DETAILED ACTION
This communication is a first office action on the merits. All currently pending claims have been considered below. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
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.
Claims 1-17 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Independent claim 1 recites "an array of magnet receptacles that receive a corresponding plurality of magnets". The examiner views this as indefinite because the phrase "that receive" does not clearly and expressly require the "corresponding plurality of magnets" as a requirement of the claim, but rather could be viewed as the intended use of the "receptacles". In other words, are the "plurality of magnets" required or is the capability of the "array of magnet receptacles" "to receive" them all that is required? The claim implies the magnets are required, but uses conspicuously equivocating language at the moment of their recitation. If it is Applicant's intent to require the magnets, the examiner suggests the phrase "an array of magnet receptacles holding a corresponding plurality of magnets" or some grammatical variation thereof, be used.
For the purposes of examination, claim 1 has been interpreted as though the magnets are positively required by the claims. Claims 2-11 depend from claim 1.
Independent claim 12 recites "a corresponding plurality of magnets… to magnetically attract ferromagnetic debris ahead of a well tool". The examiner views this as indefinite because (A) it is unclear how or if the "well tool" differs from the "magnetic cleanout tool" already defined by the preamble and claim body (or if they are the same "tool" with unclear grammatical phrasing & nomenclature), and if they are different (B) whether or not the "well tool" is actually required by the claim or not. Similar to the 112(b) issue described for claim 1 above, the "well tool" in the final line of the claim could be construed as merely intended use and therefore not a structural requirement. Claims 13-17 depend from claim 12.
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, 4-8, 10, 12, 14-18, & 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 6,655,462 (Carmichael).
The examiner initially respectfully notes that, at the level of generality currently recited, the examiner gives relatively little weight to the nomenclature of "completion string" or "completion-based", and interprets it as essentially commensurate with "work string" (or "drill string", "tool string" etc.) in the prior art rejections below. The examiner acknowledges that this is likely a broader interpretation than Applicant’s. However examiners are not only allowed to apply broad interpretations, but are required to do so, as it reduces the possibility that the claims, once issued, will be interpreted more broadly than is justified. MPEP §2111. Patentability is determined by the “broadest reasonable interpretation consistent with the specification” (MPEP §2111), not the narrowest reasonable interpretation. And Applicant does not have an explicit "as used herein" lexicographical statement in line with MPEP §2111.01 subsection IV requiring a specific interpretation of the relevant phrases which forces the examiner to interpret them only one way. In fact, Applicant extensively disclaims any limiting nature of the specification on the claims in as-filed ¶s 3, 16, 36, 57, & 58.
Independent claim 1. Carmichael discloses a completion-based well cleanout system ("work string" - col 1:66-67; "[T]he magnetic tool is located below a well clean-up tool in a work string. The well clean-up tool may be a casing scraper, brushing tool or the like" - col 2:30-32. See the above claim interpretation discussion), comprising:
a completion string installable downhole in a well ("work string" - ibid);
a well tool coupled to the completion string ("The well clean-up tool may be a casing scraper, brushing tool or the like" - col 2:30-32); and
a magnetic cleanout tool coupled to the completion string below the well tool ("[T]he magnetic tool is located below a well clean-up tool in a work string…" - ibid) to magnetically attract ferromagnetic debris ("Ferrous metal debris which is present in the well is attracted to the magnets 5 and held onto the stainless steel sleeve 7 until the tool 1 is retrieved from the well." - sentence bridging cols 2 & 3) ahead of the well tool as the completion string advances downhole ("[T]he magnetic tool is located below a well clean-up tool in a work string…" - as cited above. While Carmichael discusses running the embodiment of fig 1 downhole "inactivated" - col 2:20-25 - claim 1 is not a method, but rather is an apparatus / system. The system taught by Carmichael is capable of being run downhole activated), the magnetic cleanout tool comprising an annular magnet carrier (fig 1; alternatively: "permanent magnets may be incorporated as separate elements in otherwise non-magnetic scraper blades" - col 3:37-39) defining an array of magnet receptacles (not individually numbered, but clearly shown holding "magnets 5" - col 2:61-62; figs 1 & 2) that receive a corresponding plurality of magnets ("The magnets 5 are mounted on a split sleeve 6 in a first inner 9 and second outer 10 row." - col 2:61-62; figs 1 & 2; "permanent magnets may be incorporated as separate elements in otherwise non-magnetic scraper blades" - col 3:37-39).
