechanism”.
Regarding Section IV.A., the applicant argues that the Section 112(b) rejection concerning the “radially compressible member” is improper. The examiner respectfully disagrees. This rejection is only present due to the invocation of Section 112(f) with respect to the radially compressible member, i.e., the description includes impermissibly unbounded structures, thus making examples disclosed therein by name irrelevant. With respect to the bulleted contentions, “member” can be a nonce term (MPEP2181.I.A.) and it is not modified by any “concrete” structure, thus the Section 112(f) invocation is appropriate, and the disclosed structure cannot be unbounded.
Regarding Section IV.B., the applicant similarly argues that the Section 112(b) rejection concerning the “safety mechanism” is improper. The examiner respectfully disagrees. This rejection is only present due to the invocation of Section 112(f) with respect to the safety member, i.e., the description includes impermissibly unbounded structures. With respect to the bulleted contentions, “member” can be a nonce term (MPEP2181.I.A.) and it is not modified by any “clear” structure, thus the Section 112(f) invocation is appropriate, and the disclosed structure cannot be unbounded. As to other bulleted arguments, the description of function, interactions with surrounding components, position, operational rules, and other non-structural description is irrelevant, thus the Section 112(f) invocation is appropriate, and the disclosed structure cannot be unbounded. Again, Section 112(f) is no longer invoked regarding “electromagnet safety mechanism”.
At Section IV.C., the applicant argues that the Section 112(b) rejection concerning the “return mechanism” is improper. The examiner respectfully disagrees. This rejection is only present due to the invocation of Section 112(f) with respect to the return mechanism i.e., the description includes impermissibly unbounded structures, thus making examples disclosed therein by name irrelevant. With respect to the bulleted contentions, “mechanism” can be a nonce term (MPEP2181.I.A.) and it is not modified by any structure, thus the Section 112(f) invocation is appropriate, and the disclosed structure cannot be unbounded.
At Section V., the applicant argues further with respect to the invocation of Section 112(f). The examiner respectfully disagrees. In regard to the bulleted arguments, the examiner notes that the involved terms (all discussed above) do not constitute “well-known structure,” have no structural support in the specification, and any claimed structural relationships merely address position and function – not the structure required to negate Section 112(f).
As to the Section 103 rejections, the applicant’s contentions in Section VI are the same for all three independent claims, i.e., claims 1, 11, and 21. Accordingly, the examiner’s response below references claim 1, but applies to all such independent claims.
At Section VI.A., the applicant argues that “axial-brake” architecture is not taught by either Hill or Lake because Lake’s direction is inverted to correspond with Hill’s position changes. The examiner respectfully disagrees. Such an inversion is a mere reversal of the essential working parts of a device requiring only routine skill in the art (In re Einstein, 8 USPQ 167), thus such an inversion is obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, as indicated in the rejection.
At Section VI.B., the applicant argues impermissible hindsight, as well as, a lack of teaching, suggestion, or motivation to combine the references, again based on the inversion. The examiner respectfully disagrees. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, with respect to both contentions, and as indicated in the rejection, Lake clearly suggests that the electromagnet actuator is interchangeable with fluid/hydraulic based actuators [Lake [0020]], thus no “retrofitting with Applicant’s blueprint” is involved. It should also be noted that the “target geometry” is disclosed by the combination, as discussed in the claim 2 rejection, the “axial-to-radial coupling” is disclosed by Hill, as discussed in the claim 1 rejection, the “state-dependent locking behavior” is disclosed by the combination, as discussed in the claim 1 rejection, and the “magnet-driven axial brake”, is disclosed by the combination, as discussed in the claim 1 rejection, although such terms are not claimed, as such.
At Section VI.C., the applicant argues that the examiner’s substitution of Lake’s electromagnet-based structures is not “simple,” a “predictable swap,” or “non-trivial”, and lists three bulleted bases for this conclusion, along with the contention summary in the first paragraph on page 15. The examiner respectfully disagrees. First, predictability of the result is a rationale for obviousness (as stated in the claim 1 rejection), not some difficulty in the act of substituting and configuring the structures. Second, the bullet arguments and contention summary are based on statements unsupported by other than mere conclusions in the argument itself, such statements being of the character which should be supported by expert opinion. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”) See MPEP 2145. Accordingly, such configuration difficulty allegations are not supported by evidence and cannot form the basis for a contention that the substitution requires some unacceptably extensive degree of modification, nor for the contention that such bullet arguments teach away from the combination is irrelevant.
