DETAILED ACTION
The amendment filed 3/31/2026 has been entered.
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 .
Terminal Disclaimer
The terminal disclaimer filed on 4/9/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of USP 12,448,866 and any patent resulting from 19/062,403, 19,062,547, or 18/984,461 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant’s arguments with respect to all claim(s) 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.
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(s) 1-3, 5-7, 11-13, and 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vick, Jr. et al. (US 8,453,749) in view of Vick, Jr. (US 2016/0265309)
In regard to claim 1, Vick, Jr. et al. disclose a safety valve, comprising: a first portion, the first portion including a safety valve sub (outer housing as in fig 2) having an magnetic assembly (48), the first portion configured to be run-in-hole as part of wellbore tubing (as in fig 2, col. 2, lines 53-55); a second portion, the second portion including a valve closure mechanism (44) and a bore flow management actuator (42), the bore flow management actuator configured to slide from a first initial state to a first subsequent state to move the valve closure mechanism between a first closed state and a first open state (col. 4, lines 51-63); and a third portion, the third portion including a mechanical connecting apparatus (46) having one or more magnetic targets associated therewith, the third portion configured to engage with at least a portion of the bore flow management actuator (as in fig 2), the one or more magnetic targets configured to magnetically engage with the magnetic assembly to axially fix the bore flow management actuator in the first subsequent state (col. 4, lines 51-63). Vick, Jr. does not disclose that the magnetic assembly of the sub is an electromagnetic assembly which is energized or that the one or more magnetic targets are configured to be at least partially misaligned with the electromagnetic assembly when the bore flow management actuator is in the first initial state and configured to be at least partially aligned with the electromagnetic assembly when the bore flow management actuator is in the first subsequent state.
Vick, Jr. ‘309 discloses a safety valve, comprising a safety valve sub having an electromagnetic assembly (148, paragraph 37); wherein one or more magnetic targets (158) magnetically engage with the electromagnetic assembly when the electromagnetic assembly is in an energized state to axially fix a bore flow management actuator (150); the one or more magnetic targets are configured to be at least partially misaligned with the electromagnetic assembly when the bore flow management actuator is in a first initial state (as in fig 2A where 148 and 158 are considered partially misaligned as shown) and configured to be at least partially aligned with the electromagnetic assembly when the bore flow management actuator is in the first subsequent state (fig 3A where 148 and 158 are considered partially aligned as shown).
It would have been obvious to one of ordinary skill in the art before the time of effective filing to substitute the magnetic assembly and target orientation of Vick, Jr. et al. with the electromagnetic assembly and target orientation as taught by Vick, Jr. ‘309 in order to provide selective energization of the magnetic assembly and since simple substitution of one known element for another to obtain predictable results is considered obvious to one of ordinary skill.
In regard to claim 2, Vick, Jr. et al. disclose wherein the magnetic assembly is located in a pocket in the safety valve sub (as within 56 in fig 2, as combined would be electromagnetic assembly).
In regard to claim 3, Vick Jr. et al. disclose wherein the first portion further includes a fluid isolation sleeve separating the electromagnetic assembly located in the pocket from the mechanical connecting apparatus (as in fig 2, portion of housing separating 56 and 66).
In regard to claim 5, Vick, Jr. et al. disclose wherein the fluid isolation sleeve is an axially fixed fluid isolation sleeve (as in fig 2).
In regard to claim 6, Vick, Jr. et al. disclose wherein the one or more magnetic targets are one or more permanent magnets (46 as best understood as disclosed would be considered permanent magnet).
In regard to claim 7, Vick, Jr. et al. disclose wherein the bore flow management actuator includes a bore flow management actuator profile (42 as forming pocket above and below for 46 as shown in fig 2) and the mechanical connecting apparatus includes a downhole mechanical connecting apparatus profile (46 as fitting within pocket within 42), and further wherein the downhole mechanical connecting apparatus profile is configured to couple with the bore flow management actuator profile to axially couple the at least a portion of the bore flow management actuator and the mechanical connecting apparatus (as in fig 2).
