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 .
Response to Arguments
Applicant’s arguments, filed on 01/28/2026, with respect to the rejection(s) of claim(s) 1, 22, and 43 over Scott et al. (U.S. 2013/0032355A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Milkovisch et al. (U.S. 2024/0068364A1).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 19-20 and 40-41 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends. Independent claims 1 and 22 have been amended to include the limitations of claims 19-20 and 40-41 respectively; however, they have not been canceled.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 (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.
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, 12, 15-20, 22-24, 33, 36-41, and 43-44 are rejected under 35 U.S.C. 103 as being unpatentable over Scott et al. (U.S. 2013/0032355A1), Milkovisch et al. (U.S. 2024/0068364A1).
Regarding claims 1 and 19-20, Scott et al. disclose a downhole tool (12, fig. 1), comprising:
a first downhole device (20, see figs. 1-2), the first downhole device including a first outer housing (outer housing of 20, see fig. 2) including a first central bore (18) extending axially through the first outer housing (as shown in fig. 1), the first central bore (18) operable to convey subsurface production fluids there through (refer to para 0021: “flow passage 18”); and
a switch system (“54, 56”; see fig. 3 and para 0036; note that the switch system “54, 56” is part of electronic circuitry 46 as discussed in para 0035), the switch system (“54, 56”) including:
an input (electrical “input voltage”; refer to para 0035 and 0039) coupled to a primary electric control line (32);
a first output (see annotated fig. 3 below) coupled to a first electrical component (“actuator 22”; see figs. 1-2 and refer to para 0038) of the first downhole device (20); and
a second output (see annotated fig. 3 below) coupleable to a second electrical component (“actuator 38”) of a second downhole device (16; refer to para 0028, 0035, and 0038), the switch system (“54, 56”) configured to switch power between the primary electric control line (32) and the first downhole device (20) and the primary electric control line (32) and the second downhole device (16; refer to para 0035 and 0038).
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Milkovisch et al. further teach that the first and second electrical components is an electric actuator (para 0023 and 0028).
However, Milkovisch et al. fail to teach that the first or second electrical component is an electromagnetic assembly.
Milkovisch et al. generally teach that downhole actuators can include, but not limited to, electric actuators, electromagnetic actuators, magnetic actuators, mechanical actuators, or some combination thereof (para 0038).
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 one type of downhole actuator for another to achieve the predictable result of actuating downhole tools.
Regarding claim 2, the combination of Scott et al. and Milkovisch et al. teach all the features of claim 1 above; Scott et al. further disclose wherein the first downhole device (20) further includes a first valve closure mechanism (28; para 0023) coupled to the first outer housing within the first central bore (see figs. 1, 5, 8-9), and a first bore flow management actuator (26) disposed in the first central bore (as shown in fig. 1), the first bore flow management actuator (26) configured to slide from a first initial state to a first subsequent state (para 0023: actuator displaces flow tube 26 to pivot flapper 28) to move the first valve closure mechanism (28) between a first closed state and a first open state (refer to para 0023).
Regarding claim 3, the combination of Scott et al. and Milkovisch et al. teach all the features of claim 1 above; Scott et al. further disclose wherein the switch system (“54, 56”) is a mechanical switch system (see fig. 3 showing mechanical components: note that no mechanical measure has been claimed such as the “magnetic features” of claim 4) that includes a mechanically activated switch configured to switch power between the primary electric control line (32) and the first downhole device (20) and the primary electric control line (32) and the second downhole device (16; refer to para 0035 and 0038).
Regarding claim 12, the combination of Scott et al. and Milkovisch et al. teach all the features of claim 1 above; Scott et al. further disclose wherein the switch system (“54, 56”) is an electrical switch system (para 0038: electrical power: note that the diodes of claim 13 re not recited in claim 12) that includes an electrically activated switch configured to switch power between the primary electric control line (32) and the first downhole device (20) and the primary electric control line (32) and the second downhole device (16; refer to para 0035 and 0038).
