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 03/23/2026.
Claim 1 has been amended.
Claims 2-3 have been cancelled.
Claim 15 has been added.
Claims 1, and 4-15 are currently pending and have been examined.
Response to Amendment
The amendment filed 03/23/26 has been entered. Claims 1, and 4-15 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 01/27/2026.
Applicant' s argument with respect to the prior art rejections of claims 1, and 4-14 have been considered and found persuasive; therefore, the rejections have been withdrawn.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 § 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.
Claim 1 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "a production string" in line 4. It is unclear if this production string is the same or different than previously recited in the claim, therefore one of ordinary skill in the art would not be reasonably apprised of the invention. Examiner is reading as “the production string.”
Claims 4-15 are rejected for being depending on a rejected infinite claim.
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, 4, 6, 8-9, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Hoday et al. (AU2017265099) in view of Falk et al. (WO2020252597).
Claim 1. Hoday discloses: An apparatus (apparatus, [0044]; Fig. 1-2) for clearing solids (solids, [0053]) downhole of a production string (14 stator tube of PCP pump is the production string during implicit pumping operations; Fig. 1-2), wherein the apparatus clears solids from the well while the production string remains in position within the wellbore (Fig. 1), the apparatus comprising:
a production string position in a wellbore of a well (14 stator tube of PCP pump is the production string positioned within 10 casing of the well; Fig. 1-2);
a housing (implicit housing of 20 jet pump, Fig. 1-2) that sits above a reduced diameter opening inside the production string (16 stator inside 14 stator tube comprises a reduced diameter, Fig. 1-2), and a tailpipe string (coupled components of the distal end of 20 jet pump makes up the tailpipe string, Fig. 1-2) with an elongated body (24 tube, Fig. 1-2) that passes through the opening to exit a downhole end of the production string (24 exits 16 stator at distal end of 16; Fig. 1-2);
wherein the housing has a jet pump (20 jet pump comprising of 18, venturi nozzle, 30 nozzle, 32 nozzle outlet, 34 venturi tube, 35 opening, 36 venturi tube outlet; Fig. 1-2) and a diverter (control valve, [0072]), and the apparatus includes a coupling (implicit coupling between 18 and 20, Fig. 1-2) to connect to inner tubing (18 inner tube, Fig. 1-2) that extends inside the production string for delivery of power fluid (58 power fluid, [0055]), to the diverter and the jet pump, to activate a pumping operation of the jet pump ([0055-0056]);
wherein the apparatus further includes a conduit coupled between the diverter (bypass passage, [0072]) and to allow the power fluid from the diverter to bypass the jet pump for delivery of pressurised fluid (control valve operated such that water can flow through the bypass valve to bypass 220 jet pump (different embodiment of 20); [0072]); and
wherein the jet pump has an inlet (18 venturi nozzle, Fig. 2), coupled to the internal channel of the tailpipe string (Fig. 2) to suction fluid that includes the solids (suction mode, [0055-0056]), and an exit opening through the housing (36 venturi tube outlet, Fig. 2) and into the production string for pumping the solids into a space between the apparatus and the production string as a result of activation of the jet pump by the power fluid delivered through the inner tubing (operation of jet pump, [0056]), in order to force the solids up-hole and out of the well (annular area between 20 and 14 at 62 flow, Fig. 1; [0055-0056]).
Hoday does not disclose: a nozzle assembly of the tailpipe string and the tail pipe string further includes an intake screen through which the solids are suctioned into an internal channel from a slurry adjacent that screen generated by the nozzle assembly jetting power fluid into the wellbore to maintain agitation of the solids and fluid around the screen.
Falk discloses an apparatus for simultaneously milling obstructions from within a subterranean wellbore while pumping the milled obstructions and debris from the wellbore to the surface.
