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 .
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 (i.e., changing from AIA to pre-AIA ) 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.
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 1-3, 5, 10, 13, 14, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Glass (US Patent Application Publication No. 2012/0312539) in view of Martini (US Patent No. 7,314,083).
In reference to claim 1, Glass discloses a method of performing a downhole wash procedure in an offshore well in a region of casing having perforations or other openings, the method comprising:
passing a washing tool 10 (par. 0049, Figs. 1 and 2) down the casing to the region with perforations or openings (par. 0049), the washing tool 10 having a plurality of nozzles 24/36 (Figs. 3 and 4) and being connected to a supply of wash fluid (par. 0049, from coiled tubing 12);
delivering wash fluid through the nozzles 24/36 whilst rotating the washing tool 10 and translating (par. 0063) the washing tool 10 in an axial direction with respect to the casing, such that wash fluid is forced through the perforations and pulses of pressure are created in an annulus between the casing and the rock formation of the wellbore (Figs. 1 and 2).
Glass fails to discloses that whilst delivering wash fluid, the translational movement of the washing tool is in a downward (distal) direction only.
Martini discloses translating the washing tool 100 in a downward direction only (Fig. 1). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to translate the washing tool in a downward direction with a reasonable expectation of success so that deposits obstructing the bore can be cleaned out.
In reference to claim 2, Martini discloses that the wash fluid is delivered in a single downward (distal) pass of the washing tool 100 (Fig. 1).
In reference to claim 3, Glass discloses translating the washing tool 10 at “1.0 to 2.5 feet per minute” (par. 0061). In combination with Martini, this would result in downward movement of 1.0 to 2.5 feet/min.
In reference to claim 5, Glass discloses that, whilst delivering wash fluid, the perpendicular distance from an outlet of each nozzle 36 to an interior wall of the casing is from “0.5-2.5 inches” (par. 0024).
In reference to claim 10, Glass discloses that the washing tool 10 has six nozzles 24/26 (Fig. 3), each having an approximately circular orifice with a diameter of 6/32 inch (par. 0058, “.19 inches”).
In reference to claim 13, Martini discloses that the rotation speed of the wash tool is 60 r.p.m. (claims 12 and 16).
In reference to claim 14, Glass discloses that the rate of movement is “1.0 to 2.5 feet per minute” (par. 0061). In combination with Martini, this would result in downward movement of 1.0 to 2.5 feet/min.
In reference to claim 18, Glass discloses that the washing tool 10 has six nozzles 24/26 (Fig. 3), each having an approximately circular orifice with a diameter of 6/32 inch (par. 0058, “.19 inches”).
In reference to claim 19, Glass discloses that wash fluid is delivered through a plurality of nozzles selected from approximately 6 nozzles (Fig. 3).
Claim 7 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Glass (US Patent Application Publication No. 2012/0312539) in view of Martini (US Patent No. 7,314,083) as applied to claim 1 above, and further in view of Zublin (US Patent No. 4,441,557).
In reference to claims 7 and 15, Glass fails to disclose the density of the wash fluid.
Zublin discloses using wash fluid that is 8.3 to 8.7 pounds per gallon (col. 10, lines 24-26). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to use a wash fluid with a density of 8.3 to 8.7 pounds per gallon with a reasonable expectation of success as this wash fluid is known in the art to be effective for cleaning boreholes.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,196,062. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference patent entirely anticipate the claims of the present invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRAD HARCOURT whose telephone number is (571)272-7303. The examiner can normally be reached Monday through Friday, 9am to 6pm.
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/BRAD HARCOURT/Primary Examiner, Art Unit 3674
11/04/25