DETAILED ACTION
This action is a first action on the merits. The claims filed on June 13, 2023 have been entered. Claims 1-20 are pending and addressed below.
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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
This action claims benefit of US Provisional Application No. 63/472,735 filed on June 13, 2023.
Information Disclosure Statement
The information disclosure statement filed September 4, 2024 has been considered by the Examiner.
Claim Objections
Claim 18 is objected to because of the following informalities: The recitation of “wherein shifting the inner sleeve comprise shifting the inner sleeve comprises” as recited in lines 1-2 should likely be --wherein shifting the inner sleeve comprises--. Appropriate correction is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2, 16-18 and 20 s/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Petrella et al., US 2021/0148179 (hereinafter Petrella).
Claim 1: Petrella discloses a downhole tool system for use within a casing string including a sleeve valve (sleeve valve 10) comprising a shiftable inner sleeve (sliding sleeve 16), the downhole tool system comprising:
a locator tool comprising at least one sleeve engagement member (sleeve engaging mechanism 32) that is hydraulically actuatable from a radially retracted configuration to a radially extended configuration (sleeve engaging element 32 includes circumferentially spaced, radially extending dogs 36 driven by pistons 46, par [0133]) for engaging the shiftable inner sleeve (sleeve engaging mechanism 32 is hydraulically actuated to engage the sleeve profile 18, par [0131], [0134])
an anchor tool (shifting assist mechanism 34) positioned downhole of the locator tool (32/36) (shown in Fig 1A-1C) and comprising at least one anchor member (packer section 34) that is hydraulically actuatable (par [0166]) from a radially retracted configuration to a radially extended configuration for gripping an inner wall of the casing string (packer is extended to contact casing in Fig 1A-1B and retracted in Fig 1C. par [0201], [0204]); and
a shifting tool (shifting mandrel 40) positioned between the locating tool (32) and the anchor tool (34) and movable between an axially extended configuration (shown in Fig 1A-1B) and an axially contracted configuration (Fig 1C), wherein the shifting tool (40) is hydraulically actuatable (operated by manipulation of fluid pressure, par [0125]) to move from the axially extended configuration to the axially contracted configuration (shifting tool 30 is hydraulically actuated, par [0125]).
Claim 2: Petrella discloses wherein the downhole tool system (Petrella, see Fig 1A-1C) is connectable to tubing (Petrella, conveyance tubing 6) uphole of the locator tool (32) and defines a primary inner fluid passageway (Petrella, fluid bore 42) therethrough (Petrella, par [0128]), and each of the locator tool (32), the anchor tool (Petrella, 54/58, Weiss, 124) and the shifting tool (Petrella, 30) are hydraulically actuatable by controlling fluid pressure or fluid flow within the primary inner fluid passageway (Petrella, operated by manipulation of fluid pressure, par [0125], sleeve engaging mechanism 32 is hydraulically actuated to engage the sleeve profile 18, par [0131], [0134], Weiss, injecting fluid down the wellbore string to increase a fluid pressure within a hydraulic anchor to engage and secure an anchor assembly of the hydraulic anchor to the casing, par [0039]).
Claim 16: Petrella discloses a method of shifting a shiftable inner sleeve (sleeve 16) of a sleeve valve (Petrella, sleeve valve 10) using the downhole tool system of claim 1, comprising:
running the downhole tool system downhole to a position below the sleeve valve (16) (Petrella, BHA 8 can be pulled uphole to locate the sleeve 16 with the shifting dogs 36, par [0148], this requires the shifting dogs 36 to be located below the sleeve 16, Fig 1A-1C, par [0148]);
locating the inner sleeve (16) with the locator tool (Petrella, sleeve-engaging mechanism 32, radially extending dogs 36); and
shifting the inner sleeve (16) (Petrella, Fig 1A-1C, par [0127], [0131]).
