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 § 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 10 is 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.
It is unclear what is meant by the “one or more degradable delivery devices is not mechanically or adhesively attached to the degradable downhole tool.” Claim 9, upon which claim 10 depends, recites “disposing the one or more degradable delivery devices into one or more cavities of the degradable downhole tool before disposing the tool within the wellbore.” It is unclear how a degradable delivery device can be placed into a cavity of a tool and not be attached to the tool. For example, applicant’s Fig. 6 shows a degradable delivery device 604 placed within a cavity 602 and secured by a cover 606. The presence of cover 606 provides a mechanical coupling between the delivery device 604 and the downhole tool, so that the delivery device 604 does not fall out of the downhole tool during deployment into the wellbore. For purposes of examination, claim 10 is being interpreted as if the delivery device is mechanically held by a cover, as this is the structure that is supported by applicant’s specification.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-10, 12, and 13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) abstract ideas in the form of mental processes. For example, claim 1 recites:
Determining a chemical composition of a degradable downhole tool
Determining, based at least on the chemical composition of the degradable downhole tool, respective amounts of one or more chemical additives to effectively dissolve the degradable downhole tool within a wellbore.
This judicial exception is not integrated into a practical application because the final step of preparing the degradable delivery device after making the determinations is a mere “apply-it” step, akin to cutting hair after first determining the hair style (MPEP 2106.05(g). Furthermore, the preparation step is not meaningfully impacted by the mental process steps, given that the claimed determinations are inherent in preparing a degradable delivery device that has an additive intended to dissolve a downhole tool. If any such degradable delivery device exists, then the amount of additive and the composition of the downhole tool have inherently been determined, in order for the system to be functional to degrade the downhole tool.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional element of preparing the degradable delivery device is mere extra-solution activity, as discussed above (MPEP 2106.05(g)).
Claims 2, 5, 8, these claims stand rejected as merely further limiting the abstract ideas of claim 1 without integrating the abstract ideas into a practical application.
Claims 3, 4, 6, 7, 9, 10, 12, and 13 further define the degradable delivery device that is prepared in the method. However, these claims do not recite anything other that routine, well-understood technology, as evidenced in the prior art rejections below.
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) 1-6, 8, and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. (US 2016/0160611, hereinafter Zhang).
With regard to claim 1, Zhang discloses a method comprising:
determining a chemical composition of a degradable downhole tool (tool 216 inherently has a determined chemical composition);
determining, based at least on the chemical composition of the degradable downhole tool, respective amounts of one or more chemical additives to effectively dissolve the degradable downhole tool within a wellbore (chemical additive 333 is designed to dissolve the downhole tool 216, and thus inherently a necessary amount of chemical additive 333 has been determined—regardless, Zhang actually teaches “any suitable reagent 333 can be selected in response to substrate 331 material, downhole environment conditions, and desired degradation rate,” paragraph 0029); and
preparing one or more degradable delivery devices (i.e. the sealed reagent unit 333+338) containing the one or more chemical additives (333) for use in dissolving the degradable downhole tool within the wellbore.
With regard to claim 2, Zhang teaches determining a chemical composition of a wellbore fluid, the respective amounts of the one or more chemical additives being determined based at least on the chemical composition of the degradable downhole tool and the chemical composition of the wellbore fluid (paragraph 0029, “any suitable reagent 333 can be selected in response to…downhole environment conditions”).
With regard to claim 3, Zhang teaches that the one or more chemical additives comprise ammonium chloride (NH4Cl), sodium nitrite (NaNO2), citric acid, acetic acid, sodium chloride (NaCl), calcium chloride (CaCl2), magnesium chloride (MgCl2), potassium chloride (KCl), one or more oxidizers, one or more acids, one or more bases, or any combination thereof (see listing in paragraph 0029).
With regard to claim 4, Zhang teaches that the degradable downhole tool comprises one or more of a degradable frac plug (216), a degradable valve, a degradable liner, a degradable sleeve, or a degradable nozzle.
With regard to claim 5, Zhang teaches determining a desired dissolution time to dissolve the degradable downhole tool, and wherein the respective amounts of the one or more chemical additives are determined based at least on the chemical composition of the degradable downhole tool and the desired dissolution time (paragraph 0029, “any suitable reagent 333 can be selected in response to…desired degradation rate”).
