Detailed Action
Status of Claims
This is the first office action on the merits. Claims 33-52 are currently pending and addressed below.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/14/2025 has being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 33-52 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 33 & 45 recites the limitation "the material" in line 6 of each claim. There is insufficient antecedent basis for this limitation in the claim. The claim language establishes “a plug or barrier forming material” however, further references only refer to a “the material” which renders the claims metes and bounds ambiguous if this is the plug or barrier forming material or a different material.
Claims 34-44 & 46-52 similarly reference the material vs a plug or barrier forming material.
Claims 33-45 are rejected on this basis.
The metes and bounds of claim 34 are ambiguous as the claim is dependent from itself. Therefore, it is not clear if the claim depends from claim 33 or is an independent claim. Examiner assumes claim 34 is dependent from claim 33 for examination purposes.
Claim 34 is rejected on this basis.
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.
Claim 34 is 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, or for failing to include all the limitations of the claim upon which it depends. As above, Claim 34 is dependent upon itself. 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 § 102
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.
Claim(s) 33-40, 43, 45, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Carragher (US Pub No 20230287756).
Carragher discloses in Claim 33: An apparatus for forming a downhole plug or barrier, the apparatus being deployable in a bore and comprising (Carragher abstract discloses places a downhole tool in a wellbore to form a plug):
a plug or barrier-forming material comprising a volume of a first metal (Carragher Fig 1a; 1010 [0044] low melting point expandable metal coating the second metal and first metal) and an aggregate of uniform or irregular shaped macroscopic objects (Carragher Fig 1a; 1011 [0044] high density material [0055] steel shot used as an aggregate), the aggregate being coated with a second metal (Carragher Fig 1a; 1012 [0044] low density metal) to facilitate bonding to the first metal (Carragher Fig 1a; 1010 encompasses both the first metal and second metal bonding them together);
and a heater (Carragher Fig 1; 1001 [0044] a heater is a chemical heater such as thermite or any other heaters (electric or other heaters) known in the art) operable to heat the material and fluidise the first metal (Carragher [0045] heater melts material 1010),
whereby heating the material in a bore to fluidise the first metal and then allowing the fluidised first metal to cool and resolidify in the bore permits formation of a composite plug or barrier comprising a matrix of the first metal and the aggregate (Carragher [0045] heater melts material 1010 and forms a plug).
Carragher discloses in Claim 34: The apparatus of claim 34, wherein the aggregate comprises steel (Carragher Fig 1a; 1011 [0044] high density material [0055] steel shot used as an aggregate).
Carragher discloses in Claim 35: The apparatus according to claim 33, wherein the second metal comprises at least one of zinc (Carragher [0023] 1010 can comprise zinc), tin (Carragher [0036] 1010 can comprise tin as an alloying elements), and copper (Carragher [0036] 1010 can comprise tin as an alloying elements).
Carragher discloses in Claim 36: The apparatus according to claim 33, wherein at least one of:
Carragher discloses in Claim 37: The apparatus according to claim 33, wherein at least one of: the aggregate has a larger dimension of 0.5mm or more (Carragher [0066] particle size of 1200 microns (1.2 mm)); the aggregate has a larger dimension of 1.0mm or more (Carragher [0066] particle size of 1200 microns (1.2 mm)),
Carragher discloses in Claim 38: The apparatus according to claim 33, wherein the material is deployable in at least one of: a flowable form (Carragher [0045] heater melts material 1010 and forms a plug), and a cast form.
Carragher discloses in Claim 39: The apparatus according to claim 33, wherein the material comprises compacted powder (Carragher [0061] powder used in plug forming material).
Carragher discloses in Claim 40: The apparatus according to claim 33, wherein at least one of: the aggregate is provided in a spherical form (Carragher [0055] steel shot used),
Carragher discloses in Claim 43: The apparatus according to claim 33, wherein the plug or barrier- forming material is alloy-based (Carragher [0044] plugging material is comprised of an alloy), in combination with a downhole structure having a surface coated with a metal (Carragher Fig 1a; 1002 [0044] well comprised of a casing) to facilitate bonding with the alloy-based plug or barrier-forming material.
Carragher discloses in Claim 45: A method of forming a downhole plug or barrier, the method comprising:
providing plug or barrier-forming material comprising a first metal (Carragher Fig 1a; 1010 [0044] low melting point expandable metal coating the second metal and first metal) and an aggregate of uniform or irregular shaped macroscopic objects (Carragher Fig 1a; 1011 [0044] high density material [0055] steel shot used as an aggregate) coated with a second metal (Carragher Fig 1a; 1012 [0044] low density metal) to facilitate bonding to the first metal (Carragher Fig 1a; 1010 encompasses both the first metal and second metal bonding them together);
deploying the material in a bore (Carragher Fig 1a; tool is deployed in a wellbore);
providing heat energy (Carragher Fig 1; 1001 [0044] a heater is a chemical heater such as thermite or any other heaters (electric or other heaters) known in the art) to heat the material and fluidise the first metal (Carragher [0045] heater melts material 1010);
allowing the fluidised first metal to cool in the bore and form a composite plug or barrier comprising the first metal and the aggregate (Carragher [0045] heater melts material 1010 and forms a plug).
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) 41-42, 48 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carragher in view of Gonzalez (US Pub No 20060144591).
Carragher discloses in Claim 41: The apparatus according to claim 33 but is silent as to the use of a bonding agent.
