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 .
Response to Arguments
Applicant’s amendments have resolved some of the drawing objections, the 112(b) rejections from the Office Action of 12/9/26. With respect to the drawing objections, the examiner notes that the concerns regarding the subject matter claims but not shown in claims 10 and 12 do not appear to have been addressed.
Applicant's arguments filed 3/4/26 have been fully considered but they are not persuasive.
With respect to the drawing objection for the subject matter claims in claim 1, applicant argues that the claimed subject matter surrounding the control line “is not necessary for a person of ordinary skill in the art to understand what a control line is nor what a segmented control line looks like”. The examiner respectfully disagrees and the objectionable subject matter amounts to more than just and understanding of what a control line looks like. As applicant contends in applicant’s arguments, the particulars of this control line appear to be the inventive feature(s) of the claim and what differentiates from the prior art (although the examiner disagrees, as discussed below). The positioning and operation of the control line are material to understanding the claimed invention as a whole. Review of the figures, in particular Figure 2, fail to provide the necessary depictions of the subject matter applicant intends to be patented.
With respect to applicant’s arguments concerning the 112(a) written description, applicant argues that when considering paragraphs 0009-0011 and 0030, a person of ordinary skill would recognize possession. Applicant additionally argues, that the written description requirement “does not require disclosure of a source code, a specific propriety algorithm, or exhaustive mathematical detail.” The examiner respectfully disagrees and notes that the examiner has not asserted the requirements of “a source code, a specific propriety algorithm, or exhaustive mathematical detail.”
The requirements are articulated in MPEP 2161.01(I), which states, “When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. An algorithm is defined, for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary (5th ed., 2002). Applicant may "express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citation omitted).
Applicant has not persuasively argued that the “algorithm” required has been conveyed in a manner in which a person of ordinary skill can reasonably conclude that applicant has possession of the claimed invention. Applicant points to e.g. Para 0009-0011. However, Para 0009 merely list consideration that the method “can include” e.g. a listing of potential inputs (“can include analyzing tubing integrity, casing, and eccentricity”) and potential outputs (“can optimize the perforating and wash regime”). Para 0010 lists what the model “can be a mathematical representation or simulation of the fluid flow dynamics”. And Para 0011 identified potential outputs of this model (e.g. “can be used to analyze and predict the behavior of fluids, such as drilling mud, completion fluids, or production fluids”.)
However, none of discussion of what the computer implement functional language “can include” and “can” do amount to the required description of the algorithm (for example, "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary (5th ed., 2002).”). The examiner respectfully maintains that there are no necessary steps shown, meaningful flowcharts, or a finite sequence of steps for solving a logical or mathematical problem or performing a task.
A recent PTAB decision (a copy of which accompanies this Office Action for applicant), In re Duplantis, Appeal No. 2023-003073 (March 4, 2025) may be informative as to the thinking of the Office with respect to written description support for an originally-filed claimed. More particularly, the appeal relates to computer implemented functional language in the oil and gas technology field.
With respect to the prior art rejection, applicant argues that Grimsbo does not teach the required “control line”. Applicant posits a narrow understanding of what a control line must constitute. The examiner first notes the broad use of the term “control line” in the art, which extends beyond what applicant has articulated. Morse (US 20170122037 A1)’s Para 0011 is cited as an example, “control-line might be a wireline unit, a coil tubing unit (CTU) or jointed-tubing.” Snider (US 20090223670 A1), Para 0031, “"signal control line" refers to a continuous or jointed line, conduit, tubular or similar structure for conveying fluid and a control device”. The control line, as construed in Grimbos, is a tubular body or similar structure used to convey fluid (as discussed in the rejection). The terminology of “control line” alone does not differentiate from this broad, but reasonable interpretation of the claims.
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.
Claim 1 recites “a control line with barrier fluid”, “segmenting the control line into smaller section”. Claim 10 recites “a pressure gauge below a cement barrier set in the well”. Claim 12 recites “fiber optics to determine a top of the cement barrier.”
Therefore, the elements recited in the claims above 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.
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 1-7 and 9-12 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “analyzing the well, including tubing integrity, to build a hydraulic model, wherein the hydraulic model optimizes a reconfiguration that includes cutting a window through tubing and configures a wash operation”. The examiner additionally notes the additional specificity of the recitation including later particulars as to what the intended optimized “reconfiguration” entail (e.g. as recited in claim 1, “filling a control line with barrier fluid; and segmenting the control line into smaller sections, including confirmation of positioning and isolation of the control line following the segmenting”, and as recited in claim 3, “the washing operation includes determining compounds and rates to use during the wash operation”).
