DETAILED CORRESPONDENCE
Claims 21-39 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 4/14/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 structure, material, or acts necessary to perform the entire claimed function, i.e., with respect to each of the “first vibration assembly”, “vibration element”, and “second vibration assembly” must be shown or the feature(s) canceled from the claim(s) (claims 21 and 34). [See the related Section 112(f) invocation and Section 112(a) and Section 112(b) rejections.] Additionally, the “hose” within “another tubular” (claims 26 and 27) must be shown or the feature(s) canceled from the claim(s). [See the related Section 112(b) rejections.] Additionally, the “extendable member” (claim 38) 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 (a) Figs. 11A, 11B, 12A, 12B, 13A, 13B, 14, and 15 each has multiple figures and each should be separately numbered, e.g., for Fig. 11A use Fig. 11A, Fig. 11B, Fig. 11C, and Fig. 11D, and (b) any tubing other than the casing should be numbered and referenced as such in the specification, such as, in at least current Figs. 8, 10, 11A, 11B, 12A, 12B, 13A, 13B, 14, and 15. 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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “pressure application mechanism” (claim 21) [the application discloses structure, material, or acts necessary to perform the entire claimed function at paragraphs [0007],[0008], and [0060]], “sealing mechanism” (claim 22) [the application discloses structure, material, or acts necessary to perform the entire claimed function at paragraph [0061] re elements 70], “extendable member” (claim 38) [the application discloses structure, material, or acts necessary to perform the entire claimed function at paragraph [0118]], “first vibration assembly” (claim 21), “vibration element” (claims 21 and 34), and “second vibration assembly” (claim 34). Nothing in the application nor drawings discloses structure, material, or acts necessary to perform the entire claimed function for the “first vibration assembly”, “vibration element”, and “second vibration assembly”. See the related Section 112(a) and Section 112(b) rejections in this regard.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 21-39 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.
Claims 21 and 34 Nothing in the application describes the structure, material, or acts necessary to perform the entire claimed function for the “first vibration assembly”, “vibration element”, and “second vibration assembly”. The closest disclosures are “The landing platform or packer may be provided with controls to generate a vibrating displacement in the longitudinal direction. For example, electrical connections may be provided along the wireline and through the container device. If the container device is a hose, then the hose may be provided within a larger tubular, and the electrical connections may be disposed in the annulus defined between the hose and the tubular. The vibration elements may also be disposed within this annulus” (paragraph [0109]). The “controls” are only disclosed as initiating (i.e., “generating” a “vibrating displacement”) but not as the structure that actually vibrates the container, and, further, no drawing or description for such “controls” is provided). Similarly, the application discloses that the vibration element “may comprise an annulus circumferentially around the container device. In some examples, the vibration elements may be provided within the annulus defined between the hose and the tubular” (paragraph [0016]). An “annulus” is a position and not a structure.
Claims 22-39 depend from claim 21 and claims 35-38 depend from claim 34.
Claims 31 and 37 These claims recite that the vibration element is an annulus, while depending from claim 21 which recites that the vibration element is mechanically coupled to the container. Nothing in the application discloses how an annulus can be a vibration element, in that annulus is a space and cannot be mechanically coupled.
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 21-39 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 21 This claim recites “an upper portion” twice, making it unclear whether different upper portions are intended. Claims 22-39 depend from claim 21.
Claims 21 and 34 As discussed with respect to Section 112(f) above, this claim has invoked Section 112(f) as to “first vibration assembly” (claim 21), “vibration element” (claims 21 and 34), and “second vibration assembly” (claim 34). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is devoid of any structure that performs the function in the claim.
The closest disclosures are “The landing platform or packer may be provided with controls to generate a vibrating displacement in the longitudinal direction. For example, electrical connections may be provided along the wireline and through the container device. If the container device is a hose, then the hose may be provided within a larger tubular, and the electrical connections may be disposed in the annulus defined between the hose and the tubular. The vibration elements may also be disposed within this annulus” (paragraph [0109]). The “controls” are only disclosed as initiating (i.e., “generating” a “vibrating displacement”) but not as the structure that actually vibrates the container, and, further, no drawing or description for such “controls” is provided). Similarly, the application discloses that the vibration element “may comprise an annulus circumferentially around the container device. In some examples, the vibration elements may be provided within the annulus defined between the hose and the tubular” (paragraph [0016]). An “annulus” is a position and not a structure.
