DETAILED ACTION
Claims 1-8, 11-15, 18, and 21 are pending.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/02/2026 has been entered.
Response to Arguments
Applicant's arguments filed 02/02/2026 in regard to claim 1 have been fully considered but they are not persuasive. Examiner notes that the claim language is broad in nature in which the most recent prior art rejection teaches the limitations as being obvious under a 35 U.S.C. § 103 (see claim 1 rejection herein for more details).
Applicant’s arguments with respect to claim(s) 11-15, 18, and 21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
If there is a critical feature in the claims that have a certain degree of importance, it is advised to include that language in the claim(s) in keeping with the instant specification for purposes of overcoming the most recent prior art rejection.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hicks et al. (US Patent Number 11,976,535 B1; hereinafter “Hicks”) in view of Berry (US Patent Number 6,595,295 B1; hereinafter “Berry”) in further view of Nowitzki et al. (US Publication Number 2019/0360302 A1; hereinafter “Nowitzki”).
In regard to claim 1, Hicks discloses: A method for use with a subterranean well (12 — abstract, column 4, lines 11-64 and figure 1), the method comprising:
installing a tubing string (i.e., comprising 14) in the well, in which a tool (comprising 38) is connected in the tubing string uphole of an electric submersible pump (18 — see column 4, lines 11-64 and figure 1), the tool comprising a first valve (as shown in figures 4-6 | see column 4, line 57- column 5, line 16 and column 6, line 50- column 7, line 7), a central flow passage (i.e., central bore) of the tubing string, and preventing fluid communication between the central flow passage and an annulus (36) external to the tubing string (column 5, lines 17-30 and figures 1 & 4-5).
However, Hicks is silent in regard to: the tool comprising a frangible barrier and a first valve, in which the frangible barrier prevents flow through a central flow passage of the tubing string, and in which the first valve prevents fluid communication;
in which a second valve is connected in the tubing string between the electric submersible pump and the first valve, and in which the second valve is configured to permit fluid flow from the electric submersible pump to the central flow passage of the tubing string uphole of the second valve and prevent reverse fluid flow from the central flow passage uphole of the second valve to the electric submersible pump; and
increasing pressure in the central flow passage uphole of the second valve to a predetermined pressure level, thereby displacing a seat of the second valve and opening an alternate flow path through the second valve to the electric submersible pump.
Nonetheless, Berry teaches a downhole electrical submersible pumping (ESP) assembly (abstract and figure 1 of Berry), similar to that of Hicks (i.e., ESP assembly 16 — figure 1 of Hicks). Berry teaches that the ESP assembly can comprise of a sealing device, i.e., frangible barrier (20), selectively blocking/opening the central passageway of the tubing string (34) on the upper end of the ESP assembly, and another sealing device (36) as well as an opening device (22) within the bottom end thereof (at least column 2, lines 6-40, column 4, lines 54-61, and column 5, lines 17-33).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the ESP assembly, as taught by Hicks, to include for sealing devices (i.e., one uphole of the ESP assembly and another one on the bottom end thereof) and an opening device, as taught by Berry, to allow for “[...] effectively protecting the submersible pumping assemblies that are currently being placed in the wellbore and keeping the submersible pumping assemblies free from contamination” (column 1, lines 19-39 of Berry).
Furthermore, Hicks is silent in regard to: in which a second valve is connected in the tubing string between the electric submersible pump and the first valve, and in which the second valve is configured to permit fluid flow from the electric submersible pump to the central flow passage of the tubing string uphole of the second valve and prevent reverse fluid flow from the central flow passage uphole of the second valve to the electric submersible pump; and
increasing pressure in the central flow passage uphole of the second valve to a predetermined pressure level, thereby displacing a seat of the second valve and opening an alternate flow path through the second valve to the electric submersible pump.