2. The completion-based well cleanout system of claim 1, further comprising: a base pipe (an unnumbered base pipe surrounded by elements 3-7 is clearly shown in fig 1) defining a portion of an internal flow path of the completion string (An internal flowpath is clearly shown in fig 1. "…can be mounted on a work string (not shown)" - col 2:56. Oilfield work strings are tubular and replete in the art, as PHOSITA would readily appreciate), wherein the annular magnet carrier is disposed about the base pipe (fig 1).
4. The completion-based well cleanout system of claim 2, wherein the annular magnet carrier comprises ("comprises" is open ended - MPEP 2111.03 - and does not exclude other elements) a unitary tubular body ("A protective sleeve of stainless steel 7 is located over the split sleeve 6" - col 2:62-64. Also, the rows 9 & 10 of "split sleeve 6" - col 2:61-62 / "split sleeve 8" - second full ¶ of col 3 - appear to be each, individually, a tubular body) that encircles the base pipe (ibid).
5. The completion-based well cleanout system of claim 1, wherein the array of magnet receptacles (not individually numbered, but clearly shown holding "magnets 5" - col 2:61-62; figs 1 & 2) and corresponding magnets ("magnets 5") are axially (fig 1; "magnetic sub 19" - fig 4; The uniform magnetic field shown in fig 5 implies circumferentially spaced source magnets) and circumferentially (ibid) spaced relative to the axis of the completion string.
6. The completion-based well cleanout system of claim 1, wherein the magnetic cleanout tool further comprises a retention sleeve disposed about the annular magnet carrier to retain the magnets in the magnet receptacles ("A protective sleeve of stainless steel 7 is located over the split sleeve 6" - col 2:62-64. Claim 6 does not depend from claim 4 and therefore there is nothing improper about drawing "sleeve 7" to elements in both claims 4 & 6).
7. The completion-based well cleanout system of claim 1, further comprising end collars at opposing longitudinal ends of the annular magnet carrier ("an upper 3 and lower 4 stabiliser sleeve" - fig 1 & col 2:55).
8. The completion-based well cleanout system of claim 7, wherein the end collars comprise centralizers radially extending (fig 1) from the carrier to radially space the magnetic cleanout tool from a wellbore about the magnetic cleanout tool ("stabilizer sleeve" - col 2:55; The sleeves clearly extend radially outward and will therefore space the tool from the surrounding wall. The difference between "stabiliser" / "stabilizer" and "centralizer" is a matter of nomenclature, not structure or function).
10. The completion-based well cleanout system of claim 1, further comprising:
a filter and/or a borehole engagement member ("permanent magnets may be incorporated as separate elements in otherwise non-magnetic scraper blades" - col 3:37-39; The examiner interprets "scraper blades" to be commensurate with "a borehole engagement member") coupled to the completion string below the well tool ( "[T]he magnetic tool is located below a well clean-up tool in a work string" - col 2:30-32), the filter positioned for filtering at least some debris not collected by the magnetic cleanout tool ("and/or", the filter is not exclusively required), the borehole engagement member positioned for slidingly contacting an inner surface of a wellbore to dislodge debris as the completion string advances downhole ("a casing scraper and includes scraper blades 13 that are biased in an outward or radial direction by biasing means such as springs (not shown). In use, the blades 13 are maintained in contact with a casing wall 14 in a downhole well or environment" - col 3:25-29).