In regard to claim 11, Vick, Jr. et al. disclose a well system, comprising: a wellbore extending through one or more subterranean formations (as in fig 1); production tubing (14) disposed in the wellbore; and a safety valve (12) disposed in the wellbore, the safety valve including: a first portion, the first portion including a safety valve sub (outer housing as in fig 2) having an magnetic assembly (48), the first portion configured to be run-in-hole as part of wellbore tubing (as in fig 2, col. 2, lines 53-55); a second portion, the second portion including a valve closure mechanism (44) and a bore flow management actuator (42), the bore flow management actuator configured to slide from a first initial state to a first subsequent state to move the valve closure mechanism between a first closed state and a first open state (col. 4, lines 51-63); and a third portion, the third portion including a mechanical connecting apparatus (46) having one or more magnetic targets associated therewith, the third portion configured to engage with at least a portion of the bore flow management actuator (as in fig 2), the one or more magnetic targets configured to magnetically engage with the magnetic assembly to axially fix the bore flow management actuator in the first subsequent state (col. 4, lines 51-63). Vick, Jr. does not disclose that the magnetic assembly of the sub is an electromagnetic assembly which is energized or that the one or more magnetic targets are configured to be at least partially misaligned with the electromagnetic assembly when the bore flow management actuator is in the first initial state and configured to be at least partially aligned with the electromagnetic assembly when the bore flow management actuator is in the first subsequent state.
Vick, Jr. ‘309 discloses a well system comprising a safety valve, including a safety valve sub having an electromagnetic assembly (148, paragraph 37); wherein one or more magnetic targets (158) magnetically engage with the electromagnetic assembly when the electromagnetic assembly is in an energized state to axially fix a bore flow management actuator (150); the one or more magnetic targets are configured to be at least partially misaligned with the electromagnetic assembly when the bore flow management actuator is in a first initial state (as in fig 2A where 148 and 158 are considered partially misaligned as shown) and configured to be at least partially aligned with the electromagnetic assembly when the bore flow management actuator is in the first subsequent state (fig 3A where 148 and 158 are considered partially aligned as shown).
It would have been obvious to one of ordinary skill in the art before the time of effective filing to substitute the magnetic assembly and target orientation of Vick, Jr. et al. with the electromagnetic assembly and target orientation as taught by Vick, Jr. ‘309 in order to provide selective energization of the magnetic assembly and since simple substitution of one known element for another to obtain predictable results is considered obvious to one of ordinary skill.
In regard to claim 12, Vick, Jr. et al. disclose wherein the magnetic assembly is located in a pocket in the safety valve sub (as within 56 in fig 2, as combined would be electromagnetic assembly).
In regard to claim 13, Vick Jr. et al. disclose wherein the first portion further includes a fluid isolation sleeve separating the electromagnetic assembly located in the pocket from the mechanical connecting apparatus (as in fig 2, portion of housing separating 56 and 66).
In regard to claim 15, Vick, Jr. et al. disclose wherein the fluid isolation sleeve is an axially fixed fluid isolation sleeve (as in fig 2).
In regard to claim 16, Vick, Jr. et al. disclose wherein the one or more magnetic targets are one or more permanent magnets (46 as best understood as disclosed would be considered permanent magent).
In regard to claim 17, Vick, Jr. et al. disclose wherein the bore flow management actuator includes a bore flow management actuator profile (42 as forming pocket above and below for 46 as shown in fig 2) and the mechanical connecting apparatus includes a downhole mechanical connecting apparatus profile (46 as fitting within pocket within 42), and further wherein the downhole mechanical connecting apparatus profile is configured to couple with the bore flow management actuator profile to axially couple the at least a portion of the bore flow management actuator and the mechanical connecting apparatus (as in fig 2).
Claim(s) 4 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vick, Jr. et al. in view of Vick, Jr. ‘309 as applied to claims 3 and 13 above, and further in view of Vick, Jr. (US 8,919,730).