With regard to claim 6, Zhang teaches producing the one or more degradable delivery devices from one or more degradable materials (338) configured to dissolve in a wellbore fluid (paragraph 0032, “protective material 338 can include a gel with a controlled or otherwise predetermined degradation”);
loading the one or more degradable delivery devices with the respective amounts of the one or more chemical additives (see Fig. 3 with multiple cavities for additive 333); and
sealing the one or more degradable delivery devices with the respective amounts of the one or more chemical additives loaded therein (paragraph 0028, “cavities 332 are sealed to control the release and interaction of reagent 333 with the downhole environment”).
With regard to claim 8, Zhang teaches that preparing the one or more degradable delivery devices comprises selecting one or more pre-made degradable delivery devices from a downhole tool dissolution treatment kit (the two plug devices 116a and 116b in Fig. 1 are considered a “kit.” When the devices are prepared, one is “selected” first, and the other is “selected” second), the one or more pre-made degradable delivery devices each containing the respective amounts of the one or more chemical additives (each device 116 has the reagent 333).
With regard to claim 9, Zhang discloses disposing the one or more degradable delivery devices (i.e. sealed reagent unit 333+338) into one or more cavities (332) of the degradable downhole tool before disposing the degradable downhole tool within the wellbore, the one or more degradable delivery devices configured to dissolve in a wellbore fluid to release the one or more chemical additives to promote dissolution of the degradable downhole tool (paragraph 0027-0031).
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) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang in view of Bustos et al. (US 2018/0252091, hereinafter Bustos).
With regard to claim 7, Zhang fails to teach loading one or more flowable sensors into the one or more degradable delivery devices prior to sealing the one or more degradable delivery devices, the one or more flowable sensors being configured to measure a temperature, a pressure, or a combination of temperature and pressure, within the wellbore.
Bustos teaches downhole degradable devices (e.g. frac ball 100, Fig. 2), where the devices are provided with cavities (110), and sensors (130) are placed within the cavities. The sensors (130) are flowed to the surface after degradation of the degradable device (see sensors 130 within the fluid flow in Fig. 8D).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Zhang by providing the sensors of Bustos within the cavities of Zhang, as “data from sensors 130 can be used to determine the pressure and temperature profile along wellbore 200 during production…[which can] aid in the identification of stages that are producing and states that are not producing” (Zhang, paragraph 0077).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang in view of Marya et al. (US 2011/0186306, hereinafter Marya).
With regard to claim 10, as best understood, Zhang fails to teach that the one or more degradable delivery devices is not mechanically or adhesively attached to the degradable downhole tool. It is noted that this claim is being interpreted to require a cover that mechanically holds the delivery device in place in the cavity.
Marya teaches a degradable device (29) within a cavity of a downhole tool, where the degradable device is held in place by a cover (33, 35).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Zhang by providing the cavity with the cover of Marya, in order to securely hold the chemical additive in place, and to “isolate the cavity from the exterior of the dart” (Marya, paragraph 0029).
Claim(s) 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang.
With regard to claims 12 and 13, Zhang teaches that the one or more degradable delivery devices comprise at least two degradable delivery devices (116, Fig. 1). Zhang also teaches that the additive can be “selected in response to substrate 331 material, downhole environment conditions, and desired degradation rate” (paragraph 0029). Zhang also teaches the use of many different chemicals for the additive (paragraph 0029).
However, Zhang fails to teach that each of the delivery devices contains a different respective amount of the same chemical additive, or that one of the delivery devices has a first chemical additive and the other has a second chemical additive.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Zhang such that some of the various plugs 216 had different amounts of the same chemical additive, or different chemical additives altogether depending on the existence of different downhole conditions at the different zones where the downhole devices 216 are located (Zhang, paragraph 0029).
Allowable Subject Matter
Claims 14-20 are allowed.
Claim 11 is 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.
The following is an examiner’s statement of reasons for allowance:
Regarding claims 11 and 14, the closest prior art is that of Zhang, discussed above.
Zhang fails to teach or suggest at least “flowing the one or more degradable delivery devices down the wellbore to reach the degradable downhole tool within the wellbore,” as specifically called for in both claims 11 and 14. Instead, Zhang teaches loading the degradable delivery device directly into the downhole tool and disposing both within the wellbore simultaneously. It would not have been considered obvious to deploy the degradable delivery device separately, as such action would complicate the operation and increase the likelihood that the degradable delivery device would not reach the downhole tool and consequently be unable to dissolve the downhole tool.
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 ROBERT E FULLER whose telephone number is (571)272-6300. The examiner can normally be reached M-F 8:30AM - 5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tara Schimpf can be reached at 571-270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT E FULLER/Primary Examiner, Art Unit 3676
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