Falk teaches: a nozzle assembly of the tailpipe string (output ports of 52 bit, Fig. 3A; [0086]) and the tail pipe string further includes an intake screen (60 screen, Fig. 11 and 9) through which the solids are suctioned into an internal channel (37 central bore, Fig. 9A) from a slurry adjacent that screen generated by the nozzle assembly jetting power fluid into the wellbore to maintain agitation of the solids and fluid around the screen ([0060]).
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 apparatus of Hoday by including nozzles at the end of a tailpipe string and to include a screen as taught by Falk with a reasonable expectation of success in order agitate debris at the end of the tailpipe and to filter debris from passing through the jet pump as taught by Falk ([0060].
Claim 4. Hoday in view of Falk teach: The apparatus of claims 1, further including a seal arrangement (Hoday: 26 packing, Fig. 1) below the exit of the jet pump to seal against the production string and contain the agitated solids outside the elongate body to a downhole side of the jet pump, for extraction through the intake screen (Hoday: Fig. 2; see previously rejected claim 1).
Claim 6. Hoday in view of Falk teach: The apparatus of claim 1, wherein the tailpipe string is dimensioned to pass through an opening (inner diameter of 16 stator, Fig. 1-2) from which a rotor of a PCP pump has been extracted (rotor of PCP removed, [0012], Fig. 1-2).
Claim 8. Hoday in view of Falk teach: The apparatus of claim 1, wherein the coupling includes a diverter to direct power fluid delivered through the inner tubing into both the conduit which extends into the tailpipe/tubing and the jet pump (Falk: 70 flow diverter sub, Figs. 7-10 and 12; directs fluid to both and is coupled to 10 work string).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the control valve of Hoday with the diverter of Falk with a reasonable expectation of success as suggested by Falk because both perform the same function in similar contexts. Such a substitution represents the use of a known element according to its established function, and the results would have been predictable. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claim 9. Hoday in view of Falk teach: A method of extracting solids from a well using the apparatus of claim 1, including attaching the apparatus to an inner tubing which supplies power fluid to the apparatus, feeding the apparatus down the well and supplying the power fluid through the inner tubing to agitate solids in the well and suction the agitated solids into the apparatus and out of the jet pump exit to thereby force the solids up-hole for extraction from the well (see previous rejection of claim 1).
Claim 13. Hoday in view of Falk teach: The method of claim 9, further including firstly removing a rotor and rotor string of a PCP pump from an opening in a stator of a production string and passing the apparatus through the stator such that the tailpipe string extends through the opening, downhole of the production string, toward a bottom of the well (see previously rejected claim 6; Hoday: Fig. 1-2).
Claims 5, 7, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Hoday et al. (AU2017265099) in view of Falk et al. (WO2020252597) and further in view of Jones et al. (US11506008).
Claim 5. Hoday in view of Falk teach: The apparatus of claim 1. Hoday in view of Falk teach: does not teach: configured to be mounted to an existing seat in the production string and the tailpipe string has a reduced diameter to pass through the seat to exit the downhole end of the production string.
Jones teaches a clean out tool for cleaning the lower end of a wellbore with an installed production string. The tool is lowered down the production string until it projects form the end of the production string and removes debris using high pressure fluid.
Jones teaches: configured to be mounted to an existing seat (32 landing sub, Fig. 7; Col. 2, lines 55-59) in the production string and the tailpipe string has a reduced diameter to pass through the seat to exit the downhole end of the production string (38 tool projects from the opening 28 of production string 26, Fig. 2)
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the apparatus of Hoday in view of Falk to include a mounting seat as taught by Jones with a reasonable expectation of success to locate the apparatus onto an existing seat in the production string and for the tubing stinger to pass through the seat into the downhole end of the production tubing as taught by Jones (Fig. 2 and 7).
Claim 7. Hoday in view of Falk teach: The apparatus of claim 1. Hoday in view of Falk does not teach: the tailpipe string is dimensioned to pass through the opening from which a rod pump has been extracted.
Jones teaches: the tailpipe string (46 lower section, Fig. 3-5) is dimensioned to pass through the opening from which a rod pump has been extracted (tool is installed after the pump and rods are removed; Col. 3, lines 9-15; see previous rejection of claim 5).
