DETAILED CORRESPONDENCE
Status of Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-6 & 9 have been examined in this application. This communication is a Non-Final Rejection in response to the Application filed on July 16, 2024 and the Response to Restriction Requirement filed January 29, 2026. Claims 7, 8 & 10-19 stand withdrawn.
Election/Restrictions
Applicant’s election without traverse of Group I and election of Species A in the reply filed on January 29, 2026 is acknowledged. Further, with respect to the election of Species, because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818). Claims 1-6 & 9 stand elected. Claims 7, 8 & 10-19 stand withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim.
Information Disclosure Statement
The information disclosure statement filed July 16, 2024 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but not all the information referred to therein has been considered.
Drawings/Specification
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: “220” in Figure 2. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because reference character “1016” has been used to designate distinct components. Figure 1 appears to depict “1016” as an above-ground component; whereas Figures 6A & 6C appear to depict “1016” as a subterranean component, and the specification describes “1016” as an “internal fluid conduit”. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1-6 & 9 are objected to because of the following informalities:
Claim 1 recites “A treatment sub useful for treating a lost circulation zone”. To improve clarity, replacement of this limitation with “A treatment sub for treating a lost circulation zone in a subterranean well” is recommended.
Claim 1 recites “a sub exterior surface”. To improve clarity, replacement of this limitation with “an exterior surface of the treatment sub” is recommended.
Appropriate correction is required. Claims 2-6 & 9 are also objected to for being dependent on Claim 1.
Claims 3 & 4 each recite “LCM”. The expanded form of the acronym is required in at least the first instance recited in the claim. Appropriate correction is required.
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.
Claims 2-4 are 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 pre-AIA the applicant regards as the invention.
Claim 2 recites “an agent capsule container”. As recited, it is unclear whether the agent is a capsule or the container is a capsule. Appropriate correction and/or clarification is required. Claims 3 & 4 are also rejected for being dependent on Claim 2. The claims have been examined as best understood.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-6 & 9 are rejected under 35 U.S.C. 103 as being unpatentable over Sweatman et al. (US 2013/0126164).
With respect to Claim 1, Sweatman discloses a treatment sub useful for treating a lost circulation zone (Sweatman: Sections [0010]-[0018]), the treatment sub comprising: an internal fluid conduit configured to convey a wellbore fluid through the treatment sub (Sweatman: Sections [0010]-[0018], Figures; as a non-limiting example, component “136” or one or more of the string of pipes “116”; a treatment sub interior defined between a sub exterior surface and the internal fluid conduit (Sweatman: Sections [0010]-[0018], Figures; as a non-limiting example, interior space between a sub exterior surface and component “136” or one or more of the string of pipes “116”); and a sonic frequency source configured to generate a sonic frequency in the wellbore fluid (Sweatman: Sections [0010]-[0018], Figures; as a non-limiting example, component “140”).
Sweatman further teaches one or more embodiments where components such as the sonic frequency source are controlled on/off using surface controls and/or a switch (Sweatman: Sections [0016]-[0018]); which would appear to encompass “a communications device configured to receive an external communication” as instantly and broadly claimed. As such, although the reference fails to explicitly disclose this feature in combination with the treatment sub components as set forth above, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have modified the treatment sub to include a communications device configured as instantly claimed, with a reasonable expectation of success, in order to control components, such as the sonic frequency source, and/or to yield predictable results in well treatment operations.
With respect to Claim 2, Sweatman teaches the treatment sub as provided above with respect to Claim 1, and further discloses “…an agent capsule container positioned in the treatment sub interior” (Sweatman: Sections [0010]-[0022], Figures; as a non-limiting example, component “110” where Sweatman discloses delivery of treatment agents via encapsulation, emulsions and/or coatings, which is considered to disclose “an agent capsule container” as broadly claimed).
With respect to Claim 3, Sweatman teaches the treatment sub as provided above with respect to Claim 2, and further discloses “…wherein the agent capsule container is configured to selectively direct LCM agent capsules into the wellbore fluid in a wellbore annulus of a wellbore” (Sweatman: Sections [0010]-[0022]).
With respect to Claim 4, Sweatman teaches the treatment sub as provided above with respect to Claim 2, and further discloses “…wherein the agent capsule container is configured to selectively direct LCM agent capsules into the wellbore fluid in the internal fluid conduit” (Sweatman: Sections [0010]-[0022]).
With respect to Claim 5, Sweatman teaches the treatment sub as provided above with respect to Claim 1, and further discloses “…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” (Sweatman: Sections [0010]-[0018], Figures; as a non-limiting example, one or more of component “134”).
With respect to Claim 6, Sweatman teaches the treatment sub as provided above with respect to Claim 1, and further teaches one or more embodiments comprising bubbles in the wellbore fluid to transport activators as desired (Sweatman: Section [0015]). As such, although the reference fails to explicitly disclose this feature in combination with a bubble generator configured as instantly claimed, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have modified the treatment sub to comprise a bubble generator configured as instantly claimed for generating the bubbles, with a reasonable expectation of success, in order to transport materials as desired and/or to yield predictable results in well treatment operations.
With respect to Claim 9, Sweatman teaches the treatment sub as provided above with respect to Claim 1, and further discloses “…wherein the sonic frequency source is further configured such that the sonic frequency generated is an acoustic frequency” (Sweatman: Sections [0011] & [0015]).
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 1-6 & 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-5 of copending Application No. 18/729,185 (‘185 hereinafter), in view of Sweatman et al. (US 2013/0126164). Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims of the instant application overlap in scope with those of ‘185 in view of the teachings of Sweatman and do not contain any additional limitations that are patentably distinguishable. The instant application discloses a treatment sub which overlaps in scope with ‘185 which discloses a treatment sub. Although ‘185 fails to explicitly recite features regarding a sonic frequency source as instantly claimed, Sweatman teaches a treatment sub comprising a sonic/acoustic frequency source as an alternative to or in combination with a radiation source. As such, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have modified ‘185 with the aforementioned teachings of Sweatman as instantly claimed with a reasonable expectation of success in order to yield predictable results in well treatment operations.
This is a provisional nonstatutory double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lewis et al. (US 2010/0050905) discloses systems for delivering additives, such as lost circulation materials, in a subterranean well, the systems comprising a communications device, an internal fluid conduit, a treatment sub interior and a sonic frequency source.
Ramasamy et al. (US 10,844,689) discloses systems for treating a lost circulation zone in a subterranean well, the systems comprising a communications device, an internal fluid conduit, a treatment sub interior and a sonic frequency source.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANURADHA AHUJA whose telephone number is (571)272-3067. The examiner can normally be reached Monday through 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, Doug Hutton can be reached at 571-272-4137. 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.
/ANURADHA AHUJA/Primary Examiner, Art Unit 3674
Prosecution Insights