Applicant has not described in the specification the claimed subject matter in such a way to reasonably convey possession of the claimed invention. When considered in view of the specification, applicant merely used largely self-referential language concerning the model and it’s functionality (Para 0009-0012). Para 0010 indicates that the “hydraulic model can be a mathematical representation or simulation of the fluid flow dynamics within the wellbore and the surrounding reservoir”. However these “mathematical representations or simulations” are not described nor the specific means by which they are to-be derived. Other surrounding prose regarding the hydraulic model describe generic inputs (Para 0037, “individual measurements or a multi-model measurement that takes advantage of camera, sonic, ultrasonic, and nuclear measurements”) with a listing of desired outputs (Para 0009-0010, “The hydraulic model can optimize the perforating and wash regime implemented in other steps”, “can be used to analyze and predict the behavior of fluids, such as drilling mud, completion fluids, or production fluids, as they move through the wellbore and interact with the reservoir rock”, “can include predicting pressures, flow rates, temperature changes, and the potential for issues such as wellbore instability or formation damage”).
MPEP 2161.01(I) states, “When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. An algorithm is defined, for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary (5th ed., 2002). Applicant may "express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citation omitted). It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015)”. The examiner respectfully maintains that there are no necessary steps shown, meaningful flowcharts, or a finite sequence of steps for solving a logical or mathematical problem or performing a task.
The examiner acknowledges that the claims in question are original claims, however, “original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed”, as discussed in MPEP 2161.01(I).
MPEP 2163, subsection II, part 2, states, “Information which is well known in the art need not be described in detail in the specification. See, e.g., Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1379-80, 231 USPQ 81,90 (Fed. Cir. 1986). However, sufficient information must be provided to show that the inventor had possession of the invention as claimed.” The process or configuration of the recited model to “optimizes a reconfiguration that includes cutting a window through tubing and configures a wash operation” have not been established as being well known and so they must be described in sufficient detail in the specification.
Azady (PlugDigitize—reference provided) discusses the state of the art. Azady discusses that the “field of well abandonment has seen limited innovation and digitization” which is characterized by the “absence of substantial technological advancement and digital solutions”, and more particularly “Well abandonment is complex” (see section 1.3 of Azady). Azady demonstrates that the subject matter which is claimed requires commensurately more detail to demonstrate possession.
The examiner notes that presently, applicant has the burden to demonstrate possession of the claimed invention (see MPEP 2163, subsection Il, part A, “"[t]he burden was then properly shifted to [inventor] to cite to the examiner where adequate written description could be found or to make an amendment to address the deficiency." Id.; see also Stored Value Solutions, Inc. v. Card Activation Techs., 499 Fed.App’x 5, 13-14 (Fed. Cir. 2012)’.)
Claims 2-7 and 9-12 are rejected for depending from a rejected claim.
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) 1-7, 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grimsbo (US 20190257169 A1), in view of Roddy (US 20110199228 A1).
Regarding claim 1, Grimsbo teaches a method for well decommissioning, slot recovery, or barrier restoration in through- tubing applications, comprising:
analyzing the well (Fig 1-2, Para 0037), including tubing integrity (Para 0037, well analysis includes analysis of an “opened section” of the well with a perforated tubular, see Fig 2), to plan (Para 0037 planning involves planning and determination of location, material quantity, etc.), wherein the plan optimizes a reconfiguration that includes cutting a window through tubing (Para 0036, “perforate, wash and cement (PWC), or a PWC-like process” and configures a wash operation (Para 0036, “perforate, wash and cement (PWC), or a PWC-like process”);
performing the reconfiguration (see below, Para 0036-0038), including at least one of the following reconfiguration operations:
filling a control line with barrier fluid (Para 0038, “tubular body having one or more nozzles 120 for placement of the plug material, i.e. this elongate tubular body section”. Tubular body is control line through which the plug material flows and must be filled); and
segmenting the control line into smaller sections, including confirmation of positioning and isolation of the control line following the segmenting (note the claim merely requires one of the alternatives recited, see the first alternative cited);
confirming a first state of the well after the reconfiguration using a sensor (Para 0042, sensors 126 and 128 are used “Once the plug material has cured”);
performing the washing operation to remove residual cement (Para 0036, “wash and cement (PWC), or a PWC-like process”, see Fig 3, Para 0003, perforation occurs into cemented tubular. Perforating then washing would remove at least some of this cement); and
confirming a second state of the well after the washing operation (Para 0044, P1 is applied. This would occur after cementing/plugging and therefore after washing in a PWC operation).
Grimsbo is silent on the planning involving a hydraulic model and at least one of a camera and an ultrasonic sensor.