Nonetheless, Nowitzki teaches a downhole electrical submersible pumping (ESP) assembly (abstract and figure 1 of Nowitzki), similar to that of Hicks (i.e., ESP assembly 16 — figure 1 of Hicks). Nowitzki teaches a “second valve” (145) located adjacent and uphole of the ESP (140) — see paragraphs [0042-0043] and figures 1 and 6-8. Furthermore, Nowitzki teaches that the “second valve” (145) is configured to permit fluid flow through the central flow passage from the electric submersible pump (as shown in at least figure 6C) and prevent fluid flow through the central flow passage to the electric submersible pump (as shown in at least figure 6A) — see at least paragraph [0059] and figures 6-8. Nowitzki further discloses: increasing pressure in the central flow passage uphole of the second valve to a predetermined pressure level (i.e., arbitrary predetermined pressure level associated with the output pressure of the pump “140” which is intrinsically increased to flow uphole thereof), thereby displacing a seat (i.e., uppermost seating surface of 225) of the second valve and opening an alternate flow path (i.e., through 515) through the second valve to the electric submersible pump (Nowitzki teaches increasing fluid flow pressure uphole of “145”, such as shown in figure 7A, in which thereafter the seat of “145” is displaced eventually allowing for an alternate fluid flow path through “515” which acts as a vent which “[...] provides radial flowing fluid that provides torque and/or rotation to shaft 210 and/or rotatable disc 225 to open valve 145” — at least paragraphs [0057, 0060] and figures 7).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify connecting the tool of Hicks, to include for connecting a second valve (as taught by Nowitzki) between the electric submersible pump and the first valve of Hicks, to allow for creating a fallback prevention system which can prevent damaging and breaking the ESP (abstract and paragraphs [0001, 0004]).
In regard to claim 2, in view of the modification of the preceding claim, Hicks in view of Berry further discloses: in which, in the installing, the frangible barrier is positioned uphole of the first valve (as taught by the modification in claim 1).
In regard to claim 3, in view of the modification of the preceding claim, Berry further discloses: opening the frangible barrier, thereby permitting fluid flow from the electric submersible pump through the tubing string (column 2, lines 6-30 and column 5, lines 7-33).
In regard to claim 4, in view of the modification of the preceding claim, Berry further discloses: in which the frangible barrier opening comprises breaking the frangible barrier (column 2, lines 6-30 and column 5, lines 7-33).
In regard to claim 5, in view of the modification of the preceding claim, Berry further discloses: in which the frangible barrier opening comprises increasing pressure in the central flow passage uphole of the frangible barrier (column 2, lines 6-30 and column 5, lines 7-33).
In regard to claim 6, in view of the modification of the preceding claim, Hicks in view of Berry further discloses: after the frangible barrier opening, opening the first valve, thereby permitting fluid communication between the central flow passage and the annulus (Examiner notes that the modification teaches to selectively acuate the “frangible barrier”, as taught by Berry, first to allow for the actuating the ESP — column 2, lines 6-30 and column 5, lines 7-33 of Berry. The “first valve”, as taught by Hicks is used towards the end of the ESP operation to allow for opening ports 44 and draining the fluid from therein “[...] so as to allow removal of the artificial lift assembly from the wellbore without fluid flow through the electrical submersible pump” — column 6, line 60- column 7, line 7 of Hicks).
In regard to claim 7, in view of the modification of the preceding claim, Hicks further discloses: in which the first valve is opened prior to withdrawing the tubing string from the well (column 6, line 60- column 7, line 7).
In regard to claim 8, in view of the modification of the preceding claim, Hicks further discloses: in which the first valve opening comprises preventing fluid flow through the central flow passage in the first valve (column 6, line 60- column 7, line 7).
Claim(s) 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hicks et al. (US Patent Number 11,976,535 B1; hereinafter “Hicks”) in view of Berry (US Patent Number 6,595,295 B1; hereinafter “Berry”) in further view of Ejim et al. (US Publication Number 2024/0102367 A1; hereinafter “Ejim”).
In regard to claim 11, Hicks discloses: A system (abstract and column 4, lines 11-64) for use with a subterranean well (12 — figure 1), the system comprising:
an electric submersible pump (18 — see column 4, lines 11-64 and figure 1);
a first valve (as shown in figures 4-6) connected uphole of the electric submersible pump (see column 4, line 57- column 5, line 16 and column 6, line 50- column 7, line 7), the first valve selectively preventing and permitting fluid communication between a central flow passage (i.e., central bore of 40) extending through the first valve and an annulus (36) external to the first valve (column 4, line 65- column 6, line 16 and figure 4).
