DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicants’ submission filed on 1/16/2026 has been entered. Claims 1, 3-8, 10-18, and 20-23 are pending with claims 2, 9, and 19 being previously cancelled and claims 21-23 being currently added.
Specification
The disclosure is objected to because of the following informalities.
In paragraph [0020], of the as filed specification, applicants disclose that solvated materials may be dipped. In paragraph [0019], of the as filed specification, applicants disclose that coatings may be applied through dripping.
It appears that the correct application term is “dipping” and not “dripping”.
Appropriate correction is required.
Claim Objections
Claims 1, 8, 17 are objected to because of the following informalities.
It appears that the term “dripping” should be “dipping”.
It should be noted that previously cited art Gorman et al. (US 20190225746) and Potts et al. (US 20160101600) disclose coating application through dipping.
Appropriate correction is required.
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 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.
Claims 1, 3, 6-8, 10-11, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Morris (US 4444403) in view of Duan et al. (US 20180305996) and in view of Potts et al. (US 20160101600).
Regarding claim 1: Morris discloses a system for protecting a bond line comprising a downhole tool 10, 12, a rubber material 34 bonded to a tubular substrate of the downhole tool to form a bond line (line where 34 contacts the substrate) at a bonding interface between the rubber material and the tubular substrate (Figs. 1-3). Morris discloses a barrier 30, 32 configured to be applied to the rubber material and the downhole tool to encapsulate the bond line to prevent a fluid from attacking a bonding chemistry along the bond line during wellbore operations as a result of temperature, pressure, and/or aqueous solutions downhole (Figs. 2, 3; col. 2, lines 32-40). Morris discloses that the barrier is impermeable during the entire downhole operation (Figs. 2, 3; col. 2, lines 45-47).
Morris discloses that the barrier can be a plastic (Morris – col. 2, lines 45-47) but does not explicitly disclose that the barrier is dicyclopentadiene, epoxy, polyester, urethane, elastomer latex, acrylate, cyanoacrylate, or urethane acrylate. Duan discloses that a barrier 20 can be dicyclopentadiene, epoxy, polyester, urethane, elastomer latex, acrylate, cyanoacrylate, or urethane acrylate (Fig. 1; [0022], [0023]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have selected a specific material for the barrier such as the dicyclopentadiene, epoxy, polyester, urethane, elastomer latex, acrylate, cyanoacrylate, or urethane acrylate as taught by Duan. As Morris discloses a barrier material and teaches that combinations of different polymers can be used, it would have been within routine skill to have selected a well-known barrier material from a finite selection of taught materials. Such a selection would have been predictable with no unexpected results and with a reasonable expectation of success.
Morris, as modified by Duan, does not explicitly disclose that the barrier is applied by roll or dripping (sic -dipping). Potts discloses that a barrier can be configured to be applied by roll or dipping ([0041]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have applied the coating of Morris, as modified by Duan, by roll or dipping as taught by Potts. As Morris, Duan, and Potts teach applying a protective coating and as Potts discloses a known and conventional deposition process, it would have been within routine skill to have selected a coating method from a finite selection of coating methods. Such a selection would have been predictable with no unexpected results and with a reasonable expectation of success.
Morris, as modified by Duan and Potts, discloses that the barrier is applied to a plurality of bond lines axially spaced along the tubular substrate to prevent fluid migration along the binding interface by diffusion through the bonded material (Morris - Figs. 2, 3; col. 2, lines 32-47). Morris, as modified by Duan and Potts, discloses that the barrier is a single, continuous barrier configured to prevent degradation of the plurality of bond lines that are axially spaced along the tubular substrate (Morris - Figs. 2, 3; col. 2, lines 32-47).
Regarding claims 3 and 11: Morris, as modified by Duan and Potts, discloses that the barrier is an acrylic melt, a solvated copolymer of ethylene and propylene, a solvated copolymer of ethylene, propylene, and a diene monomer, polycarbonate, polyimide, polystyrene, polyester, or a fluoroplastic (Morris - col. 2, lines 45-49).
Regarding claim 6: Morris, as modified by Duan and Potts, discloses that the barrier is applied to one or more bond lines (Morris - Figs. 1-3; col. 2, lines 32-49).
Regarding claims 7 and 15: Morris, as modified by Duan and Potts, discloses that the barrier is configured to prevent degradation of the bond line (Morris - Figs. 1-3; col. 2, lines 32-49).
Regarding claim 8: Morris, as modified by Duan and Potts, discloses a method for protecting a bond line comprising attaching at least a portion of a rubber material 34 to a downhole tool to form the bond line (see above; Morris - Figs. 1-3). Morris, as modified by Duan and Potts, discloses applying a barrier to the rubber material and the downhole tool to encapsulate the bond line (see above; Morris - Figs. 2, 3; col. 2, lines 32-40). Morris, as modified by Duan and Potts, discloses that the barrier is impermeable during the entire downhole operation (see above; Morris - Figs. 2, 3; col. 2, lines 45-47).
