DETAILED ACTION
Claims 1-14 are pending. Claims 15-20 are allowed.
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
The drawings were received on 10/14/2025. These drawings are acceptable.
Applicant's arguments filed 10/14/2025 have been fully considered but they are not persuasive.
Applicant’s representative amended claims 1 (and, similarly claim 9) to further recite: “[...] a first fluid passage extending between the internal cavity and the wellbore on exterior of the coupling thereby fluidly connecting the internal cavity with the wellbore when the downhole tool is conveyed within the wellbore;
a second fluid passage extending between the internal cavity and the wellbore on the exterior of the coupling thereby fluidly connecting the internal cavity with the wellbore...”.
Applicant’s states: “Specifically, the fluid passage 22 does not extend between the interior of the isolator/diverter 28 and the wellbore 12 on the exterior of the isolator/diverter 28 thereby fluidly connecting the interior of the isolator/diverter 28 with the wellbore, as required by claim 1 of the present application.”
Examiner respectfully disagrees. Examiner notes that the claims are broad in nature. Examiner respectfully notes that the keyword “fluidly connecting” is broad in nature in light of the instant application’s specification. The argument relies on far too narrow of a definition for such a term, and to require it be read that way would be improperly importing limitations from the instant application’s specification into the claims. With that being said, Anderson teaches the limitation as broadly and reasonably construed by one skilled in the art (see rejections here). 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 Objections
Claim 1 (and, similarly claim 9) is/are objected to because of the following informalities and should likely read as follow: “[...] a first fluid passage extending between the internal cavity and the wellbore on the exterior of the coupling thereby fluidly connecting the internal cavity with the wellbore when the downhole tool is conveyed within the wellbore...”. Appropriate correction is required.
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.
Claim(s) 1-4, 9-11 and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Anderson et al. (US Publication Number 2020/0362675 A1; hereinafter “Anderson”).
In regard to claim 1, Anderson discloses: A coupling (28) for connecting a downhole tool (10) to a tubing string (14) such that the downhole tool can be conveyed within a wellbore (12) via the tubing string (at least paragraphs [0091-0113]), wherein the coupling comprises:
an internal cavity (i.e., bore of 28) configured to fluidly connect with an internal fluid passage (i.e., bore of 14) of the tubing string when the coupling is connected with tubing string (paragraphs [0091-0113]);
a first fluid passage (51, 58 — figure 2) extending between the internal cavity and the wellbore on the exterior of the coupling thereby fluidly connecting the internal cavity with the wellbore when the downhole tool is conveyed within the wellbore (paragraphs [0091-0113] and figure 2 | Examiner notes that Anderson anticipates the elements to be “fluidly” connected, as it structurally and functionally allows for the first fluid passage between the elements to activate the element 18);
a second fluid passage (22) extending between the internal cavity and the wellbore on exterior of the coupling thereby fluidly connecting the internal cavity with the wellbore (paragraphs [0091-0113] and figure 11 | Examiner notes that Anderson anticipates the elements to be “fluidly” connected, as it structurally and functionally allows for the second fluid passage between the elements to activate the element 20);
a fluid blocking member (40) disposed along the second fluid passage, wherein the fluid blocking member blocks the second fluid passage (paragraphs [0091-0113] and figure 3); and
a third fluid passage (52) fluidly connected with the internal cavity and configured to fluidly connect the internal cavity with the downhole tool when the coupling is connected with the downhole tool (paragraphs [0091-0113]).
In regard to claim 2, Anderson further discloses: wherein the tubing string comprises at least one of: coiled tubing and a tubular joint string (figures 1-4).
In regard to claim 3, Anderson further discloses: wherein the downhole tool comprises at least one of: a thermal perforating tool, a thermal cutting tool, a downhole torch, a downhole plug, a downhole packer, and a setting tool (paragraphs [0101, 0105]).
In regard to claim 4, Anderson further discloses: a stopper (64) and a stopper seat (56) disposed along the first fluid passage, wherein the stopper seat is configured to hold the stopper, and wherein the stopper is configured to be passed through the internal fluid passage of the tubing string and be seated in the stopper seat to block the first fluid passage to thereby fluidly disconnect the internal cavity from the wellbore (paragraphs [0103-0105]).