Regarding claim 15, the combination of Scott et al. and Milkovisch et al. teach all the features of claim 1 above; Scott et al. further disclose wherein the first downhole device is a tubing retrievable safety valve (refer to para 0029) and the second downhole device is a wireline retrievable safety (refer to para 0029).
Regarding claim 16, the combination of Scott et al. and Milkovisch et al. teach all the features of claim 15 above; Scott et al. further disclose wherein the switch system (“54, 56”) is configured to switch power between the primary electric control line (32) and the tubing retrievable safety valve (refer to para 0029, 0035, and 0038) and the primary electric control line and the wireline retrievable safety valve (refer to para 0029, 0035, and 0038) before the wireline retrievable safety valve (WLRSV) is insert within a wellbore (switch system 54, 56 is configured to switch power anytime, as shown in fig., 3 and based on data from electronic circuitry 46; refer to para 0035 and 0039).
Regarding claim 17, the combination of Scott et al. and Milkovisch et al. teach all the features of claim 15 above; Scott et al. further disclose wherein the switch system (“54, 56”) is configured to switch power between the primary electric control line (32) and the tubing retrievable safety valve (refer to para 0029, 0035, and 0038) and the primary electric control line (32) and the wireline retrievable safety valve (refer to para 0029, 0035, and 0038) as the wireline retrievable safety valve is being insert within a wellbore (as shown in figs. 1, 5, and 8-9).
Regarding claim 18, the combination of Scott et al. and Milkovisch et al. teach all the features of claim 15 above; Scott et al. further disclose wherein the switch system (“54, 56”) is configured to switch power between the primary electric control line (32) and the tubing retrievable safety valve (refer to para 0029, 0035, and 0038) and the primary electric control line (32) and the wireline retrievable safety valve (refer to para 0029, 0035, and 0038) after the wireline retrievable safety valve (WLRSV) is insert within a wellbore (as shown in figs. 1, 5, and 8-9).
Regarding claims 22 and 40-41, Scott et al. disclose a well system (10, fig. 1 and para 0021), comprising:
a wellbore (14) extending through one or more subterranean formations (as shown in fig. 1);
production tubing (12) disposed in the wellbore (14);
a first downhole device (20, see figs. 1-2) disposed in line with the production tubing (12; as shown in fig. 1), the first downhole device (20, see figs. 1-2) including a first outer housing (outer housing of 20, see fig. 2) including a first central bore (18) extending axially through the first outer housing (as shown in fig. 1), the first central bore (18) operable to convey subsurface production fluids there through (refer to para 0021: “flow passage 18”);
a second downhole device (16; refer to para 0028, 0035, and 0038) disposed within the wellbore (14), the second downhole device (16) including a second outer housing (outer housing of 16, see fig. 1) including a second central bore (inner bore of 16) extending axially through the second outer housing (see fig. 1), the second central bore operable to convey subsurface production fluids there through (16 is conveyed into tubing 12 via a coiled tubing which as a central bore operable to convey subsurface production fluid); and
a switch system (“54, 56”; see fig. 3 and para 0036; note that the switch system “54, 56” is part of electronic circuitry 46 as discussed in para 0035), the switch system (“54, 56”) including:
an input (electrical “input voltage”; refer to para 0035 and 0039) coupled to a primary electric control line (32);
a first output (see annotated fig. 3 above) coupled to a first electrical component (“actuator 22”; see figs. 1-2 and refer to para 0038) of the first downhole device (20); and
a second output (see annotated fig. 3 above) coupled to a second electrical component (“actuator 38”) of the second downhole device (16; refer to para 0028, 0035, and 0038), the switch system (“54, 56”) configured to switch power between the primary electric control line (32) and the first downhole device (20) and the primary electric control line (32) and the second downhole device (16; refer to para 0035 and 0038).
Milkovisch et al. further teach that the first and second electrical components is an electric actuator (para 0023 and 0028).
However, Milkovisch et al. fail to teach that the first or second electrical component is an electromagnetic assembly.
Milkovisch et al. generally teach that downhole actuators can include, but not limited to, electric actuators, electromagnetic actuators, magnetic actuators, mechanical actuators, or some combination thereof (para 0038).
