DETAILED ACTION
Claims 10 and 12 are pending. Claims 1-3, 16-17, and 21-32 are allowed.
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 .
Response to Arguments
Applicant's arguments filed 06/15/2026 have been fully considered but they are not persuasive.
Applicant’s representative states:
“Independent claim 10 has been amended to incorporate a portion of the allowable subject matter of the previously recited claim 28. The cited references do not teach or suggest the subject matter of the amended claim 10. Accordingly, withdrawal of the rejection of independent claim 10 is respectfully requested.”
Examiner respectfully disagrees. Examiner notes that the new language introduced in method claim 10 is not the same as the previously introduced claim 28 language (which was dependent upon another claim tree). Furthermore, Brezinski still reads on the new claim limitations (see detailed rejection herein), as the claim is broad in nature in keeping with the instant specification. Examiner suggests incorporating more claim language in light of the specification (i.e., structural and/or functional) to overcome the prior art rejection and advance prosecution, preferably towards an allowance. If there is a critical feature in the claims that have a certain degree of importance, it is advised to include that language in the claim(s) in keeping with the instant specification for purposes of overcoming the most recent prior art rejection.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 10 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brezinski et al. (US Publication Number 2004/0055758 A1; herein “Brezinski”) in view of Whitelaw et al. (US Publication Number 2003/0221840 A1; herein “Whitelaw”).
In regard to claim 10, Brezinski discloses: A method of installing (e.g., 240) in a well (262 — abstract, paragraphs [0091-0095], and figures 24-25), the method comprising:
expanding radially outward (i.e., expansion of 240), a tubular (240) of the well and an interior surface of a wellbore (i.e., inner surface of 262 — abstract, paragraphs [0091-0095], and figures 24-25); and
activating a deployment mechanism (i.e., mechanism comprising 248, 260), by a spring (248) of the deployment mechanism, to cause a flexible seal to transition from a first state (as shown in figure 24) to a second state (as shown in figure 25 — paragraphs [0091-0095] and figures 24-25),
wherein in the first state, there is a gap (i.e., annular space) between the flexible seal and the interior surface of the wellbore (as shown in figure 24),
wherein in the second state, the flexible seal spans from the tubular to the interior surface of the wellbore to seal between the tubular and the interior surface of the wellbore (paragraphs [0091-0095] and figures 24-25),
wherein the activating of the deployment mechanism occurs (paragraphs [0091-0095] and figures 24-25),
and wherein the transition from the first state to the second state increases an inner diameter of the flexible seal at an end of the flexible seal and increases an outer diameter of the flexible seal at the end of the flexible seal (as shown in the transitioning from figure 24 to figure 25),
wherein the deployment mechanism comprises a coupling (254) configured to releasably fix the flexible seal to the sand screen (paragraphs [0091-0095] and figures 24-25), and
wherein the coupling releases the flexible seal in response to expansion of the sand screen (paragraphs [0091-0095] | (as shown in the transitioning from figure 24 to figure 25).
However, the figures 24-25 embodiment of Brezinski is silent in regard to: A method of installing a sand screen in a well, the method comprising:
expanding the sand screen radially outward, wherein the sand screen is disposed between a tubular of the well and an interior surface of a wellbore; and
activating a deployment mechanism, by a spring of the deployment mechanism, to cause a flexible seal to transition from a first state to a second state,
wherein in the first state, there is a gap between the flexible seal and the interior surface of the wellbore,
wherein in the second state, the flexible seal spans from the tubular to the interior surface of the wellbore to seal an area proximate to the sand screen and between the tubular and the interior surface of the wellbore, and
wherein the activating of the deployment mechanism occurs in response to the expanding of the sand screen.
Nonetheless, Brezinski teaches expanding another type of embodiment (as shown in figure 2), using an expansion cone (48 — see paragraphs [0054-0061] and figure 2), similar to that of the figures 24-25 embodiment, which also uses an expansion cone (260). Brezinski teaches expanding either a tubular (solid) or screen (perforated tubular) where annular isolators are used, such as that disclosed in the figures 24-25 embodiment — see paragraphs [0008-0010, 0052-0061] and figures 1-2.
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the expandable solid tubular, as taught by the figures 24-25 embodiment of Brezinski, to be a perforated tubular (sand screen), as taught by the figures 1-2 embodiments as taught by Brezinski, in light of simple substitution of a known expandable tubulars in wellbores comprising annular isolators since Brezinski expressly teaches that solid or perforated tubing and/or expandable sand screens are known alternatives — see paragraphs [0008-0010, 0052-0061]. Also, see MPEP 2143, section I, subsection B.
Furthermore, the modification of Brezinski is silent in regard to: wherein the sand screen is disposed between a tubular of the well and an interior surface of a wellbore.
Nonetheless, Whitelaw teaches a similar type of downhole tubular/screen expansion assembly (abstract, paragraphs [0024-0035], and figures 3-6). Whitelaw teaches that the expandable tubular (150) comprises an inner tubular (151) and a screen (152, 153) disposed on the outside thereof (paragraphs [0024-0035] and figures 3-6).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to simply substitute the expandable tubing/screen, as taught by Brezinski, with that of Whitelaw, to yield the predictable result of isolating the producing area and preventing an influx of unwanted sand (paragraphs [0005, 0014] of Whitelaw). See MPEP 2143, section I, subsection B. Furthermore, Whitelaw cites: “One benefit from using the expandable sand screen is that, once expanded, the annular area between the screen and the wellbore or casing is mostly eliminated. Thus, the gravel pack may no longer be necessary” (paragraph [0010]).
In regard to claim 12, Brezinski further discloses: wherein the expanding of the sand screen comprises activating an activation chamber (246) of the sand screen (paragraphs [0091-0095] and figures 24-25), and wherein the transitioning to the second state comprises extending the flexible seal over the sand screen (as taught by Brezinski in view of Whitelaw — see claim 10 rejection herein).
Allowable Subject Matter
Claims 1-3, 16-17, and 21-32 are allowed.
The following is an examiner’s statement of reasons for allowance: In regard to the amendments to claims 1 and 16, the most recent prior art rejection was overcome, with the closest reference being Brezinski (see Non-Final Rejection dated 04/22/2026). The claims are allowed for the reasons as discussed in the arguments filed in the response dated 06/15/2026, as the prior art of record, either singularly or in combination thereof, does not teach, nor would be obvious to modify the reference(s) to read on the claims.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Claim 33 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.
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 NEEL PATEL whose telephone number is (469)295-9168. The examiner can normally be reached M-F, 9:00AM-5:00PM CST.
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, Tara Schimpf can be reached at (571) 270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NEEL GIRISH PATEL/Primary Patent Examiner, Art Unit 3676
Prosecution Insights