DETAILED CORRESPONDENCE
Claims 1-20 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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/21/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
(a) The only disclosed manner by which the pistons may be moved is hydraulic, such that the lines from the triggers 308 and 310 must be fluid lines. The examiner has interpreted claims 5, 13, and 20 as being for electronic and mechanical triggers only to the extent that the triggering hydraulic function is initiated electronically or mechanically, and not in the absence of such hydraulics.
(b) No description nor illustration is provided as to what is intended by the term “collet piston”. In Fig. 3, both the close collet piston 312 and the open collet piston 316 are shown to have shapes that accommodate the undescribed and unidentified structure positioned to the right of what is labeled as the second hydraulic chamber 329, as well as, inward and outward notches having no ascertainable function. The examiner has interpreted the term to include any exterior or interior piston surface that has portions of varying diameters.
(c) The term “close” with regard to the “close collet piston” has been interpreted to include a piston involved, not necessarily exclusively, in the closing of the valve. Similarly, the term “open” with regard to the “open collet piston” has been interpreted to include a piston involved, not necessarily exclusively, in the opening of the valve. In neither case is the piston open or closed.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the manner in which the first trigger is fluidly coupled with the second hydraulic chamber, the manner in which the second trigger is fluidly coupled with the second hydraulic chamber, a decoupled first hydraulic chamber and second hydraulic chamber (including what the coupling is and what structures are involved in the claimed decoupling), a decoupled second hydraulic chamber and third hydraulic chamber (including what the coupling is and what structures are involved in the claimed decoupling), fluid communication between the first and second hydraulic chambers, fluid communication between the second and third hydraulic chambers, the triggers fluid source and manner by which fluids are caused to move from such a source to the fluid lines, the involvement of the open collet piston 316 in forming the second hydraulic chamber, the involvement of the mandrel 302 in forming the second hydraulic chamber, how the signal is controlled, what receives the signal and the manner by which any claimed element is caused to ultimately shift the mandrel based on the signal, the manner/structure by which the closed collet piston 312 can shift the mandrel 302, and the manner/structure by which the open collet piston 316 can shift the mandrel 302, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because the lines are not sufficiently dense and dark and are not uniformly thick and well-defined, and the size is too small to ascertain structural features (Fig. 2), and the arrow 306 for annular space 306 between the actuation housing 300 and the mandrel 302 does not point to a space (Fig. 3). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 5 and 15 are objected to because of the following informalities: “prior to after actuation” is an apparent typo of “prior to and after actuation. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 Nothing in the application describes/depicts a fluid coupling between the first trigger 308 and the second hydraulic chamber 320, the first trigger coupling line not entering such second hydraulic chamber, but instead entering at an undescribed and unidentified location which appears from Fig. 3 to be a portion of an undescribed and unidentified structural component which is separated from the second hydraulic chamber by a second undescribed and unidentified component. Claims 2-8 depend from claim 1.
Claim 1 Nothing in the application describes/depicts a fluid coupling between the second trigger 310 and the second hydraulic chamber 320, the second trigger coupling line not entering such second hydraulic chamber, but instead entering at an undescribed and unidentified location which appears from Fig. 3 to be a portion of an undescribed and unidentified structural component which is separated from the second hydraulic chamber by a second undescribed and unidentified component. Claims 2-8 depend from claim 1.
Claims 1, 9, and 17 The term “trigger” requires structure since the claims use each trigger to establish fluid coupling and/or fluid communication, using fluid lines from a hydraulic fluid source. However, the application does not describe/depict a fluid source nor any manner by which fluids are caused to move from such a source to the fluid lines. Claims 2-8 depend from claim 1. Claims 10-16 depend from claim 9. Claims 18-20 depend from claim 17.
Claims 3 and 11 Nothing in the application describes/depicts the involvement of the open collet piston 316 in forming the second hydraulic chamber.
Claims 3 and 11 Nothing in the application describes/depicts the involvement of the mandrel 302 in forming the second hydraulic chamber.
Claim 4 Nothing in the application describes/depicts fluid communication between the first hydraulic chamber 318 and the second hydraulic chamber 320, the first trigger coupling line not entering such second hydraulic chamber, but instead entering at an undescribed and unidentified location which appears from Fig. 3 to be a portion of an undescribed and unidentified structural component which is separated from the second hydraulic chamber by a second undescribed and unidentified component.
Claim 4 Nothing in the application describes/depicts fluid communication between the second hydraulic chamber 320 and the third hydraulic chamber 322, the second trigger coupling line not entering such second hydraulic chamber, but instead entering at an undescribed and unidentified location which appears from Fig. 3 to be a portion of an undescribed and unidentified structural component which is separated from the second hydraulic chamber by a second undescribed and unidentified component.
Claims 6 and 12 Nothing in the application describes/depicts how the signal is controlled. Changing “controlled signal” to “control signal” will overcome this rejection.
Claims 6 and 12 Nothing in the application describes/depicts shifting an isolation valve as such. Changing “shifts the isolation valve” to “shifts the mandrel” will overcome this rejection.
Claims 6 and 12 Nothing in the application describes/depicts what receives the signal and the manner by which any claimed element is caused to ultimately shift the mandrel based on the signal.
Claim 9 Nothing in the application describes/depicts a fluid coupling between the first trigger 308 and the second hydraulic chamber 320, the first trigger coupling line not entering such second hydraulic chamber, but instead entering at an undescribed and unidentified location which appears from Fig. 3 to be a portion of an undescribed and unidentified structural component which is separated from the second hydraulic chamber by a second undescribed and unidentified component. Claims 10-16 depend from claim 9.
