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 .
Information Disclosure Statement
The information disclosure statement filed 02/24/2025 is acknowledged by the Examiner.
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.
Claim 6 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6, the limitation “one or more unloading valves arranged at increasing depths within a wall of the wellbore tubular” in line 6, is indefinite because it is unclear, in the instance of one unloading valve, how it is arranged at increasing depths. It would only have one depth.
Claim 6 recites the limitation "binary check valves" in line 12. There is insufficient antecedent basis for this limitation in the claim. Only “a binary check valve” is previously introduced in line 11.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Veit (US 20120227839).
Veit discloses:
1. (Original) A valve (500, figs. 7a-7c/600, figs. 8a-8b) capable of use for a gas lift system in a wellbore tubular (note, regarding the limitations “unloading” and "for a gas lift system in a wellbore tubular," it is noted that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); further, the recitation “for a gas lift system in a wellbore tubular” has been given little patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. Kropa v. Robie, 88 USPQ 478 (CCPA 1951)) comprising an inlet port (506) and an outlet port (520) and a fluid flow path (504 in which 526 is situated) extends between the inlet port and the outlet port, which allows fluid flow in a flow direction from the inlet port to the outlet port through the valve up to a predetermined maximum flow rate (flow is allowed from 506 to 520 until spring 532 is compressed and 528 sealingly seats on 522; [0063] describes “Once the stimulation operation commences, piston 526 is lifted off valve body seat 508 when the pressure inside of the injection assembly reached a predetermined level sufficient to overcome the spring force and any opposing wellbore pressure….As best seen in FIG. 7B, piston 526 travels upwardly in passageway 504 until upper sealing surface 528 engages with valve cap seat 522 forming a seal therewith.”), and which blocks fluid flow in a blocking direction which is opposite of the flow direction (when 526 is seated against 530, as seen in fig. 7a; [0064] describes “as best seen in FIG. 7A. In this configuration, production fluids are disallowed from entering the completion string through check valve assembly 500”).
2. (Original) The valve of claim 1, which comprises: a valve float (526); an inlet valve seat (508) arranged at the inlet port to receive the valve float whereby sealing the inlet port (as seen in fig. 7a); an outlet valve seat (522) arranged at the outlet port to receive the valve float whereby sealing the outlet port (as seen in fig. 7b); wherein the valve float is movably arranged in the flow path between the inlet port and the outlet port, and wherein the valve float is bidirectionally movable between the inlet valve seat and the outlet valve seat (as seen in movement from figs. 7a and 7b), further comprising a bias force (from 532) acting on the valve float directed towards the inlet valve seat (“spring 532 biases piston 526 downwardly and any pressure from the wellbore communicates through opening 520 of valve cap 516, which also biases piston 526 downwardly” as described in [0062]).
3. (Original) The valve of claim 2, further comprising a bias spring (532 is a spring, seen in figs. 7a-7c) acting on the valve float, to impose said bias force on the valve float (as described in [0062]).
4. (Currently amended) The valve of claim 2, wherein a fluid cannot pass through the valve along the fluid flow path when the valve float is seated in one of the inlet valve seat and the outlet valve seat (fluid cannot pass outlet seat 522 when 528 is seated thereon, and fluid cannot pass inlet seat 508 when 530 is seated thereon; [0063] states “seen in FIG. 7B, piston 526 travels upwardly in passageway 504 until upper sealing surface 528 engages with valve cap seat 522 forming a seal therewith” and [0064] describes “as best seen in FIG. 7A. In this configuration, production fluids are disallowed from entering the completion string through check valve assembly 500”), and where the fluid can pass along the fluid flow path through the unloading valve when the valve float is in an intermediate position between the inlet valve seat and the outlet valve seat.
5. (Currently amended) The valve of claim 1, which blocks fluid flow in said flow direction after the predetermined maximum flow rate has been exceeded (flow is allowed from 506 to 520 until spring 532 is compressed and 528 sealingly seats on outlet 522; [0063] describes “Once the stimulation operation commences, piston 526 is lifted off valve body seat 508 when the pressure inside of the injection assembly reached a predetermined level sufficient to overcome the spring force and any opposing wellbore pressure….As best seen in FIG. 7B, piston 526 travels upwardly in passageway 504 until upper sealing surface 528 engages with valve cap seat 522 forming a seal therewith.”).
