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
Claim set 14-18 are allowed as indicated in the last office action.
Claim set 28-38 are allowed in view of applicant’s amendment. See the reasons for allowance below.
Applicant's arguments filed on 02/05/2026 with respect to the amendments to claim 1 have been fully considered but they are not persuasive.
Regarding claim 1, applicant argues that Connell (U.S. 2005/0039925A1) fails to disclose that fluid is permitted to flow through the plug release tool from an upstream portion of the tubular string to a downstream portion of the tubular string; and then deploying a first plug into the tubular string, thereby releasing a second plug from the plug release tool.
Examiner respectfully disagree. Connell discloses that fluid is permitted to flow through the plug release tool 30 from an upstream portion of the tubular string to a downstream portion of the tubular string. Para 0028 teaches that prior to the arrival of ball 118, fluid is permitted to flow through the upstream portion of 30, the fluid enters into flow passage 114, goes through ports 124 into annulus 126 and through fluid ports 127 so that the fluid is communicated into production tubing 20. Because production tubing 20 is below the plug release tool, the fluid is permitted to flow from an upstream portion of the tubular to a downstream portion of the tubular); and then plug releasing ball 118 is deployed into the tubular string 26, thereby releasing a second plug 190 from the plug release tool 30.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Connell (U.S. 2005/0039925A1).
Regarding claim 1, Connell discloses a method for use with a subterranean well (see figs. 1-3), the method comprising:
connecting at least one plug release tool (30; fig. 2 and para 0023) in a tubular string (78), whereby fluid is permitted to flow through the plug release tool (30) from an upstream portion of the tubular string to a downstream portion of the tubular string (para 0028: prior to the arrival of ball 118, fluid is permitted to flow through the upstream portion of 30, enters into flow passage 114, goes through ports 124 into annulus 126 and through fluid ports 127 so that the fluid is communicated into production tubing 20. Because production tubing 20 is below the plug release tool, the fluid is permitted to flow from an upstream portion of the tubular to a downstream portion of the tubular); and
then deploying a first plug (“releasing ball 118” see fig. 3 and refer to para 0029) into the tubular string (26; para 0029), thereby releasing a second plug (190) from the plug release tool (30; see figs. 2-3 and refer to para 0029).
Regarding claim 2, Connell discloses receiving the first plug (118, fig. 3) in the plug release tool (30).
Regarding claim 3, Connell discloses sealingly engaging the first plug (118) with a seat (116) of the plug release tool (30, see figs. 2-3 and refer to para 0029).
Regarding claim 4, Connell discloses the sealingly engaging comprises blocking flow (para 0029: “when releasing ball 118 engages releasing seat 116, it blocks flow through the central flow passage 114”) through a piston (“releasing sleeve 104” see figs 2-3 and refer to para 0029) of the plug release tool (30; refer to para 0029).
Regarding claim 5, Connell discloses applying a predetermined pressure differential across the first plug after the sealingly engaging (refer to para 0029; para 0030: “pressure increased to a desired level”; also refer to para 0031).
Regarding claim 6, Connell discloses the releasing is performed in response to applying a predetermined pressure differential across the first plug (refer to para 0029-0031; also refer to claim 1).
Regarding claim 7, Connell discloses displacing a piston (104) of the plug release tool (30) in response to the predetermined pressure differential applying (see fig. 3 and refer to para 0029).
Regarding claim 8, Connell discloses the releasing is performed further in response to the piston displacing (as shown in fig. 3).
Regarding claim 9, Connell discloses a size of the first plug (118) is different from a size of the second plug (190, see fig. 3 and refer to para 0029).
Regarding claim 10, Connell discloses a diameter of the first plug is different from a diameter of the second plug (see fig. 3 and refer to para 0029).
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Connell (U.S. 2005/0039925A1), in view of Pugliese et al. (U.S. 2022/0090470A1).
Regarding claim 11, Connell teach all the features of these claims as applied to claim 1 above; however, Connell is silent to the type of material of the first and second plug. In other words, Connell is silent to a material of the first plug is different from a material of the second plug.
Pugliese et a. teach that downhole balls can be made of different materials. Different materials have different densities that result in lighter or heavier balls. Lighter balls offering lower cracking pressure that heavier balls therefore materials are chosen according to design principles and application (refer to para 0067).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have fabricated the first and second plugs from different materials based on design principles and environmental application, as taught by Pugliese et a. (refer to para 0067).
Also, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Connell (U.S. 2005/0039925A1), in view of Tschetter et al. (U.S. 2013/0319668A1).
Regarding claims 12-13, Connell teach all the features of these claims as applied to claim 1 above; however, Connell is silent to the type of material of the first and second plug. In other words, Connell is silent to at least one of the first and second plugs comprises a material degradable in the well, wherein at least one of the first and second plugs comprises a material dissolvable in the well.
Tschetter et al. teach that downhole plugs can be made of degradable/dissolvable materials, such that when it has been used for its intended purpose, the plug will dissolve within a predetermined passage of time to allow the flow of oil and gas from the formation (refer to para 0031).
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 at least one of the first and second plugs such that they are made from a material degradable/ dissolvable in the well, as taught by Tschetter et al. for the purpose of allowing the plug to dissolve/degrade to allow unrestricted flow of oil and gas from the formation after actuation of the tool string (refer to para 0031).
Also, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Allowable Subject Matter
Claims 14-18 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.
Claims 19-27 are allowed.
The following is an examiner’s statement of reasons for allowance:
Regarding claim 19, Connell discloses a method for use with a subterranean well (see figs. 1-3), the method comprising:
connecting a plug release tool (30; fig. 2 and para 0023) and a well tool (“tool string 27”; para 0029) in a tubular string (26);
deploying a first plug (“releasing ball 118” see fig. 3 and refer to para 0029) into the tubular string (26; para 0029), thereby releasing a second plug (190) from the first plug release tool (30; see figs. 2-3 and refer to para 0029); and
However, Connell fails to teach at least first and second plug release tools and at least first and second well tools in a tubular string; deploying a third plug into the tubular string, thereby releasing a fourth plug from the second plug release tool. Connell does not teach a plurality of plug release tool comprising first and second plugs.
Regarding claim 28, Connell discloses a plug release tool (30; fig. 2 and para 0023) for use in a subterranean well (see fig. 1), the plug release tool (30) comprising:
an outer housing (78) having a fluid inlet (at upper end 70) and a fluid outlet (at lower end 72);
first (114) and second (120) parallel flow passages configured to permit fluid flow from the fluid inlet to the fluid outlet (as shown in fig. 3 and refer to para 0030);
a piston (“releasing sleeve 104” see figs 2-3 and refer to para 0029) releasably secured against displacement in the outer housing (78; see fig. 2 and refer to para 0023-0024), the piston (104) having the first flow passage (120; refer to para 0024) therein (see figs. 2-3);
a first plug (“118” see fig. 3 and refer to para 0028-0029) configured to block fluid flow through the first flow passage (114); and
a second plug (“190”) configured to be released in response to displacement of the piston (104) relative to the outer housing (78; see figs. 2-3 and refer to para 0029).
However, Connell fails to teach that the second plug is released from the second flow passage 120 mapped above. As shown in fig. 3 of the claimed invention, the second plug 56 is released from the second flow passage 48 (while is parallel to the first flow passage 58) in response to displacement of piston 32. In Connell, the only parallel first and second flow passages are passages 120 and 114. The second plug 190 of Connell is not held along any of these passages and is therefore not released from flow passage 120. It is released from a passage at the lower section of the tool which is not parallel to any one of 120 or 114.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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