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 1-15 have been examined in this application. This communication is a Non-Final Rejection in response to the Application filed on August 7, 2024.
Specification
The abstract of the disclosure is objected to because it recites one or more phrases that can be implied. Correction is required. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Objections
Claims 1-15 are objected to because of the following informalities:
Claim 1 recites “A downhole system for providing plug and abandonment of a well having a top”. It appears the intent is to recite a well having a top (and not the system having a top). As such, to improve clarity, replacement of this limitation with language such as -A downhole system for providing plug and abandonment of a well, the well having a top- is suggested.
Claim 1 further recites the conditional phrase “when”. To improve clarity, replacement of “when the obstruction part is removed by being heated” with language such as -upon removal of the obstruction part by heating- is suggested.
Appropriate correction is required. Claims 2-15 are also objected for being dependent on Claim 1.
Claims 2-12, 14 & 15 each recite “A downhole system according to claim” and Claim 13 recites “A downhole completion system according to claim”. To improve clarity, replacement of these limitations with -The downhole system according to claim- is required. Claims 7, 9, 10 & 12-15 are also objected to for being dependent on Claims 6, 8 & 12, respectively (also see objection to Claim 12 below regarding dependency).
Claim 10 recites “wherein the second barrier comprises a temperature-activated bypass assembly comprising a bypass channel and an obstruction part, the bypass channel extending from the top face to the bottom face for providing fluid communication in the bypass channel when the obstruction part is removed by being heated”. As parent Claim 1 previously sets forth several features such as the “bypass channel”, “obstruction part”, “top face”, “bottom face” etc., and “when” is a conditional phrase, to improve clarity, replacement of this limitation with language such as -wherein the second barrier comprises a second temperature-activated bypass assembly comprising a second bypass channel and a second obstruction part, the second bypass channel extending from a second top face to a second bottom face for providing fluid communication in the second bypass channel upon removal of the second obstruction part heating . Appropriate correction is required.
Claim 12 appears to further limit features related to the barrier inside the first well tubular metal structure. It is further noted that the instant specification and at least Figures 1a, 1b, 2a & 2b describe thermite inside the first well tubular metal structure. As Claim 1 recites “a barrier arranged inside or around the first well tubular metal structure”, the dependency of Claim 12 on Claim 1 is unclear in embodiments where the barrier is arranged “around the first well tubular metal structure”, and dependent Claim 14 further refers to the second barrier presented in Claim 8. Appropriate correction is required. For purposes of examination, the Office considers Claims 12 & 14 as follows:
Claim 12:
[[A]] The downhole system according to claim [[1]] 8, further comprising a thermite composition arranged inside the first well tubular metal structure above the second barrier.
Claim 14:
[[A]] The downhole system according to claim 12, further comprising cement arranged on top of the first barrier, , or both after igniting the thermite composition and melting part of the first well tubular metal structure.
Claim 15 recites “the inner face of the borehole”. To improve clarity, replacement of this limitation with -an inner face of the borehole- 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 4 & 15 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 4 recites “wherein the obstruction part is an internal obstruction part or a part of the bypass channel”. It is unclear what the obstruction part is “internal” with respect to. Further, it appears that the bypass channel provides fluid communication while the obstruction part obstructs fluid communication. As such, it is unclear how the obstruction part is “a part of the bypass channel”. Is the intent to claim the obstruction part within the bypass channel? If so, it is further unclear how this is distinct from an “internal” obstruction part. Appropriate correction and/or clarification is required. The claim has been examined as best understood.
Claim 15 recites “wherein the annular barrier comprises a tubular metal part for mounting as part of the first well tubular metal structure, the tubular metal part having an outer face, comprising” (emphasis added). The annular barrier and the first well tubular metal structure appear to be distinct components. As such, it is unclear how the tubular metal part both comprises the annular barrier and is a part of the first well tubular metal structure. It is also unclear what component the transitional phrase “comprising” applies to – is it the barrier, the tubular metal part or other? Appropriate correction and/or clarification is required. The claim has 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 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Vick, Jr. (US 2021/0222507), in view of Mueller et al. (US 2019/0128092).
With respect to Claim 1, Vick discloses a downhole system for providing plug and abandonment of a well having a top (Vick: Sections [0001], [0002] & [0048]), comprising: a first well tubular structure arranged in a borehole (Vick: “110” in Figures, as a non-limiting example), and a barrier arranged inside or around the first well tubular structure (Vick: “112” in Figures, as a non-limiting example), isolating a first volume from a second volume (Vick: “212a” & “212b” in Figures, as a non-limiting example), the barrier having a top face facing the first volume and a bottom face facing the second volume, wherein the barrier has a bypass assembly comprising a bypass channel (Vick: path between “212a” and “212b” in Figures, as a non-limiting example) and an obstruction part (Vick: “206” in Figures, as a non-limiting example), the obstruction part being arranged to obstruct fluid communication through the bypass channel, the bypass channel extending from the top face to the bottom face for providing fluid communication between the first volume and the second volume when the obstruction part is removed (Vick: Sections [0012]-[0019] & [0024]-[0032]; Figures 1-4).
