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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-10, in the reply filed on 3/31/2026 is acknowledged.
With respect to invention Group II (claims 11-14), the traversal is on the ground(s) that independent claim 11 includes all the limitation of independent claim 1. This is not found persuasive because Group II (claims 11-14) incudes exclusive features: a spring positioned within the annulus, wherein the spring is positioned below the first valve, wherein the spring exerts a force on the first valve that biases the first valve toward the first position (claim 12), the first valve is in the first position in response to a pressure of the fluid in the inner mandrel bore being less than a first valve pressure threshold such that the force exerted on the first valve by the spring is greater than an opposing force exerted by the first valve by the fluid, and wherein the first valve is in the second position in response to the pressure of the fluid in the inner mandrel bore being greater than the first valve pressure threshold such that the force exerted on the first valve by the spring is less than the opposing force exerted by the first valve by the fluid (claim 13), a pressure of the fluid in the inner mandrel bore is decreased to below the first pressure threshold after the inflatable element inflates, which causes the first valve to move from the second position to the first position, thereby trapping a portion of the fluid in the annulus and the inflatable element at a first temperature and a first pressure Claim 14), the trapped portion of the fluid increases to a second temperature due to a surrounding environment in a wellbore, which causes the pressure of the trapped portion of the fluid to increase to the second valve pressure threshold, and wherein the second valve pressure threshold is greater than the first pressure (claim 15). Finding exclusive features are clearly search burden.
With respect to Invention Group III (claims 16-19) and IV (claims 18-20), applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
The requirement is still deemed proper and is therefore made FINAL.
Applicant must mark claims 16-20 with “(withdrawn)” or cancelled.
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 (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 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.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Sears et al. (9695667 – Sears).
Sears discloses a tool, comprising:
Re claim 1:
an inner mandrel 12 (i.e., fig. 1) having an inner mandrel bore that extends axially-therethrough; a first valve 21 (i.e., fig. 5, col. 6:10-12, “first valve”) configured to move between a first position and a second position (i.e., open poison form closed position);
an inflatable element 13 configured to inflate and expand radially-outward and into contact with a surrounding tubular 10 in response to the first valve moving to the second position, which permits a fluid in the inner mandrel bore to flow into the inflatable element (i.e., fig. 4); and
a second valve 24 (i.e., fig. 6, col. 6:18-14, “second valve”) configured to vent some of the fluid within the inflatable element to an exterior of the downhole tool in response to the fluid reaching a second valve pressure threshold (i.e., col. 6:18-14).
Re claim 2, the downhole tool comprises an inflatable production packer (IPP) 13.
Re claim 3, the inner mandrel defines an inflation port 22 that provides a path of fluid communication between the inner mandrel bore 31 and an annulus 16 within the downhole tool 13 (i.e., figs. 3, 5).
Re claim 4, the annulus is positioned radially-outward from the inner mandrel bore, wherein the first valve 21 is positioned at least partially within the annulus (i.e., figs. 3, 4), and wherein the inflatable element is in fluid communication with the annulus (i.e., when the valve 21 is opened).
Re claim 5, the first valve 21 prevents fluid communication between the inner mandrel bore and the annulus in the first position (before the valve is opened), and wherein the first valve permits fluid communication (when the valve is opened) between the inner mandrel bore and the annulus in the second position.
Re claim 6, a crossover C positioned below the inflatable element (i.e., when it is viewed from a bottom of the tool), wherein the crossover defines a crossover bore that provides a path of fluid communication between the inflatable element and the exterior 116 (i.e., fig. 3) of the downhole tool 13.
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Re claim 7, the second valve 24 is positioned within the crossover bore (i.e., figs. 3, 4, 6)
Re claim 8, the second valve 24 comprises a pressure relief valve (i.e., col. 6:18-24. It releases fluid pressure from the packer inflation volume).
Re claim 9, the crossover bore (i.e., bore that receives the mandrel) comprises: a first portion (i.e., vertical section) having a central longitudinal axis that is parallel to a central longitudinal axis of the inner mandrel 12; and a second portion (i.e., horizontal section) having a central longitudinal axis that is not parallel to the central longitudinal axis of the inner mandrel 12.
Re claim 10, the second valve 24 is located within the first portion (i.e., figs. 3, 4, 6).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited prior art all show similar features to those of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YONG-SUK (PHILIP) RO whose telephone number is (571)270-5466. The examiner can normally be reached Monday-Friday 8:00-4:30.
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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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/YONG-SUK (PHILIP) RO/ Primary Examiner, Art Unit 3676
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