In this regard, the applicant also argues that the Lake disclosure regarding interchangeability (discussed above) is “too general and context-free” to be a motivation to use with Hill. The examiner respectfully disagrees. Lake uses specific and known terminology for systems with which his system is compatible, and, in the current application, the context is merely the control of an axially moving target.
At Section VI. D., the applicant argues that the examiner’s combination change’s Hill’s principle of operation. The examiner respectfully disagrees. At least Hill’s fail-safe performance, based on the controlled opening and closing of a flapper valve, using the radially compressible fingers 56, remains present in the combination. Further, it is indicative that the applicant offers no evidence (as discussed at Section VI.C.) that the required degree of modification is at an unacceptable level of significance. In the absence of such evidence, the present argument is arguably no more than a conclusion that any change from a hydraulic to an electromagnet based movement of a target is such a major change operational change that a combination making such a change is per se unreasonable.
With regard to Section VI.E., the arguments regarding the named dependents rise or fall based on the outcome of the applicant’s contentions with respect to claims 1, 11, and 21.
Claim Interpretation
(a) The term “radially compressible member” has been interpreted, as it is specifically described by the applicant, to include only actual compression of the member and not merely movement of the member.
(b) The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “radially compressible member” in claims 1, 11, and 21, “safety mechanism” in claims 6 and 16, and “return mechanism” in claims 8 and 18. The corresponding structure described in the specification as performing the claimed function, and equivalents thereof, is the collet and snap ring for the radially compressible member (see specification paragraph [0040] and the related Section 112(b) rejections). For the “safety mechanism” the corresponding structure described in the specification as performing the claimed function, and equivalents thereof, is the electromagnet 264 (see specification paragraph [0043] and the related Section 112(b) rejection). For the “return mechanism” the corresponding structure described in the specification as performing the claimed function, and equivalents thereof, is the spring (see specification paragraph [0017] and the related Section 112(b) rejections).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Drawings
The drawings are objected to because the lines are not sufficiently dense and dark and are not uniformly thick and well-defined (Figs. 2A,B, 3A,B, 4A,B, 5A,B, 6A,B, 7A,B, 8A,B, 9A,B, 10A,B, 11A,B, 12A,B, 13A,B, 14A,B, 15A,B, 16A,B). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
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 1-21 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 pre-AIA the applicant regards as the invention.
Claims 1, 11, and 21 As discussed with respect to Section 112(f) above, these claims have invoked Section 112(f) as to “radially compressible member” but the specification is unbounded with regard to corresponding structure. At least the application paragraph [0040] listing of corresponding structure includes “and others”. This is an unbounded limitation, thus the corresponding structure for "radially compressible member” in these claims is not duly limited as required when Section 112(f) is invoked. All dependent claims depend from one of claims 1, 11, and 21.
Claims 6 and 16 As discussed with respect to Section 112(f) above, these claims have invoked Section 112(f) as to “safety mechanism” but the specification is unbounded with regard to corresponding structure. At least the application paragraph [0016] listing of corresponding structure includes “Other safety mechanisms”. This is an unbounded limitation, thus the corresponding structure for "safety mechanism” in these claims is not duly limited as required when Section 112(f) is invoked. Claims 7 and 17 depend from claims 6 and 16, respectively.
Claims 8 and 18 As discussed with respect to Section 112(f) above, these claims have invoked Section 112(f) as to “return mechanism” but the specification is unbounded with regard to corresponding structure. At least the application paragraph [0017] listing of corresponding structure includes “the myriad of different return mechanisms that could be used”. This is an unbounded limitation, thus the corresponding structure for "electromagnet safety mechanism” in these claims is not duly limited as required when Section 112(f) is invoked.
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 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 1, 2, 4, 6, 8-12, 14, 16, and 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Hill, Jr. et al. (US20140020904) [Hill], in view of Lake et al. (US20100025045) [Lake].