In regard to claims 4 and 14, Vick, Jr. et al. and Vick, Jr. ‘309 disclose all the limitations of these claims, as applied to claims 3 and 13 above, except for disclosing the fluid isolation sleeve is non-ferromagnetic. Vick, Jr. ‘730 discloses a safety valve and well system wherein a fluid isolation sleeve is non-ferromagnetic (col. 3, lines 46-49). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the fluid isolation sleeve of Vick, Jr. et al., as modified by Vick, Jr. ‘309, to be non-ferromagnetic, as taught by Vick, Jr. ‘730 in order to ensure the wall does not interfere with magnetic coupling between the magnetic targets and the electromagnetic assembly (as in Vick, Jr. ‘730 col. 3, lines 46-49).
Claim(s) 8-9 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vick, Jr. et al. in view of Vick, Jr. ‘309 as applied to claims 7 and 17 above, and further in view of Vick, Jr. (US 11,248,441).
In regard to claims 8 and 18, Vick Jr. et al. and Vick, Jr. ‘309 disclose all the limitations of these claims, as applied to claims 7 and 17 above, except for wherein the bore flow management actuator includes a flow tube main body and a translating sleeve assembly including a translating sleeve, and further wherein the downhole mechanical connecting apparatus profile is configured to couple with the translating sleeve of the second portion to axially fix together the one or more magnetic targets and the translating sleeve. Vick, Jr. et al. ‘441 discloses a safety valve and well system wherein a bore flow management actuator includes a flow tube main body (208) and a translating sleeve assembly including a translating sleeve (222). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the valve and well system of Vick, Jr. et al., as modified by Vick, Jr. ‘309, with the flow tube main body and translating sleeve of Vick, Jr. et al. ‘730 since combining prior art elements according to known methods to yield predictable results is considered obvious to one of ordinary skill. As combined, the downhole mechanical connecting apparatus profile would be necessarily configured to couple with the translating sleeve of the second portion to axially fix together the one or more magnetic targets and the translating sleeve to function as intended.
In regard to claims 9 and 19, Vick Jr. et al. ‘730, Vick, Jr. ‘309 and Vick et al. ‘441 disclose all the limitations of these claims, as applied to claims 7 and 17 above, except for wherein the second portion further includes a lower valve assembly located proximate the valve closure mechanism and an upper valve assembly positioned distal the valve closure mechanism, and further wherein the bore flow management actuator includes a power spring disposed between the lower valve assembly and a translating sleeve shoulder of the translating sleeve.
Vick, Jr. et al. ‘441 discloses a safety valve and well system wherein a second portion further includes a lower valve assembly (216 as in fig 2A) located proximate a valve closure mechanism (204) and an upper valve assembly (234) positioned distal the valve closure mechanism, and further wherein the bore flow management actuator includes a power spring (210) disposed between the lower valve assembly and a translating sleeve shoulder (232) of the translating sleeve. It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the valve and well system of Vick, Jr. et al., as modified by Vick, Jr. ‘309, with the flow tube main body and translating sleeve of Vick, Jr. et al. ‘730 since combining prior art elements according to known methods to yield predictable results is considered obvious to one of ordinary skill.
Claim(s) 10, 20 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vick, Jr. et al. in view of Vick, Jr. ‘309 (as applied to claims 1 and 11 above, in regard to claims 10 and 20), and further in view of Passmore et al. (US 2023/0399919).
In regard to claim 10, Vick Jr. et al. as modified by Vick, Jr. ‘309 discloses all the limitations of this claim, as applied to claim 1 above, including the first portion is configured to be run-in-hole as part of well tubing (as in fig 2) except for the second portion is configured to be run-in-hole after the first portion, and the third portion is configured to be run-in-hole after the second portion. Passmore discloses a safety valve wherein a second portion (as including a valve member 320) and a third portion (as including a bore flow management actuator 330) are run-in-hole (figs 4B-4H) after the first portion and wherein the third portion is run-in-hole after the second portion (as necessary since third portion results in being uphole of second portion including valve member). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the configure the portions of Vick, Jr. et al., as modified by Vick Jr. ‘309, to be run-in-hole sequentially, as taught by Passmore, in order to provide their replaceability (as in Passmore, paragraph 15).
