DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 15, 2026 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 10-15 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over International Publication Number WO 2021/127516 A1 (Gooneratne et al.) in view of US 2023/0235211 A1 (Abdel-Fattah et al.).
As concerns claim 1, Gooneratne et al. discloses a treatment sub 22 useful for treating a lost circulation zone, the treatment sub comprising: a communications device 60 configured to receive an external communication; an internal fluid conduit 26 configured to convey a wellbore fluid through the treatment sub; a treatment sub interior defined between a sub exterior surface and the internal fluid conduit (figure 2, figure 4); and a radiation source 58 configured to generate at least one form of radiation in the wellbore fluid.
Gooneratne et al. lacks to disclose the treatment sub including a bubble generator configured to direct generated bubbles into the wellbore fluid; nevertheless Abdel-Fattah et al. discloses a treatment sub useful for treating a lost circulation zone further comprising a bubble generator configured to direct generated bubbles into the wellbore fluid (see 0029).
One of ordinary skill in the art, prior to the effective filing, would have incorporated the bubble generator of Abdel-Fattah et al. into the treatment sub of Gooneratne et al. with a reasonable expectation of success, as this provides the desirable result of providing a means for treatment of the reservoir that can create fluid flow pathways from the formation that does not require the use of strong acids or other materials that may harm personnel or downhole equipment or that may require specialized storage and training to use.
As concerns claim 10, Gooneratne et al. discloses a method of treating a lost circulation zone during a wellbore drilling program, the method comprising: introducing into a wellbore a treatment sub 22, where the treatment sub is part of a bottom hole assembly of a drill string used in the wellbore drilling program (figure 2); detecting lost circulation of a wellbore fluid from the wellbore; introducing a resin agent into the wellbore fluid (figure 12 and figure 13, see 0071 et seq.); introducing a crosslinking agent into the wellbore fluid (0074); operating the treatment sub such that at least one form of radiation, configured to interact with the resin and the cross-linking agent, is generated in the wellbore fluid, maintaining both the wellbore and the treatment sub for a treatment period (0074); and determining that lost circulation of the wellbore fluid from the wellbore has been mitigated (0076).
Gooneratne et al. lacks to disclose the method including the steps of operating the treatment sub such that bubbles are introduced into the wellbore fluid from a bubble generator; and wherein the generated radiation implodes the bubbles to provide turbulent mixing.
Abdel-Fattah et al. discloses a method of treating a lost circulation zone during a wellbore drilling program, the method further comprising operating the treatment sub such that bubbles are introduced into the wellbore fluid from a bubble generator (see, 0029, “nanobubbles 340 are introduced into the wellhead fluid 118”, note that the bubble generator is shown at 310); and wherein the generated radiation implodes the bubbles to provide turbulent mixing (0048).
One of ordinary skill in the art, prior to the effective filing, would have incorporated the bubble generator of Abdel-Fattah et al. into the treatment sub of Gooneratne et al. with a reasonable expectation of success, as this step provides the desirable result of providing a means for treatment of the reservoir, as the implosion of the bubbles can create fluid flow pathways from the formation that does not require the use of strong acids or other materials that may harm personnel or downhole equipment or that may require specialized storage and training to use.
As concerns claim 11, Gooneratne et al. discloses the method of claim 10, further comprising the steps of halting the wellbore drilling program in response to the detecting of lost circulation; and resuming the wellbore drilling program in response to the determining of mitigation of lost circulation (see, 0070 et seq, discussing how the treatment is actuated by at least rotating the drill string in a specific direction, thus making the stopping and starting of the drilling program as claimed implicit here).
As concerns claim 12, Gooneratne et al. discloses the method of claim 10, wherein the resin agent comprises an epoxide resin (0064).
As concerns claim 13, Gooneratne et al. discloses the method of claim 10, wherein the crosslinking agent is encapsulated within a capsule shell 64.
As concerns claim 14, Gooneratne et al. discloses the method of claim 13, wherein the capsule shell comprises a polymer shell agent (see at least the Abstract).