Therefore, these claims are indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claims so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claims, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 22-29 depend from claim 21 and claims 35-38 depend from claim 34.
Claims 27 and 32 This claim depends from claim 26 and claim 21, wherein the only “tubular” reference is the chamber having a tubular wall. Paragraphs [0098] and [0099] have been interpreted such that either the hose replaces the tubular wall or the hose is within the tubular wall. The examiner has interpreted claim 27 to require the latter. Under this interpretation, the claim 27 “another tubular” is the tubular wall of claim 21, which makes the claim indefinite in that “another” requires a different tubular than the tubular wall. Changing “another tubular” to “the chamber tubular wall” will overcome this rejection. Claim 32 depends from claim 27 and claim 32 is also rendered indefinite by the foregoing uncertainty regarding tubulars.
Claim 35 It is unclear what is meant by the first and second vibration assemblies being “the same”. The examiner interprets this to require that the two distinct vibration assemblies are required with both being of the same type. Additionally, it is unclear whether “said vibration assembly” refers to the first or second vibration assembly. Additionally, it is unclear what is intended by “a tubular in which said container device is provided”. Is this tubular the casing 7 (or the intermediate tubular, such as the one shown in Fig. 8A), i.e., the tubular which receives the container device as the container is placed in the well, or is it the claim 21 chamber “tubular wall” which is part of the container device itself? In this regard, the term “provided” is ambiguous. Corresponding changes to the specification will be necessary.
Claim 36 It is unclear what is intended as “the tubular”. Is this tubular the casing 7 (or the intermediate tubular, such as the one shown in Fig. 8A), i.e., the tubular which receives the container device as the container device is placed in the well, or is it the claim 21 chamber “tubular wall” which is part of the container device itself?
Claim 37 It is unclear what is intended as “the tubular”. Is this tubular the casing 7 (or the intermediate tubular, such as the one shown in Fig. 8A), i.e., the tubular which receives the container device as the container device is placed in the well, or is it the claim 21 chamber “tubular wall” which is part of the container device itself? Additionally, it unclear whether “each vibration element” includes the first vibration assembly vibration element or the second vibration assembly vibration element or both. The examiner has interpreted this to refer to the one or more vibration elements in the second vibration assembly only, in which case changing to “each further vibration element” would overcome this rejection.
Claim 38 It is unclear what is intended as “the tubular”. Is this tubular the casing 7 (or the intermediate tubular, such as the one shown in Fig. 8A), i.e., the tubular which receives the container device as the container device is placed in the well, or is it the claim 21 chamber “tubular wall” which is part of the container device itself? Additionally, it unclear whether “the vibration elements” includes the first vibration assembly vibration elements or the second vibration assembly vibration elements or both. The examiner has interpreted this to refer to the one or more vibration elements in the second vibration assembly only, in which case changing to “the further vibration elements” would overcome this rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. In this regard, and in the interest of compact prosecution, the examiner notes the following tentative relevance of such cited-only prior art to independent claim 21.
Claim 21 Bates (US2064336) discloses an assembly comprising:
a container device configured to transport and release a plugging material into a well [Figs. 4,8; page 2, col. 2, lines 19-55, page 1, col. 1, lines 44-51, page 1, col. 2, lines 14-22], the container device comprising:
a longitudinal chamber 45 [Fig. 4] for containing the plugging material 18’ [cement], the chamber comprising a tubular wall extending in a longitudinal direction and at least one opening [e.g., into cap 43] for releasing the plugging material from the chamber;
a lower seal 43 extending across the opening and closing the chamber in a closed configuration [Fig. 4];
a pressure application mechanism 4’ provided at an upper portion of the container device for pressurising at least part of the device and expelling the plugging material [downward motion of tubing 4’ pressurizes at least the cap/lower seal 43 as such tubing is in the process of bearing upon (through at least threads at 42) then shattering such cap/lower seal; page 2, col. 2, lines 44-51]; and
a connector 3’ provided at an upper portion of the container device for attaching the container device to an elongate member [e.g., a string of tubing 2 to the surface; page 1, col. 2, lines 14-25; Figs, 4, 2] for lowering into a wellbore 1.