In regard to claim 20, Vick Jr. et al. as modified by Passmore discloses all the limitations of this claim, as applied to claim 11 above, including the first portion is configured to be run-in-hole as part of well tubing (as in fig 2) except for the second portion is configured to be run-in-hole after the first portion, and the third portion is configured to be run-in-hole after the second portion. Passmore discloses a safety valve wherein a second portion (as including a valve member 320) and a third portion (as including a bore flow management actuator 330) are run-in-hole (figs 4B-4H) after the first portion and wherein the third portion is run-in-hole after the second portion (as necessary since third portion results in being uphole of second portion including valve member). It would have been obvious to one of ordinary skill in the art before the time of effective filing to configure the portions of Vick, Jr. et al., as modified by Vick, Jr. ‘309 to be run-in-hole sequentially, as taught by Passmore, in order to provide their replaceability (as in Passmore, paragraph 15).
In regard to claim 21, Vick, Jr. et al. disclose a method, comprising: positioning a first portion within a wellbore extending through one or more subterranean formations (as in fig 1-2), the first portion including a safety valve sub having an magnetic assembly (48); positioning a second portion within the wellbore, the second portion including a valve closure mechanism (44) and a bore flow management actuator (42), the bore flow management actuator configured to slide from a first initial state to a first subsequent state to move the valve closure mechanism between a first closed state and a first open state; and positioning a third portion within the wellbore, the third portion including a mechanical connecting apparatus having one or more magnetic targets (46) associated therewith, the one or more magnetic targets configured to magnetically engage with the magnetic assembly. Vick, Jr. does not disclose that the magnetic assembly of the sub is an electromagnetic assembly which is energized, or that the second portion is run-in-hole after the first portion or that the third portion is run-in-hole after the second portion or that the one or more magnetic targets are configured to be at least partially misaligned with the electromagnetic assembly when the bore flow management actuator is in the first initial state and configured to be at least partially aligned with the electromagnetic assembly when the bore flow management actuator is in the first subsequent state.
Vick, Jr. ‘309 discloses a safety valve, comprising a safety valve sub having an electromagnetic assembly (148, paragraph 37); wherein one or more magnetic targets (158) magnetically engage with the electromagnetic assembly when the electromagnetic assembly is in an energized state to axially fix a bore flow management actuator (150); the one or more magnetic targets are configured to be at least partially misaligned with the electromagnetic assembly when the bore flow management actuator is in a first initial state (as in fig 2A where 148 and 158 are considered partially misaligned as shown) and configured to be at least partially aligned with the electromagnetic assembly when the bore flow management actuator is in the first subsequent state (fig 3A where 148 and 158 are considered partially aligned as shown).
It would have been obvious to one of ordinary skill in the art before the time of effective filing to substitute the magnetic assembly and target orientation of Vick, Jr. et al. with the electromagnetic assembly and target orientation as taught by Vick, Jr. ‘309 in order to provide selective energization of the magnetic assembly and since simple substitution of one known element for another to obtain predictable results is considered obvious to one of ordinary skill. Vick, Jr. ‘309 also do not disclose that the second portion is run-in-hole after the first portion or that the third portion is run-in-hole after the second portion.
Passmore et al. disclose a method comprising positioning a safety valve wherein a second portion (as including a valve member 320) and a third portion (as including a bore flow management actuator 330) are run-in-hole (figs 4B-4H) after the first portion and wherein the third portion is run-in-hole after the second portion (as necessary since third portion results in being uphole of second portion including valve member). It would have been obvious to one of ordinary skill in the art before the time of effective filing to configure the portions of Vick, Jr. et al., as modified by Vick, Jr. ‘309 to be run-in-hole sequentially, as taught by Passmore, in order to provide their replaceability (as in Passmore, paragraph 15).
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 D Andrews whose telephone number is (571)272-6558. The examiner can normally be reached M-F, 7-3.
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/D. ANDREWS/Primary Examiner, Art Unit 3672
4/30/2026
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