In regard to claim 9, Anderson discloses: A system (as shown in at least figures 1-4) for conveying and activating a downhole tool (10) within a wellbore (12) via a tubing string (14 — at least paragraphs [0091-0113]), wherein the system comprises:
a coupling (28) configured for connection between the tubing string and the downhole tool (figures 1-4), wherein the coupling comprises:
an internal cavity (i.e., bore of 28) configured to fluidly connect with and receive internal pressure from an internal fluid passage (i.e., bore of 14) of the tubing string when the coupling is connected with tubing string (paragraphs [0091-0113]);
a first fluid passage (51, 58 — figure 2) extending between the internal cavity and the wellbore on the exterior of the coupling thereby fluidly connecting the internal cavity with the wellbore when the downhole tool is conveyed within the wellbore (paragraphs [0091-0113] and figure 2 | Examiner notes that Anderson anticipates the elements to be “fluidly” connected, as it structurally and functionally allows for the first fluid passage between the elements to activate the element 18);
a second fluid passage (22) extending between the internal cavity and the wellbore on the exterior of the coupling thereby fluidly connecting the internal cavity in the wellbore (paragraphs [0091-0113] and figure 11 | Examiner notes that Anderson anticipates the elements to be “fluidly” connected, as it structurally and functionally allows for the second fluid passage between the elements to activate the element 20);
a fluid blocking member (40) disposed along the second fluid passage, wherein the fluid blocking member blocks the second fluid passage (paragraphs [0091-0113] and figure 3); and
a third fluid passage (52) fluidly connected with the internal cavity (paragraphs [0091-0113]); and
an activator (i.e., of 18) connected to the coupling, wherein:
the third fluid passage fluidly connects the internal cavity with the activator;
the third fluid passage is configured to communicate the internal pressure from the internal cavity to the activator; and
the activator is configured to activate the downhole tool when the internal pressure reaches a predetermined pressure (i.e., activation pressure — paragraphs [0101, 0105]).
In regard to claim 10, Anderson further discloses: wherein the tubing string comprises at least one of: coiled tubing and a tubular joint string (figures 1-4), and wherein the downhole tool comprises at least one of: a thermal perforating tool, a thermal cutting tool, a downhole torch, a downhole plug, a downhole packer, and a setting tool (paragraphs [0101, 0105]).
In regard to claim 11, Anderson further discloses: a stopper (64) and a stopper seat (56) disposed along the first fluid passage, wherein the stopper seat is configured to hold the stopper, and wherein the stopper is configured to be passed through the internal fluid passage of the tubing string and be seated in the stopper seat to block the first fluid passage to thereby fluidly disconnect the internal cavity from the wellbore paragraphs [0103-0105]).
In regard to claim 14, Anderson further discloses: the predetermined pressure is a first predetermined pressure; the second fluid passage is configured to communicate the internal pressure from the internal cavity to the fluid blocking member; the fluid blocking member is configured to unblock the second flow passage when the internal pressure reaches a second predetermined pressure (i.e., the predetermined pressure threshold to actuate the movement of the sliding sleeve 40) thereby fluidly connecting the internal cavity with the wellbore; and the second predetermined pressure is higher than the first predetermined pressure (The actuation of the releasable locking connection of the sliding sleeve 40 “…may be achieved, for example, by selecting a material of the locking member that is configured to sufficiently deform at the predetermined force such that the locking member is able to slide across the oblique surface of the first recess and release the releasable connection” — see paragraphs [0024 and 0098] | also, see paragraphs [0064]-[0065] disclosing first and second pressure signals associated with actuating the first and second perforating guns, respectively, and [0104]-[0105] disclosing the second perforating gun being “isolated” from firing during receipt of first pressure signal, such that the releasable locking connection resists deformation during the first pressure signal, i.e., the releasable locking connection requires higher pressure to activate).
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) 6-7 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Anderson et al. (US Publication Number 2020/0362675 A1; hereinafter “Anderson”) in view of Wang et al. (US Publication 2014/0060839 A1; hereinafter “Wang”).
