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 .
DETAILED ACTION
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the valve, a main mandril designed as a single piece, featuring a 4 ½ if BOX connection with an integral groove, optimizing the connection strength and integrity and the rubber element must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 5, 8 and 20 are objected to because of the following informalities:
Claim 5 recites the limitation “no debris left in the hole”
This should be amended to –no debris is left in the hole--.
Claim 5 further recites the limitation “before running completion”.
This should be amended to –before running a completion--.
Claim 8 recites the limitation “small particles larger 1 MM”.
This should be amended to recite --small particles larger than 1mm--.
Claim 20 recites the limitation “4 ½ if BOX”.
This should be amended to recite --4 ½ in BOX--.
Appropriate corrections are 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.
Claims 1-25 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites that “a diverter cup” is “equipped with a rubber element”. This is unclear as it appears that the diverter cup may be the rubber element. “Equipped with” implies that the rubber element is an additional and undisclosed or shown element.
In standard practice, the term “comprising” is used to describe elements which are part of a previously-cited element.
Claim 6 recites the limitation “small particles”. Small is a relative term which renders the claim indefinite.
Furthermore, claim 6 does not appear to make grammatical sense, specifically the final clause “allowing small particles flow upward and pull out of the hole to close bypass trap debris inside.”
Claim 13 recites the limitation “unique flow capabilities” which is unclear and undefined, rendering the claim indefinite.
Claims 13, 16, 21 and 22 recite the limitation “efficiency” which is ambiguous and renders the claims indefinite.
Claim 17 recites the phrase “minimizing tool movement” which is unclear and renders the claim indefinite.
Claim 19 recites “a prompt response” which is ambiguous and renders the claim indefinite.
Claim 25 recites the term “easy” which is ambiguous, rendering the claim indefinite.
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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.
Claims 1-25 are rejected under 35 U.S.C. 103 as being unpatentable over Wilson et al (US 10,053,961) in view of Carmichael et al (US 6,250,387).
As concerns Claim 1, Wilson et al (US 10,053,961) discloses: a well mender, a multi-function tool configured for optimizing cleaning and recovery operations within a well bore, for performing run in hole (RIH) and pull out of the hole (POOH), wherein the well mender comprising:
a diverter cup (Wilson - 20) equipped with a rubber element configured to direct fluid flow and serve as a seal interface between a casing and said tool body;
a filter sleeve (Wilson - 30) with predetermined hole sizes for filtering out debris of specified sizes;
a valve housing (Wilson - 21) providing a controlled pathway for drilling fluid and debris;
a valve (Wilson – within 21) configured for targeted flow control and debris management;
one or more lower diverter channels (Wilson - 2, 19, 212) to facilitate controlled flow and direction of fluids and debris;
an internal lock key (Wilson - 15, 215) for securing and stabilizing said well mender within a well bore; and
a rupture disk (Wilson - 265) configured to rupture upon a predetermined differential pressure, providing an emergency pressure release mechanism.
Wilson fails to specify the use of a shut off ball configured to block fluid flow at desired stages of operation; or
a lower filter sleeve positioned below said filter sleeve for additional debris capture.
Carmichael et al (US 6,250,387) however teaches a shut off ball (Carmichael – 12) configured to block fluid flow at desired stages of operation; and
a lower filter sleeve (Carmichael – Col 2, Lines 53-61 discusses multiple filters in series) positioned below said filter sleeve for additional debris capture.
Therefore, it would have been obvious to modify Wilson as taught by Carmichael to include the ball and additional filter sleeve for the expected benefit of providing more effective debris entrapment and retrieval, to obtain the invention as specified in the claim.
As concerns claim 2, the combination discloses the well mender as claimed in claim 1, comprising means for facilitating on-site disassembly for junk recovery, inspection, and tool maintenance. (Wilson provides for the tool to be removed from the well for such maintenance.)
As concerns claim 3, the combination discloses the well mender as claimed in claim 1, wherein the multi-function tool being run into the well (referred to as "run in hole"), configured to recover (or collect) large debris as well as pieces of rubber using a lower filter sleeve or lower junk collector. (As the combination discloses the claimed parts, it is understood to provide the claimed abilities.)