Morris, as modified by Duan and Potts, discloses that the barrier is dicyclopentadiene, epoxy, polyester, urethane, elastomer latex, acrylate, cyanoacrylate, or urethane acrylate (see above; Duan - Fig. 1; [0022], [0023]). Morris, as modified by Duan and Potts, discloses that the barrier is applied by roll or dipping (see above; Potts - ([0041]). Morris, as modified by Duan and Potts, discloses that the barrier is applied to a plurality of bond lines axially spaced along the tubular substrate to prevent fluid migration along the binding interface by diffusion through the bonded material (see above; Morris - Figs. 2, 3; col. 2, lines 32-47). Morris, as modified by Duan and Potts, discloses that the barrier is a single, continuous barrier configured to prevent degradation of the plurality of bond lines that are axially spaced along the tubular substrate (see above; Morris - Figs. 2, 3; col. 2, lines 32-47).
Regarding claim 10: Morris, as modified by Duan and Potts, discloses rolling the barrier on the bond line, spraying the barrier on the bond line, brushing the barrier on the bond line or applying the barrier using a vapor deposition to the bond line (see above; Morris – discloses applying the barrier to the bond line and Potts – [0041] discloses the application method).
Regarding claim 14: Morris, as modified by Duan and Potts, discloses applying the barrier to one or more bond lines (Morris - Figs. 1-3; col. 2, lines 32-49).
Claims 4, 12, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Morris (US 4444403), Duan et al. (US 20180305996), and Potts et al. (US 20160101600), as applied to claims 1 and 8 above, and further in view of Marya et al. (US 20080149351).
Morris, Duan, and Potts disclose the invention substantially as claimed and as discussed above.
Regarding claims 4 and 12: Morris, as modified by Duan and Potts, does not explicitly disclose that the barrier is the barrier is hydrophobic. Marya discloses that a barrier can be hydrophobic ([0026], [0027]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured the barrier of Morris, as modified by Duan and Potts, to be hydrophobic as taught by Marya. As Morris discloses a barrier material and teaches that combinations of different polymers can be used and as Marya explicitly teaches that the barrier can be hydrophobic, it would have been within routine skill to have selected a well-known barrier configuration from a finite selection of material configurations (i.e. hydrophobic or non-hydrophobic). Such a selection would have been predictable with no unexpected results and with a reasonable expectation of success.
Regarding claims 21 and 22: Morris, as modified by Duan, Potts, and Marya, discloses that the barrier can be latex (Marya – [0030]).
Claims 5 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Morris (US 4444403), Duan et al. (US 20180305996), and Potts et al. (US 20160101600), as applied to claims 1 and 8 above, and further in view of Sevre (US 20120227986).
Morris, Duan, and Potts disclose the invention substantially as claimed and as discussed above.
Regarding claim 5: Morris, as modified by Duan and Potts, does not explicitly disclose that the barrier is configured to be applied by a film wrapped or cold bonded to an outside of the bond line. Sevre discloses that the barrier is configured to be applied by a film wrapped or cold bonded to an outside of the bond line (Sevre - [0040]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured Morris, as modified by Duan and Potts, so that the barrier is configured to be applied by a film wrapped or cold bonded to an outside of the bond line as taught by Sevre. As Morris and Sevre disclose a barrier material, as it is known to apply barriers to seals using different methods, and as Sevre explicitly teaches that the barrier is configured to be applied by a film wrapped or cold bonded to an outside of the bond line, it would have been within routine skill to have selected a well-known barrier application method from a finite selection of application methods. Such a selection and configuration would have been predictable with no unexpected results and with a reasonable expectation of success.
Regarding claim 13: Morris, as modified by Duan, Potts, and Sevre, discloses wrapping the barrier to an outside of the bond line or cold bonding the barrier to the outside of the bond line (see above; Sevre – [0040]).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Morris (US 4444403) in view of Duan et al. (US 20180305996) and in view of Scott et al. (US 20170292336) and in view of Veneruso et al. (US 20070051510).
Morris and Duan disclose the invention substantially as claimed and as discussed above.
Regarding claim 16: Morris discloses a system comprising a downhole tool 10, 12 comprising a metal substrate, at least one annular seal 34, an interface comprising at least one bond (line where seal contacts substrate) between the metal substrate and the at least one annular seal, a barrier 30, and that the barrier encapsulates the interface and prevents fluid migration to the interface (see above; Morris - Figs. 2, 3; col. 2, lines 32-40). Morris discloses that the barrier is impermeable during the entire downhole operation (see above; Morris - Figs. 2, 3; col. 2, lines 45-47). Morris, as modified by Duan, discloses that the barrier is dicyclopentadiene, epoxy, polyester, urethane, elastomer latex, acrylate, cyanoacrylate, or urethane acrylate (see above; Duan - Fig. 1; [0022], [0023]).
