CTFR 19/178,576 CTFR 93826 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 filing of 4/22/26 has been entered. Applicant’s amendments have resolved the previously presented claim objections. It is noted that applicant’s arguments reference amendments to claim 4 and new claims 21-32. This does not appear to be the case with the claims submitted and may be a transcription error from another cases. Please note that the previously presented double patenting rejection has been dropped in view of applicant’s amendments. The newly recited subject matter is not taught or rendered obvious in view of the art available to the examiner (as discussed further below). Claim Objections 07-29-01 AIA Claim s 1, 7, and 14 objected to because of the following informalities: The claims 1, 7, and 14 recite “the meltable sealant”. However this element was first introduced as “a sealant” and elsewhere referred to as “the sealant” . Appropriate correction is required. Claim Rejections - 35 USC § 112 07-30-01 AIA 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. 07-31-01 Claims 1-12 and 14 is 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. Claims 1 and 7 recite, “a valve to actuate the SS, wherein the valve is attached to the ID and held in place with a material, wherein the material has a first melting temperature that is lower than a second melting temperature of the meltable sealant.” While “a spring-loaded valve may be disposed in the wall of the casing string and held in place with a material with a lower melting point than the meltable sealant, allowing for the spring-loaded valve to deploys quickly and provides a seal in the conduit” is discussed in Para 0016 and “a spring-loaded valve 208 may be disposed in the wall of the casing string and held in place with a material 209 with a lower melting point than the meltable sealant 116, allowing for the spring-loaded valve 208 to deploy quickly and provide the seal” in Para 0026. The original disclosure does not support “a valve to actuate the SS”. The depiction of valve 208 in Fig 2, does not readily support the recited functionality “to actuate the SS”, as recited. Consequently, the recitation is new matter which is not supported by the original disclosure. Dependent claims 2-6, 8-12, and 14 are rejected for depending from a rejected claim. Claim 6 further recites “a valve […]”. However, the parent claim already recites “a valve”. It appears that this claim is a redundant inclusion and appears to be already recited in claim 1, but, it is unclear. Please note, if applicant intends for the valve of claim 6 to be a distinct valve, it may be problematic under 112(a). Claims 8-10 recite further particulars of a ball or dart and its use relative to the sliding sleeve (e.g. “the sliding sleeve is moved with the ball or dart”). However, it appears, in the original disclosure, the presence of the valve is an alternative to the ball (e.g. Para 0016, “rather than using a ball, a spring-loaded valve may be disposed in the wall of the casing string […] and provides a seal”). It is unclear how both a ball and valve (which are disclosed as alternatives with respect to proving a seal) are used to actuate/move the sliding sleeve. Claims 9-10 are rejected for their dependence from a rejected claim. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 1-12 and 14 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 1 and 7 recite, “a valve to actuate the SS, wherein the valve is attached to the ID and held in place with a material, wherein the material has a first melting temperature that is lower than a second melting temperature of the meltable sealant.” The claims functionally recites the particulars of the valve (“to actuate the SS”) in a manner which merely recited a result achieved by the invention/valve. When viewed in light of the disclosure it is unclear how this function is achieved. In Fig 2, valve 208 is positioned downhole of the sleeve and has no intermediate connections shown or clearly discussed in the specification. As stated in MPEP 2173.05(g), “the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart , 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC , 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008) (noting that the Supreme Court explained that a vice of functional claiming occurs "when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty")” Commentary on Best Available Prior Art As discussed with respect to claim 1 in the preceding Office Action (reproduced below), Helms (US 11118423 B1) teaches the majority of the claimed invention. Helms teaches a system comprising: a conduit (Fig 3-4, tubular body 302, Column 3, lines 66-67); a sealant disposed on an inner diameter (ID) of the conduit (Column 4, lines 20-35, “liquid eutectic metal core” is coated on an ID within the conduit), the sealant configured to melt (Column 2, line 18, “a eutectic metal alloy is melted to form a liquid”) and solidify to form a plug within the conduit (Column 4, lines 20-35, “the solidified metal from the solder particles may form a seal”); a sliding sleeve (SS) (Fig 3-4, sleeve 306, Column 3, lines 66-67), wherein the sealant on the ID is disposed between the ID and the SS (Column 4, lines 20-35, Fig 3-4 “the liquid eutectic metal core to solidify and bond the inner sleeve 306 to the tubular body 302”). As discussed with respect to previously presented claim 6, Helms is silent on a valve that is attached to the ID with a material that includes a lower melting temperature than the sealant. Gano teaches a valve that is attached to the ID with a material that includes a melting temperature (Para 0027, 0030, there may be a plurality of valve(s) which are operable/expandable to control flow which are controllable with a meltable material such as wax and other materials. Please note that the claim is not specific as to the location and/or interaction of the recited valve with the other recited claim elements. Inclusion of the valve of Gano would at least be indirectly attached to the ID). The independent claims, as amended however, requires “a valve to actuate the SS”. This functionality is not taught or rendered obvious based on the art known to the examiner. Zhou (CN-112392409-A) is also made of record which teaches the use of a meltable material in the context of a sliding sleeve, but, does not teach the valve structure recited. The examiner notes, however, the serious 112(a) and 112(b) issues with the claims and which are discussed above. Conclusion 07-40 AIA 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. 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. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /THEODORE N YAO/Primary Examiner, Art Unit 3676 Application/Control Number: 19/178,576 Page 2 Art Unit: 3676 Application/Control Number: 19/178,576 Page 3 Art Unit: 3676 Application/Control Number: 19/178,576 Page 4 Art Unit: 3676 Application/Control Number: 19/178,576 Page 5 Art Unit: 3676 Application/Control Number: 19/178,576 Page 6 Art Unit: 3676 Application/Control Number: 19/178,576 Page 7 Art Unit: 3676 Application/Control Number: 19/178,576 Page 8 Art Unit: 3676 Application/Control Number: 19/178,576 Page 9 Art Unit: 3676
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