DETAILED ACTION
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 .
Claim Rejections - 35 USC § 103
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 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) 1-3, 7,8, 10-13, 17,18 and 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20240337172 A1 to Roselier In view of US 20230243224 A1 (WO 2021/034325 a1 published 02/25/21) to Greci.
Note Independent claims are addressed first so like claims can be grouped together.
Regarding claim 1: Roselier discloses 1. (Currently Amended) A sealing/anchoring tool 20, comprising:
a mandrel 30;
a hydraulically deformable member 32 positioned about the mandrel; and
a sealing/anchoring element (42) positioned about the hydraulically deformable member, the sealing/anchoring element including:
a circlet (42) having an inside surface having an inside diameter (di), an outside surface having an outside diameter (do), a width (w), and a wall thickness (t), the mandrel 30 and hydraulically deformable member 32 configured to remain radially within and support the circlet in a radially enlarged chemical state. ([0025], Figs 11-15)
However Roselier fails to disclose where the circlet comprises an expandable metal configured to expand in response to hydrolysis to chemically deform the circlet from a radially reduced chemical state to a radially enlarged chemical state,
Greci teaches a circlet 30 for use in a wellbore to form a seal against said wellbore comprising an expandable metal [0011, 0013] configured to expand in response to hydrolysis to chemically deform the circlet from a radially reduced chemical state to a radially enlarged chemical state.([0018], [0036] Figs 3a-3c show the circlet mechanically expanded and subsequently chemically expanded)
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Roselier and use for his seal 42 an expandable metal configured to expand in response to hydrolysis to chemically deform the circlet from a radially reduced chemical state to a radially enlarged chemical state, in view of Greci, so as to form “a pressure barrier as well as provides additional anchoring force for the tubular.” [0009]
Regarding claim 11: Roselier discloses 11. (Currently Amended) A well system, comprising:
a wellbore 24;
a sealing/anchoring tool 20 positioned within the wellbore, the sealing/anchoring tool including:
a mandrel 30;
a hydraulically deformable member 32 positioned about the mandrel; and
a sealing/anchoring element (42) positioned about the hydraulically deformable member, the sealing/anchoring element including:
a circlet (42) having an inside surface having an inside diameter (di), an outside surface having an outside diameter (do), a width (w), and a wall thickness (t), the mandrel 30 and hydraulically deformable member 32 configured to remain radially within and support the circlet in a radially enlarged chemical state. ([0025], Figs 11-15)
However Roselier fails to disclose where the circlet comprises an expandable metal configured to expand in response to hydrolysis to chemically deform the circlet from a radially reduced chemical state to a radially enlarged chemical state,
Greci teaches a circlet 30 for use in a wellbore to form a seal against said wellbore comprising an expandable metal [0011, 0013] configured to expand in response to hydrolysis to chemically deform the circlet from a radially reduced chemical state to a radially enlarged chemical state.([0018], [0036] Figs 3a-3c show the circlet mechanically expanded and subsequently chemically expanded)
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Roselier and use for his seal 42 an expandable metal configured to expand in response to hydrolysis to chemically deform the circlet from a radially reduced chemical state to a radially enlarged chemical state, in view of Greci, so as to form “a pressure barrier as well as provides additional anchoring force for the tubular.” [0009]
Regarding claim 21: Roselier discloses 21. (Currently Amended) A method for sealing/anchoring within a wellbore, comprising:
providing a sealing/anchoring tool 20 within a wellbore 24, the sealing/anchoring tool including:
a mandrel 30;
a hydraulically deformable member 32 positioned about the mandrel; and
a sealing/anchoring element (42) positioned about the hydraulically deformable member, the sealing/anchoring element including:
a circlet (42) having an inside surface having an inside diameter (di), an outside surface having an outside diameter (do), a width (w), and a wall thickness (t), the mandrel 30 and hydraulically deformable member 32 configured to remain radially within and support the circlet in a radially enlarged chemical state. ([0025], Figs 11-15)
mechanically deforming the sealing/anchoring element by moving the hydraulically deformable member from a radially reduced mechanical state to a radially enlarged mechanical state (Figs. 12 and 13);
the mandrel and hydraulically deformable member configured to remain radially within and support the circlet in the radially enlarged state to fix the expanded metal sealing/anchoring element within the wellbore.(Figs 14-15)
However Roselier fails to disclose where the circlet comprises an expandable metal configured to expand in response to hydrolysis to chemically deform the circlet from a radially reduced chemical state to a radially enlarged chemical state, or subjecting the mechanically deformed sealing/anchoring element in the radially enlarged mechanical state to reactive fluid to expand it to the radially enlarged chemical state and thereby form an expanded metal sealing/anchoring element,
Greci teaches a circlet 30 for use in a wellbore to form a seal against said wellbore comprising an expandable metal [0011, 0013] configured to expand in response to hydrolysis to chemically deform the circlet from a radially reduced chemical state to a radially enlarged chemical state.([0018], [0036] Figs 3a-3c show the circlet mechanically expanded and subsequently chemically expanded). Furthermore Greci teaches the steps of activating the expandable metal seal. [0013]
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Roselier and use for his seal 42 an expandable metal configured to expand in response to hydrolysis to chemically deform the circlet from a radially reduced chemical state to a radially enlarged chemical state and subsequent to deploying the seal mechanically expanding the seal, to perform the step of subjecting the mechanically deformed sealing/anchoring element in the radially enlarged mechanical state to reactive fluid to expand it to the radially enlarged chemical state and thereby form an expanded metal sealing/anchoring element, as claimed, in view of Greci, so as to form “a pressure barrier as well as provides additional anchoring force for the tubular.” [0009]
Regarding claims 2 and 12: Roselier discloses wherein the circlet 42 has one or more geometric features that allow it to mechanically deform when moved from a radially reduced mechanical state to a radially enlarged mechanical state. (See figures 12-13, element has geometric features and is allowed to mechanically deform)
Regarding claims 3 and 13: Roselier discloses wherein the circlet is configured to mechanically deform from the radially reduced state to the radially enlarged state (Figs 12-13). However is silent on “prior to chemically deforming from the radially reduced chemical state to the radially enlarged chemical state”.