Morris, as modified by Duan, does not explicitly disclose that the barrier is applied at a wellsite right before the downhole tool is disposed into a wellbore. Scott discloses that a protective barrier can be applied to a downhole tool at a wellsite right before the downhole tool is disposed into a wellbore ([0089]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have applied the coating of Morris, as modified by Duan, at a wellsite right before the downhole tool is disposed into a wellbore as taught by Scott. As Morris and Scott both teach applying a protective coating and as Scott explicitly discloses the timing of the application (at a wellsite right before the downhole tool is disposed into a wellbore), it would have been within routine skill to have selected the timing of a coating application from a finite selection of coating method timing. Such a selection would have been predictable with no unexpected results and with a reasonable expectation of success.
Morris, as modified by Duan and Scott, does not explicitly disclose that barrier can be applied by roll. Veneruso discloses that a coating can be applied by roll ([0055]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have applied the coating of Morris, as modified by Duan and Scott, by roll as taught by Veneruso. As Morris, Duan, and Veneruso teach applying a protective coating and as Veneruso discloses a known and conventional deposition process, it would have been within routine skill to have selected a coating method from a finite selection of coating methods (i.e. roll coating versus brushing). Such a selection would have been predictable with no unexpected results and with a reasonable expectation of success.
Regarding claim 17: Morris, as modified by Duan, Scott, and Veneruso, discloses that the barrier is applied by dipping (Veneruso – [0050]).
Regarding claim 20: Morris, as modified by Duan, Scott, and Veneruso, discloses that the barrier is an acrylic melt, a solvated copolymer of ethylene and propylene, a solvated copolymer of ethylene, propylene, and a diene monomer, polycarbonate, polyimide, polystyrene, polyester, or a fluoroplastic (see above; Morris - col. 2, lines 45-49).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Morris (US 4444403), Duan et al. (US 20180305996), Scott et al. (US 20170292336), and Veneruso et al. (US 20070051510), as applied to claim 16 above, and further in view of Mazyar et al. (US 20140060811).
Morris, Duan, Scott, and Veneruso disclose the invention substantially as claimed and as discussed above.
Regarding claim 18: Morris, as modified by Duan, Scott, and Veneruso, does not explicitly disclose that the barrier is applied by coating requiring finishing processes comprising vapor deposition, solvent product, or heat product. Mazyar discloses that a barrier can be applied by coating requiring finishing processes comprising vapor deposition, solvent product, or heat product ([0033]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured the coating of Morris, as modified by Duan, Scott, and Veneruso, so that the barrier is applied by coating requiring finishing processes comprising vapor deposition, solvent product, or heat product as taught by Mazyar. As Morris, Scott, Veneruso, and Mazyar teach applying a protective coating and as Mazyar discloses a known method of application, it would have been within routine skill to have selected a coating method from a finite selection of coating methods. Such a selection would have been predictable with no unexpected results and with a reasonable expectation of success.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Morris (US 4444403), Duan et al. (US 20180305996), Scott et al. (US 20170292336), and Veneruso et al. (US 20070051510), as applied to claim 16 above, and further in view of Marya et al. (US 20080149351).
Morris, Duan, Scott, Veneruso, and Marya disclose the invention substantially as claimed and as discussed above.
Regarding claim 18: Morris, as modified by Duan, Scott, and Veneruso, does not explicitly disclose that the barrier is latex. Marya discloses that a barrier can be latex ([0030]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured the coating of Morris, as modified by Duan, Scott, and Veneruso, so that the barrier is latex as taught by Marya. As Morris, Scott, Veneruso, and Marya teach applying a protective coating, as protective coatings are very well-known in the art, and as Marya discloses a known type of coating, it would have been within routine skill to have selected a specific and desired coating method from a finite selection of coatings (i.e latex). Such a selection and configuration would have been predictable with no unexpected results and with a reasonable expectation of success.
Response to Arguments
Applicants’ amendments and arguments, filed 1/16/2026, with respect to the previous rejections of claims 1, 3-8, 10-18, and 20 have been fully considered and they are at least partially persuasive. The objections/rejections that have been withdrawn are not repeated herein.
Applicants argue that the references are silent regarding the newly amended limitations of "wherein the barrier is applied by roll or dripping".
The examiner disagrees with applicants’ analysis and conclusion. Potts discloses dipping ([0041]) and Veneruso discloses both dipping and rolling ([0050], [0055]).
Regarding new claims 21-23, the limitations are rejected under Marya (see above).
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Gorman et al. (US 20190225746) discloses coating application by dipping.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TARAS P BEMKO whose telephone number is (571)270-1830. The examiner can normally be reached on Monday-Friday 8:00-5:00 (EDT/EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached on 571-272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Taras P Bemko/
Primary Examiner, Art Unit 3672
2/3/2026
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