Claim 1 Hill discloses an SSSV 10 [Figs. 1-10; abstract; para. 0030], comprising:
a housing 11 including a central bore extending axially through the housing [Figs. 1-4; para. 0030], the central bore configured to convey subsurface production fluids there through [para. 0030];
a valve 26 disposed proximate a downhole end of the central bore [Figs. 1,3; para. 0030];
a flow tube 20 disposed in the central bore and configured to move between a closed state [Fig. 1] and a flow state [Fig. 3] to engage or disengage the valve to determine a flow condition of the subsurface production fluids through the central bore [para. 0034];
a target 52, the target configured to move when fluid pressure is energized/applied [para. 0034] and to remain in a first position [Fig. 2] when the fluid pressure is not energized and be held in a second position [Fig. 4] when energized [para. 0035]; and
a radially compressible member/collet 66 located radially between the flow tube 20 and the housing 51 [Fig. 1; para. 0033], the radially compressible member engageable with the target [e.g., at the outwardly extending sloping surface having an edge 57 of the fingers 56 of the collet 66; para. 0033] and configured to move between:
a radially extended state [Figs. 1,2] when the fluid pressure is not energized and the target is in the first position to allow the flow tube to move between the closed state and the open/flow state [e.g., in response to pressure through control line 81; para. 0034]; and
a radially compressed state [Figs. 3,4] when the fluid pressure is energized and the target is in the second position to hold the flow tube in the flow state [e.g., by interaction with sleeve groove 61 in uphole portion of the sleeve 21; Figs. 3,4; para. 0030,0033,0035].
Hill otherwise discloses all the limitations of this claim, but does not explicitly disclose an electromagnet fixedly coupled to the housing, such that the target is positioned proximate the electromagnet, the target is configured to remain in an axially distal position when the electromagnet is not energized and be axially drawn toward and held in an axially proximal position by the electromagnet when the electromagnet is energized; and further such that the radially compressible member/collet is engageable with the target and configured to move between a radially extended state when the electromagnet is not energized and the target is in the axially distal position to allow the flow tube to move between the closed state and the flow state, and a radially compressed state when the electromagnet is energized and the target is in the axially proximal position to hold the flow tube in the flow state.
Lake discloses using an electromagnet actuator 48 having a target 54 in an axially distal position with respect to the electromagnet when the electromagnet is not energized [Fig. 2], and to an axially proximate position with respect to the electromagnet when the electromagnet is energized [Fig. 3; para. 0019,0020]. Lake further discloses that the electromagnet actuator is interchangeable with fluid/hydraulic based actuators [para. 0020].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the apparatus and methods of Hill to utilize an electromagnet of the type disclosed by Lake for Hill’s movement of the target 52, the target 52, spring 53, and edge 57 sloping surface being inverted to be consistent with the above-described direction in which the target is drawn by Lake’s energized electromagnet, such that (a) the target is positioned proximate the electromagnet, (b) the target remains in an axially distal position when the electromagnet is not energized and is axially drawn toward and held in an axially proximal position by the electromagnet when the electromagnet is energized, (c) the radially compressible member/collet is engageable with the target and configured to move between (1) a radially extended state when the electromagnet is not energized and the target is in the axially distal position to allow the flow tube to move between the closed state and the open/flow state, and (2) a radially compressed state when the electromagnet is energized and the target is in the axially proximal position to hold the flow tube in the flow state. One of ordinary skill in the art would reasonably have expected that this configuration would have been within the skill of the art and would yield and achieve the predictable result that an electromagnet, one of the means for moving a target that is known to be interchangeable with fluid/hydraulic means (as indicated by Lake at para. 0020), would be in place for moving the Hill target as part of controlling the Hill flow tube.
Claim 2 Hill, as modified with respect to claim 1, discloses that the radially compressible member 56 is a collet [para. 0033], and further wherein the target includes an angled target surface [the sloped surface corresponding with collet edge 57] and the collet includes a reciprocal angled collet surface [the sloped surface of collet edge 57], the angled target surface configured to slide upon the reciprocal angled collet surface as the electromagnet is energized to move the collet to the radially compressed state [e.g., from Fig. 2 to Fig. 4].
Claim 4 Hill, as modified with respect to claim 1, discloses that the radially compressible member has a radially compressible member engaging profile [e.g., the collet 66 finger 56 tab 62; para. 0033] along a radially interior surface thereof [Figs. 2,4] and the flow tube has a reciprocal flow tube engaging profile [e.g., groove 61; para. 0035] along a radially exterior surface thereof, the radially compressible member engaging profile configured to engage with the reciprocal flow tube engaging profile when the electromagnet is energized [Fig. 4], the target is in the axially proximal position [i.e., the electromagnet is energized, as discussed in the combination of claim 1 herein], and the radially compressible member is in the radially compressed state to hold the flow tube in the flow state [Fig. 4; para. 0035].