Claim 17: Petrella discloses locating the shiftable inner sleeve (sleeve 16) comprises:
hydraulically activating the locator tool (sleeve engaging mechanism 32) to move the at least one sleeve engagement member (shifting dogs 36) from the radially retracted configuration (Fig 8A) to the radially extended configuration (Fig 8B) (Petrella, tubing pressure PTP can be used to overcome the biasing force of the springs 47 and hydraulically drive the pistons 46 radially outwardly urging the dogs 36 radially outward, see Fig 8A-8B, par [0133]); and
while the locator tool (32) is activated (shifting dogs 36 extended, Fig 8B), moving the locator tool (36) within the casing until the at least one sleeve engagement member (36) engages the shiftable inner sleeve (16) (Petrella, see Fig 1A-1I, par [0130]-[0134]).
Claim 18: Petrella discloses wherein shifting the inner sleeve comprises shifting the inner sleeve comprises shifting the inner sleeve (Petrella, sleeve 16) from an uphole sleeve position (Petrella, as shown in Fig 1A) to a downhole sleeve position (Petrella, as shown in Fig 1B-1C).
Claim 20: Petrella discloses shifting the inner sleeve (16) comprises:
running the downhole tool system downhole to a position below the sleeve valve (16) (Petrella, as shown in Fig 1C, par [0174]);
hydraulically activating the locator tool (32) to move the at least one sleeve engagement member (26) from the radially retracted configuration (Fig 8A) to the radially extended configuration (Fig 8B) (Petrella, tubing pressure PTP can be used to overcome the biasing force of the springs 47 and hydraulically drive the pistons 46 radially outwardly urging the dogs 36 radially outward, see Fig 8A-8B, par [0133]);
while the locator tool (32) is activated:
pulling the locator tool (32/36) uphole until the at least one sleeve engagement member (32/36) engages the shiftable inner sleeve (16) (Petrella, sleeve valve 10 to be closed, Fig 1C-1D, par [0175]); and
further pulling the locator tool (32/36) uphole to move the shiftable inner sleeve (16) from a downhole sleeve position (see Fig 1C) to an uphole sleeve position (Petrella, after re-engaging the sliding sleeve 16, a further uphole pull on the shifting tool 30 shifts the sliding sleeve 16 uphole to the closed position, see Fig 1E-1F, par [0176]).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Petrella.
Claim 12: Petrella discloses further comprising a flow restriction device (bypass plug 78) that restricts flow through the primary passageway (fluid bore 42) and positioned downhole of the locator tool (32/36), the shifting tool (shifting tool 30 with shifting assist mechanism 34/44) (Fig 1A-1C, par [0145]).
Petrella discloses the flow restriction device is downhole of the anchor tool.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention to modify the location of the flow restriction device of Petrella to be located downhole of the anchor, since it has been held that rearranging parts of a prior art structure involves only routing skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Claim 13: Petrella, as modified by Weiss, discloses an isolation tool (isolation packer 52), the isolation tool (52) comprising a resettable packer (Petrella, treatment tool isolation packer 52 is set in Fig 1C, 12F, par [0216], and unset/released as shown in Fig 1D-1F, 12F-12G, par [0187], [0216]).
Petrella fails to disclose the isolation tool positioned downhole of the anchor tool.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention to modify the location of the isolation tool of Petrella to be located downhole of the anchor, since it has been held that rearranging parts of a prior art structure involves only routing skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Claim 14: Petrella discloses further comprising a cycling mechanism (cycling tool 56 such as a J-slot mechanism, Fig 5A-5B) positioned below the isolation tool (isolation packer 52) (as shown in Fig 5A-5B).
Claim 15: Petrella discloses further comprising a drag block (drag block 24) positioned downhole of the cycling mechanism (56) (as shown in Fig 5A-5B).
Claim(s) 1-2, 12-18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Petrella in view of Werries et al., PCT No. WO 2022/251946 A1 (hereinafter Werries).
