DETAILED CORRESPONDENCE
Claims 1-20 are pending. Claims 9-20 have been withdrawn.
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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 4/2/2025, 1/2/2025, and 8/22/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Election/Restrictions
The applicant has indicated that the election of Invention I (claims 1-8) is without traverse, thus negating any obligation for the examiner to formally respond to the applicant’s arguments. However, in the interest of compact prosecution, the examiner notes that the examiner disagrees with the applicant’s contention that the amendment to include a hydraulic boost assembly in all independent negates the bases for the restriction. The remaining differences in independent claims 9 and 14, clearly establish the materially different design, mode of operation, function and/or effect which the applicant contends was negated by the claims having the hydraulic boost assembly in common. As to the search burden, the described differences clearly require at least differing search strategies and search queries. The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
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 following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “hydraulic boost assembly” in claim 1 and “actuation system” in claim 7. The corresponding structure described in the specification as performing the claimed function, and equivalents thereof, of the hydraulic boost assembly, is identified by the numeral 440 and discussed as such in the specification. The corresponding structure described in the specification as performing the claimed function, and equivalents thereof, of the actuation system, is identified by the numeral 280 and discussed as such in the specification.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Drawings
The drawings are objected to because the casing should have hatch marking [Fig. 1], the small size makes it too difficult to understand the structure of the balance piston and the relationship to the structure shown as 280 which is to the right of the balance piston, such that an enlargement of the structure proximate the balance piston is required [Fig. 2], the line for reference numeral 340 should stop in a space and not on a structural element [Fig. 3], and the small size makes it too difficult to understand all structural aspects, such that enlargements of several sections are required [Fig. 7]. 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.
Specification
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.
The abstract of the disclosure is objected to because “Disclosed herein are embodiments of” and “In some embodiments” are implied. Correction is required. See MPEP § 608.01(b).
Claim Objections
Claim 1 is objected to because of the following informalities: “signal through from above the wellbore” should be “signal from above the wellbore”. 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 4-8 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 There is insufficient antecedent basis in the claim for “the step of utilizing a hydraulic boost assembly”. Claims 5-7 depend from claim 4.
Claim 5 There is insufficient antecedent basis in the claim for “electrical signals,” in that no plurality has been previously recited. Claims 6 and 7 depend from claim 5.
Claim 7: As discussed with respect to Section 112(f) above, this claim has invoked Section 112(f) as to “actuation system” but the specification is unbounded with regard to corresponding structure. At least the published application paragraph [0077] discussion of corresponding structure includes (1) a decoder and that “Any suitable decoder may be used”, and (2) read only memory “and the like”, and the published application paragraph [0065] discussion of corresponding structure for the actuation system includes a battery “or other suitable means”. All these are unbounded limitations, thus the corresponding structure for “actuation system” in this claim is not duly limited as required when Section 112(f) is invoked.
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 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.
Claims 1 and 4-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wright et al. (US20110265987) [Wright].
Claim 1 Wright discloses a method of actuating a downhole tool [Figs. 1-3B; abstract], comprising the steps of:
providing a conductor having a first end positioned at a surface location and a second end positioned at a downhole location within a wellbore [hard wiring from the surface to the signal detector/control system 84 for transmitting an electric signal; Figs. 2A,2B; para. 0026];
cycling the wellbore through varying pressures of well fluids [it is inherent that the wellbore will experience such cycling through varying pressures of well fluids, in that wellbore/annulus fluids have changing pressures];
moving a balance piston 66 with the various pressures of well fluids to build pressure within a hydraulic boost assembly 50 [the piston 66 is a balance piston in that it “floats” in response to changing pressures from the annulus/high pressure region 64 through port 60, leftward motion (in Fig. 2A) being resisted by the compressing of the compressible fluid 70 in fluid chamber 72; para. 0023-0025];
transmitting an electrical signal through from above the wellbore, through the conductor, and arriving at the downhole location [para. 0026,0027];
receiving the signal at the downhole location [para. 0026,0027]; and
utilizing the pressure within the hydraulic boost assembly to transition the downhole tool from a first configuration to a second configuration in response to the signal [the signal causing the destruction of the rupture disk/barrier 76, such that fluid 70 escapes from fluid chamber 72 through then created barrier opening 96, being assisted in such escape by the pressure/energy stored in the compressed fluid 70, the “floated” piston 66 then being free to move much farther leftward, to the extent that the path from high pressure region/annulus 64 port 60 to low pressure region 66 port 62 is established, resulting in the actuation of the involved tool; Figs. 2A,2B; para. 0033,0006,0020-0022; an analogous method also being disclosed with respect to the Figs. 3A,3B embodiment; para. 0034-0037].
