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 .
Status of Claims
This action is in reply to the Applicant’s claims, filed on 04/18/2024.
Claims 5-7 have been amended.
Claims 8-13 have been added.
Claims 1-13 are currently pending and have been examined.
Response to Amendment
The amendment filed 09/18/2025 has been entered. Claims 1-13 remain pending in the application.
Applicant’s argument with respect to the prior art rejections of claims 1-13 has been considered
and are not persuasive, therefore the rejections have been maintained. Applicant asserts that the duplication of a second canister fluidically connected to a knob is nonobvious because it purportedly solves a problem of a treatment fluid injection imbalance as described in the specification.
However, the claims do not recite any limitation directed to solving that particular problem. The claims merely require “two treatment cannisters for holding treatment fluid to be injected,” without specifying that the configuration achieves any particular result such as resolving a treatment fluid imbalance.
It is well established that the determination of obviousness is based on the claimed subject matter as a whole and not on unclaimed advantages or problems described only in the specification. Applicants’ arguments are therefore not commensurate in scope with the claimed invention.
Moreover, the duplication of treatment fluid canister connected to a knob would have been an obvious matter of design choice or predictable use of prior art elements to achieve an expected result, such as increasing treatment fluid capacity, providing an additional fluid source, or offering redundancy. The duplication of an element to obtain predictable results has been held to be obvious (St. Regis Paper Co. v. Bemis Co., 193 USPQ 8).
In response to Applicant’s assertion that the cited reference fails to teach or suggest a second canister, attention is directed to Terral (US4480687), which discloses separate canisters fluidically connected to separate ports for the delivery of different treatment fluids to each port. This teaching further supports the position that duplicating a canister was known in the art and represents a predictable duplication of existing components. The inclusion of this teaching from Terral merely elaborates on the rational already presented in previous Non-Final Office Action.
However, upon further consideration, the amendments introduce new issues that a new ground(s) of rejection is made.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 2, 5-9, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Berge (WO2021/080434) in view of Terral (US4480687).
Claim 1. Berger discloses: A downhole injection tool (1 pipe tool, Fig. 4a) for injecting a treatment fluid (injection fluid; Pg. 15, line 6) in a space surrounding a downhole tubular installed in a borehole (Pg. 12, lines 14-18) in the Earth, comprising: an elongate tool housing extending around a central longitudinal tool axis (16 body arms, Fig. 4A); at least two stings (14 knob, Fig. 4d), each of the stings comprising a fluid channel to establish fluid communication from within the tool housing to an exterior of the tool housing through the fluid channel (142 conduit, Fig. 4d), wherein each said sting is movable in a radially outward direction, away from the central longitudinal tool axis (Fig. 6c), from a retracted position (Fig. 5a) to an extended position whereby each sting extends to outside the elongate tool housing (Fig. 6c).
Berge does not explicitly disclose: two treatment fluid cannisters, for holding the treatment fluid that is to be injected, wherein a first cannister of the at least two treatment fluid cannisters is fluidly connected with the exterior of the tool housing via a first sting of the at least two stings, but not via a second sting of the at least two stings, and wherein a second cannister of the at least two treatment fluid cannisters is fluidly connected with the exterior of the tool housing via the second sting, but not via the first sting.
However, Berge does disclose a single canister holding a fluid that is to be injected, wherein the canister is fluidly connected to the exterior of the body arms via the knobs (Pg. 15, lines 5-7).
While Berge does not disclose a second canister fluidly connected to the exterior of the tool via a second knob but not the first knob, the structure and function of a canister fluidly connected to a knob is clearly taught. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to duplicate a second canister holding an injection fluid wherein the canister is fluidly connected to the second knob but not the first knob, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Therefore, it would have been obvious to one of ordinary skill in the art to modify Berge to include a second canister fluidly connected via a second knob while isolating the first and second knobs to their respective canisters as claimed. Furthermore, making something separable or integral (i.e. distinct canisters versus one large canister) has also been held to be obvious (see In re Larson and In re Dulberg - MPEP 2144.04(V)(B and C)).
While the Examiner believes that Barge renders the claim obvious, an additional motivation for the obviousness over Barge is provided below.
Terral discloses a system for the separate injection of a plurality of treatment fluids via separate ports fluidically connected to separate containers. Therefore, Terral teaches: two treatment fluid cannisters (18 containers, Fig. 1), for holding the treatment fluid (chemicals; Col. 2, lines 29-40) that is to be injected (chemical injection; Col. 1, lines 7-13), wherein a first cannister of the at least two treatment fluid cannisters is fluidly connected (35 first control line, Fig. 2) via a first sting (48 exit point, Fig. 3) of the at least two stings, but not via a second sting (59 transverse port, Fig. 3) of the at least two stings, and wherein a second cannister of the at least two treatment fluid cannisters is fluidly connected (50 second control line, Fig. 3) via the second sting, but not via the first sting (35 and 50 are separate, independent fluid passages, Fig. 1-3).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the system of Berge by incorporating the two-canister fluid treatment delivery system as taught by Terral with a reasonable expectation of success in order to create a system capable of providing separate treatment fluids to separate knobs as taught by Terral (Col. 3, line 56 – Col. 4, lines 22).