Claim 6 Hill, as modified with respect to claim 1, discloses a safety, the safety mechanism configured to prevent the radially compressible member from restricting movement of the flow tube unless the flow tube is in the flow state [e.g., the exterior surface of the flow tube which will not allow flow tube movement restriction, even when the electromagnet is energized, until the flow tube has descended to allow the collet tab 62 to engage the flow tube groove 61, at which time the flow tube will be in the flow state; Fig. 4].
Claim 8 Hill, as modified with respect to claim 1, discloses a return mechanism 53 [Figs. 2,4; para. 0033] coupled to the target 52, the return mechanism configured to return the target to the axially distal position when the electromagnet is not energized [e.g., back from the Fig. 4 position to the Fig. 2 position, also shown as Fig. 9, referenced directions being inverted in the combination of claim 1 herein; para. 0038,0035].
Claim 9 Hill, as modified with respect to claim 8, wherein the return mechanism 53 is a spring [para. 0038].
Claim 10 Hill, as modified with respect to claim 1, discloses that the radially extended state is a first compressed state and the radially compressed state is a second more compressed state [i.e., the first inwardly radial compression of the flexible collet finger securing the collet finger 56 edge 57 within the target 52 notch (Fig. 2), and the second inwardly radial compression wherein the collet finger 56 is compressed further inwardly (Fig. 4)].
Claim 11 As discussed with respect to claim 1, Hill discloses a well system [Figs. 1-10; abstract], comprising: a wellbore extending through one or mor subterranean formations [abstract; para. 0003,0030]; and
an SSSV 10 [Figs. 1-10; abstract; para. 0030], including:
a housing 11 including a central bore extending axially through the housing [Figs. 1-4; para. 0030], the central bore configured to convey subsurface production fluids there through [para. 0030];
a valve 26 disposed proximate a downhole end of the central bore [Figs. 1,3; para. 0030];
a flow tube 20 disposed in the central bore and configured to move between a closed state [Fig. 1] and a flow state [Fig. 3] to engage or disengage the valve to determine a flow condition of the subsurface production fluids through the central bore [para. 0034];
a target 52, the target configured to move when fluid pressure is energized/applied [para. 0034] and to remain in a first position [Fig. 2] when the fluid pressure is not energized and be held in a second position [Fig. 4] when energized [para. 0035]; and
a radially compressible member/collet 66 located radially between the flow tube 20 and the housing 51 [Fig. 1; para. 0033], the radially compressible member engageable with the target [e.g., at the outwardly extending sloping surface having an edge 57 of the fingers 56 of the collet 66; para. 0033] and configured to move between:
a radially extended state [Figs. 1,2] when the fluid pressure is not energized and the target is in the first position to allow the flow tube to move between the closed state and the open/flow state [e.g., in response to pressure through control line 81; para. 0034]; and
a radially compressed state [Figs. 3,4] when the fluid pressure is energized and the target is in the second position to hold the flow tube in the flow state [e.g., by interaction with sleeve groove 61 in uphole portion of the sleeve 21; Figs. 3,4; para. 0030,0033,0035].
Hill otherwise discloses all the limitations of this claim, but does not explicitly disclose an electromagnet fixedly coupled to the housing, such that the target is positioned proximate the electromagnet, the target is configured to remain in an axially distal position when the electromagnet is not energized and be axially drawn toward and held in an axially proximal position by the electromagnet when the electromagnet is energized; and further such that the radially compressible member/collet is engageable with the target and configured to move between a radially extended state when the electromagnet is not energized and the target is in the axially distal position to allow the flow tube to move between the closed state and the flow state, and a radially compressed state when the electromagnet is energized and the target is in the axially proximal position to hold the flow tube in the flow state.
