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 .
Status of Claims
This action is in reply to the Applicant’s claims, filed on 03/30/2026 .
Claims 6-7, 16-17, and 22-23 have been amended.
Claims 1-23 are currently pending and have been examined.
Response to Amendment
The amendment filed 03/30/2026 has been entered. Claims 1-23 remain pending in the application. Applicant’s amendments to the claims have partially overcome the rejections previously set forth in the Non-Final Office Action filed 12/05/2025.
Applicant’s argument with respect to the prior art rejections of claims 1-6, 9-16, 19, and 21 have been considered and found not persuasive; therefore, the rejections have been maintained.
Applicant’s argument and amendment to claims 7-8, 17-18, and 22-23 have been considered and found persuasive; therefore, the prior art rejections have been withdrawn.
Regarding applicants’ amendment and argument that Hepburn in view of Fripp for claims 1, 11, and 21 does not teach or suggest the claimed combination has been considered and is not persuasive. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the combination of Hepburn and Fripp would have been obvious to a person of ordinary skill in the art at the time of the invention. Both references are directed to downhole completion systems intended for sidetracking of wellbores. Hepburn discloses a windowed deflector assembly comprising of a deflector with a cavity, deflector body, tubular housing coupled to the uphole end of the deflector body, a sidewall opening aligned with the deflector face, wherein a covering over the sidewall opening wherein the opening can be closed or open (Fig. 2). Fripp discloses a tubular structure including a degradable section positioned at a predetermined sidewall location aligned with a whipstock where the degradation of the section enables the formation of an exit window (Fig.5). The teachings of Hepburn in view of Fripp teach the limitations of the instance case. In regards to applicants’ argument that Fripp does not teach a temporary covering over a pre-existing opening that is aligned with a deflector is not persuasive. Fripp teaches placement of a degradable section covering a sidewall opening to enable a lateral exit upon degradation using a whipstock. Whether characterized by opening or uncovering a pre-existing opening (opening is implicitly pre-existing in order for it to be covered), Fripp teaches controlling when and where access though the tubular sidewall is achieved with a degradable covering utilizing a whipstock, therefore the covering is implicitly temporary. In regards to applicants’ argument that Hepburn’s covering is not taught as degradable is correct, however, Hepburn’s covering is substituted with Fripp’s degradable section which is taught as degradable (Col. 4, line 2 – Col. 5, line 15). It would have been obvious to substitute Hepburn’s covering with degradable material taught by Fripp. Such a substitution would have represented a predictable use of known elements according to their known functions. As recognized in KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), it is proper to combine known elements according to known methods to yield predictable results, even if the references do not expressly teach the combination.
The result of combining these known elements would have been predictable to one of ordinary skill because each component performs its well-understood function.
Accordingly, the rejection of claims 1, 11, and 21 as well as dependent claims 2-6, 8-10, 12-16, and 19-21 is maintained.
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 6 and 16 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 6 and 16 recite the limitation “the expandable metal of the metal based degradable material is configured to expand in response to hydrolysis and after the hydrolysis has completed then degrade to uncover the sidewall opening.” It is unclear how this limitation is further limiting. Dependent claims 5 and 15, respectively, recite the limitation “the metal based degradable material is expandable metal configured to expand in response to hydrolysis and then degrade to uncover the sidewall opening .” Based upon claims 5 and 15, the limitation of claims 6 and 16 does not further define or restrict the scope of the invention. Therefore, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 7-8, and 17-18 are rejected for being dependent of a rejected indefinite claim.
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.
Claims 1, 9, 11, 19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Hepburn et al. (US11286721) in view of Fripp et al. (US10954735).