Independent claim 12. Carmichael discloses a magnetic cleanout tool for a well completion string ("[T]he magnetic tool is located below a well clean-up tool in a work string…" - col 2:30-32), comprising:
a base pipe (an unnumbered base pipe surrounded by elements 3-7 is clearly shown in fig 1) securable to a completion string ("…can be mounted on a work string (not shown)" - col 2:56) and defining an internal flow path for flow through the completion string (An internal flowpath is clearly shown in fig 1);
an annular magnet carrier disposed about the base pipe (fig 1; alternatively: "permanent magnets may be incorporated as separate elements in otherwise non-magnetic scraper blades" - col 3:37-39), the annular magnet carrier defining an array of magnet receptacles (not individually numbered, but clearly shown holding "magnets 5" - col 2:61-62; figs 1 & 2; alternatively: "permanent magnets may be incorporated as separate elements in otherwise non-magnetic scraper blades" - col 3:37-39); and
a corresponding plurality of magnets received by the magnet receptacles ("magnets 5" - figs 1 & 2; alternatively: "permanent magnets may be incorporated as separate elements in otherwise non-magnetic scraper blades" - col 3:37-39) and arranged to magnetically attract ferromagnetic debris ahead of a well tool (intended use; the magnetic cleaning tool may be mounted downhole of another "well tool").
14. The magnetic cleanout tool of claim 12, wherein the annular magnet carrier comprises ("comprises" is open ended - MPEP 2111.03 - and does not exclude other elements) a unitary sleeve that encircles the base pipe ("A protective sleeve of stainless steel 7 is located over the split sleeve 6" - col 2:62-64. Also, the rows 9 & 10 of "split sleeve 6" - col 2:61-62 / "split sleeve 8" - second full ¶ of col 3 - appear to be each, individually, a tubular body).
15. The magnetic cleanout tool of claim 12, wherein the magnetic cleanout tool further comprises a retention sleeve disposed about the annular magnet carrier to retain the magnets in the magnet receptacles ("A protective sleeve of stainless steel 7 is located over the split sleeve 6" - col 2:62-64. Claim 6 does not depend from claim 4 and therefore there is nothing improper about drawing "sleeve 7" to elements in both claims 4 & 6).
16. The magnetic cleanout tool of claim 12, further comprising end collars at opposing longitudinal ends of the annular magnet carrier ("an upper 3 and lower 4 stabiliser sleeve" - fig 1 & col 2:55).
17. The magnetic cleanout tool of claim 16, wherein the end collars comprise centralizers radially extending from the carrier (fig 1) to radially space the magnetic cleanout tool from a wellbore about the magnetic cleanout tool ("stabilizer sleeve" - col 2:55; The sleeves clearly extend radially outward and will therefore space the tool from the surrounding wall. The difference between "stabiliser" / "stabilizer" and "centralizer" is a matter of nomenclature, not structure or function).
Independent claim 18. Carmichael discloses a method, comprising:
deploying a completion string ("work string" - col 1:66-67; "[T]he magnetic tool is located below a well clean-up tool in a work string. The well clean-up tool may be a casing scraper, brushing tool or the like" - col 2:30-32. See the above claim interpretation discussion) into a wellbore carrying a well tool ("The well clean-up tool may be a casing scraper, brushing tool or the like" - col 2:30-32; "well clean-up tool in the form of a brush tool 16" - col 3:41-42 & fig 4; "Notably, that any cleanup or other function tool could replace the brush tool 16 depicted in FIG. 4 without departing from the invention" - col 3:65-67) and a magnetic cleanout tool below the well tool ("[T]he magnetic tool is located below a well clean-up tool in a work string…" - col 2:30-32; "magnetic sub 19" - fig 4);
magnetically attracting ferromagnetic debris ("Ferrous metal debris which is present in the well is attracted to the magnets 5 and held onto the stainless steel sleeve 7 until the tool 1 is retrieved from the well." - sentence bridging cols 2 & 3) ahead of the well tool as the completion string advances downhole to keep the attracted ferromagnetic debris away from the well tool ("permanent magnets may be incorporated as separate elements in otherwise non-magnetic scraper blades" - col 3:37-39. This embodiment does not have the active / inactive features of the embodiment of fig 1. The magnetic tool being "below" the "well tool" means it will naturally meet this limitation in the same manner as the present case. The examiner again notes that, while running the tool downhole "inactivated" is discussed with respect to the embodiment of figure 1, that of fig 3 has not such features disclosed. In fact, the disclosure in col 3:30-39 teaches that the embodiment of fig 3 is always active);
securing the completion string downhole (Broadly recited. The work string taught by Carmichael is "secured downhole" by virtue of the conveyance and surface rig equipment supporting it); and
performing a tool function downhole using the well tool ("Notably, that any cleanup or other function tool could replace the brush tool 16 depicted in FIG. 4 without departing from the invention" - col 3:65-67. No order of steps is required by the claim as currently worded. See MPEP 2111.01, subsection II).