In regard to claim 6, Anderson further discloses: the downhole tool comprises a pressure-initiated activator (i.e., of 18) and; the internal cavity is configured to receive internal pressure from the internal fluid passage when the coupling is connected with tubing string; the third fluid passage is configured to communicate the internal pressure from the internal cavity to the pressure-initiated activator when the coupling is connected with the downhole tool; and the pressure-initiated activator is configured to activate an exothermic reaction when the internal pressure reaches a predetermined pressure (i.e., activation pressure — paragraphs [0101, 0105]).
However, Anderson is silent in regard to: the downhole tool comprises a pressure-initiated activator and a fuel; the fuel comprises at least one of: a thermite and a thermite mixture; and the pressure-initiated activator is configured to activate an exothermic reaction of the fuel when the internal pressure reaches a predetermined pressure.
Nonetheless, Wang introduces a downhole perforation tool (see paragraphs [0024-0025]) in which the downhole tool 100 can be actuated via a pressure (see paragraph [0016]). Wang further discloses that the downhole tool 100 can comprise of thermite fuel (see paragraph [0014]).
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 simply substitute the perforator assembly taught by Anderson with a perforator assembly comprising thermite fuel as taught by Wang to yield the predictable result of conducting fracturing operation(s) without causing perforation damage to the casing or liner and the surrounding formation (see paragraph [0024-0025]). See MPEP 2143, section I, subsection B.
In regard to claim 7, Anderson further discloses: the predetermined pressure is a first predetermined pressure; the second fluid passage is configured to communicate the internal pressure from the internal cavity to the fluid blocking member; and the fluid blocking member is configured to unblock the second flow passage when the internal pressure reaches a second predetermined pressure (i.e., the predetermined pressure threshold to actuate the movement of the sliding sleeve 40) thereby fluidly connecting the internal cavity with the wellbore; and the second predetermined pressure is higher than the first predetermined pressure (The actuation of the releasable locking connection of the sliding sleeve 40 “…may be achieved, for example, by selecting a material of the locking member that is configured to sufficiently deform at the predetermined force such that the locking member is able to slide across the oblique surface of the first recess and release the releasable connection” — see paragraphs [0024 and 0098] | also, see paragraphs [0064]-[0065] disclosing first and second pressure signals associated with actuating the first and second perforating guns, respectively, and [0104]-[0105] disclosing the second perforating gun being “isolated” from firing during receipt of first pressure signal, such that the releasable locking connection resists deformation during the first pressure signal, i.e., the releasable locking connection requires higher pressure to activate).
In regard to claim 13, Anderson further discloses: the activator is configured to activate an exothermic reaction when the internal pressure reaches the predetermined pressure (i.e., activation pressure — paragraphs [0101, 0105]).
However, Anderson is silent in regard to: the downhole tool comprises a fuel; the fuel comprises at least one of: a thermite and a thermite mixture; and the activator is configured to activate an exothermic reaction of the fuel when the internal pressure reaches the predetermined pressure.
Nonetheless, Wang introduces a downhole perforation tool (see paragraphs [0024-0025]) in which the downhole tool 100 can be actuated via a pressure (see paragraph [0016]). Wang further discloses that the downhole tool 100 can comprise of thermite fuel (see paragraph [0014]).
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 simply substitute the perforator assembly taught by Anderson with a perforator assembly comprising thermite fuel as taught by Wang to yield the predictable result of conducting fracturing operation(s) without causing perforation damage to the casing or liner and the surrounding formation (see paragraph [0024-0025]). See MPEP 2143, section I, subsection B.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Anderson et al. (US Publication Number 2020/0362675 A1; hereinafter “Anderson”) in view of Wang et al. (US Publication 2014/0060839 A1; hereinafter “Wang”).
In regard to claim 8, Anderson further discloses: the predetermined pressure is a first predetermined pressure; the fluid blocking member comprises a burst (i.e. the predetermined pressure burst to move the sliding sleeve 40); the second fluid passage is configured to communicate the internal pressure from the internal cavity to the burst; and the burst is configured to rupture to thereby unblock the second flow passage when the internal pressure reaches a second predetermined pressure (i.e., the predetermined pressure threshold to actuate the movement of the sliding sleeve 40) thereby fluidly connecting the internal cavity with the wellbore; and the second predetermined pressure is higher than the first predetermined pressure (The actuation of the releasable locking connection of the sliding sleeve 40 “…may be achieved, for example, by selecting a material of the locking member that is configured to sufficiently deform at the predetermined force such that the locking member is able to slide across the oblique surface of the first recess and release the releasable connection” — see paragraphs [0024 and 0098] | also, see paragraphs [0064]-[0065] disclosing first and second pressure signals associated with actuating the first and second perforating guns, respectively, and [0104]-[0105] disclosing the second perforating gun being “isolated” from firing during receipt of first pressure signal, such that the releasable locking connection resists deformation during the first pressure signal, i.e., the releasable locking connection requires higher pressure to activate).
