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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
driver feature;
in the claims.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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) 1-3, 5, 7-12, 17-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Passmore (US 20230399919).
Regarding claim 1, Passmore teaches: A downhole insert valve, comprising:
an insert frame (Passmore comprising 310) securable within a central bore (Passmore 220) of a downhole tubular (Passmore 210) of a tubing retrievable safety valve, wherein the tubing retrievable safety valve includes at least one driver magnet configured to project a magnetic field into the central bore and move axially along a control line in the downhole tubular between a first position and a second position;
an insert flapper (Passmore comprising 320) connected to the insert frame and configured (Passmore [0025-0026]) to actuate between an open position and a closed position to control fluid flow through the central bore;
an insert flow tube (Passmore 330) disposed within the central bore and configured (Passmore Fig. 4E-4F) to move between a first insert tube position (Passmore Fig. 4E) and a second insert tube position (Passmore Fig. 4F) to drive the insert flapper between the closed position and the open position, respectively; and
at least one follower magnet (Passmore 340) secured to the insert flow tube and magnetically engaged with the at least one driver magnet (Passmore 260), wherein the at least one follower magnet is configured (Passmore [0024, 0027-0028, 0037-0039]) to move in response to movement of the at least one driver magnet to drive the insert flow tube between the first insert tube position and the second insert tube position.
Note: Alternative citations based on different embodiments and/or different interpretations of the same embodiment have been provided to address the different variations and/or alteration of features in the dependent claims.
Regarding claim 2, Passmore teaches: The downhole insert valve of claim 1, wherein the insert flow tube includes
an interface portion (Passmore 330 near 610 / flapper) and
a magnet housing portion (Passmore 340), wherein the interface portion is configured (Passmore Fig. 4F, 7H) to contact the insert flapper to drive the insert flapper between the closed position and the open position, and
wherein the magnet housing portion includes at least one recess configured (Passmore [0027, 0044]) to house the at least one follower magnet.
Regarding claim 3, Passmore teaches: The downhole insert valve of claim 1, wherein the at least one follower magnet includes a plurality of follower magnets (Passmore 340, [0027, 0044]) disposed about a circumference of a magnet housing portion (Passmore near 340) of the insert flow tube.
Regarding claim 5, Passmore teaches: The downhole insert valve of claim 1, further comprising a valve seat (Passmore near 320/380) formed at a downhole end of the insert frame, and wherein the insert flapper is configured (Passmore [0001-0002, 0016, 0019, 0026]) to seal against the valve seat in the closed position to block fluid flow through the central bore.
Regarding claim 7, Passmore teaches: The downhole insert valve of claim 1, further comprising an insert lock (Passmore 370/670) configured to interface with an inner surface (Passmore 235) of the downhole tubular to secure the insert frame to the tubing retrievable safety valve.
Regarding claim 8, Passmore teaches: The downhole insert valve of claim 7, wherein the insert lock is configured to interface with a landing nipple (Passmore 235) formed on the inner surface of the downhole tubular to secure the insert frame to the tubing retrievable safety valve, and wherein the insert lock includes radially extending ridges (Passmore 370) configured (Passmore Fig. 4D-4E) to interface with corresponding grooves of the landing nipple.
Regarding claim 9, Passmore teaches: The downhole insert valve of claim 1, wherein the insert flow tube and the at least one follower magnet are configured (Passmore Fig. 4E-4G, [0037-0039]) to move axially along the central bore, with respect to the insert frame, in response to movement of the at least one driver magnet.
Regarding claim 10, Passmore teaches: A tubing retrievable safety valve system, comprising:
a downhole tubular (Passmore comprising 310) having a central bore;
a primary flapper valve (Passmore comprising 320) disposed within the central bore and configured to actuate between an open position and closed position to control flow through the central bore;
a control line (Passmore 120) extending axially through at least a portion of the downhole tubular; and
at least one driver magnet (Passmore 260) configured to move axially along the control line (Passmore inside 250, [0022]) between a first position and a second position, wherein the at least one driver magnet is configured (Passmore [0024, 0027-0028, 0037-0039]) to project a magnetic field into the central bore, wherein the magnetic field is configured (Passmore [0024, 0027-0028, 0037-0039]) to interface with at least one follower magnet (Passmore 340) of an insert valve (Passmore comprising 320) to actuate an insert flapper (Passmore 320) of the insert valve between a closed position (Passmore Fig. 4E) and an open position (Passmore Fig. 4F) in response to movement of the at least one driver magnet between the first position and the second position, and
wherein actuating the insert flapper between the closed position and the open position is configured (Passmore [0001-0002, 0016, 0019, 0026]) to control flow through the central bore.
Regarding claim 11, Passmore teaches: The tubing retrievable safety valve system of claim 10, further comprising a holding tube (Passmore 330) disposed within the central bore, wherein the holding tube is configured to hold the primary flapper valve in an open position.
Regarding claim 12, Passmore teaches: The tubing retrievable safety valve system of claim 10, further comprising a spring (Passmore 370) configured to bias the at least one driver magnet toward the first position.
Regarding claim 17, Passmore teaches: The tubing retrievable safety valve system of claim 13, wherein the driver feature includes an electrical actuator (Passmore [0022-0024]) disposed at least partially within the control line, wherein the electrical actuator includes an interface member (Passmore [0022-0024]) configured to move axially along the control line in response to actuation of a motor of the electrical actuator.