The reference further teaches one or more embodiments wherein the barrier/plug is removed/dissolved in response to temperature, and further teaches melting as a mechanism of dissolution to create desired flow paths (Vick: Sections [0012]-[0014]). As such, although the reference fails to explicitly disclose the above system in combination with “a temperature-activated” bypass assembly and the obstruction part removed “by being heated”, in a single embodiment, 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 above system to employ a temperature-activated bypass channel comprising an obstruction part removable by heating as instantly claimed, with a reasonable expectation of success, in order to create desired flow paths in wellbore operations and/or to yield predictable results in the flow of downhole fluids.
The reference, however, fails to explicitly disclose the well tubular structure as a “metal” structure as instantly claimed.
Mueller teaches methods and systems in subterranean operations, such as abandonment operations, therein, wherein tubulars comprising metal are employed with meltable plugs, allowing for cost effective plugging operations with at least a portion of the tubing left in place (Mueller: Sections [0002]-[0012] & [0025]). 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 Vick with the aforementioned teachings of Mueller to employ a well tubular “metal” structure as instantly claimed, with a reasonable expectation of success, to allow for cost effective plugging operations. (Mueller: Sections [0002]-[0012] & [0025]).
With respect to Claim 2, the combined references of Vick and Mueller teach the system as provided above with respect to Claim 1. Vick further discloses “…wherein the obstruction part is arranged in the bypass channel or on top of the bypass channel” (Vick: Sections [0012]-[0019] & [0024]-[0032]; Figures 1-4).
With respect to Claim 3, the combined references of Vick and Mueller teach the system as provided above with respect to Claim 1. Vick further teaches “…wherein the obstruction part is a meltable, moldable or fusible obstruction part” (Vick: Sections [0012]-[0014]).
With respect to Claim 4, the combined references of Vick and Mueller teach the system as provided above with respect to Claim 1. Vick further discloses “…wherein the obstruction part is an internal obstruction part or a part of the bypass channel” (Vick: Sections [0012]-[0019] & [0024]-[0032]; Figures 1-4).
With respect to Claim 5, the combined references of Vick and Mueller teach the system as provided above with respect to Claim 1. Vick further discloses wherein the barrier is a plug arranged inside the first well tubular structure so that the first and second volumes are arranged inside the first well tubular structure (Vick: Sections [0012]-[0019] & [0024]-[0032]; Figures 1-4).
With respect to Claim 6, the combined references of Vick and Mueller teach the system as provided above with respect to Claim 1. Vick further teaches one or more embodiments, to create desired flow paths, wherein the barrier is an annular barrier arranged around the first well tubular structure between the first well tubular structure and a second well tubular structure or the borehole so that the first and second volumes are annular volumes (Vick: Sections [0012], [0013], [0017], [0018] & [0025]). As such, although the reference fails to explicitly disclose the above system in combination with this feature, in a single embodiment, 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 above system to employ an annular barrier, such as instantly claimed, with a reasonable expectation of success, in order to create desired flow paths in wellbore operations and/or to yield predictable results in the flow of downhole fluids.
With respect to Claim 7, the combined references of Vick and Mueller teach the system as provided above with respect to Claim 6. Vick further teaches “…wherein the annular barrier is a production packer” (Vick: Sections [0012]-[0019] & [0024]-[0032]; Figures 1-4).
With respect to Claim 8, the combined references of Vick and Mueller teach the system as provided above with respect to Claim 1. Vick further teaches one or more embodiments comprising a plurality of barriers/plugs and one or more embodiments where the barrier/plug is placed in positions such as the inside of the tubing string, around the exterior of the tubing string etc., to create desired flow paths (Vick: Sections [0012], [0013], [0017], [0018] & [0025]). As such, although the reference fails to explicitly disclose the above system in combination with this feature, in a single embodiment, 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 above system to employ a first and second barrier arranged as instantly claimed, with a reasonable expectation of success, in order to create desired flow paths in wellbore operations and/or to yield predictable results in the flow of downhole fluids.
With respect to Claim 9, the combined references of Vick and Mueller teach the system as provided above with respect to Claim 8, where it would appear that a second barrier/plug positioned based on the teachings of Vick as set forth above would isolate a third volume above the plug from a fourth volume below the plug inside the first well tubular structure as instantly claimed. To the extent there is any difference between this feature as taught by Vick and this feature as instantly claimed, the difference is considered minor and obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention.
With respect to Claim 10, the combined references of Vick and Mueller teach the system as provided above with respect to Claim 8. For reasons as set forth above with respect to Claims 1 & 8, Vick is considered to further teach “wherein the second barrier comprises a temperature-activated bypass assembly comprising a bypass channel and an obstruction part, the bypass channel extending from the top face to the bottom face for providing fluid communication in the bypass channel when the obstruction part is removed by being heated”.