As concerns claim 4, the combination discloses the well mender as claimed in claim 1, wherein the multi-function tool being a filter in a downhole environment, configured to capture and filter out unwanted debris from the well fluids as the tool is being removed from the wellbore. (Wilson illustrates such a fluid flow – see figure 1 and flow arrows 1 and 2)
As concerns claim 5, the combination discloses the well mender as claimed in claim 1, wherein the diverter cup (Wilson - 20) is configured to divert fluid while pull out of the hole (POOH) into the filter sleeve (Wilson - 30) to make sure no debris left in the hole before running completion. (The configuration has the claimed elements and is thus understood to meet this capability.)
As concerns claim 6, the combination discloses the well mender as claimed in claim 1, comprising a float ball valve (Carmichael – Figures 5 and 6) working in both direction while run in hole (RIH), allowing small particles flow upward and pull out of the hole to close bypass trap debris inside.
As concerns claim 7, the combination discloses the well mender as claimed in claim 1, comprising a lower junk basket configured to swallow large size of junk while run in hole (RIH) allow high flow rate. (Carmichael – illustrates having a downwardly facing cup 66 which is analogous to the claimed lower junk basket)
As concerns claim 8, the combination discloses the well mender as claimed in claim 1, comprising a long filter sleeve to collect small particles larger 1 MM to be trapped inside. (Carmichael – Column 2, Line 53-61, “The filtration means may be a wire screen sized to prevent particles of a predetermined size from passing therethrough…” since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.)
As concerns claim 9, the combination discloses the well mender as claimed in claim 1, comprising a Ball seat and flow path, wherein during the run-in hole (RIH), the Ball seat is configured to let the drilling fluid move upward through this flow path or pathway;
wherein, during pull out of hole (POOH), a ball of the Ball seat is adapted to position in the Ball seat and shut off or block the flow path thereby trapping the debris inside. (Carmichael – Figure 6; ball and seat mechanism 67)
As concerns claim 10, the combination discloses the well mender as claimed in claim 1, wherein the multi-function tool is adapted to be integrated as a part of both drilling and non-drilling assemblies, enhancing the versatility of the tool for varied well bore operations. (Carmichael – notably, the system shown in figures 5 and 6 is capable of being deployed on a pipe string, coiled tubing or wireline, making it configured to be integrated as a part of both drilling and non-drilling assemblies. Column 2, Lines 3-4)
As concerns claim 11, the combination discloses the well mender as claimed in claim 1, wherein the diverter cup’s (Wilson – 20 / Carmichael – 53, 66) rubber element further ensures a leak-proof seal, preventing fluid bypass around the tool during operational stages.
As concerns claim 12, the combination discloses the well mender as claimed in claim 1, wherein the filter sleeve (Wilson – 30 / Carmichael – 59, 63) may be configured to validate the well's suitability for production by trapping debris exceeding a predetermined size. (This configuration is anticipated by the filters shown in both references.)
As concerns claim 13, the combination discloses the well mender as claimed in claim 1, wherein the valve (Wilson – inside 21) provides unique flow control capabilities, enhancing the tool's debris management efficiency.
As concerns claim 14, the combination discloses the well mender as claimed in claim 1, wherein the shut off ball (Carmichael – Figures 5 and 6) is adapted to engage or disengage based on operational needs, providing flexibility in fluid management within the well bore. (Carmichael – the ball will engage or disengage based on flow and pressure differentials, either considered to be related to operational needs.)
As concerns claim 15, the combination discloses the well mender as claimed in claim 1, wherein the lower filter sleeve (Carmichael – Col 2, Lines 53-61) offers an additional layer of filtration, ensuring maximum debris capture during well bore cleaning operations.
As concerns claim 16, the combination discloses the well mender as claimed in claim 1, wherein the one or more lower diverter channels (Wilson - 2, 19, 212) aid in the systematic and controlled redirection of fluids and debris, ensuring optimal cleaning efficiency. (As the channels of Wilson meet the structural requirements, they are understood to also anticipate the claimed systematic and controlled redirection of fluids and debris.)