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 one type of downhole actuator for another to achieve the predictable result of actuating downhole tools.
Regarding claim 23, the combination of Scott et al. and Milkovisch et al. teach all the features of claim 22 above; Scott et al. further disclose wherein the first downhole device (20) further includes a first valve closure mechanism (28; para 0023) coupled to the first outer housing within the first central bore (see figs. 1, 5, 8-9), and a first bore flow management actuator (26) disposed in the first central bore (as shown in fig. 1), the first bore flow management actuator (26) configured to slide from a first initial state to a first subsequent state (para 0023: actuator displaces flow tube 26 to pivot flapper 28) to move the first valve closure mechanism (28) between a first closed state and a first open state (refer to para 0023), and
the second downhole device (16) further includes a second valve closure mechanism (40, fig. 1 and para 0028) coupled to the second outer housing within the second central bore (see fig. 1), and a second bore flow management actuator (inner tubular “biasing” “flapper” in 16) disposed in the second central bore (see fig. 1), the second bore flow management actuator configured to slide from a second initial state to a second subsequent state to move the second valve closure mechanism between a second closed state and a second open state (see figs. 7-8).
Regarding claim 24, the combination of Scott et al. and Milkovisch et al. teach all the features of claim 22 above; Scott et al. further disclose wherein the switch system (“54, 56”) is a mechanical switch system (see fig. 3 showing mechanical components: note that no mechanical measure has been claimed such as the “magnetic features” of claim 4) that includes a mechanically activated switch configured to switch power between the primary electric control line (32) and the first downhole device (20) and the primary electric control line (32) and the second downhole device (16; refer to para 0035 and 0038).
Regarding claim 33, the combination of Scott et al. and Milkovisch et al. teach all the features of claim 22 above; Scott et al. further disclose wherein the switch system (“54, 56”) is an electrical switch system (para 0038: electrical power: note that the diodes of claim 13 re not recited in claim 12) that includes an electrically activated switch configured to switch power between the primary electric control line (32) and the first downhole device (20) and the primary electric control line (32) and the second downhole device (16; refer to para 0035 and 0038).
Regarding claim 36, the combination of Scott et al. and Milkovisch et al. teach all the features of claim 22 above; Scott et al. further disclose wherein the first downhole device is a tubing retrievable safety valve (refer to para 0029) and the second downhole device is a wireline retrievable safety valve (refer to para 0029).
Regarding claim 37, the combination of Scott et al. and Milkovisch et al. teach all the features of claim 36 above; Scott et al. further disclose wherein the switch system (“54, 56”) is configured to switch power between the primary electric control line (32) and the tubing retrievable safety valve (refer to para 0029, 0035, and 0038) and the primary electric control line and the wireline retrievable safety valve (refer to para 0029, 0035, and 0038) before the wireline retrievable safety valve (WLRSV) is insert within a wellbore (switch system 54, 56 is configured to switch power anytime, as shown in fig., 3 and based on data from electronic circuitry 46; refer to para 0035 and 0039).
Regarding claim 38, the combination of Scott et al. and Milkovisch et al. teach all the features of claim 36 above; Scott et al. further disclose wherein the switch system (“54, 56”) is configured to switch power between the primary electric control line (32) and the tubing retrievable safety valve (refer to para 0029, 0035, and 0038) and the primary electric control line (32) and the wireline retrievable safety valve (WLRSV) as the wireline retrievable safety valve (refer to para 0029, 0035, and 0038) is being insert within a wellbore (as shown in figs. 1, 5, and 8-9).
Regarding claim 39, the combination of Scott et al. and Milkovisch et al. teach all the features of claim 36 above; Scott et al. further disclose wherein the switch system (“54, 56”) is configured to switch power between the primary electric control line (32) and the tubing retrievable safety valve (refer to para 0029, 0035, and 0038) and the primary electric control line (32) and the wireline retrievable safety valve (refer to para 0029, 0035, and 0038) after the wireline retrievable safety valve (WLRSV) is insert within a wellbore (as shown in figs. 1, 5, and 8-9).