However, Gonzalez teaches: the apparatus comprises a bonding agent (Gonzalez [0022] & claim 14 use of a chemical flux borax to improve adhesion), such as flux in order to improve adhesion of the plug)
It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to have modified Carragher to include flux as taught by Gonzalez for the purpose of improving adhesion of the downhole plug (Gonzalez [0022] and claim 14)
Carragher discloses in Claim 42: The apparatus according to claim 33, the plug or barrier- forming material comprises a mixture of alloy particles (Carragher Fig 1a; 1010 [0044] low melting point expandable metal coating the second metal and first metal is an alloy) but is silent as to the use of a bonding agent.
However, Gonzalez teaches: a bonding agent such as flux powder (Gonzalez [0022] & claim 14 use of a chemical flux borax to improve adhesion), such as flux in order to improve adhesion of the plug)
It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to have modified Carragher to include flux as taught by Gonzalez for the purpose of improving adhesion of the downhole plug (Gonzalez [0022] and claim 14)
Carragher discloses in Claim 48: The method according to claim 45, wherein the first metal comprises an alloy (Carragher Fig 1a; 1010 [0044] low melting point expandable metal coating the second metal and first metal is an alloy) but is silent as to the use of a bonding agent.
However, Gonzalez teaches: further comprising bonding the alloy to a downhole non-metallic surface comprising providing active elements in the alloy to facilitate bonding the alloy to the non- metallic surface (Gonzalez [0022] & claim 14 use of a chemical flux borax to improve adhesion), such as flux in order to improve adhesion of the plug)
It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to have modified Carragher to include flux as taught by Gonzalez for the purpose of improving adhesion of the downhole plug (Gonzalez [0022] and claim 14)
Claim(s) 46-47 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carragher as applied to claim 45 above.
Carragher discloses in Claim 46:
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the thermal coefficient of expansion of the aggregate of Carragher to below the downhole structures lower thermal coefficient as applicant appears to have placed no criticality on the claimed range page 3 line 18-20 “…the first metal or a composite of the first metal and an aggregate may have a low thermal coefficient of expansion when compared to the material of the tubular…” and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. In re Wertheim, 541F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16USPQ2d 1934 (Fed. Cir. 1990).
Carragher discloses in Claim 47:
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the density of the first metal of Carragher to reduce the thermal conductivity as applicant appears to have placed no criticality on the claimed range page 5 line 20-23 “lower density insulating aggregate forms can be used to reduce the thermal conductivity…” and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. In re Wertheim, 541F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 49-50 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carragher as applied to claim 45 above, and further in view of Gonzalez (US Pub No 20060144591) and Lhymn (US Pat No 5223347).
Carragher discloses in Claim 49: The method of claim 45, wherein the plug or barrier-forming material comprises an alloy (Carragher [0044] plugging material is comprised of an alloy) and downhole tubing is provided in the bore (Carragher Fig 1a; 1002 [0044] well comprised of a casing) Carragher does not disclose the use of an acid prior to bonding.
However, Gonzalez teaches: cleaning a surface of the tubing with hydrochloric or hydrofluoric acid gas (Gonzalez [0022] acid is utilized to improve adhesion to the casing) to aid the subsequent bonding of the alloy to the tubing (Gonzalez [0022] acid is utilized to improve adhesion to the casing) for the purpose of improving bonding on the plug.
It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to have modified Carragher to include acid as taught by Gonzalez for the purpose of improving adhesion of the downhole plug (Gonzalez [0022])
Carragher in view of Gonzalez does not disclose the specific acid utilized.
However, Lhymn discloses the use of hydrochloric acid in forming a bond for a plug (Lhymn col 6 line 1-15).
As both Carragher et al and Lhymn both disclose an acid, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to substitute the generic acid of Carragher et al. for the hydrochloric acid as Lhymn discloses they are equivalent and to achieve the predictable result of cleaning and removing debris to facilitate a better plug bond.
Carragher discloses in Claim 50: The method of claim 49, wherein the downhole tubing is formed of steel (Carragher Fig 1a; 1002 [0044] well comprised of a casing).
Allowable Subject Matter
Claim 44, 51, 52 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance:
Thermally plug barriers are well known in the art of wellbore exploration and operations. Representative art which appears close to the claimed invention includes Carragher (US Pub No 20230287756). This art, alone or in combination, discloses various structures related to deploying and setting an alloy ploy comprising multiple metals and an aggregate utilizing various recited features including but not limited to, such as a first metal, a second metal coating an aggregate, and a heater. However, this art fails to disclose or fairly suggest the specifically combined structure and steps regarding the specific positional relationships and operations between each recited structure in operation, such as Claim 44: The apparatus of claim 43, wherein the surface is coated with tin and the alloy is a tin-based alloy, Claim 51: The method of claim 49, further comprising directing the acid gas though tubing perforations into a tubing annulus to clean surfaces of the annulus, Claim 52: The method according to claim 49, further comprising cleaning the surface of the tubing and forming an alloy barrier in the tubing in a single run. It could be argued that the individual structure is generally known or easily conceived in the art and thus, could just be assembled to disclose the claimed invention. However, the instant invention clearly and specifically recites structural relationships and combinations, which require a greater effort than just cobbling together known structures. Furthermore, the claimed structures are sufficiently detailed to be distinguishable when configured as claimed. The examiner could find no motivation to combine or modify the references which would define a fully functioning apparatus as claimed in the instant application.
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas D Wlodarski whose telephone number is (571)272-3970. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm.
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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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/NICHOLAS D WLODARSKI/ Examiner, Art Unit 3672
/Nicole Coy/ Supervisory Patent Examiner, Art Unit 3672
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