Claim 14. Hoday in view of Falk teach: The method of claim 9. Hoday in view of Falk does not teach: firstly removing a rod pump and rod string of a rod pump from a seating nipple in a production string and passing the apparatus through the pump seating nipple such that the tailpipe string extends through a resultant opening, downhole of the production string toward a bottom of the well.
Jones further teaches: firstly removing a rod pump and rod string of a rod pump from a seating nipple in a production string and passing the apparatus through the pump seating nipple such that the tailpipe string extends through a resultant opening, downhole of the production string toward a bottom of the well (tool is installed after the pump and rods are removed; Col. 3, lines 9-15; see previous rejection of claim 5).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hoday et al. (AU2017265099) in view of Falk et al. (WO2020252597) and further in view of Lacey (US4763728).
Claim 10. Hoday in view of Falk teach: The method of claim 9 and jetting pressurized fluid through nozzles positioned below the screen to maintain a dilute slurry of agitated solids adjacent the intake screen of the apparatus (see previously rejected claim 1).
Hoday in view of Falk does not teach: nozzle positioned above the screen.
Lacey discloses an apparatus for cleaning screens comprising of nozzles above and below a section of screen and/or perforated intake wherein the nozzles create a turbulent screening action.
Lacey teaches: nozzle positioned above the screen (17 nozzle at distal end, Fig. 1).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the apparatus of Hoday in view of Falk to include a nozzle up hole and downhole of the screen with a reasonable expectation of success to create a turbulent screening action to agitate debris for washing up into the intake and pumping away as taught by Lacey (Col. 1, lines 39-44; Col. 2, lines 39-473).
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Hoday et al. (AU2017265099) in view of Falk et al. (WO2020252597) and further in view of Lacey (US4763728) and Harmon et al. (US10589287).
Claim 11. Hoday in view of Falk teach: The method of claim 9, further including jetting pressurized fluid through nozzles positioned below the screen to maintain a dilute slurry of agitated solids adjacent the intake screen of the apparatus (see previous rejection of claim 1).
Hoday in view of Falk does not teach: nozzle positioned above the screen or reduce the particle size of the particles in slurry such that they are compatible with the screen intake.
Lacey teaches: nozzle positioned above the screen (see previous rejection of claim 10).
Harmon teaches a system of processing of solid wastes comprising of screens and nozzles, wherein a slurry is recirculated to promote additional particle size reduction through impact of the particles with the sides of the vessels and conduits as the fluid is circulated.
Harmon teaches: reduce the particle size of the particles in slurry such that they are compatible with the screen intake (agitation promotes additional particle size reduction through particle impact: Col. 3, lines 63-66).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate fluid agitation into the apparatus of Hoday in view of Falk and further in view of Lacey to have particle impacts to reduce particle size with a reasonable expectation of success as taught by Harmon in order to enable the particles to pass through the screen as taught by Harmon (Col. 3, lines 63-66). Doing so would result in the slurry particles being reduced in size through impact against the sides of the apparatus as they are transported uphole toward the screen.
Claim 12. Hoday in view of Falk and further in view of Lacey and Harmon teach: The method of claim 11.
Regarding the limitation: an intense turbulent cloud which acts to generally maintain an unblocked screen by ejecting blocked particles from the screen thereby permitting continuous operation, Hoday in view of Falk and further in view of Lacey and Harmon is silent. However, Harmon does teach slurry agitation and fluid recirculation using nozzles to reduce and suspend particles in a continuous mix for filtration (Col. 9-12).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of Harmon with the nozzles of Hoday in view of Falk and further in view of Lacey, in view of known principles of fluid dynamics, to generate a turbulent flow around the screen surface with a reasonable expectation of success. Such a configuration would have predictably dislodged or prevented the accumulation of particles on the screen, thereby facilitating a continuous operation. A combination of these known elements would have yielded predictable results.
Allowable Subject Matter
Claim 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 15 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
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 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
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