With respect to Claim 11, the combined references of Vick and Mueller teach the system as provided above with respect to Claim 1. Vick further teaches a barrier comprising materials including metals, alloys, and those that melt (Vick: Section [0014]). The reference, however, fails to explicitly disclose “wherein the barrier comprises bismuth material” as instantly claimed.
Mueller further teaches wherein barrier/plugging materials are positioned in downhole locations, such as within tubing, and melted; and include low-melting point materials such as bismuth for beneficial properties such as expansion to provide a tight seal and low toxicity (Mueller: Sections [0012] & [0013]). 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 Vick with the aforementioned additional teachings of Mueller to employ a barrier comprising materials such as bismuth, with a reasonable expectation of success, in order to employ low-melting point and/or low toxicity materials, and/or to provide a tight seal, and/or yield predictable results in abandonment operations. (Mueller: Sections [0012] & [0013]).
With respect to Claim 12, the combined references of Vick and Mueller teach the system as provided above with respect to Claim 8. Mueller further teaches heaters above the barrier, where heaters include thermite, to provide heat to melt the barrier/sealant materials in cost efficient operations (Mueller: Sections [0012], [0013], [0042] & [0043]). 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 Vick with the aforementioned additional teachings of Mueller to arrange thermite as instantly claimed, with a reasonable expectation of success, in order to melt the barrier/sealant materials in cost efficient operations. (Mueller: Sections [0012], [0013], [0042] & [0043]).
With respect to Claim 13, the combined references of Vick and Mueller teach the system as provided above with respect to Claim 12. Mueller further teaches “igniting the thermite composition” and teaches one or more embodiments employing an ignitor (Mueller: Sections [0042], [0043] & [0056]-[0059]). As such, although the combined references fail to explicitly disclose an ignitor for igniting the thermite composition 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 combined references of Vick and Mueller to employ an ignitor for igniting the thermite composition, as instantly claimed, with a reasonable expectation of success, in order to yield predictable results in melting/heating in subterranean applications. (Mueller: Sections [0042], [0043] & [0056]-[0059]).
With respect to Claim 14, the combined references of Vick and Mueller teach the system as provided above with respect to Claim 12. Mueller further teaches wherein abandonment plugs are capped with cement to meet regulatory requirements, and also teaches employing melting tools to remove tubing to provide a continuous seal (Mueller: Sections [0006], [0016], [0049]& [0050]). As such, although Vick fails to explicitly disclose “further comprising cement arranged on top of the first barrier and/or the second barrier after igniting the thermite composition and melting part of the first well tubular metal structure” 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 Vick with the aforementioned additional teachings of Muller to arrange cement and melt a part of the first well tubular metal structure as instantly claimed in order to meet regulatory requirements and/or enhance the sealing in abandonment operations. (Mueller: Sections [0006], [0016], [0049]& [0050]).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Vick, Jr. (US 2021/0222507), in view of Mueller et al. (US 2019/0128092), further in view of Hallundbӕk (US 2014/0196887), ‘887 hereinafter.
With respect to Claim 15, the combined references of Vick and Mueller teach the system as provided above with respect to Claim 6. Vick further teaches one or more embodiments employing tubular parts, including metal parts comprising an outer face, to hold the barrier/plug in position with the tubular (Vick: Sections [0014]-[0036], [0042] & [0043]; Figures). The reference, however, fails to explicitly disclose the barrier or the tubular metal part comprising “an expandable metal sleeve surrounding the tubular metal part and having an outer face facing towards the inner face of the borehole or the second well tubular metal structure and an inner face facing the outer face of the tubular metal part, and each end of the expandable metal sleeve being connected with the tubular metal part, an annular space between the expandable metal sleeve and the tubular metal part, and an expansion opening in the tubular metal part through which fluid may enter the annular space in order to expand the expandable metal sleeve” as instantly claimed.
‘887 teaches methods and systems comprising annular barriers in wellbore applications therein, wherein annular barriers with an expandable sleeve are taught to be employed in the art, and components as instantly claimed are employed to improve the annular barrier and/or increase resistance to rupture and/or collapse in wellbore applications (‘887: Sections [0001]-[0014]). 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 the combined references of Vick and Mueller with the aforementioned teachings of ‘887 to employ an annular barrier comprising a tubular metal part comprising components as instantly claimed, with a reasonable expectation of success, in order to improve the annular barrier and/or increase resistance to rupture and/or collapse in wellbore applications. (‘887: Sections [0001]-[0014]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Duphorne (US 2014/0124215) discloses downhole systems comprising parts removal by methods such as heating, and thereby employing such systems in distinct downhole operations.
Fripp et al. (US 2023/0399917) discloses downhole systems comprising components removal by methods such as heating in plug and abandonment applications.
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/ANURADHA AHUJA/Primary Examiner, Art Unit 3674