6. (Currently amended) A well valve system (10, fig. 1) (note, “The recitation “gas lift” in the preamble has been given little patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. Kropa v. Robie, 88 USPQ 478 (CCPA 1951)) comprising: a borehole (12) in an earth formation (20); a wellbore tubular (52, fig. 2) arranged with the borehole, comprising a tubular bore (bore in 52 as seen in fig. 2), and whereby an annular space (between 62 and 52) surrounds the wellbore tubular which annular space is accessible for fluid flow (through 60); one or more valves (66/500; note, regarding the limitation “unloading” it is noted that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997)) arranged at increasing depths within a wall of the wellbore tubular (the valves are places along the length of the tubing and [0033] describes the tubing arranged vertically which would then place the valves at increasing depths; “[0033] Even though FIG. 1 depicts the injection assemblies of the present invention in a horizontal section of the wellbore, it should be understood by those skilled in the art that the injection assemblies of the present invention are equally well suited for use in wells having other directional configurations including vertical wells, deviated wells, slanted wells, multilateral wells and the like.”), said one or more valves comprising at least one valve (66/500) in accordance with claim 1, whereby the flow direction allows fluid flow from the annular space into the tubular bore (when 526 is not seated against 530).
7. (Currently amended) A method of installing of a gas lift system in a borehole (12) in an earth formation (20) comprising a wellbore tubular (52) arranged with the borehole, comprising a tubular bore (bore in 52 as seen in fig. 2), and whereby an annular space (between 62 and 52) surrounds the wellbore tubular which annular space is accessible for fluid flow (through 60), said method comprising steps of: providing a valve as defined in claim 1, whereby the flow direction of the valve is directed from the annular space into the tubular bore (when 526 is not seated against 530).
8. (Original) The method of claim 7, wherein the unloading valve comprises a cylindrically shaped housing section (518a), and chamfer at the inlet side of the valve (as seen labeled fig. 7a below).
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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.
Claim 6 is rejected, as far as it is definite, under 35 U.S.C. 103 as being unpatentable over Veit (US 20120227839) in view of Hall (US 20150192001).
Veit discloses the invention as essentially claimed except for further including a binary check valve arranged in the wellbore tubular at a depth below the one or more valves, which binary check valve allows fluid flow from the annular space into the tubular bore at any flow rate and blocks flow in opposite direction.
Hall teaches a related well system similarly including valves (130) arranged at increasing depths within a wall of the wellbore tubular (110) for controlling flow in the borehole during various production or treatment operations of the well, and which further includes a binary check valve (140; or 166) arranged in the wellbore tubular at a depth below the one or more valves (140 is shown located below the valves 130 in figs. 2c and 2d; or 166 in 100a would be below the valves 130 in 100b, as seen in figs. 2c, 2d), which binary check valve allows fluid flow from the annular space into the tubular bore at any flow rate and blocks flow in opposite direction ([0038] discloses “The return ports 140 may…have inflow valves”; alternatively 166 is a ball check valve that allows flow from the annular space into the tubular bore at 115, as seen in fig. 5b, and [0065] discloses “A restriction, nozzle, or seat 164 is disposed in the housing 162, and an inflow valve in the form of a check ball 166 can allow flow from the screen jacket 120, through the device 160, and into the basepipe's ports 115. However, the check ball 166 prevents reverse flow from the basepipe 110 through the device 160”), for the purpose of providing additional fluid flow control in the borehole which provides more pressure control utility for injection, production, or well kill operations [0069], such as to allow fluid returns to enter the wellbore tubular to provide flow to a washpipe for isolating sections of the tubular [0038]-[0039].
It would have been obvious to one of ordinary skill in the art to modify the invention of Veit, to further include a binary check valve arranged in the wellbore tubular at a depth below the one or more valves, which binary check valve allows fluid flow from the annular space into the tubular bore at any flow rate and blocks flow in opposite direction, as taught by Hall, for the purpose of providing additional fluid flow control in the borehole that provides more pressure control utility for injection, production, or well kill operations, such as to allow fluid returns to enter the wellbore tubular to provide flow to a washpipe for isolating sections of the tubular.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Veit (US 20120227839) in view of Hallunbæk et al. (US 20130233555).
Veit discloses the invention as essentially claimed except for a method of installing a valve in a borehole in an earth formation comprising the steps of: providing a punch tool; running said punch tool into the tubular bore to a desired depth; punching the valve into a wall of the wellbore tubular, whereby the flow direction of the valve is directed from the annular space into the tubular bore; removing said punch tool from the tubular bore while leaving the valve behind in the wall; or wherein the chamfer is optimized to enhance push back resistance of the unloading valve left behind in the wall.