Lake discloses using an electromagnet actuator 48 having a target 54 in an axially distal position with respect to the electromagnet when the electromagnet is not energized [Fig. 2], and to an axially proximate position with respect to the electromagnet when the electromagnet is energized [Fig. 3; para. 0019,0020]. Lake further discloses that the electromagnet actuator is interchangeable with fluid/hydraulic based actuators [para. 0020].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the apparatus and methods of Hill to utilize an electromagnet of the type disclosed by Lake for Hill’s movement of the target 52, the target 52, spring 53, and edge 57 sloping surface being inverted to be consistent with the above-described direction in which the target is drawn by Lake’s energized electromagnet, such that (a) the target is positioned proximate the electromagnet, (b) the target remains in an axially distal position when the electromagnet is not energized and is axially drawn toward and held in an axially proximal position by the electromagnet when the electromagnet is energized, (c) the radially compressible member/collet is engageable with the target and configured to move between (1) a radially extended state when the electromagnet is not energized and the target is in the axially distal position to allow the flow tube to move between the closed state and the open/flow state, and (2) a radially compressed state when the electromagnet is energized and the target is in the axially proximal position to hold the flow tube in the flow state. One of ordinary skill in the art would reasonably have expected that this configuration would have been within the skill of the art and would yield and achieve the predictable result that an electromagnet, one of the means for moving a target that is known to be interchangeable with fluid/hydraulic means (as indicated by Lake at para. 0020), would be in place for moving the Hill target as part of controlling the Hill flow tube.
Claim 12 Hill, as modified with respect to claim 11, discloses that the radially compressible member 56 is a collet [para. 0033], and further wherein the target includes an angled target surface [the sloped surface corresponding with collet edge 57] and the collet includes a reciprocal angled collet surface [the sloped surface of collet edge 57], the angled target surface configured to slide upon the reciprocal angled collet surface as the electromagnet is energized to move the collet to the radially compressed state [e.g., from Fig. 2 to Fig. 4].
Claim 14 Hill, as modified with respect to claim 11, discloses that the radially compressible member has a radially compressible member engaging profile [e.g., the collet 66 finger 56 tab 62; para. 0033] along a radially interior surface thereof [Figs. 2,4] and the flow tube has a reciprocal flow tube engaging profile [e.g., groove 61; para. 0035] along a radially exterior surface thereof, the radially compressible member engaging profile configured to engage with the reciprocal flow tube engaging profile when the electromagnet is energized [Fig. 4], the target is in the axially proximal position [i.e., the electromagnet is energized, as discussed in the combination of claim 11 herein], and the radially compressible member is in the radially compressed state to hold the flow tube in the flow state [Fig. 4; para. 0035].
Claim 16 Hill, as modified with respect to claim 11, discloses a safety, the safety mechanism configured to prevent the radially compressible member from restricting movement of the flow tube unless the flow tube is in the flow state [e.g., the exterior surface of the flow tube which will not allow flow tube movement restriction, even when the electromagnet is energized, until the flow tube has descended to allow the collet tab 62 to engage the flow tube groove 61, at which time the flow tube will be in the flow state; Fig. 4].
Claim 18 Hill, as modified with respect to claim 11, discloses a return mechanism 53 [Figs. 2,4; para. 0033] coupled to the target 52, the return mechanism configured to return the target to the axially distal position when the electromagnet is not energized [e.g., back from the Fig. 4 position to the Fig. 2 position, also shown as Fig. 9, referenced directions being inverted in the combination of claim 11 herein; para. 0038,0035].
Claim 19 Hill, as modified with respect to claim 18, wherein the return mechanism 53 is a spring [para. 0038].
Claim 20 Hill, as modified with respect to claim 11, discloses that the radially extended state is a first compressed state and the radially compressed state is a second more compressed state [i.e., the first inwardly radial compression of the flexible collet finger securing the collet finger 56 edge 57 within the target 52 notch (Fig. 2), and the second inwardly radial compression wherein the collet finger 56 is compressed further inwardly (Fig. 4)].
Claim 21 As discussed with respect to claim 1, Hill discloses a method [Figs. 1-10; abstract; para. 0003,0030], comprising:
forming a wellbore [para. 0003,0030] through one or more subterranean formations; and
positioning an SSSV 10 [Figs. 1-10; abstract; para. 0030] in the wellbore, the SSSV including a housing 11 including a central bore extending axially through the housing [Figs. 1-4; para. 0030], the central bore configured to convey subsurface production fluids there through [para. 0030];
a valve 26 disposed proximate a downhole end of the central bore [Figs. 1,3; para. 0030];
a flow tube 20 disposed in the central bore and configured to move between a closed state [Fig. 1] and a flow state [Fig. 3] to engage or disengage the valve to determine a flow condition of the subsurface production fluids through the central bore [para. 0034];
a target 52, the target configured to move when fluid pressure is energized/applied [para. 0034] and to remain in a first position [Fig. 2] when the fluid pressure is not energized and be held in a second position [Fig. 4] when energized [para. 0035]; and
a radially compressible member/collet 66 located radially between the flow tube 20 and the housing 51 [Fig. 1; para. 0033], the radially compressible member engageable with the target [e.g., at the outwardly extending sloping surface having an edge 57 of the fingers 56 of the collet 66; para. 0033] and configured to move between:
a radially extended state [Figs. 1,2] when the fluid pressure is not energized and the target is in the first position to allow the flow tube to move between the closed state and the open/flow state [e.g., in response to pressure through control line 81; para. 0034]; and
a radially compressed state [Figs. 3,4] when the fluid pressure is energized and the target is in the second position to hold the flow tube in the flow state [e.g., by interaction with sleeve groove 61 in uphole portion of the sleeve 21; Figs. 3,4; para. 0030,0033,0035].
