DETAILED ACTION
Claims 1 and 6-8 are pending.
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 12/04/2025. These drawings are acceptable.
The most recent claim objections have been withdrawn in light of the current claim amendments.
The most recent 35 U.S.C. § 112 rejections have been withdrawn in light of the current claim amendments.
Applicant’s arguments with respect to claim(s) 1 and 6-8 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.
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 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akinlade et al. (US Publication Number 2005/0011678 A1; herein “Akinlade”) in view of Ramasamy et al. (US Publication Number 2023/0167710 A1; herein “Ramasamy”) in further view of Steele (US Publication Number 2018/0283140 A1; herein “Steele”).
In regard to claim 1, Akinlade discloses: A method for installing an inflatable packer (14) downhole in a wellbore (abstract, paragraphs [0030-0034, 0040-0043] and figures 1-4) comprising:
a) conveying an inflatable packer assembly (as shown in figures 1-4) on a tubular pipe string (1) to a downhole location in the wellbore (paragraphs [0030-0034, 0040-0043] and figures 1-4);
b) dropping an actuation element (64) in said tubular pipe string (paragraphs [0030-0034, 0040-0043] and figures 1-4);
c) landing said actuation element on a seat profile (62) within an internal bore (i.e., inner bore space) of said inflatable packer assembly, wherein said actuation element at least partially obstructs said internal bore of said inflatable packer assembly (paragraphs [0030-0034, 0040-0043] and figures 1-4);
d) inflating at least one inflatable element of said inflatable packer assembly until said at least one inflatable element forms a fluid pressure seal against said wellbore (i.e., as shown in the transitioning from figure 3 to figure 4 — see paragraphs [0030-0034, 0040-0043] and figures 1-4);
f) pumping cement slurry (“[...] The method of the present invention allows to selectively treat a treatment zone of the formation such as a fracture or a highly permeable zone, by pumping treatment fluid down the drill pipe. In particular, such a treatment zone can be sealed so as to suppress fluid communication between the borehole and the treatment zone after treatment, so that fluid losses into or water influx from the treatment zone are prevented. To this end, the treatment fluid is suitably a treatment chemical which can seal fractures or pores after curing or after a reaction with the formation rock. Cement can also be used” — paragraph [0015]) though said tubular pipe string and said seat profile to a location below said inflatable element of said inflatable packer assembly (paragraphs [0030-0034, 0040-0043] and figures 1-4);
g) deflating said inflatable element of said inflatable packer assembly (paragraphs [0030-0034, 0040-0043] and figures 1-4); and
h) removing said inflatable packer assembly from the wellbore.
However, Akinlade is silent in regard to: “e) permitting said actuation element to dissolve to at least partially remove said actuation element from said internal bore.” Furthermore, though Akinlade discloses that is known for drilling a wellbore using drilling equipment for the purposes of producing oil or gas (implicitly indicating removing/replacing drilling equipment with production equipment), Akinlade is explicitly silent in regard to: “[...] h) removing said inflatable packer assembly from the wellbore.”
Nonetheless, Ramasamy teaches a drill assembly (150) comprising a ball/“actuation element” (500) and an actuator (120) which actuates in light of the ball making contact thereof (paragraphs [0047-0052] and figures 5), similar to that of Akinlade. Ramasamy teaches the actuator (120) in the activated position where the pressure from the fluid/ball uphole shift the actuator to expose the ports (110), and a deactivated position where the ball/fluid pressure is not in contact with the actuator in which the actuator is then slid upwards to block the ports (paragraphs [0047-0052] and figures 5). Furthermore, Ramasamy teaches for the ball (500) to be made of dissolvable material (paragraph [0035]).
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 modify the material of the “actuation element”, as taught by Akinlade, to include degradable material, as taught by Ramasamy, to allow for the assembly to be “[...] activated and deactivated any number of times without the need to empty a ball catcher” (paragraph [0051] — Akinlade).
Furthermore, Akinlade is silent in regard to: h) removing said inflatable packer assembly from the wellbore.
Nonetheless, Steele teaches that it is known from removing drilling equipment from the wellbore and then producing hydrocarbons after the drilling equipment is removed (paragraph [0145]).
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 modify the method of Akinlade, to remove the drilling assembly from the wellbore, as taught by Steele, to allow for producing oil or gas thereafter, as it is known that producing wellbore fluids from subterranean formations require removal of the drilling assembly (paragraph [0145] — Steele).
Claim(s) 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akinlade et al. (US Publication Number 2005/0011678 A1; herein “Akinlade”) in view of Ramasamy et al. (US Publication Number 2023/0167710 A1; herein “Ramasamy”) in further view of Steele (US Publication Number 2018/0283140 A1; herein “Steele”) and Doud et al. (US Publication Number 2015/0239795 A1; herein “Doud”).
In regard to claim 6, Akinlade in view of Ramasamy and Steele disclose claim 1 above. Ramasamy teaches that its degradable actuation element(s) comprises of magnesium based alloy (paragraphs [0007, 0019, 0052]).
However, Akinlade in view of Ramasamy and Steele is silent in regard to: wherein said actuation element comprises a magnesium alloy with at least one rare earth element.
Nonetheless, Doud teaches a ball auction element which is used to sit in a downhole assembly for pressurizing downhole hole assemblies then can be dissolved away after use so that that no drilling or removal of the structure is necessary (paragraphs [0005-0008, 0031, 0033, 0035, 0039, 0041-0045]), similar to that of Murphree. Doud teaches that downhole actuation element(s) comprise of magnesium alloy with at least one rare earth element (paragraph [0008]).
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 material of the degradable actuation element, as taught by Akinlade in view of Ramasamy, with that of Doud, to yield the predictable result of selectively dissolving the actuation element “[...] away after use so that that no drilling or removal of the structure is necessary” (abstract and paragraph [0031] of Doud), as Doud teaches magnesium alloy and with at least one rare earth element comprising at least one rare earth element are known alternatives. See MPEP 2143, section I, subsection B.
In regard to claim 7, Akinlade further discloses: wherein said actuation element comprises a spherical ball (paragraphs [0030-0034, 0040-0043] and figures 1-4).
In regard to claim 8, Akinlade in view of Ramasamy, Steele and Doud disclose the preceding claim(s).
However, Akinlade (as presented in the preceding claim rejections) is silent in regard to: wherein said actuation element comprises a dart.
Nonetheless, Akinlade cites: “Activation of the packer can in principle be achieved by means of darts or balls...” (paragraph [0041]). See also paragraph [0042].
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 actuation element comprising a ball, to be a dart, as taught by Akinlade, to yield the predictable result of selectively activating/deactivating the inflatable packer assembly (paragraphs [0041), as Akinlade teaches ball and dart actuation elements to be known alternatives. See MPEP 2143, section I, subsection B.
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.
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/NEEL GIRISH PATEL/Patent Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676