DETAILED ACTION
Claims 1, 8, 10-13, 16-18, 22-32 are pending.
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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) 23-32 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Examiner notes that the rejection corresponding to 35 U.S.C. § 112(a), written description, herein appears from Applicant mixing two different embodiments, i.e., embodiment of figure 1D (species IV) and embodiment of figures 1I-1J (species VII).
Election/Restrictions
Applicant's election with traverse of species VII (claims 23, 25, 26, and 29-32 in the reply filed on 11/13/2025 is acknowledged. The traversal is on the ground(s) that independent claim 23 is generic to species IV and VII, where they both “[...] include thermal initiators including a thermal source configured to direct thermal energy to implode the implosion chamber. See paras. [0047], [0050], and [0059]-[0064].” Though, Examiner agrees with this statement being true for independent claim 23, Examiner is not persuaded about the statement corresponding to species VIII, IX, X, XI, and XII not being distinct from species IV and VII “[...] as they provide detail to other features not more explicitly described and/or shown in the figures designated as Species IV and VII.” Though the various species in question all relate to having an activation mechanism to cause implosion of an element, they are not obvious variants, but rather distinct as they clearly do not overlap in scope and require separate searches. Examiner respectfully notes that Applicant’s representative failed to provide any specific detail as how the species are not distinct. For prosecution purposes, claims 1, 8, 10-13, 16-18, and 22 are being treated as withdrawn.
The requirement is still deemed proper and is therefore made FINAL.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "104" and "202" have both been used to designate the same element (see figure 2B). 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. 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.
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 “thermal initiator” and “thermal source” must be shown in the species VII embodiment 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.
Specification
The disclosure is objected to because of the following informalities:
The claimed “thermal initiator” and “thermal source” is suggested to be incorporated in the instant specification corresponding to the species VII embodiment, without adding any new matter.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 25-32 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 25 recites: “[...] wherein the thermal source includes a heating element and the heating element is disposed within an outer wall of the implosion chamber.” Applicant indicates that claims 23, 25-26, and 29-32 read on elected to species VII. However, paragraphs [0052-0057] of the instant specification (which support species VII), fail to show support for the limitation, as it appears that the rather the “thermal source” of species VII is outside of the implosion chamber wall, as further shown in figures 1I-1J. Due to claim 25 being rejected under 35 U.S.C. § 112(a), the corresponding dependent claims are also rejected.
Claim 27 recites: “[...] wherein the implosion chamber, the stretchable sleeve, and the non-explosive initiator define an implosion device, and the well completion tool further comprises a sampling device coupled to the implosion device and configured to passively sample surrounding fluids when the implosion device is activated.” There is a lack of support for species VII to act as a sampling device and “passively sample surrounding fluids when the implosion device is activated”. Rather, it appears as if the sampling support is directed to different embodiments, i.e., figures 2-4 and paragraphs [0059-0072]. The claim lacks written description support as the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved. Due to claim 27 being rejected under 35 U.S.C. § 112(a), the corresponding dependent claims are also rejected.
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, 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.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Coates et al. (US Publication Number 2008/0236935 A1; herein “Coates”) in view of Saugier (US Publication Number 2003/0106688 A1; herein “Saugier”).
In regard to claim 23, Coates discloses: A well-completion tool (402 — abstract, figure 4, paragraph [0026], and claim 1), comprising:
an implosion chamber (i.e., chamber of 402);
a sleeve (i.e., wellbore casing) surrounding the implosion chamber (Examiner notes that at least paragraphs [0005, 0016-0017] teaches that the implosion devices are to be dropped in wellbore(s) comprising casing which radial surround it); and
a non-explosive initiator (400) configured to implode the implosion chamber, wherein the non-explosive initiator comprises a thermal initiator including a thermal source configured to direct thermal energy to implode the implosion chamber (figure 4 and paragraph [0026]).
However, Coates is silent in regard to: a stretchable sleeve surrounding the implosion chamber.
Nonetheless, Saugier teaches wellbore(s) comprising casing (abstract, paragraphs [0019-0026, 0031, 0033], and figures 1-4), similar to that of Coates, “[...] to isolate the drilling and production fluids from the formation surrounding the casing, thereby preventing loss of these fluids into the formation, cross-contamination of the drilling fluids and formation fluids, and degradation of the surrounding formation” (paragraph [0006] of Saugier). Saugier teaches that the casing can be stretched onto the wellbore wall during installation, via drilling assembly, right after drilling the wellbore with the drilling assembly (paragraphs [0019-0026, 0031] and figures 1-4).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the installation of the wellbore casing, as taught by Coates, with that of Saugier, to allow for “[...] drilling and casing operations can be completed on a single trip into the wellbore, thereby saving the operating company time and cost” (paragraph [0033] of Saugier).
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Coates et al. (US Publication Number 2008/0236935 A1; herein “Coates”) in view of Saugier (US Publication Number 2003/0106688 A1; herein “Saugier”) in further view of Johnson (US Patent Number 5,836,393; herein “Johnson”).
In regard to claim 24, Coates in view of Saugier discloses the preceding claim.
However, Coates in view of Saugier is/are in silent in regard to: wherein the thermal source includes a cooling source configured to cool the implosion chamber to implode the implosion chamber.
Nonetheless, Johnson teaches that it is known for an initiator to cause implosion of a device in the wellbore (column 1, lines 17-23 — Johnson), similar to that of Coates. Johnson teaches a direct correlation between cooling and imploding a device in a wellbore (column 1, lines 17-23).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to simply substitute the temperature source, as taught by Coates, to be a cooling temperature source, as taught by Johnson, to yield the predictable result of creating an implosion in the wellbore (column 1, lines 17-23 — Johnson). See MPEP 2143, section I, subsection B.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NEEL PATEL whose telephone number is (469)295-9168. The examiner can normally be reached M-F, 9:00AM-5:00PM CST.
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/NEEL GIRISH PATEL/Primary Patent Examiner, Art Unit 3676