Regarding claim 18, Passmore teaches: The tubing retrievable safety valve system of claim 10, further comprising the insert valve, wherein the insert valve comprises:
the insert flapper configured (Passmore [0001-0002, 0016, 0019, 0026]) to actuate between the open position and the closed position to control fluid flow through the central bore;
an insert flow tube (Passmore 330) configured (Passmore Fig. 4E-4F) to move axially along the central bore between a first insert tube position (Passmore Fig. 4E) and a second insert tube position (Passmore Fig. 4F), wherein the insert flow tube is configured to contact the insert flapper to drive the insert flapper between the closed position and the open position, respectively; and
the at least one follower magnet (Passmore 340), wherein the at least one follower magnet is secured (Passmore [0024, 0027-0028, 0037-0039]) to the insert flow tube and magnetically engaged (Passmore [0024, 0027-0028, 0037-0039]) with the at least one driver magnet, wherein the at least one follower magnet is configured (Passmore [0024, 0027-0028, 0037-0039]) to move in response to movement of the at least one driver magnet to drive the insert flow tube between the first insert tube position and the second insert tube position.
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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Passmore.
Regarding claim 4, Passmore teaches: The downhole insert valve of claim 1, including generic follower magnets, but does not describe the type, provide the structural details of, or expressly state: wherein the at least one follower magnet includes at least one rare earth magnet.
However, Passmore teaches using rare earth magnets for the driver magnet (Passmore [0023]).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date (AIA ) or at the time the invention was made (Pre-AIA ), to have used the known permanent rare earth magnet as the follower magnets as Passmore teaches a generic follower magnet using the known permanent rare earth magnet yields the predictable result of allowing the operator form a reliable, non-powered magnetic connection between the components.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Passmore in view of Rogers (US 20090032238).
Regarding claim 6, Passmore teaches: The downhole insert valve of claim 1, wherein the insert flapper is connected to a downhole end of the insert frame (Passmore Fig. 4F, 7H), wherein the insert flapper is configured (Passmore Fig. 4F, 7H) to move between the open position and the closed position
but does not describe the structural details of the flapper or expressly state: wherein the insert flapper is connected to a downhole end of the insert frame via a hinged connection wherein the insert flapper is configured to hinge between the open position and the closed position.
Rogers teaches a flapper connected to the flapper housing via a hinged connection (Rogers [0002, 0009]), wherein the insert flapper is configured (Rogers [0002, 0009]) to hinge between the open position and the closed position.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date (AIA ) or at the time the invention was made (Pre-AIA ), to have used the known hinged connection as the flapper connection in Passmore as Passmore teaches a generic flapper and using the known hinged connection yields the predictable result of allowing the operator to actuate the safety valve in a known and predictable way.
The modification is obvious as no more than the use of familiar elements (a known pivoting means) according to known methods (using a hinged connection) in a manner that achieves predictable results (pivoting the flapper). All the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art before the effective filing date (AIA ) or at the time the invention was made (Pre-AIA ).
Claim(s) 13-14, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Passmore in view of Vick (US 20120032099).
Regarding claim 13, Passmore teaches: The tubing retrievable safety valve system of claim 10, including a generic actuator but does not describe the structural details of the actuator or expressly state: further comprising a driver feature configured to actuate to drive the at least one driver magnet toward the second position.
Vick teaches a magnetically coupled safety valve comprising a driver feature (Vick comprising 52) configured to actuate to drive the at least one driver magnet toward the second position.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date (AIA ) or at the time the invention was made (Pre-AIA ), to have used the known driver feature of Vick as the actuator in Passmore as Passmore teaches a generic actuator and using the known driver feature yields the predictable result of allowing the operator to actuate the safety valve in a known and predictable way.
The modification is obvious as no more than the use of familiar elements (a known driver feature) according to known methods (using a driver feature for actuating the valve) in a manner that achieves predictable results (opening/closing the valve). All the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art before the effective filing date (AIA ) or at the time the invention was made (Pre-AIA ).
Regarding claim 14, the combination of Passmore and Vick teaches: The tubing retrievable safety valve system of claim 13, wherein the driver feature includes at least one drive piston (Vick comprising 52) disposed within the control line, and wherein the at least one drive piston is configured (Vick [0035-0039]) to move axially along the control line in response to hydraulic pressure in the control line exceeding a threshold pressure.
Regarding claim 16, the combination of Passmore and Vick teaches: The tubing retrievable safety valve system of claim 13, wherein the driver feature is mechanically connected (Vick [0035]) to the at least one driver magnet such that movement of the driver feature is configured to drive movement of the at least one driver magnet.
Allowable Subject Matter
Claim 20 is allowed.
Claim 15, 19 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.
Prior Art
The following prior art made of record and not relied upon is considered pertinent to Applicant's disclosure.
Vick (US 20210108487) teaches a downhole safety valve comprising locking keys, a flapper, and a piston.
OMalley (US 20090071654) teaches a downhole safety valve comprising a magnet attached to a piston, a stationary magnet in the tubular wall, and a magnet in the flapper, the valve configured to shift the piston magnet to actuate the valve.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David Carroll whose telephone number is (571)272-4808. The examiner can normally be reached M-F 2:00-10:00 PM EDT.
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/David Carroll/ Primary Examiner, Art Unit 3674