DETAILED ACTION
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 .
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group 1, claim(s) 1-8 and 9-10, drawn to a method of removing a metal alloy plug.
Group 2, claim(s) 16-17 and 19-20, drawn to a downhole tool.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Group 1-2 lack unity of invention because the groups do not share the same or corresponding technical feature. Group 1 is directed to the method steps associated with removal of a plug or annual seal. Group 2 is directed to a downhole tool with a dump bailer and heater, which need not be used for removal of plugs or seals.
During a telephone conversation with David Mundt on 12/11/25 a provisional election was made without traverse to prosecute the invention of Group 1, claims 1-8 and 10-11. Affirmation of this election must be made by applicant in replying to this Office action. Claims withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Drawings
The drawings are objected to because:
Figure 1 has poor line quality such that would result in unsatisfactory reproduction characteristics. See 37 CFR 1.84(L). The numbering is also gray and faint.
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 1 and 8 are objected to because of the following informalities:
Claim 1 recites “an annular space within a target zone of a subterranean well bore”. The limitation “a target zone of a subterranean well bore” has already been introduced. The appropriate antecedent terms should be used.
Claim 8 recites “the metal alloy.” This would be better recited as “the metal alloy plug and/or the metal alloy annular seal” or a similar grammatical variation.
Appropriate correction is required.
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.
Claim(s) 1-4, 8, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marya (US 20080149345 A1)
Regarding claim 1, Marya teaches a method of removing a metal alloy plug (Para 0037, “magnesium (Mg dissolves at low pH), aluminum (Al dissolves at low pH), and alloys and composites of those metals”, see also Para 0010, 0050; Fig 6, plug 62) from within a well tubing in a target zone of a subterranean well bore (Fig 6, plug 62 is within wellbore tubular; Para 0018, this is “downhole” i.e. in the target zone) and/or a metal alloy annular seal from an annular space within a target zone of a subterranean well bore (see the first alternative which is taught), said method comprising introducing an acid compound into the target zone to break down the metal alloy of said plug and/or annular seal (Para 0041, “All the operator needs to do is to initiate the smart material degradation process[…] by addition of a degradation reagent (e.g., an acid”, see also Paras 0037, 0050); and
wherein the temperature of the acid composition is increased by heating the target zone and/or the acid composition (Para 0032, “change in temperature and pressure may be provided by a source of thermal energy”, see also Paras 0037 and 0050).
Regarding claim 2, Marya teaches perforating a well tubing at a location in, or proximal to, the target zone in order to allow access to an annular space in which said metal alloy annular seal is set, wherein the perforating step takes place prior to the introduction of the acid compound (Please note that the claim further limits the alternative of the metal alloy annular seal; however, the claim does not require this alternative be selected. Where the alternative of the alloy plug within the well tubing was selected in the parent claim, the examiner understands this limitation as being applicable only if the annular seal is selected in the parent claim under the broadest reasonable interpretation of the claim).
Regarding claim 3, Marya teaches wherein the well tubing is perforated at a location that is up-hole of the metal alloy annular seal (please see discussion under claim 2).
Regarding claim 4, Marya teaches wherein the well tubing is perforated at a location that is adjacent to the metal alloy annular seal (please see discussion under claim 2). .
Regarding claim 8, Marya teaches a step of at least partially isolating the target zone within the subterranean well bore (Fig 6, the zone is at least partially isolation by virtue of the presence of the tubular) to retain said acid compound within the target zone long enough to break down the metal alloy (Para 0048, the acid must be in contact with the plug 62 for a sufficient period of time in order to degrade as intended).
Regarding claim 11, Marya teaches subjecting the well tubing to additional loads via tension, compression, internal pressure and/or external pressure either before or after the acid compound is introduced to the target zone (please see discussion under claim 2).
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.
Claim(s) 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marya (US 20080149345 A1), in view of Official Notice.
Regarding claim 5, Marya is not explicit on wherein the acid compound is introduced into the target zone using a dump bailer delivered down the well bore.
The examiner takes Official Notice that it is known to introduce a chemical or treatment into a desired location in a wellbore using a dump bailer.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Marya by introducing the chemical or treatment into a desired location in a wellbore using a dump bailer as is known in the art because Marya desires to deploy the acid, but is silent as to a means for deploying it and requires additional implementing details. Using a known means would allow for its deployment in a manner which yields predictable results and is known to operate with a reasonable expectation of success in a wellbore environment.
Regarding claim 6, Marya is not explicit on wherein the step of introducing the acid compound comprises pumping the acid compound into the target zone.
The examiner takes Official Notice that it is known to introduce a chemical or treatment into a desired location in a wellbore by pumping it.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Marya by introducing the a chemical or treatment into a desired location in a wellbore by pumping it as is known in the art because Marya desires to deploy the acid, but is silent as to a means for deploying it and requires additional implementing details. Using a known means would allow for its deployment in a manner which yields predictable results and is known to operate with a reasonable expectation of success in a wellbore environment.
Regarding claim 7, Marya is not explicit on wherein the step of introducing the acid compound comprises deploying the acid compound down the well bore to the target zone in a delivery container that is configured to break upon impact within the target zone and disperse the acid compound in the target zone.
The examiner takes Official Notice that it is known to introduce a chemical or treatment into a desired location in a wellbore using a breakable delivery container which breaks downhole to release the chemical or treatment.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Marya by introducing the a chemical or treatment into a desired location in a wellbore using a breakable delivery container which breaks downhole to release the chemical or treatment as is known in the art because Marya desires to deploy the acid, but is silent as to a means for deploying it and requires additional implementing details. Using a known means would allow for its deployment in a manner which yields predictable results and is known to operate with a reasonable expectation of success in a wellbore environment.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marya (US 20080149345 A1), in view of Chen (US 20150128692 A1).
Regarding claim 10, Marya is silent on wherein the acid compound is heated before it is introduced into the target zone.
Chen teaches the acid compound is heated before it is introduced into the target zone (Para 0019, “An inline heater 134 imparts heat to the fluid 138 prior to its entry into the tubular 102.” Para 0004, injected fluid includes acid).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Marya by having the surface fluid heating step as disclosed by Chen because it would be a simple substitution of one known element (the acid heating means of Marya) for another (the acid heating means of Chen) to obtain predictable results (allowing for a heated acid to arrive at its intended location in a downhole environment).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Burke (US 20220364429 A1) teaches plugging a hydrocarbon well by using degradable plugs are provided. When the plug is no longer needed, a degradation fluid or fluids are pumped downhole under high pressure, typically via jet.
Fripp (US 20210222509 A1) teaches while activating the downhole localized heater to create a temperature spike and accelerate an expansion of the expandable metal.
Allen (US 20180258722 A1) teaches a method of controllably disintegrating a downhole article comprises disposing the downhole article in a downhole environment, the downhole article containing a matrix material; a first chemical; and a second chemical physically isolated from the first chemical.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THEODORE N YAO whose telephone number is (571)272-8745. The examiner can normally be reached typically 8am-4pm ET.
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, 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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/THEODORE N YAO/Primary Examiner, Art Unit 3676