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 02/26/2026.
Claims 1, and 7 have been amended.
Claims 1-13 are currently pending and have been examined.
Response to Amendment
The amendment filed 02/26/2026 has been entered. Claims 1-13 remain pending in the application. Applicant’s amendments to the claims have overcome each rejection previously set forth in the Non-Final Office Action filed 11/07/2025. Applicant’s argument with respect to the prior art rejections of claims 1-15 have been considered and found persuasive; therefore, the rejections have been withdrawn.
However, upon further consideration, the amendments raise new issues and 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 Hoffman (US11,773,693).
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; wherein the first cannister is configured to inject a predetermined quantity of the treatment fluid through the first sting and the second cannister is configured to inject a predetermined quantity of the treatment fluid through the second sting, wherein the predetermined quantity injected through the first sting and the predetermined quantity injected through the second sting are substantially equal.
Hoffman discloses a system for providing a mixture downhole at or about a location in an open or cased wellbore comprising of an assembly having at least two fluidly separated delivery channels, and each delivery channel is for delivering at least one of the two or more chemical components.
Hoffman teaches: two treatment fluid cannisters (structure containing CA and CB chemical components, Fig. 2), for holding the treatment fluid (resin and hardener; Col. 8, lines 5-9) that is to be injected (108 pumping system, Fig. 2), wherein a first cannister of the at least two treatment fluid cannisters is fluidly connected (CA is coupled to TA delivery channel, Fig. 2) via a first sting (164 outlet of TA, Fig. 4) of the at least two stings, but not via a second sting (second 164 outlet of TB delivery channel) of the at least two stings, and wherein a second cannister of the at least two treatment fluid cannisters is fluidly connected via the second sting (CB is coupled to TB delivery channel, Fig. 2), but not via the first sting (TA and TB are separate, independent fluid passages, Fig. 2, 4); wherein the first cannister is configured to inject a predetermined quantity of the treatment fluid through the first sting and the second cannister is configured to inject a predetermined quantity of the treatment fluid through the second sting (quantity of resin and hardener is implicitly predetermined for the application; deliver two or more separate streams; Col. 5, lines 49-64; Col. 7, lines 3-10), wherein the predetermined quantity injected through the first sting and the predetermined quantity injected through the second sting are substantially equal (quantities of the required ratio of resin and hardener is pumped to create an isolation material; delivery of a two part mixture to yield a mixture is implicitly 1:1; Col. 5, lines 49-64; Col. 7, lines 3-10; Col. 8, lines 19-33).
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 Hoffman with a reasonable expectation of success in order to create a system capable of providing predetermined separate substantially equal treatment fluids to separate knobs as taught by Hoffman (Fig. 2, 4) since separate metered delivery of each component achieves the desired mixing ratio where resin and hardener is formulated for a substantially 1:1 mixing ratio.
Claim 2. Berge in view of Hoffman teach: 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 Hoffman teach: 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 Hoffman teach: 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 discloses: 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).
Berge does not disclose: the predetermined quantity injected through the first sting and the predetermined quantity injected through the second sting are substantially equal.
Hoffman teaches: the predetermined quantity injected through the first sting and the predetermined quantity injected through the second sting are substantially equal (see previously rejected claim 1).
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 Hoffman with a reasonable expectation of success in order to create a system capable of providing predetermined separate substantially equal treatment fluids to separate knobs as taught by Hoffman (Fig. 2, 4) since separate metered delivery of each component achieves the desired mixing ratio where resin and hardener is formulated for a substantially 1:1 mixing ratio.
Claim 8. Berger in view of Hoffman teach: 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 Hoffman teach: 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 Hoffman teach: 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 Hoffman teach: 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 Hoffman (US11,773,693) and in view of Dongren et al. (US2015/0267500).
Claim 3. Berge in view of Hoffman 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.
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 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 Hoffman 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 previously rejected claim 3).
Claim 10. Berge in view of Hoffman 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 previously rejected claim 3).
Claim 11. Berge in view of Hoffman 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 previously rejected claim 4).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Buergel (US9,463,449) and Salla et al. (US10,501,684) discloses two component treatment fluids comprising of resin and hardener mixed at a 1:1 ratio.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Daniel Craig whose telephone number is (571)270-0747. The examiner can normally be reached M-Thurs 8:00 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
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