Roddy teaches a hydraulic model (Para 0084, “models used to predict, select, and/or monitor the performance of wellbore compositions”) and at least one of a camera and an ultrasonic sensor (Para 0245, “parameters measured by the sensors include velocity of ultrasonic waves”).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Roddy by having the planning include the use of a hydraulic model and further including the sensing means as disclosed by Roddy because regarding the use of a hydraulic model it would allow for a computerized hydraulic model because it would aid in the selection and monitoring of the sealing composition (Para 0084 of Roddy). Regarding the use of the sensing means of Roddy, it would provide useful information, as evidenced by the collection of that data in Roddy, regarding the behavior of the sealing composition.
Regarding claim 2, Grimsbo as modified teaches wherein initial identifications are made for well depth, control line positioning, and cements in annular space (Para 0037 planning involves planning and determination of location, material quantity as would be located in the control line, etc. Para 0036, Fig 3, there is cement in the annulus), and wherein the initial identifications are used to create the hydraulic model (Para 0084 of Roddy, hydraulic model is used in the planning).
Regarding claim 3, Grimsbo teaches wherein configuring the washing operation includes determining compounds and rates to use during the wash operation (Para 0036, a washing operation necessarily involves the use of a chemical, even if just water, and amount of fluid/rate to be used in washing. The determination step does not require any selection among a variety of named choices or alternatives).
Regarding claim 4, Grimsbo teaches determining gun sizes and gun types to use in the cutting (Para 0036, Fig 3, necessarily in order to perforate with the gun/shaped charge, there must be a ‘determination’ made which results in the size/type used to make the perforations).
Regarding claim 5, Grimsbo teaches making real-time measurements of a current state of the well and a bottomhole assembly during the cutting to optimize the cutting (Para 0044).
Regarding claim 6, while Grimsbo teaches washing (Para 0036), Grimsbo is silent on wherein the washing operation includes making downhole measurements to monitor progress of the washing operation in real time and adjust operational parameters to optimize the washing operation.
Roddy teaches making downhole measurements to monitor progress of the operation in real time and adjust operational parameters to optimize the operation (Para 0053, MEMS sensors used so that “the effectiveness of such service may be monitored and/or adjusted during performance of the service to improve the result of same.”).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Roddy by having downhole measurements to monitor progress of the operation in real time and adjust operational parameters to optimize the operation as disclosed by Roddy because it would allow for monitoring and adjustments during the operation “to improve the result” (Para 0053).
Regarding claim 7, Grimsbo teaches performing a cementing operation, including isolating an annular space (Fig 2, annular space at 130 is at least isolated by setting 122), pumping a cement in the annular space (Fig 3, cement 134 flows into annular space made by perforations, as seen), and confirming a quality of the cement in the annular space (Fig 3, Abstract, pressure is maintain across the plug which tests the annular cement and annular isolation; please note no particular order of operation is recited).
Regarding claim 10, Grimsbo teaches confirming a third state of the well after the cementing operation, including using a pressure gauge below a cement barrier set in the well (Fig 3, cement 134 is the cement barrier, pressure gauge P2) to determine whether the cement barrier meets a threshold integrity level (Para 0044, Fig 3, pressure gauge P2).
Regarding claim 11, Grimsbo teaches wherein confirming the third state includes making a volumetric estimation of the cement placed identifying a top of the cement barrier (Para 0040, the plugging material is deployed such that a top of cement is below perf 150).
Regarding claim 12, Grimsbo teaches Grimsbo is silent on wherein confirming the third state includes using distributed sensing measurements obtained over fiber optics to determine a top of the cement barrier.
Roddy teaches confirming the third state includes using distributed sensing measurements obtained over fiber optics to determine a top of the cement (Para 0067 “top of sealant” is determined with the MEMS measurements; Para 0129-0130, fiber optics used to communicate measurements and thus are “obtained” via this transmission means).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Grimsbo by having the third state includes using distributed sensing measurements obtained over fiber optics to determine a top of the cement as disclosed by Roddy because it provides information of interest to operators and a specific means for transmitting measurements to determine that information of interest.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grimsbo (US 20190257169 A1), in view of Roddy (US 20110199228 A1), in view of Tunget (US 20150034311 A1).
Regarding claim 9, Grimsbo is silent on wherein confirming the quality of the cement includes milling the cement.
Tunget teaches confirming the quality of the cement includes milling the cement (Para 0106).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Grimsbo by having the milling step as disclosed by Tunget because milling, if needed, would allow for the removal of “poor quality cement to expose the subterranean strata, so as to place good quality cement” (Para 0106).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THEODORE N YAO whose telephone number is (571)272-8745. The examiner can normally be reached typically 8am-4pm ET.
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/THEODORE N YAO/ Primary Examiner, Art Unit 3676