However, Anderson appears to be silent in regard to: the fluid blocking member comprises a burst disc.
Nonetheless, Groves discloses that downhole tool ports (such as, frac ports) can be exposed/opened via a sliding sleeve, burst disk, mechanical actuation, etc. (see paragraph [0039]).
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 simply substitute the sliding sleeve taught by Anderson with a burst disk as taught by Groves to allow for a remotely controlled pressure actuated opening of a passageway in a downhole tool since Groves to yield the predictable result of remotely actuating downhole tool elements (such as, ports, passageways, etc.) since Groves expressly teaches multiple known alternatives. See MPEP 2143, section I, subsection B.
Allowable Subject Matter
Claims 5 and 12 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 15-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Anderson discloses: A method (paragraph [0001]) comprising:
connecting a coupling (28) between a downhole tool (10) and a lower end of a tubing string (14) such that an internal cavity (i.e., bore of 28) of the coupling is fluidly connected with an internal fluid passage (i.e., bore of 14) of the tubing string and a pressure passage (52) of the coupling is fluidly connected with the downhole tool, wherein the internal cavity and the pressure passage are fluidly connected (paragraphs [0091-0113]);
lowering the downhole tool within the wellbore via the tubing string thereby causing a fluid to flow from the wellbore into the tubing string via a first fluid passage (51, 58 — figure 2) of the coupling, wherein the first fluid passage extends between the internal cavity and exterior of the coupling (paragraphs [0091-0113] and figure 2);
blocking (i.e., via 64) the first fluid passage to fluidly disconnect the internal cavity from the wellbore (paragraphs [0103-0105]);
pressurizing the fluid within the internal fluid passage of the tubing string to increase pressure within the internal cavity to:
a first pressure to cause operation of the downhole tool (paragraphs [0103-0105]); and
then a second pressure to cause operation of a fluid blocking member, wherein the second pressure is higher than the first pressure, wherein the fluid blocking member is disposed along a second fluid passage extending between the internal cavity and the exterior of the coupling, wherein the fluid blocking member blocks the second fluid passage, and wherein the operation of the fluid blocking member comprises unblocking the second fluid passage to fluidly connect the internal cavity with the wellbore (The actuation of the releasable locking connection of the sliding sleeve 40 “…may be achieved, for example, by selecting a material of the locking member that is configured to sufficiently deform at the predetermined force such that the locking member is able to slide across the oblique surface of the first recess and release the releasable connection” — see paragraphs [0024 and 0098] | also, see paragraphs [0064]-[0065] disclosing first and second pressure signals associated with actuating the first and second perforating guns, respectively, and [0104]-[0105] disclosing the second perforating gun being “isolated” from firing during receipt of first pressure signal, such that the releasable locking connection resists deformation during the first pressure signal, i.e., the releasable locking connection requires higher pressure to activate).
Anderson is the closest reference, however, Anderson fails to teach “[...] raising the downhole tool within the wellbore via the tubing string thereby causing the fluid to flow out of the tubing string into the wellbore via the second fluid passage”. Rather, Anderson teaches for the “second flow passage” (i.e., of 22) to fluidly connect the interior of the tubing string (i.e., bore of 28) coupling to an exterior of the tubing string coupling (i.e., tubing string coupling 28) via a closed bypass connection tubing (22) which is coupled to another area of the assembly downhole thereof (i.e., first perforating gun 20), not to the wellbore (12) — see figure 4 and paragraphs [0093, 0099-0100] of Anderson. Therefore, the prior art of record, either singularly or in combination thereof, does not teach, nor would be obvious to modify the reference to meet this limitation, as such a modification would require too significant of a redesign of the prior art system/method and would essentially destroy the Anderson reference.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/NEEL GIRISH PATEL/Patent Examiner, Art Unit 3676
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