However, Hicks is silent In regard to: a second valve connected uphole of the electric submersible pump, the second valve permitting fluid flow through the central flow passage from the electric submersible pump and preventing fluid flow through the central flow passage to the electric submersible pump, in which the second valve comprises a closure member and a seat, and in which the second valve further comprises a biasing device that biases the seat in an uphole direction;
a frangible barrier connected uphole of the electric submersible pump, the frangible barrier preventing fluid flow through the central flow passage.
Nonetheless, Berry teaches a downhole electrical submersible pumping (ESP) assembly (abstract and figure 1 of Berry), similar to that of Hicks (i.e., ESP assembly 16 — figure 1 of Hicks). Berry teaches that the ESP assembly can comprise of a sealing device, i.e., frangible barrier (20), selectively blocking/opening the central passageway of the tubing string (34) on the upper end of the ESP assembly, and another sealing device (36) as well as an opening device (22) within the bottom end thereof (at least column 2, lines 6-40, column 4, lines 54-61, and column 5, lines 17-33).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the ESP assembly, as taught by Hicks, to include for sealing devices (i.e., one uphole of the ESP assembly and another one on the bottom end thereof) and an opening device, as taught by Berry, to allow for “[...] effectively protecting the submersible pumping assemblies that are currently being placed in the wellbore and keeping the submersible pumping assemblies free from contamination” (column 1, lines 19-39 of Berry).
Furthermore, Hicks is silent in regards to: a second valve connected uphole of the electric submersible pump, the second valve permitting fluid flow through the central flow passage from the electric submersible pump and preventing fluid flow through the central flow passage to the electric submersible pump, in which the second valve comprises a closure member and a seat, and in which the second valve further comprises a biasing device that biases the seat in an uphole direction.
Nonetheless, Ejim teaches a downhole electrical submersible pumping (ESP) assembly (abstract, paragraphs [0036-0040], and figures 1-3 & 10-13 of Ejim), similar to that of Hicks (i.e., ESP assembly 16 — figure 1 of Hicks). Ejim teaches a “second valve” (32 — as shown in figures 1) located adjacent and uphole of the ESP (18 — paragraphs [0036-0054, 0072-0095] and figures 1-3 and 10-13). Furthermore, Ejim teaches that the “second valve” is configured to permit fluid flow through the central flow passage from the electric submersible pump (as shown in figure 12) and prevent fluid flow through the central flow passage to the electric submersible pump (as shown in at least figure 10) — see paragraphs [0036-0054, 0072-0095] and figures 1-3 and 10-13. Furthermore, Ejim teaches: in which the second valve comprises a closure member (66) and a seat (top seating surface(s) of 66 comprising at least 86 or 88), and in which the second valve further comprises a biasing device (88) that biases the seat in an uphole direction (i.e., see transitioning from figure 10 to figure 12).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify connecting the tool of Hicks, to include for connecting a second valve (as taught by Ejim) between the electric submersible pump and the first valve of Hicks, to allow for creating a fallback prevention system of sand/solids from entering the ESP which can reduce undesired operating pressure (paragraph [0002] — Ejim).
In regard to claim 12, in view of the modification of the preceding claim, Hicks in view of Berry further discloses: in which the frangible barrier is connected uphole of the first valve (as taught by the modification in claim 1).
In regard to claim 13, in view of the modification of the preceding claim, Berry further discloses: in which the frangible barrier is configured to open in response to a predetermined pressure differential across the frangible barrier (column 2, lines 6-30 and column 5, lines 7-33).
In regard to claim 14, in view of the modification of the preceding claim, Berry further discloses: in which the frangible barrier is configured to break in response to a predetermined pressure differential across the frangible barrier (column 2, lines 6-30 and column 5, lines 7-33).
In regard to claim 15, Hicks further discloses: a plug (60) disposed in the first valve, the plug preventing fluid flow through the central flow passage (column 5, line 50- column 6, line 29).
Allowable Subject Matter
Claims 18 and 21 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
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/NEEL GIRISH PATEL/Primary Patent Examiner, Art Unit 3676