Hill otherwise discloses all the limitations of this claim, but does not explicitly disclose an electromagnet fixedly coupled to the housing, such that the target is positioned proximate the electromagnet, the target is configured to remain in an axially distal position when the electromagnet is not energized and be axially drawn toward and held in an axially proximal position by the electromagnet when the electromagnet is energized; and further such that the radially compressible member/collet is engageable with the target and configured to move between a radially extended state when the electromagnet is not energized and the target is in the axially distal position to allow the flow tube to move between the closed state and the flow state, and a radially compressed state when the electromagnet is energized and the target is in the axially proximal position to hold the flow tube in the flow state.
Lake discloses using an electromagnet actuator 48 having a target 54 in an axially distal position with respect to the electromagnet when the electromagnet is not energized [Fig. 2], and to an axially proximate position with respect to the electromagnet when the electromagnet is energized [Fig. 3; para. 0019,0020]. Lake further discloses that the electromagnet actuator is interchangeable with fluid/hydraulic based actuators [para. 0020].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the apparatus and methods of Hill to utilize an electromagnet of the type disclosed by Lake for Hill’s movement of the target 52, the target 52, spring 53, and edge 57 sloping surface being inverted to be consistent with the above-described direction in which the target is drawn by Lake’s energized electromagnet, such that (a) the target is positioned proximate the electromagnet, (b) the target remains in an axially distal position when the electromagnet is not energized and is axially drawn toward and held in an axially proximal position by the electromagnet when the electromagnet is energized, (c) the radially compressible member/collet is engageable with the target and configured to move between (1) a radially extended state when the electromagnet is not energized and the target is in the axially distal position to allow the flow tube to move between the closed state and the flow state, and (2) a radially compressed state when the electromagnet is energized and the target is in the axially proximal position to hold the flow tube in the flow state. One of ordinary skill in the art would reasonably have expected that this configuration would have been within the skill of the art and would yield and achieve the predictable result that an electromagnet, one of the means for moving a target that is known to be interchangeable with fluid/hydraulic means (as indicated by Lake at para. 0020), would be in place for moving the Hill target as part of controlling the Hill flow tube.
Claims 3, 5, 13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hill, in view of Lake, and further in view of Going, III (US20090229814) [Going]
Claim 3 Hill, as modified with respect to claim 1, otherwise discloses all the limitations of this claim, but does not explicitly disclose that the radially compressible member has a radially compressible member friction surface along a radially interior surface thereof and the flow tube has a reciprocal flow tube friction surface along a radially exterior surface thereof, the radially compressible member friction surface configured to engage with the reciprocal flow tube friction surface when the electromagnet is energized, the target is in the axially proximal position and the radially compressible member is in the radially compressed state to hold the flow tube in the flow state.
Going discloses a subsurface safety valve 10 [Figs. 1,2; para. 0013] an electromagnet 74 for locking a flow tube 14 when energized [para. 0017], the electromagnet moving a target 78 to then move a radially movable member 58 into a profiled, toothed 66 engagement with the flow tube [Fig. 1; para. 0017], Going further disclosing that the profiled, toothed engagement is interchangeable with a friction engagement [para. 0017].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the apparatus and methods of Hill, as modified, to utilize a friction based engagement of the Hill collet and flow tube, such that the radially compressible member has a radially compressible member friction surface along a radially interior surface thereof and the flow tube has a reciprocal flow tube friction surface along a radially exterior surface thereof, the radially compressible member friction surface configured to engage with the reciprocal flow tube friction surface when the electromagnet is energized, the target is in the axially proximal position and the radially compressible member is in the radially compressed state to hold the flow tube in the flow state, such a frictional arrangement being disclosed by Going . One of ordinary skill in the art would reasonably have expected that this utilization would have been within the skill of the art and would yield and achieve the predictable result that a known locking mechanism for SSSV flow tubes would be in place.
