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 Objections
Claims 7-14 are objected to because of the following informalities:
Claim 7 should depend from claim 6.
Claim 8 is objected to because the final 3 lines should read “deforming [[a]] back-up ring assemblies positioned on either axial end of the sealing element [[and]], each back-up ring assembly comprising a first foldback ring and a second foldback ring which are adapted to move when the sealing element is deployed”.
Claim 9 should read: “wherein the first foldback ring (“FBR”) is a slotted outer FBR and is shorter than the second foldback ring which is a slotted inner FBR” or the like.
Claims 10-14 also lack antecedent basis for the slotted inner and outer FBRs
Claims 9, 12, and 13 should depend from claim 8.
Claim 10 should depend from claim 9.
Claim 11 should depend from claim 1.
Claim 14 should depend from claim 13.
Appropriate correction is required.
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, 2, 5, 8, 9, and 12 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Guerra (US 20190128089 A1).
With respect to claim 1, Guerra discloses a packer assembly for use within a wellbore, the packer assembly comprising: a mandrel (10); a sealing element (12) disposed about the mandrel; a gauge ring (combination 28, 30) back-up ring assemblies (14, 16, 18, 34) about the mandrel on each axial end of the sealing element (pgph. 23), the backup ring assemblies comprising: a slotted inner fold-back ring (18 or 16, see fig. 4, pgph. 23); and a slotted outer FBR (14 or 16) that is axially shorter than the inner FBR (shown in figs. 3, 5, 6).
With respect to claim 2, Guerra discloses wherein the slotted outer FBR is shorter than the slotted inner FBR to prevent extrusion of the sealing element (shown in fig. 3).
With respect to claim 5, Guerra discloses wherein the slotted inner FBR and slotted outer FBR has holes (24).
The limitations of claims 8, 9, and 12 are substantially similar to those of claims 1, 2, and 5, rejected supra.
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) 3, 4, 10, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guerra in light of Clarke (US 20110101615 A1).
With respect to claims 3 and 10, Guerra fails to disclose the chamfered tip.
Nevertheless, Clarke discloses wherein the slotted outer FBR (14) has a chamfered tip (42, pgph. 104).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have made the outer FBR of Guerra with a chamfered tip as taught by Clarke in order to allow them to deform into the wellbore wall and close up any clearances between the apparatus and the wellbore wall as taught by Clarke (pgph. 104).
With respect to claims 4 and 11, Clarke further discloses wherein the slotted inner FBR deforms up and over the chamfered tip of the outer FBR and contacts the wellbore wall (pgph. 104, figs. 4, 6, 8).
Claim(s) 6, 7, 13, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guerra in light of Urban (US 10634255 B2).
With respect to claims 6 and 13, Guerra discloses a secondary back-up ring (see fig. 1 below, from fig. 3 of Guerra) is positioned on the inner diameter of the gauge ring and the secondary back-up to prevent extrusion between the mandrel and the slotted inner FBRs. However, Guerra does not specifically disclose deforming the ring.
Nevertheless, Urban discloses deforming this ring to prevent extrusion as claimed (col. 2 ll. 23-48)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have made ring of Guerra deform at the edges as taught by Urban since these are the areas most effective at preventing extrusion as taught by Urban (col. 2 ll. 23-48).
Fig. 1
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With respect to claims 7 and 14, Guerra and Urban are silent regarding the material choice for the ring.
Nevertheless, it would have been considered obvious to one of ordinary skill in the art, at the time the invention was made, to have used polymer for the secondary back-up ring, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Applicant fails to disclose criticality for this limitations in pgphs. 24, 13, of the instant spec.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20130306331 A1 discloses making packer rings from polymers (pgph. 47), as does US 20200157914 A1.
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/KIPP C WALLACE/Primary Examiner, Art Unit 3674 09/09/2026
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