Regarding claim 43, Scott et al. disclose a method, comprising:
positioning a first downhole device (20, see figs. 1-2) disposed in line with production tubing (12; as shown in fig. 1) located in a wellbore (14), the first downhole device (20, see figs. 1-2) including a first outer housing (outer housing of 20, see fig. 2) including a first central bore (18) extending axially through the first outer housing (as shown in fig. 1), the first central bore (18) operable to convey subsurface production fluids there through (refer to para 0021: “flow passage 18”);
positioning a second downhole device (16; refer to para 0028, 0035, and 0038) in the wellbore (14), the second downhole device (16; refer to para 0028, 0035, and 0038) including a second outer housing (outer housing of 16, see fig. 1) including a second central bore (inner bore of 16) extending axially through the second outer housing (see fig. 1), the second central bore operable to convey subsurface production fluids there through (16 is conveyed into tubing 12 via a coiled tubing which as a central bore operable to convey subsurface production fluid),
wherein a switch system (“54, 56”; see fig. 3 and para 0036; note that the switch system “54, 56” is part of electronic circuitry 46 as discussed in para 0035) is coupled with the first and second downhole devices (20, 16; refer to para 0035 and 0038), the switch system (“54, 56”) including:
an input (electrical “input voltage”; refer to para 0035 and 0039) coupled to a primary electric control line (32);
a first output (see annotated fig. 3 above) coupled to a first electrical component (“actuator 22”; see figs. 1-2 and refer to para 0038) of the first downhole device (20); and
a second output (see annotated fig. 3 above) coupled to a second electrical component (“actuator 38”) of the second downhole device (16; refer to para 0028, 0035, and 0038), the switch system (“54, 56”) configured to switch power between the primary electric control line (32) and the first downhole device (20) and the primary electric control line (32) and the second downhole device (16; refer to para 0035 and 0038); and
switching a signal from the primary electric control line (32) between the first and second downhole devices (20, 16; refer to para 0035 and 0038).
Milkovisch et al. further teach that the first and second electrical components is an electric actuator (para 0023 and 0028).
However, Milkovisch et al. fail to teach that the first or second electrical component is an electromagnetic assembly.
Milkovisch et al. generally teach that downhole actuators can include, but not limited to, electric actuators, electromagnetic actuators, magnetic actuators, mechanical actuators, or some combination thereof (para 0038).
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 one type of downhole actuator for another to achieve the predictable result of actuating downhole tools.
Regarding claim 44, the combination of Scott et al. and Milkovisch et al. teach all the features of claim 43 above; Scott et al. further disclose wherein the first downhole device (20) further includes a first valve closure mechanism (28; para 0023) coupled to the first outer housing within the first central bore (see figs. 1, 5, 8-9), and a first bore flow management actuator (26) disposed in the first central bore (as shown in fig. 1), the first bore flow management actuator (26) configured to slide from a first initial state to a first subsequent state (para 0023: actuator displaces flow tube 26 to pivot flapper 28) to move the first valve closure mechanism (28) between a first closed state and a first open state (refer to para 0023), and
the second downhole device (16) further includes a second valve closure mechanism (40, fig. 1 and para 0028) coupled to the second outer housing within the second central bore (see fig. 1), and a second bore flow management actuator (inner tubular “biasing” “flapper” in 16) disposed in the second central bore (see fig. 1), the second bore flow management actuator configured to slide from a second initial state to a second subsequent state to move the second valve closure mechanism between a second closed state and a second open state (see figs. 7-8).
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 4, 8, 21, 25, 29, and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Scott et al. (U.S. 2013/0032355A1), in view of Milkovisch et al. (U.S. 2024/0068364A1) as applied to claims 1 and 22 above, and further in view of Joseph et al. (U.S. 2021/0332669A1).
Regarding claims 4 and 25, the combination of Scott et al. and Milkovisch et al. teach all the features of these claims as applied to claims 3 and 24 above; Scott et al. further disclose wherein the mechanically activated switch configured to move to switch power between the primary electric control line (32) and the first downhole device (20, see figs. 1-2) and the primary electric control line (32)and the second downhole device (16; refer to para 0035 and 0038).