20. The method of claim 18, further comprising: one or both of wiping an interior surface of the wellbore ("permanent magnets may be incorporated as separate elements in otherwise non-magnetic scraper blades" - col 3:37-39) ahead of the well tool ("[T]he magnetic tool is located below a well clean-up tool in a work string…" - col 2:30-32; "Notably, that any cleanup or other function tool could replace the brush tool 16 depicted in FIG. 4 without departing from the invention" - col 3:65-67) as the completion string advances downhole (ibid) and/or filtering wellbore fluid ahead of the well tool using a filtering sleeve as the completion string advances downhole ("and/or" - the claim does not exclusively require the filter).
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) 3, 9 & 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 6,655,462 (Carmichael) in view of US 2005/0274524 (Silguero).
3. Carmichael discloses all the limitations of the parent claim, and further discloses that the annular magnet carrier comprises two or more arcuate carrier portions ("The magnets 5 are mounted on a split sleeve 6 in a first inner 9 and second outer 10 row" - col 2:61-62. "It can be seen that sleeve 8 has a split configuration having two rows of magnets 9 and 10. When the split sleeve 8 is in the configuration shown at (a) the magnets 9 and 10 are aligned such that the magnetic fields act in addition to attract any ferrous debris and particles 11 which are present. It can be seen from (a) that as a result, ferrous debris 11 will attach to the stainless steel sleeve 7. To covert the magnets to the inactivated mode as shown at (b), movement of, in this case the lower half of the split sleeve 8, displaces the magnets 9 in the lower row, so that the orientation of the magnetic field is changed such that it does not attract the ferrous debris 11" - second full ¶ of col 3; & fig 2) that collectively encircle the base pipe (fig 1).
Carmichael does not expressly disclose that they are "releasably securable".
However Silguero discloses a well cleanout system (title; "the present invention relates to a downhole tool for removing metallic debris from a well bore. The downhole tool includes a body that is able to connect to a work string" - ¶ 7) comprising:
a completion string installable downhole in a well ("work string" - ¶s 7-10);
a well tool coupled to the completion string ("brush module 311" - fig 4C & ¶ 35); and
a magnetic cleanout tool ("magnet carrier 110" - ibid) coupled to the completion string below the well tool (110 is below the upper one of 311: fig 4C) to magnetically attract ferromagnetic debris ("an arrangement of magnets for removing metallic debris from a well bore" - ¶ 23) ahead of the well tool as the completion string advances downhole (inherent to the positioning shown in fig 4C as mapped above), the magnetic cleanout tool comprising an annular magnetic carrier (figs 1 & 6A) defining an array of magnet receptacles (defined by "spacer rings 103", retaining ring 106" and "center ridge 111" - ¶ 26) that receive a corresponding plurality of magnets (101A-101D: fig 1);
further comprising a base pipe ("…a mandrel (not shown)" - ¶ 25), wherein the annular magnet carrier is disposed around the base pipe ("The inner sleeve 104 may be sized to fit around a mandrel (not shown)" - ¶ 25) defining a portion of an internal flow path of the completion string ("a mandrel and a central opening" - ¶ 8);
wherein the annular magnetic carrier comprises two or more arcuate carrier portions ("inner sleeve 104" and "outer sleeve 105" - ¶ 27) releasably securable (by disconnecting 301: fig 4A & 4B; "The component in FIG. 4A has a mandrel 301 adapted to accommodate additional components, such as a magnet carrier, scraper, brush, and centralizer. The additional components may be secured on the downhole tool body by connecting the end body in FIG. 4A to the tool body in FIG. 4B by connection 307" - ¶ 34) to collectively encircle the base pipe (fig 4C).