Claim 9 Nothing in the application describes/depicts a fluid coupling between the second trigger 310 and the second hydraulic chamber 320, the second trigger coupling line not entering such second hydraulic chamber, but instead entering at an undescribed and unidentified location which appears from Fig. 3 to be a portion of an undescribed and unidentified structural component which is separated from the second hydraulic chamber by a second undescribed and unidentified component. Claims 10-16 depend from claim 9.
Claim 12 Nothing in the application describes/depicts fluid communication between the first hydraulic chamber 318 and the second hydraulic chamber 320, the first trigger coupling line not entering such second hydraulic chamber, but instead entering at an undescribed and unidentified location which appears from Fig. 3 to be a portion of an undescribed and unidentified structural component which is separated from the second hydraulic chamber by a second undescribed and unidentified component.
Claim 12 Nothing in the application describes/depicts fluid communication between the second hydraulic chamber 320 and the third hydraulic chamber 322, the second trigger coupling line not entering such second hydraulic chamber, but instead entering at an undescribed and unidentified location which appears from Fig. 3 to be a portion of an undescribed and unidentified structural component which is separated from the second hydraulic chamber by a second undescribed and unidentified component.
Claim 18 Nothing in the application describes/depicts a decoupled first hydraulic chamber and second hydraulic chamber, what the coupling is, nor what structures are involved in the claimed decoupling.
Claim 18 Nothing in the application describes/depicts the manner/structure by which the closed collet piston 312 can shift the mandrel 302, at all, and, particularly, how movement of the closed collet piston 312 to the left (toward the lowered pressure in the first hydraulic chamber 318) can shift the mandrel 302 to the left when housing 300 structure prevents any leftward motion by the mandrel 302.
Claim 18 Nothing in the application describes/depicts (a) how the close collet piston 312 “disengages” from the mandrel 302, nor (b) what, if any, other structures are involved.
Claim 19 Nothing in the application describes/depicts a decoupled second hydraulic chamber and third hydraulic chamber, what the coupling is, nor what structures are involved in the claimed decoupling.
Claim 19 Nothing in the application describes/depicts the manner/structure by which the open collet piston 316 can shift the mandrel 302.
Claim 19 Nothing in the application describes/depicts (a) how the open collet piston 316 “disengages” from the mandrel 302, nor (b) what, if any, other structures are involved.
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.
Claims 1-8, 12, 13, 15, 20 are 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 pre-AIA the applicant regards as the invention.
Claim 1 It is unclear whether the applicant has claimed any elements for the actuation assembly, in that the preamble indicates that an actuation assembly is for use with an isolation valve, and that the isolation valve includes all the claim elements in the sub-paragraphs. The examiner has assumed that “the actuation assembly comprising:” was intended, which is consistent with the applicant’s approach in claim 9. Claims 2-8 depend from claim 1.
Claims 5, 13, and 20 The alternative are not inclusive in that “may be” allows other types of triggers, such that the claims do not define the boundaries of the invention. Additionally, “may be” merely indicates a capability or a mere possibility, which leads to ambiguity.
Claims 6 and 12 There is insufficient antecedent basis in the claims for “the controlled signal”.
Claims 7 and 15 These claims use the word "can" to describe the function of elements within the claim. The word "can" creates a lack of clarity as whether the function following such word is a requirement of the invention.
Claims 7 and 15 It is unclear whether the well string must both be pulled up on and also pushed down to actuate the valve or whether pulling closes and pushing opens. The examiner has assumed the latter.
Claim Rejections - 35 USC § 102
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 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 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.
Claims 17 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Anderson et al. (US20080128137).
Claim 17 Anderson discloses a method of producing a well comprising:
running a well string [i.e., the tubing referenced at para. 0008] comprising an isolation valve 12 and an actuation assembly [Fig. 1] into the well;
activating a first trigger 56 of the actuation assembly to shift a mandrel of the actuation assembly via a close collet piston 30 of the actuation assembly positioned between a first hydraulic chamber 62 of the actuation assembly and a second hydraulic chamber 52 of the actuation assembly to close the isolation valve [para. 0012,0013]; and
activating a second trigger 38 of the actuation assembly to shift the mandrel via an open collet piston 32 of the actuation assembly positioned between the second hydraulic chamber 52 and a third hydraulic chamber 36 of the actuation assembly to open the isolation valve [the seal 34 of piston 32 is constructed so as to cooperate with the piston assembly as a whole to result in a net downward pressure on the piston assembly 18, which moves the flow tube/mandrel 14 to open the valve; para. 0010,0011].
Claim 20 Anderson, as discussed with respect to claim 17, discloses that the first trigger and second trigger may be electronic, mechanical, hydraulic, or any combination thereof [hydraulic; para. 0010].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Wensrich et al. (US20180202269) discloses two pistons defining three chambers 61,63,63B with two triggers (solenoid valves 60,62) fluidly coupled to such chambers, but the triggers are not fluidly coupled to the second/middle chamber [Figs. 2A,2B; para. 0082]. Vick, Jr. (US20150191995) discloses two pistons 214a,b define multiple chambers, with two triggers (through ports 208 and 240), fluidly coupled to such chambers, but the triggers are not fluidly coupled to the second/middle chamber. Vick Jr. (US20150369005) discloses two pistons 204a,b define multiple chambers, with two triggers (through ports 214a and 214b), fluidly coupled to such chambers, and appears to disclose all the limitations of claim 17 [Figs. 3,4]. Bane et al. (US20080066921) discloses two pistons 36,52 define multiple chambers 46,48,62,64, with two triggers 24,26, fluidly coupled to two or more of such chambers, and appears to disclose all the limitations of claim 17 [Figs. 3,4].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE STERLING GRAY whose telephone number is (313)446-4820. The examiner can normally be reached 7-4 Eastern - M-F.
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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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/GEORGE S GRAY/ Primary Examiner, Art Unit 3676