Claim 2. Berge in view of Terral teaches: The downhole injection tool of claim 1, further comprising a hydraulic drive mechanism (Berge: 40 hydraulic piston and 42 piston chambers, Fig. 9) functionally connected to the at least two stings to move each of the at least two stings from the retraced position to the extended position (Berge: Fig. 9), said hydraulic drive mechanism comprising a piston (Berge: 40 hydraulic piston, Fig. 9) and pump (Berge: pump, Pg. 14, lines 28-30), which piston is actuated by a hydraulic fluid that is displaced by said pump (Berge: Pg. 14, lines 23-30).
Claim 5. Berge in view of Terral teaches: The downhole injection tool of claim 1, wherein the first string and the second string are movable in mutually differing directions (Berge: Fig. 6c).
Claim 6. Berge in view of Terral teaches: The downhole injection tool of claim 1, wherein the first sting and second sting are movable in mutually opposing (Berge: Fig. 6c).
Claim 7. Berge in view of Terral teaches: A method of injecting a treatment fluid in an annulus surrounding a downhole tubular arranged within a borehole in the Earth, said method comprising: providing a downhole injection tool comprising: an elongate tool housing extending around a central longitudinal tool axis; at least two stings, each of the stings comprising a fluid channel to establish fluid communication from within the tool housing to an exterior of the tool housing through the fluid channel, wherein each said sting is movable in a radially outward direction, away from the central longitudinal tool axis, from a retracted position to an extended position whereby each sting extends to outside the elongate tool housing; at least two treatment fluid cannisters, for holding the treatment fluid that is to be injected, wherein a first cannister of the at least two treatment fluid cannisters is fluidly connected with the exterior of the tool housing via a first sting of the at least two stings, but not via a second sting of the at least two stings, and wherein a second cannister of the at least two treatment fluid cannisters is fluidly connected with the exterior of the tool housing via the second sting, but not via the first sting (see previous rejection of claim 1); lowering the downhole injection tool into the borehole through the downhole tubular to a selected depth (Berge: operated by wireline, drill pipe or coiled tubing; inherent operation of lowering into a borehole; Pg. 15, lines 4-5); at the selected depth, extending the first sting and the second sting through a wall of the downhole tubular, to establish fluid communication between the downhole injection tool and the annulus surrounding the downhole tubular; injecting the treatment fluid from the downhole injection tool from the at least two treatment fluid cannisters through the first sting into the annulus surrounding the downhole tubular and through the second sting into the annulus (Berge: Pg. 12, lines 13-18; Fig. 4a-7b); retrieving the downhole injection tool from the downhole tubular (Berge: Pg. 6, lines 20-21).
Claim 8. Berger in view of Terral teaches: The method of claim 7, further comprising moving each of the at least two stings from the retraced position to the extended position by means of a hydraulic drive mechanism (Berge: 40 hydraulic piston and 42 piston chambers, Fig. 9).
Claim 9. Berger in view of Terral teaches: The method of claim 8, further comprising actuating a piston comprised in said hydraulic drive mechanism by a hydraulic fluid that is displaced by a pump (Berge: pump, Pg. 14, lines 28-30).
Claim 12. Berger in view of Terral teaches: The method of claim 8, wherein the first sting and the second sting are moved in mutually differing directions (Berge: Fig. 6c).
Claim 13. Berger in view of Terral teaches: The method of claim 8, wherein the first sting and the second sting are moved in mutually opposing directions (Berge: Fig. 6c).
Claims 3-4 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Berge (WO2021/080434) in view of Terral (US4480687) and in view of Dongren et al. (US20150267500).
Claim 3. Berge in view of Terral teaches: The downhole injection tool of claim 2 (see previous rejection of claim 2). Berge in view of Terral does not teach: cannisters are in selective fluid communication with said pump.
Dongren teaches a sealing apparatus for sealing around a tubular via a perforation wherein a sealant is injected from canisters when a valve is opened and a pump displaces the sealant. Therefore, Dongren teaches: cannisters (15 cannisters, Fig. 7a) are in selective fluid communication (17 valve, Fig. 7a) with said pump ([0173]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the perforating injection tool of Berge by incorporating the a valve fluidically connected to the pump as taught by Dongren with a reasonable expectation of success in order to control when the injection fluid is injected through the knobs as taught by Dongren (Fig. 7a, [0173]).
Claim 4. Berge in view Terral and Dongren teach: The downhole injection tool of claim 3, wherein the pump is in selective fluid communication with both the first cannister and the second cannister via a selectable valve (Dongren: 17 valves, Fig. 7a; [0173]) which selectively isolates both the first cannister and the second cannister from the pump or opens both the first cannister and the second cannister to the pump (see previous rejection).
Claim 10. Berge in view of Terral and Dongren teach: The method of claim 9, wherein both the first cannister and the second cannister are in selective fluid communication with said pump (see previous rejection).
Claim 11. Berge in view of Terral and Dongren teach: The method of claim 10, wherein the pump is in selective fluid communication with both the first cannister and the second cannister via a selectable valve which selectively isolates both the first cannister and the second cannister from the pump or opens both the first cannister and the second cannister to the pump (see previous rejection).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Briggs et al. (US3273647) discloses a two-chamber injection apparatus for fluid injection.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Craig whose telephone number is (571)270-0747. The examiner can normally be reached M-Thurs 7:30 AM to 5:00 PM CST.
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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.
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/DANIEL T CRAIG/Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676