As concerns claim 15, Gooneratne et al. discloses the method of claim 10, wherein the crosslinking agent is an amine type curing agent (0013).
As concerns claim 18, Gooneratne et al. discloses the method of claim 10, wherein the detecting comprises determining a rate of fluid loss in the wellbore and a volume of the fluid loss in the wellbore (0004-0007).
As concerns claim 19, Gooneratne et al. discloses the method of claim 18, wherein an amount of the resin agent and an amount of the crosslinking agent are selected based on the rate of fluid loss in the wellbore and the volume of fluid loss in the wellbore determined in the detecting of lost circulation (Id.).
Claim(s) 2-5, 8-9 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gooneratne et al., as modified above, and further in view of US 2011/0183873 (Bailey et al.).
As concerns claim 2, Gooneratne et al. discloses the treatment sub of claim 1, but lacks to explicitly disclose the treatment sub further comprising an agent capsule container positioned in the treatment sub interior. Bailey et al. discloses a treatment sub 10 suitable for treating a lost circulation zone, further comprising an agent capsule container positioned in the treatment sub interior (see, e.g., 0116 et seq., "tool 10 may have an onboard reservoir for holding one or more of the components of the fluid composition to be delivered into the wellbore, e.g. to the wellbore wall. The reservoir may be in fluid communication with the flow line, or the reservoir may be self-contained").
One of ordinary skill in the art, prior to the effective filing, would have incorporated the capsule container in the sub interior with a reasonable expectation of success, as this facilitates delivery of the treatment fluid without the necessity of additional surface equipment or an extra flow line from the surface.
As concerns claim 3, Bailey et al. discloses the treatment sub of claim 2, wherein the agent capsule container is configured to selectively direct LCM agent capsules into the wellbore fluid in a wellbore annulus of a wellbore (0119).
As concerns claim 4, Bailey et al. discloses the treatment sub of claim 2, wherein the agent capsule container is configured to selectively direct LCM agent capsules into the wellbore fluid in the internal fluid conduit (0116).
As concerns claim 5, Bailey et al. discloses the treatment sub of claim 1, further comprising a capsule conduit bypass traversing the treatment sub interior to provide selective fluid connectivity between the internal fluid conduit and an exterior to the treatment sub (0119).
As concerns claim 7, the combination discloses the treatment sub of claim 1, further comprising a chemical reaction system positioned within the treatment sub interior, configured to generate a compressible gas product downhole, and fluidly coupled to a bubble generator (see, Gooneratne et al. at 0061, discussing the chemical reaction that occurs, obviously would be coupled to the bubble generator of Abdel-Fattah et al. if incorporated into the apparatus and method).
As concerns claim 8, the combination discloses the treatment sub of claim 1, further comprising an electrochemical system positioned within the treatment sub interior, configured to generate a compressible gas product downhole, and fluidly coupled to a bubble generator (See, 0059 of Gooneratne et al., discussing a battery at 62, which is an “electrochemical system”, obviously coupled to the bubble generator of Abdel-Fattah et al. if included in the apparatus and method).
As concerns claim 9, Bailey et al. discloses the treatment sub of claim 1, wherein the radiation source is further configured such that the form of radiation generated is selected from the group consisting of gamma radiation, ultraviolet radiation, visible radiation, X-ray radiation, alpha radiation, beta radiation, neutron radiation, and combinations thereof (0122).
As concerns claim 16, Bailey et al. discloses the method of claim 10, further comprising operating the treatment sub such that a capsule conduit bypass of the treatment sub is selectively opened (0119 et seq.).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5, 7-16 and 18-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/729,187 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application, drawn to the same subject matter, obviously encompass the limitations of the pending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES G. SAYRE whose telephone number is (571)270-7045. The examiner can normally be reached from 9:30-6:00 Monday-Friday.
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, Nicole A. Coy can be reached at (571) 272-5405. 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.
JAMES G. SAYRE
Primary Examiner
Art Unit 3679
/JAMES G SAYRE/ Primary Examiner, Art Unit 3679