Claim 4 Wright, as discussed with respect to claim 1, discloses that the step of utilizing a hydraulic boost assembly comprises a release of hydraulic pressure [e.g., when pressure in the fluid 70 is released, as at claim 1 herein].
Claim 5 Wright, as discussed with respect to claim 4, discloses monitoring electrical signals over time to establish a detected signal profile [e.g., the time required to decode the received electric signal’s profile, the receipt, decoding, and interpreting of all monitored/received electric signals being necessary to respond only to a signal having a profile that requires using the actuator 50; para. 0027].
Claim 6 Wright, as discussed with respect to claim 5, discloses comparing the detected signal profile to a target signal profile [i.e., those which are programmed in the control system 84 to cause the use of the actuator; para. 0027].
Claim 7 Wright, as discussed with respect to claim 6, discloses instructing an actuation system [at least the chemical dissolution of the barrier components] to operate to cause the downhole tool to transition in response to the comparing step [para. 0027,0028].
Claim 8 Wright, as discussed with respect to claim 1, discloses that the hydraulic boost assembly includes one or more chambers of compressible fluid [e.g., chamber 72 which has compressible fluid 70; para. 0024].
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 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.
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Wright.
Claim 2 Wright, as discussed with respect to claim 1, discloses that the downhole tool is a downhole valve [at least 18; Fig. 1; para. 0020], and further discloses changing the open and/or shut state of the valve [para. 0021 and inherent in operating a valve (para. 0014,0020)] as a result of controlling fluid communication between pressure regions of the well [para. 0021], thus, necessarily disclosing a change from closed to open configurations or open to closed configurations, and otherwise discloses all the limitations of this claim, but does not explicitly disclose that the first configuration is a closed valve and the second configuration is an open valve. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have operated the disclosed valve such that the first configuration is a closed valve and the second configuration is an open valve, since either these configurations or the reverse of these configurations has been necessarily disclosed, and as to either it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167.
Claim 3 Wright, as discussed with respect to claim 1, discloses that the downhole tool is a downhole valve [at least 18; Fig. 1; para. 0020], and further discloses changing the open and/or shut state of the valve [para. 0021 and inherent in operating a valve (para. 0014,0020)] as a result of controlling fluid communication between pressure regions of the well [para. 0021], thus, necessarily disclosing a change from closed to open configurations or open to closed configurations, and otherwise discloses all the limitations of this claim, but does not explicitly disclose that the first configuration is an open valve and the second configuration is a closed valve. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have operated the disclosed valve such that the first configuration is an open valve and the second configuration is a closed valve, since either these configurations or the reverse of these configurations has been necessarily disclosed, and as to either it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Fripp et al. (US20140262321) discloses a two-chamber hydraulic boost assembly with compressible fluid [Fig. 3A]. Scranton et al. (US20110083859) discloses a two-chamber hydraulic boost assembly with compressible fluid [Fig. 2]. Crowe (US4059157) teaches that it is common for annulus pressures to fluctuate in numerous situations [at least col. 1, lines 12-63].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE STERLING GRAY whose telephone number is (313)446-4820. The examiner can normally be reached 7-4 Eastern - M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tara Schimpf can be reached at 571-270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GEORGE S GRAY/ Primary Examiner, Art Unit 3676
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