Claim 5 Hill, as modified with respect to claim 4, otherwise discloses all the limitations of this claim, but does not explicitly disclose that the radially compressible member engaging profile is one or more radially compressible member teeth and the flow tube engaging profile is one or more flow tube teeth shaped profiles.
Going discloses a subsurface safety valve 10 [Figs. 1,2; para. 0013] an electromagnet 74 for locking a flow tube 14 when energized [para. 0017], the electromagnet moving a target 78 to then move a radially movable member 58 into a profiled, toothed 66 engagement with the flow tube [Fig. 1; para. 0017].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the apparatus and methods of Hill, as modified, to utilize a friction based engagement of the Hill collet and flow tube, such that the radially compressible member engaging profile is one or more radially compressible member teeth and the flow tube engaging profile is one or more flow tube teeth shaped profiles, such a profiled, toothed arrangement being disclosed by Going . One of ordinary skill in the art would reasonably have expected that this utilization would have been within the skill of the art and would yield and achieve the predictable result that a known locking mechanism for SSSV flow tubes would be in place.
Claim 13 Hill, as modified with respect to claim 11, otherwise discloses all the limitations of this claim, but does not explicitly disclose that the radially compressible member has a radially compressible member friction surface along a radially interior surface thereof and the flow tube has a reciprocal flow tube friction surface along a radially exterior surface thereof, the radially compressible member friction surface configured to engage with the reciprocal flow tube friction surface when the electromagnet is energized, the target is in the axially proximal position and the radially compressible member is in the radially compressed state to hold the flow tube in the flow state.
Going discloses a subsurface safety valve 10 [Figs. 1,2; para. 0013] an electromagnet 74 for locking a flow tube 14 when energized [para. 0017], the electromagnet moving a target 78 to then move a radially movable member 58 into a profiled, toothed 66 engagement with the flow tube [Fig. 1; para. 0017], Going further disclosing that the profiled, toothed engagement is interchangeable with a friction engagement [para. 0017].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the apparatus and methods of Hill, as modified, to utilize a friction based engagement of the Hill collet and flow tube, such that the radially compressible member has a radially compressible member friction surface along a radially interior surface thereof and the flow tube has a reciprocal flow tube friction surface along a radially exterior surface thereof, the radially compressible member friction surface configured to engage with the reciprocal flow tube friction surface when the electromagnet is energized, the target is in the axially proximal position and the radially compressible member is in the radially compressed state to hold the flow tube in the flow state, such a frictional arrangement being disclosed by Going . One of ordinary skill in the art would reasonably have expected that this utilization would have been within the skill of the art and would yield and achieve the predictable result that a known locking mechanism for SSSV flow tubes would be in place.
Claim 15 Hill, as modified with respect to claim 14, otherwise discloses all the limitations of this claim, but does not explicitly disclose that the radially compressible member engaging profile is one or more radially compressible member teeth and the flow tube engaging profile is one or more flow tube teeth shaped profiles.
Going discloses a subsurface safety valve 10 [Figs. 1,2; para. 0013] an electromagnet 74 for locking a flow tube 14 when energized [para. 0017], the electromagnet moving a target 78 to then move a radially movable member 58 into a profiled, toothed 66 engagement with the flow tube [Fig. 1; para. 0017].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the apparatus and methods of Hill, as modified, to utilize a friction based engagement of the Hill collet and flow tube, such that the radially compressible member engaging profile is one or more radially compressible member teeth and the flow tube engaging profile is one or more flow tube teeth shaped profiles, such a profiled, toothed arrangement being disclosed by Going . One of ordinary skill in the art would reasonably have expected that this utilization would have been within the skill of the art and would yield and achieve the predictable result that a known locking mechanism for SSSV flow tubes would be in place.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Henschel et al. (US20190203564) discloses a radial collet for locking an SSSV flow tube [para. 0067]. Deaton et al. (US6433991) discloses electromagnet actuators 112,114 moving a flow tube 118 using a profiled, toothed engagement 116 [Fig. 1].
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.
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/GEORGE S GRAY/ Primary Examiner, Art Unit 3676