Greci teaches a circlet 30 for use in a wellbore to form a seal against said wellbore comprising an expandable metal [0011, 0013] configured to expand in response to hydrolysis to chemically deform the circlet from a radially reduced chemical state to a radially enlarged chemical state.([0018], [0036] Figs 3a-3c show the circlet mechanically expanded and subsequently chemically expanded)
wherein the circlet is configured to mechanically deform from the radially reduced state to the radially enlarged state prior to chemically deforming from the radially reduced chemical state to the radially enlarged chemical state.(Figures 3a,3b).
As above, It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Roselier and use for his seal 42 an expandable metal configured to expand in response to hydrolysis to chemically deform the circlet from a radially reduced chemical state to a radially enlarged chemical state, in view of Greci, so as to form “a pressure barrier as well as provides additional anchoring force for the tubular.” [0009]
The combination is interpreted as teaching the limitation of wherein the circlet is configured to mechanically deform from the radially reduced state to the radially enlarged state prior to chemically deforming from the radially reduced chemical state to the radially enlarged chemical state.
Regarding claims 7 and 17: Roselier discloses wherein the hydraulically deformable member is a bladder.(32 is considered a bladder)
Regarding claims 8 and 18: Roselier discloses the claimed invention except explicitly wherein the hydraulically deformable member is a limited expansion hydraulically deformable member, the limited expansion hydraulically deformable member configured to prevent the circlet from contacting a bore when the hydraulically deformable member moves from a radially reduced mechanical state to a radially enlarged mechanical state.
Greci teaches a hydraulically deformable member 22a, similar to Roselier, that is a limited expansion hydraulically deformable member 22a, the limited expansion hydraulically deformable member configured to prevent the circlet from contacting a bore when the hydraulically deformable member moves from a radially reduced mechanical state to a radially enlarged mechanical state (Figure 3a,b,[0013]).
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have further modified Roselier’s system such that the hydraulically deformable member is a limited expansion hydraulically deformable member in the style of Greci for use with his chemically expandable seal, in view of Greci, so as to achieve the desired amount of expansion for the diameter of the casing. Furthermore, this would amount to no more than use of known technique to improve similar devices (methods, or products) in the same way.
Regarding claims 10 and 20: Roselier discloses wherein the mandrel includes one or more openings 38 therein for supplying fluid to deploy the hydraulically deformable member from a radially reduced mechanical state to a radially expanded mechanical state.[0034]
Claim(s) 4-5, and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roselier and Greci as applied above, further in view of US 20200300057 A1 to VASQUES.
Regarding claims 4-5 and 14-15: Roselier discloses the claimed invention except explicitly wherein the one or more geometric features are a full slot or partial slot in the wall thickness (t) of the circlet, wherein the one or more geometric features are a full slot in the wall thickness (t) of the circlet that creates a C-ring.
Vasques teaches a packer with an expandable seal element that has split rings 30 [0098] (Note the split ring is considered to be a C-Ring).
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Greci wherein the one or more geometric features are a full slot or partial slot in the wall thickness (t) of the circlet, in view of Vasques, so that the members can expand and remain in their intended positions [0098]. Furthermore, this would amount to no more than combining prior art elements according to known methods to yield predictable results.
Allowable Subject Matter
Claims 9 and 19 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.
Response to Arguments
Applicant’s amendments and arguments dated 1/14/2026 have been considered.
The amendments have overcome the claim objections and the rejections based on Greci, and thus all prior rejections are withdrawn. However, new rejections based on Roselier are presented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20060042801 A1 to Hackworth teaches a packer with a bladder that expands with a sealant on the outer surface.
US 20160376870 A1, to Roselier teaches a packer with an expandable bladder with a structured cover.
US 20200300057 A1 to VASQUES also teaches an expandable blader type packer with exterior sealing elements.
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/STEVEN A MACDONALD/Primary Examiner, Art Unit 3674