Claim 1: Petrella discloses a downhole tool system for use within a casing string including a sleeve valve (sleeve valve 10) comprising a shiftable inner sleeve (sliding sleeve 16), the downhole tool system comprising:
a locator tool comprising at least one sleeve engagement member (sleeve engaging mechanism 32) that is hydraulically actuatable from a radially retracted configuration to a radially extended configuration (sleeve engaging element 32 includes circumferentially spaced, radially extending dogs 36 driven by pistons 46, par [0133]) for engaging the shiftable inner sleeve (sleeve engaging mechanism 32 is hydraulically actuated to engage the sleeve profile 18, par [0131], [0134])
an anchor tool (anchor 54 includes dogs 58) positioned downhole of the locator tool (32) (shown in Fig 1A-1C) and comprising at least one anchor member (dogs 58) that is actuatable from a radially retracted configuration to a radially extended configuration (dogs 58 located at ends of radially controllable and circumferentially spaced support arms 60 pivotably mounted on the isolation housing 65, par [0155], [0158]) for gripping an inner wall of the casing string (wellbore isolation mechanism 52 of the treatment tool 50 is expanded to isolate the annulus 2 when the tool 50 is actuated to the SET/FRAC mode see, see Fig 1C, par [0174], isolation packer 52 is driven downhole with the isolation mandrel 64 into the housing-supported anchor 54, shown as a cone 51 and slips 58, par [0156], [0216]); and
a shifting tool (shifting tool 30 with shifting assist mechanism 34/44) positioned between the locating tool (32) and the anchor tool (54/58) and movable between an axially extended configuration and an axially contracted configuration, wherein the shifting tool is hydraulically actuatable (operated by manipulation of fluid pressure, par [0125]) (hydraulically actuated shifting packer 44) to move from the axially extended configuration to the axially contracted configuration (par [0125]).
Petrella fails to disclose the at least one anchor member that is hydraulically actuatable.
Weiss discloses an anchor member (hydraulic anchor 100) that is hydraulically actuatable from a radially retracted configuration to a radially extended configuration (anchors 124 are operable to pivot to have the body portion 130 extend out of the annular 115 and through the housing 102 in order for the anchor interface 132 to engage the casing, Fig 7, par [0107]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the anchor tool of Petrella with the hydraulically actuatable anchor tool (54/ as disclosed by Weiss, as the need for an anchoring tool would have lead one skilled in the art to choose an appropriate anchoring tool, such as the hydraulically actuatable anchoring tool as disclosed by Weiss. Choosing the appropriate anchoring tool disclosed by Weiss would merely be a simple substitution of one known element for another would obtain the predictable result of anchoring the downhole tool in place through the engagement of the anchoring tool with the casing in order to form a mechanical brace for other components of the downhole tool (Weiss, Fig 14-16, par [115]), id. at 301,213 USPQ at 536. in re ICON Health & Fitness, Inc.. 496 F.3d 1374, 83 USPG2d 1746 (Fed. Cir. 2007).
Claim 2: Petrella, as modified by Weiss, discloses wherein downhole tool system (Petrella, see Fig 1A-1C) is connectable to tubing (Petrella, conveyance tubing 6) uphole of the locator tool (32) and defines a primary inner fluid passageway (Petrella, fluid bore 42) therethrough (Petrella, par [0128]), and each of the locator tool (32), the anchor tool (Petrella, 54/58, Weiss, 124) and the shifting tool (Petrella, 30) are hydraulically actuatable by controlling fluid pressure or fluid flow within the primary inner fluid passageway (Petrella, operated by manipulation of fluid pressure, par [0125], sleeve engaging mechanism 32 is hydraulically actuated to engage the sleeve profile 18, par [0131], [0134], Weiss, injecting fluid down the wellbore string to increase a fluid pressure within a hydraulic anchor to engage and secure an anchor assembly of the hydraulic anchor to the casing, par [0039]).
Claim 12: Petrella, as modified by Weiss, discloses further comprising a flow restriction device (bypass plug 78) that restricts flow through the primary passageway (fluid bore 42) and positioned downhole of the locator tool (32/36), the shifting tool (shifting tool 30 with shifting assist mechanism 34/44) (Fog 1A-1C, par [0145]).