Claim 1. Hepburn discloses: A multilateral junction sleeve assembly (200 windowed deflector assembly, Fig. 2), comprising:
a multilateral deflector assembly (240 deflector, Fig. 2), the multilateral deflector assembly including a deflector body (body of 240 deflector, Fig. 2) having a deflector face (250 angled surface, Fig. 2) and an opening extending therethrough (245 cavity, Fig. 2);
a deflector assembly sleeve (210 tubular housing, Fig. 2) coupled to an uphole end of the deflector body (Fig. 2), the deflector assembly sleeve having a sidewall opening in a sidewall thereof aligned with the deflector face (220 window is in the sidewall of 201 and aligned with 250); and
material positioned on a radial exterior surface of the deflector assembly sleeve covering the sidewall opening (225 wrap, Fig. 2) and uncover the sidewall opening (can be opened; Col. 3, lines 29-40).
Hepburn does not disclose: degradable material, the degradable material configured to degrade over time.
Fripp discloses a system comprising of a sidewall opening formed in a tubular where the sidewall opening is covered with a degradable section.
Fripp teaches: degradable material (400 degradable section, Fig. 4), the degradable material configured to degrade over time (degradation occurs at any suitable rate of time; Col. 4, line 2 – Col. 5, line 15).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have substituted the wrap of Hepburn with the degradable material as taught by Fripp with a reasonable expectation of success in order to cover the sidewall opening as taught by Fripp (Fig. 4).
Claim 9. Hepburn in view of Fripp teach: The multilateral junction sleeve assembly as recited in Claim 1, wherein the degradable material is a polymer (Fripp: degradable material may include polymer; Col. 5, lines 15-20) based degradable material.
Claim 11. Hepburn in view of Fripp teach: A well system (Hepburn: Fig. 1), comprising:
a main wellbore located within a subterranean formation (Hepburn: 155 main bore, Fig. 1);
a lateral wellbore extending from the main wellbore (Hepburn: 170 lateral wellbore, Fig. 1); and
a multilateral junction sleeve assembly located in the main wellbore proximate a junction between the main wellbore and the lateral wellbore (Hepburn: Fig. 5), the multilateral junction sleeve assembly including:
a multilateral deflector assembly, the multilateral deflector assembly including a deflector body having a deflector face and an opening extending therethrough;
a deflector assembly sleeve coupled to an uphole end of the deflector body, the deflector assembly sleeve having a sidewall opening in a sidewall thereof aligned with the deflector face; and
degradable material positioned on a radial exterior surface of the deflector assembly sleeve covering the sidewall opening, the degradable material configured to degrade over time and uncover the sidewall opening (see previously rejected claim 1).
Claim 19. Hepburn in view of Fripp teach: The well system as recited in Claim 11, wherein the degradable material is a polymer based degradable material (see previously rejected claim 9).
Claim 21. Hepburn in view of Fripp teach: A method for forming a well system, comprising:
forming a main wellbore within a subterranean formation;
forming a lateral wellbore off of the main wellbore; and
positioning a multilateral junction sleeve assembly in the main wellbore proximate a junction between the main wellbore and the lateral wellbore, the multilateral junction sleeve assembly including:
a multilateral deflector assembly, the multilateral deflector assembly including a deflector body having a deflector face and an opening extending therethrough;
a deflector assembly sleeve coupled to an uphole end of the deflector body, the deflector assembly sleeve having a sidewall opening in a sidewall thereof aligned with the deflector face; and
degradable material positioned on a radial exterior surface of the deflector assembly sleeve covering the sidewall opening, the degradable material configured to degrade over time and uncover the sidewall opening (see previously rejected claim 1).
Claims 2, 10, 12, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hepburn et al. (US11286721) in view of Fripp et al. (US10954735) and further in view of Fripp et al. (US11512561).
Claim 2. Hepburn `6721 in view of Fripp `4735 teach: The multilateral junction sleeve assembly as recited in Claim 1, further including an anchor (Hepburn: 470 anchor; Fig. 4).
Hepburn in view of Fripp `4735 does not teach: expandable metal anchor positioned on a radial exterior surface of the deflector body, the expandable metal anchor including a metal configured to expand in response to hydrolysis to axially and rotationally fix the multilateral deflector assembly within a wellbore tubular.
