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 1-16 have been examined in this application. This communication is a Final Rejection in response to the Amendment filed on June 9, 2026.
Claim Rejections - 35 USC § 112
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 15 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 pre-AIA the applicant regards as the invention.
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” (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 part of the first well tubular metal structure. Appropriate correction and/or clarification is required. The claim has been examined as best understood.
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.
Claims 1-14 & 16 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, the well having a top (Vick: Sections [0001], [0002] & [0048]), comprising: a first well tubular structure arranged in a borehole (Vick: Sections [0012]-[0025]; “110” in Figures, as a non-limiting example), and a barrier arranged inside or around the first well tubular structure (Vick: “112”, as a non-limiting example).
Vick further teaches one or more embodiments with the barrier (Vick: “700”, “800” in Figures, as a non-limiting example) isolating a first volume from a second volume, the barrier having a top face facing the first volume and a bottom face facing the second volume (Vick: “712a”, “712b”, “810”, “812” in Figures, as a non-limiting example), wherein the barrier houses a bypass assembly comprising a bypass channel (Vick: path within “714”, “804” in Figures, as a non-limiting example) and an obstruction part (Vick: “706”, “806” 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 upon removal of the obstruction part (Vick: Sections [0012]-[0019], [0024]-[0032] & [0042]-[0047]; Figures 1-8). 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 the additional features of the barrier, “a temperature-activated” bypass assembly and the obstruction part removed “by heating”, 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 barrier and 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 teaches “…wherein the obstruction part is arranged in the bypass channel or on top of the bypass channel” (Vick: Sections [0012]-[0019], [0024]-[0032] & [0042]-[0047]; Figures 1-8).
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 teaches “…wherein the obstruction part is arranged at least partly within the bypass channel or is formed as a part of the bypass channel” (Vick: Sections [0012]-[0019], [0024]-[0032] & [0042]-[0047]; Figures 1-8).
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 teaches 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] & [0042]-[0047]; Figures 1-8).
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 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 by heating”.
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, the second barrier, or both 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, with a reasonable expectation of success, in order to meet regulatory requirements and/or enhance the sealing in abandonment operations. (Mueller: Sections [0006], [0016], [0049]& [0050]).
With respect to Claim 16, 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 positioned at a top side of the bypass channel to obstruct fluid from passing thru the top face of the barrier, and the bypass channel extends uninterrupted from a bottom of the obstruction part to the bottom face of the barrier” (Vick: Sections [0046] & [0047]; Figure 8).
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 an 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]).
Response to Arguments
Applicant’s amendments regarding the objections to the specification and claims are persuasive and, therefore, these objections have been withdrawn.
Applicant’s amendments regarding the 35 USC § 112 rejections are persuasive in-part. As the rejections of Claim 15 are addressed only in-part, these rejections are withdrawn in-part and maintained in-part as set forth above.
Applicant’s arguments with respect to new Claim 16 and the rejection(s) of Claims 1-15 under 35 USC 103 as being unpatentable over Vick, alone or in combination with Mueller et al. and/or Hallundbӕk, have been fully considered but they are not persuasive. Applicant asserts that (1) Vick does not disclose a distinct "temperature-activated bypass assembly" as a component within a larger barrier structure; the plug itself is the functional element that blocks and then, upon dissolution, creates a flow path; and the plug is the obstruction; and the references do not provide a teaching or motivation to combine their elements to create a structural barrier that contains a dedicated "temperature-activated bypass assembly" with a separate "bypass channel" and a removable "obstruction part" within that channel; and (2) Vick's obstruction part is positioned mid way along the channel, and thus does not teach the subject matter of claim 16.
The Examiner respectfully disagrees.
As set forth above, Vick further teaches one or more embodiments with the barrier (Vick: “700”, “800” in Figures, as a non-limiting example) isolating a first volume from a second volume, the barrier having a top face facing the first volume and a bottom face facing the second volume (Vick: “712a”, “712b”, “810”, “812” in Figures, as a non-limiting example), wherein the barrier houses a bypass assembly comprising a bypass channel (Vick: path within “714”, “804” in Figures, as a non-limiting example) and an obstruction part (Vick: “706”, “806” 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 upon removal of the obstruction part (Vick: Sections [0012]-[0019], [0024]-[0032] & [0042]-[0047]; Figures 1-8). 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]); and Vick further teaches the subject matter of Claim 16 (Vick: Sections [0046] & [0047]; Figure 8).
As such, the claims remain rejected under 35 USC 103 in view of Vick, alone or in combination with Mueller et al. and/or Hallundbӕk, as set forth above, with updates to address amendments.
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.
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/ANURADHA AHUJA/Primary Examiner, Art Unit 3674
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