Hallunbæk et al. teaches a method of installing a valve in a borehole, the method including the steps of: providing a punch tool (1/101); running said punch tool into the tubular bore to a desired depth (1/101 is moved a depth into the borehole casing 3 by 22 to the location where the valve will be placed, as can been seen in figs. 3, 9; [0087] discloses “The downhole tool 100 may be connected with a driving unit 22, such as a downhole tractor, for moving the tool forward in the casing 3”); punching the valve into a wall of the wellbore tubular (“the valve 1 or punch 101 penetrates the wall 2 of the casing 3”, [0084]), whereby the flow direction of the valve is directed from the annular space into the tubular bore (the punch 101 in fig. 7 has the inlet is at 105 and the outlet is 106, and the installed position in fig. 9 would then have flow from the annular space around 3 flow into inlet 105 and out outlet 106 into the tubular bore of 3; “The body 104 has an inlet at the first end 105 of the body 104 and an outlet at the second end 106 of the body 104. Inside the body 4, the downhole punch 101 comprises a valve 111 restricting free flow from the inlet to the outlet in an axial direction of the downhole punch 101.” [0069]; removing said punch tool from the tubular bore while leaving the valve behind in the wall ([0075] discloses “the outer face 8 of the housing 4 or the body 104 is provided with a thread, and the valve 1 or the punch 101 is screwed into the wall 2 of the casing 3. Hereby, the valve 1 or the punch 101 is mechanically secured into the wall of the casing 3 and can withstand direct pressure acting on the first end 5,” or alternatively [0086] “In order to fasten the downhole punch or downhole valve, it is designed having no clearance and will consequently fasten itself by means of friction.”), for the purpose of providing a simple solution for inserting a downhole valve, and thus for a valve which can easily be inserted into the wall of a casing ([0004]).
It would have been obvious to one having ordinary skill in the art to modify the invention of Veit, such that the method further included the steps of: providing a punch tool; running said punch tool into the tubular bore to a desired depth; punching the valve into a wall of the wellbore tubular, whereby the flow direction of the valve is directed from the annular space into the tubular bore; and removing said punch tool from the tubular bore while leaving the valve behind in the wall, as taught by Hallunbæk et al., for the purpose of providing a simple solution for inserting a downhole valve, and thus for a valve which can easily be inserted into the wall of a casing.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Veit (US 20120227839) taken with Hallunbæk et al. (US 20130233555) further in view of Kinley (US 2540122).
Veit taken with Hallunbæk et al. discloses the invention as essentially claimed except for wherein the chamfer at the inlet side of the valve is optimized to enhance push back resistance of the valve left behind in the wall.
Kinley discloses a similar method of installing of a flow control insert (32) in a wellbore tubular (2) wherein the chamfer on the inlet side of the valve is shaped to assist in forming a secure hold and thereby enhance push back resistance, in that the chamfer is shaped as a slight taper 35 for facilitating punching of the valve into the tubular (“its forward end may be slightly tapered at 35 to facilitate the punching action”, col. 2, ll. 32-33), and which carries some of the wall material with it to form a lip 38, for the purpose of sealing around the insert (“the tapered portion 35 has punched out an opening 31 and has carried some of the material of the wall of the pipe forwardly with it so as to form a lip such as 38, tending to form a seal about the orifice button”, col. 2, ll. 35-39).
It would have been obvious to one having ordinary skill in the art to modify the invention of Veit and Hallunbæk et al., such that the chamfer at the inlet side of the valve is optimized to enhance push back resistance of the valve left behind in the wall, as taught by Kinley, for the purpose of facilitating the punching operation and sealing around the valve insert for a secure hold.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20090218103, US 1768109, US 1767202, US 1793193, US 1767201, US 8657015 and US 1806872 each disclose a related spring biased valve in a well which allows fluid flow in a flow direction from the inlet port to the outlet port through the unloading valve up to a predetermined maximum flow rate, and which blocks fluid flow in a blocking direction which is opposite of the flow direction. US 2540122, US 2544601, and US 2526695 each disclose related methods of using a punching tool to install a fluid control insert into a well tubular wall.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARINA TIETJEN, whose telephone number is 571-270-5422. The examiner can normally be reached on Monday-Friday (10:30AM-7:00PM CST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors can be reached by phone. Tom Barrett can be reached at 571-272-4746, Ken Rinehart can be reached at 571-272-4881, and Craig Schneider can be reached at 571-272-3607. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARINA A TIETJEN/Primary Examiner, Art Unit 3753