Fripp `2561 discloses an expandable metal sealant applied to the outside of a tubular that expands in response to hydrolysis to form a seal and anchor. Therefore, Fripp `2561 teaches: expandable metal anchor (50B expanding metal sealant that seals and anchors, Fig. 2A-2B; Col. 2, lines 52-60); positioned on a radial exterior surface (applied on exterior surface of 28 junction, Fig. 2A-2B) the expandable metal anchor including a metal configured to expand in response to hydrolysis to axially and rotationally fix the assembly within a wellbore tubular (metal sealant expands by hydrolysis and anchors at an interface; Col. 2, line 52 – Col. 3, line 19; inherent function of anchor is to axially and rotationally fix at an interface).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have substituted the anchor of Hepburn with the expandable metal anchor as taught by Fripp `2561 with a reasonable expectation of success in order to anchor the multilateral deflection assembly into the wellbore as taught by Fripp `2561 (Fig. 4).
Claim 10. Hepburn `6721 in view of Fripp `4735 and further in view of Fripp `2561 teach: The multilateral junction sleeve assembly as recited in Claim 9, further including an expandable metal anchor positioned on a radial exterior surface of the deflector body, the expandable metal anchor including a metal configured to expand in response to hydrolysis to axially and rotationally fix the multilateral deflector assembly within a wellbore tubular (see previously rejected claim 2).
Claim 12. Hepburn `6721 in view of Fripp `4735 teach and further in view of Fripp `2561: The well system as recited in Claim 11, further including an expandable metal anchor positioned on a radial exterior surface of the deflector body, the expandable metal anchor including a metal configured to expand in response to hydrolysis to axially and rotationally fix the multilateral deflector assembly within a wellbore tubular (see previously rejected claim 2).
Claim 20. Hepburn `6721 in view of Fripp `4735 teach and further in view of Fripp `2561: The well system as recited in Claim 19, further including an expandable metal anchor positioned on a radial exterior surface of the deflector body, the expandable metal anchor including a metal configured to expand in response to hydrolysis to axially and rotationally fix the multilateral deflector assembly within a wellbore tubular (see previously rejected claim 2).
Claims 3-6, and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Hepburn et al. (US11286721) in view of Fripp et al. (US10954735) and further in view of Fripp et al. (US11512561) and Hepburn et al. (US7584795)
Claim 3. Hepburn `6721 in view of Fripp `4735 and further in view of Fripp `2561 teach: The multilateral junction sleeve assembly as recited in Claim 2, wherein the expandable metal anchor is a layer of expandable metal positioned on a radial exterior surface of the deflector body and a radial exterior surface of the deflector assembly sleeve.
Hepburn `6721 in view of Fripp `4735 and further in view of Fripp `2561 does not teach: expandable positioned uphole and downhole of the sidewall opening.
Hepburn `4795 discloses an expanding sealing material for a multilateral junction where the expanding sealing material is both uphole and downhole of a sidewall opening. Therefore, Hepburn `4795 teaches: expandable (30 expandable sealing material, Fig. 3; expands when exposed to water; Col. 3, lines 45-51) positioned uphole and downhole of the sidewall opening (Fig. 3).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the anchor as taught by Hepburn `6721 in view of Fripp `4735 and further in view of Fripp `2561 by applying the expandable metal material above and below the sidewall opening as taught by Hepburn `4795 with a reasonable expectation of success in order to anchor the multilateral junction sleeve assembly into the wellbore as taught by Fripp `2561 (Fig. 4).
Claim 4. Hepburn `6721 in view of Fripp `4735 and further in view of Fripp `2561 and Hepburn `4795 teach: The multilateral junction sleeve assembly as recited in Claim 3, wherein the degradable material is a metal based degradable material (Fripp `4735: degradable material may include metals; Col. 5, lines 15-20).