Petrella, as modified by Weiss, discloses the flow restriction device is downhole of the anchor tool.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention to modify the location of the flow restriction device of Petrella to be located downhole of the anchor, since it has been held that rearranging parts of a prior art structure involves only routing skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Claim 13: Petrella, as modified by Weiss, discloses an isolation tool (isolation packer 52), the isolation tool (52) comprising a resettable packer (Petrella, treatment tool isolation packer 52 is set in Fig 1C, 12F, par [0216], and unset/released as shown in Fig 1D-1F, 12F-12G, par [0187], [0216]).
Petrella, as modified by Weiss, fails to disclose the isolation tool positioned downhole of the anchor tool.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention to modify the location of the isolation tool of Petrella to be located downhole of the anchor, since it has been held that rearranging parts of a prior art structure involves only routing skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Claim 14: Petrella, as modified by Weiss, discloses further comprising a cycling mechanism (cycling tool 56 such as a J-slot mechanism, Fig 5A-5B) positioned below the isolation tool (isolation packer 52) (as shown in Fig 5A-5B).
Claim 15: Petrella, as modified by Weiss, discloses further comprising a drag block (drag block 24) positioned downhole of the cycling mechanism (56) (as shown in Fig 5A-5B).
Claim 16: Petrella, as modified by Weiss, discloses a method of shifting a shiftable inner sleeve (sleeve 16) of a sleeve valve (Petrella, sleeve valve 10) using the downhole tool system of claim 1, comprising:
running the downhole tool system downhole to a position below the sleeve valve (16) (Petrella, BHA 8 can be pulled uphole to locate the sleeve 16 with the shifting dogs 36, par [0148], this requires the shifting dogs 36 to be located below the sleeve 16, Fig 1A-1C, par [0148]);
locating the inner sleeve (16) with the locator tool (Petrella, sleeve-engaging mechanism 32, radially extending dogs 36); and
shifting the inner sleeve (16) (Petrella, Fig 1A-1C, par [0127], [0131]).
Claim 17: Petrella, as modified by Weiss, discloses locating the shiftable inner sleeve (sleeve 16) comprises:
hydraulically activating the locator tool (sleeve engaging mechanism 32) to move the at least one sleeve engagement member (shifting dogs 36) from the radially retracted configuration (Fig 8A) to the radially extended configuration (Fig 8B) (Petrella, tubing pressure PTP can be used to overcome the biasing force of the springs 47 and hydraulically drive the pistons 46 radially outwardly urging the dogs 36 radially outward, see Fig 8A-8B, par [0133]); and
while the locator tool (32) is activated (shifting dogs 36 extended, Fig 8B), moving the locator tool (36) within the casing until the at least one sleeve engagement member (36) engages the shiftable inner sleeve (16) (Petrella, see Fig 1A-1I, par [0130]-[0134]).
Claim 18: Petrella, as modified by Weiss, discloses wherein shifting the inner sleeve comprises shifting the inner sleeve comprises shifting the inner sleeve (Petrella, sleeve 16) from an uphole sleeve position (Petrella, as shown in Fig 1A) to a downhole sleeve position (Petrella, as shown in Fig 1B-1C).
Claim 20: Petrella, as modified by Weiss, discloses shifting the inner sleeve (16) comprises:
running the downhole tool system downhole to a position below the sleeve valve (16) (Petrella, as shown in Fig 1C, par [0174]);
hydraulically activating the locator tool (32) to move the at least one sleeve engagement member (26) from the radially retracted configuration (Fig 8A) to the radially extended configuration (Fig 8B) (Petrella, tubing pressure PTP can be used to overcome the biasing force of the springs 47 and hydraulically drive the pistons 46 radially outwardly urging the dogs 36 radially outward, see Fig 8A-8B, par [0133]);
while the locator tool (32) is activated:
pulling the locator tool (32/36) uphole until the at least one sleeve engagement member (32/36) engages the shiftable inner sleeve (16) (Petrella, sleeve valve 10 to be closed, Fig 1C-1D, par [0175]); and
further pulling the locator tool (32/36) uphole to move the shiftable inner sleeve (16) from a downhole sleeve position (see Fig 1C) to an uphole sleeve position (Petrella, after re-engaging the sliding sleeve 16, a further uphole pull on the shifting tool 30 shifts the sliding sleeve 16 uphole to the closed position, see Fig 1E-1F, par [0176]).