As concerns claim 17, the combination discloses the well mender as claimed in claim 1, wherein the lower lock key (Wilson - 15, 215) provides a secure fit of the tool within the well bore, minimizing tool movement during operations. (As centralizers, these elements provide the claimed secure fit.)
As concerns claim 18, the combination discloses the well mender as claimed in claim 1, wherein the rupture disk (Wilson – 265 / Carmichael - 74) serves as a safety feature, preventing potential damages due to unexpected pressure build-ups by providing a controlled release mechanism.
As concerns claim 19, the combination discloses the well mender as claimed in claim 1, wherein the rupture disk (Wilson – 265 / Carmichael – 74) is specifically calibrated to rupture upon experiencing a differential pressure.
The combination fails to specify the claimed pressure range.
However, the examiner takes official notice that it is old and well known in the art to provide particular pressure ranges for optimum operability of a system.
The art does disclose, however, wherein the systems are responsive to a pressure differential (Wilson – Column 7, Lines 16-49).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have include a pressure range of 90-110psi for the expected benefit of maximizing the efficiency of the debris cleanout systems, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
Thus, one of ordinary skill in the art would have recognized that using a particular pressure differential that would most effectively operate the debris cleanout system, including a differential of 90-110psi would have provided predictable results and a reasonable expectation of success.
Therefore, it would have been obvious to modify the combination as taught by Official Notice to obtain the invention as specified in the claim because such a configuration is not deemed to be new, novel or non-obvious.
As concerns claim 20, the combination discloses the well mender as claimed in claim 1, wherein the valve housing (Wilson - 21), however fails to specify wherein the valve housing includes a main mandril designed as a single piece, featuring a 4 ½ in BOX connection with an integral groove, optimizing the connection strength and integrity.
The examiner takes official notice that it is old and well known in the art to use commonly-found valve configurations within the art, in commonly available connections.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have included the claimed 4 ½ in BOX for the expected benefit of effectively connecting valve elements into the system using known, commercially produced connection mechanisms.
Thus, one of ordinary skill in the art would have recognized that using a 4 ½ in BOX would have provided predictable results and a reasonable expectation of success.
Therefore, it would have been obvious to modify the combination as taught by Official Notice to obtain the invention as specified in the claim.
As concerns claim 21, the combination discloses the well mender as claimed in claim 1, wherein the filter sleeve (Wilson - 30) comprises hole sizes of 3 MM, ensuring debris exceeding this size is efficiently trapped, enhancing the quality of the filtered output. (Carmichael – Column 2, Line 53-61, “The filtration means may be a wire screen sized to prevent particles of a predetermined size from passing therethrough…” since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.)
As concerns claim 22, the combination discloses the well mender as claimed in claim 1, wherein the diverter cup’s (Wilson – 20 / Carmichael – 53, 66) rubber element is tailored to fit securely within the casing internal diameter (ID), further enhancing its sealing efficiency and fluid diversion capabilities while POOH. (See Wilson – Figure 2 and Carmichael – Figures 5 and 6)
As concerns claim 23, the combination discloses the well mender as claimed in claim 1, wherein the shut off ball (Carmichael – Figures 5 and 6), when engaged, offers a complete blockage of fluid flow, allowing for stages of operation where fluid movement is undesired.
As concerns claim 24, the combination discloses the well mender as claimed in claim 1, wherein the multi-function tool's design incorporates features facilitating easy on-site disassembly, enabling rapid junk recovery and tool maintenance without the need for specialized equipment. (Wilson and Carmichael both provide features to allow the tool to be easily removed, by connection to a running string.)
As concerns claim 25, the combination discloses the well mender as claimed in claim 1, wherein the casing refers to the tubular steel structure that is placed in a drilled well to stabilize the wellbore and prevent the surrounding rock formation from collapsing.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON L LEMBO whose telephone number is (571)270-3065. The examiner can normally be reached Monday-Friday, 7am-4pm.
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 Coy can be reached on (571) 272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AARON L LEMBO/
Primary Examiner
Art Unit 3679