Claim 5. Hepburn `6721 in view of Fripp `4735 and further in view of Fripp `2561 and Hepburn `4795 teach: The multilateral junction sleeve assembly as recited in Claim 4, wherein the metal based degradable material (Fripp `4735: degradable material may be magnesium; Col. 5, lines 18-20) is expandable metal configured to expand in response to hydrolysis (as recited in the specification of the instant case, magnesium can expand by hydrolysis; [0037]) and then degrade to uncover the sidewall opening (see previously rejected claim 1).
Claim 6. Hepburn `6721 in view of Fripp `4735 and further in view of Fripp `2561 and Hepburn `4795 teach: The multilateral junction sleeve assembly as recited in Claim 5, wherein the expandable metal based of the metal based degradable material is configured to expand in response to and then degrade to uncover the sidewall opening (see previously rejected claim 5).
Claim 13. Hepburn `6721 in view of Fripp `4735 and further in view of Fripp `2561 and Hepburn `4795 teach: The well system as recited in Claim 12, wherein the expandable metal anchor is a layer of expandable metal positioned on a radial exterior surface of the deflector body and a radial exterior surface of the deflector assembly sleeve uphole and downhole of the sidewall opening (see previously rejected claim 3).
Claim 14. Hepburn `6721 in view of Fripp `4735 and further in view of Fripp `2561 and Hepburn `4795 teach: The well system as recited in Claim 13, wherein the degradable material is a metal based degradable material (see previously rejected claim 4).
Claim 15. Hepburn `6721 in view of Fripp `4735 and further in view of Fripp `2561 and Hepburn `4795 teach: The well system as recited in Claim 14, wherein the metal based degradable material is expandable metal configured to expand in response to hydrolysis and then degrade to uncover the sidewall opening (see previously rejected claim 5).
Claim 16. Hepburn `6721 in view of Fripp `4735 and further in view of Fripp `2561 and Hepburn `4795 teach: The well system as recited in Claim 14, wherein the expandable metal of the metal based degradable material is expandable metal configured to expand in response to hydrolysis and then degrade to uncover the sidewall opening (see previously rejected claim 15).
Allowable Subject Matter
Claims 7-8 and 17-18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 7-8, 17-18, and 22-23 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance:
Claims 7-8, 17-18, and 22-23 read on an apparatus of multilateral deflector assembly comprising of a deflector body, deflector, a metal based expandable degradable material covering an sidewall opening of the deflector assembly, and an expandable metal anchor comprising of an expandable metal wherein the metal based expandable degradable material of the deflector assembly and the expandable metal of the anchor are a single unitary layer that responds to hydrolysis to expand to form an expanded metal anchor outside of the sidewall opening and to degrade to uncover the sidewall opening.
The claimed invention has been examined in light of prior art, including relevant searches of published patent documents, non-patent literature and other sources. Based upon this examination, no prior art has been identified that discloses or teaches the claimed invention in its entirety.
Specifically, none of the references disclosed in the prior art show or suggest the combination of a metal based expandable degradable material covering an sidewall opening of the deflector assembly, and an expandable metal anchor comprising of an expandable metal wherein the metal based expandable degradable material of the deflector assembly and the expandable metal of the anchor are a single unitary layer that responds to hydrolysis to expand to form an expanded metal anchor outside of the sidewall opening and to degrade to uncover the sidewall opening. Therefore, these limitations in combination with the remainder of the claim, is deemed allowable.
For example, Hepburn et al. (US11286721) in view of Fripp et al. (US10954735) and further in view of Fripp et al. (US11512561) teach a diverter assembly with a degradable covering over a sidewall opening and an anchor with expandable metal configured on expand and degrade in response to hydrolysis.
The prior art references do not disclose a single unitary layer that responds to hydrolysis to expand to form an expanded metal anchor outside of the sidewall opening and to degrade to uncover the sidewall opening.
The unique combination of elements recited in the claims results in a new and non-obvious solution that is not anticipated or rendered obvious by the cited references.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 Daniel Craig whose telephone number is (571)270-0747. The examiner can normally be reached M-Thurs 7:30 AM to 5:00 PM CST.
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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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/DANIEL T CRAIG/Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676
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