However, the combination of Scott et al. and Milkovisch et al. fail to teach that the switch includes two or more magnetic features.
Joseph et al. teach a system for moving a sliding sleeve with a switch comprising an array of magnets (refer to abstract and para 0025). The system determines the movement and position of the sliding sleeve in a sliding sleeve valve. Identifying the position of the sliding sleeve allows personnel to determine if the sliding sleeve valve is open or closed (refer to para 0011).
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 switch of Scott et al. to include two or more magnetic features, as taught by Joseph et al., for determining the movement and position of the sliding sleeve in the sliding sleeve valve since identifying the position of the sliding sleeve allows personnel to determine if the sliding sleeve valve is open or closed (refer to para 0011).
Regarding claims 8 and 29, the combination of Scott et al. and Milkovisch et al. teach all the features of these claims as applied to claims 3 and 24 above; however the combination of Scott et al. and Milkovisch et al. fail to teach wherein the mechanically activated switch includes a reed switch.
Joseph et al. teach a system for moving a sliding sleeve with a switch comprising a reed switch used to detect discrete positions of the sliding sleeve (para 0012).
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 switch of Scott et al. to include a reed switch, as taught by Joseph et al., for determining detect discrete positions of the sliding sleeve (para 0012).
Regarding claims 21 and 42, Scott et al. disclose wherein the first electrical component is an (“actuator 22”; see figs. 1-2 and refer to para 0038).
However, the combination of Scott et al. and Milkovisch et al. fail to teach that the actuator is a piezoelectric actuator.
Joseph et al. teach a system for moving a sliding sleeve with a switch comprising a piezoelectric actuator that converts electrical impulses into mechanical extension waves (refer to para 0009, 0014, and 0017).
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 generic actuator of Scott et al. with a piezoelectric actuator that converts electrical impulses into mechanical extension waves, as taught by Joseph et al. (refer to para 0009, 0014, and 0017).
Claims 9 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Scott et al. (U.S. 2013/0032355A1), in view of Milkovisch et al. (U.S. 2024/0068364A1) and Joseph et al. (U.S. 2021/0332669A1) as applied to claims 8 and 29 above, and further in view of El Mallawany et al. (U.S. 2021/0140283A1).
Regarding claims 9 and 30, the combination of Scott et al., Milkovisch et al., and Joseph et al. teach all the features of these claims as applied to claims 8 and 29 above; however, the combination of Scott et al., Milkovisch et al., and Joseph et al. is silent to the reed switch being a double throw reed switch.
El Mallawany et al. teach a control circuit (310) for actuating a downhole valve comprising a switch (316), wherein the switch is a double throw switch (para 0025).
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 reed switch of Scott et al. as modified by Milkovisch et al. and Joseph et al. with a double throw reed switch, as taught by El Mallawany et al., for the predictable result of switching power between the first and second downhole devices.
Allowable Subject Matter
Claims 45-47 are allowed in view of the introduction of allowable subject matter.
Claim 45 includes all of the elements of original independent Claim 1 plus the allowable elements of dependent claims 3, 4 and 5, thereby rendering new claim 45 allowable over the art.
Claim 46, the new independent claim 46 including all of the elements of original claim 1 plus the allowable elements of dependent claims 3, 8 and 10, thereby rendering new claim 46 allowable over the art.
Claim 47, the new independent claim 47 including all of the elements of original independent claim 1 plus the allowable elements of dependent claims 3 and 11, thereby rendering new claim 47 allowable over the art.
Claim 48, the new independent claim 48 including all of the elements of original independent claim 1 plus the allowable elements of dependent claims 12 and 13, thereby rendering new claim 48 allowable over the art.
Dependent claims 5-7, 10-11, 13-14, 26-28, 31-32, and 34-35 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YANICK A AKARAGWE whose telephone number is (469)295-9298. The examiner can normally be reached M-TH 7:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at (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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/YANICK A AKARAGWE/Primary Examiner, Art Unit 3672
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