Therefore it would have been obvious to PHOSITA at the time of filing to make the carrier taught by Carmichael releasably secured to the mandrel as taught by Silguero. Carmichael is silent as to assembly and disassembly, thus forcing the reader to look elsewhere for a more detailed disclosure. Silguero teaches these details in an analogous tool. Disassembly allows for repair / refurbishment, transportation, and adjustment for different diameter wellbores.
9. Carmichael discloses all the limitations of the parent claim but does not disclose those of the present. However Silguero discloses a well cleanout system (title; "the present invention relates to a downhole tool for removing metallic debris from a well bore. The downhole tool includes a body that is able to connect to a work string" - ¶ 7) comprising:
a completion string installable downhole in a well ("work string" - ¶s 7-10);
a well tool coupled to the completion string ("brush module 311" - fig 4C & ¶ 35); and
a magnetic cleanout tool ("magnet carrier 110" - ibid) coupled to the completion string below the well tool (110 is below the upper one of 311: fig 4C) to magnetically attract ferromagnetic debris ("an arrangement of magnets for removing metallic debris from a well bore" - ¶ 23) ahead of the well tool as the completion string advances downhole (inherent to the positioning shown in fig 4C as mapped above), the magnetic cleanout tool comprising an annular magnetic carrier (figs 1 & 6A) defining an array of magnet receptacles (defined by "spacer rings 103", retaining ring 106" and "center ridge 111" - ¶ 26) that receive a corresponding plurality of magnets (101A-101D: fig 1);
wherein the annular magnet carrier is formed of a non-magnetic material ("To prevent dissipation of the magnet strength, the inner sleeve 104 may be formed from an austenitic stainless steel, or other material that exhibits little or no magnetic susceptibilities" - ¶ 25) and the magnets comprise neodymium magnets ("permanent magnets made of any suitable magnetic material, such as neodymium iron boron" - ¶ 24 & claim 7).
Therefore it would have been obvious to PHOSTIA at the time of filing to use the non-magnetic carrier and neodymium magnets as taught by Silguero in the system taught by Carmichael. First, Carmichael does not disclose these details, thus forcing the reader to look elsewhere for a more detailed disclosure. Silguero teaches neodymium magnets as being art-recognized appropriate for an analogous tool and the non-magnetic carrier helps prevent dissipation of the magnetic strength generated (¶ 25).
Claim 13 is the same as claim 3, as is similarly rejected over Carmichael in view of Silguero as described for claim 3 above, respectfully not repeated again here.
Claim(s) 11 & 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 6,655,462 (Carmichael) in view of US GB 2,327,963 (Appleton).
Claim 11. Carmichael discloses all the limitations of the parent claims but does not expressly disclose those of the present. However Appleton discloses a well cleanout system (title) where the cleanout tool ("downhole scraper" - title) is positioned downhole of a packer ("the scraper is adapted to be mounted below the packer" - sentence bridging pages 2 & 3) that is actuatable into sealing engagement with the wellbore (page 2:5-9 & page 2:20-22), a downhole gauge, and/or a safety valve ("and/or").
Therefore it would have been obvious to PHOSITA at the time of filing to use the cleaning tools taught by Carmichael to clean a spot in the wellbore to set a packer as taught by Appleton. This helps ensure a good setting and sealing of the packer against the cleaned casing (page 1:20-23; page 2:5-9).
Claim 19 is a method that is commensurate with claim 11, and is similarly rejected over Carmichael in view of Appleton as described above, respectfully not repeated again here.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blake Michener whose telephone number is (571)270-5736. The examiner can normally be reached Approximately 9:00am to 6:00pm CT.
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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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/BLAKE MICHENER/
Primary Examiner, Art Unit 3676
Prosecution Insights