Allowable Subject Matter
Claims 3-11 and 19 are 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.
The following is a statement of reasons for the indication of allowable subject matter: Claims 3-11 and 19 contain allowable subject matter over the closest prior art as cited above.
Regarding claim 3, Petrella, as modified by Weiss, further discloses wherein the locator tool (Petrella, sleeve engaging mechanism 32) is actuatable by the fluid pressure in the primary fluid passageway exceeding a first pressure threshold (Petrella, sleeve engaging mechanism 32 is hydraulically actuated to engage the sleeve profile 18, par [0131], [0134]), the anchor tool (Weiss, hydraulic anchor 100) is actuatable by the fluid pressure exceeding a second pressure threshold, and the shifting tool (shifting tool 30 with shifting assist mechanism 34/44) is actuatable by the fluid pressure exceeding a third pressure threshold (operated by manipulation of fluid pressure, par [0125]).
Petrella, as modified by Weis, fails to disclose the anchor tool is actuatable by the fluid pressure exceeding a second pressure threshold that is greater than the first fluid threshold, and the shifting tool is actuatable by the fluid pressure exceeding a third pressure threshold that is greater than the second pressure threshold.
Regarding claim 11, Petrella further discloses a selector valve (bypass valve 76 with bypass plug 78), wherein the selector valve (76/78) is extendible to an extended selector valve configuration (bypass plug 78 as shown in Fig 1B) by axial mechanical tension and contractable to a contracted selector valve configuration by axial mechanical compression (bypass plug is seated on bypass valve 76) in the extended selector valve configuration (as shown in Fig 1C), the selector valve directs fluid from the tubing into the primary fluid passage (via ports 72); and
in the contracted selector valve configuration (bypass plug is seated on bypass valve 76, see Fig 1C), the selector valve (76/78) directs fluid from tubing into an annulus between the downhole tool system and the casing string (selector valve 70 of the valve assembly 69 aligns ports 72 of the shifting mandrel 40 and ports 74 of the isolation mandrel 64 to enable fluid communication between the annulus 2 and the fluid bore 42 of the shifting mandrel 40, Fig 1C, par [0145]).
Petrella, as modified by Weiss, fails to disclose the selector valve is positioned uphole of the locator tool.
A modification of the location of the selector valve of Petrella to be located uphole of the locator tool It would not have been obvious to one of ordinary skill in the art as such a rearrangement would have made the isolation mechanism (52) and the anchor (54) of Petrella inoperable as they are reliant on the bypass valve and bypass plug in order to be actuated.
Regarding claim 19, Petrella discloses wherein shifting the inner sleeve (16) from an uphole sleeve position (shown in Fig 1A) to a downhole sleeve position (Fig 1B-1C) comprises: while the locator tool (32/36) is activated and the inner sleeve(16) is engaged by the locator tool (see Fig 1A-1B):
Petrella and Weiss fails to disclose while the locator tool activated and the inner sleeve is engaged by the locator tool: hydraulically activating the anchor tool to move the at least one anchor member from the radially retracted anchor member configuration to the radially extended anchor member configuration; and while the locator tool and the anchor tool are activated, hydraulically activating the shifting tool to move from the axially extended configuration to the axially contracted configuration, thereby moving the shiftable inner sleeve from an uphole sleeve position to a downhole sleeve position.
Conclusion
Claims 1-2, 12-18, and 20 are rejected. Claims 3-11 and 19 are objected to. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAROLINE N BUTCHER whose telephone number is (571)272-1623. The examiner can normally be reached Monday-Friday 10-6 pm EST.
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/CAROLINE N BUTCHER/Primary Examiner, Art Unit 3676