Bates does not disclose a first vibration assembly and vibration elements. Chamarthy et al. (US20210332657) discloses a vibration assembly 420 with vibration elements 428 on a bailer 400 [Fig. 4; para. 0015]. It would be obvious to combine the Bates bailer with the Chamarthy vibration assembly 420,428.
Bates does not disclose a landing packer for receiving the container device. Lende et al. (US2021037215) discloses a bailer 62 and an associated vibrator 104 carried by the body [Figs. 2A,2B; para. 0029], and also discloses a landing packer 154,152,151 for receiving the container device [Fig. 4D; para. 0046]. It would be obvious to include the Lende landing packer in the Bates bailer system.
Claim 21 Haugland discloses a container device 1 configured to transport and release a plugging material 18 into a well [Figs. 4A,4B; abstract; para. 0071,0072], the container device comprising:
a longitudinal chamber 2 for containing the plugging material, the chamber comprising a tubular wall extending in a longitudinal direction and at least one opening 6 for releasing the plugging material from the chamber;
a lower seal 34 extending across the opening and closing the chamber in a closed configuration;
a pressure application mechanism 10 provided at an upper portion of the container device for pressurising at least part of the device and expelling the plugging material [para. 0071,0072]; and
a connector 19 provided at an upper portion of the container device for attaching the container device to an elongate member [wireline; para. 0064] for lowering into a wellbore.
Haugland does not disclose a first vibration assembly and vibration elements. Chamarthy et al. (US20210332657) discloses a vibration assembly 420 with vibration elements 428 on a bailer 400 [Fig. 4; para. 0015]. It would be obvious to combine the Haugland bailer with the Chamarthy vibration assembly 420,428.
Haugland does not disclose a landing packer for receiving the container device. Lende et al. (US2021037215) discloses a bailer 62 and an associated vibrator 104 carried by the body [Figs. 2A,2B; para. 0029], and also discloses a landing packer 154,152,151 for receiving the container device [Fig. 4D; para. 0046]. It would be obvious to include the Lende landing packer in the Haugland bailer system.
Claim 21 Beach et al. (US20190178051) discloses a container device 10,12 for transporting and releasing a plugging material S into a well [Figs. 1-7; abstract], the container device comprising:
a longitudinal chamber 14,16 [Fig. 3] for containing the plugging material S, the chamber comprising a tubular wall extending in a longitudinal direction and at least one opening 72 for releasing the plugging material from the chamber [Figs. 3-7];
a lower seal P2 extending across the opening and closing the chamber in a closed configuration [Fig. 3];
a pressure application mechanism [either one or all of the pressurized fluid, the valve 122, or the upper seal P1; Fig. 4; para. 0083,0089,0098,0059,0068] provided at an upper portion of the container device for pressurising at least part of the device and expelling the plugging material S [Figs. 4-7; para. 0098-0103]; and
a connector 140 provided at an upper portion of the container device for attaching the container device to an elongate member [e.g., wireline] for lowering into a wellbore [Fig. 3; para. 0084,0090,0105].
Beach does not disclose a first vibration assembly and vibration elements. Chamarthy et al. (US20210332657) discloses a vibration assembly 420 with vibration elements 428 on a bailer 400 [Fig. 4; para. 0015]. It would be obvious to combine the Beach bailer with the Chamarthy vibration assembly 420,428.
Beach does not disclose a landing packer for receiving the container device. Lende et al. (US2021037215) discloses a bailer 62 and an associated vibrator 104 carried by the body [Figs. 2A,2B; para. 0029], and also discloses a landing packer 154,152,151 for receiving the container device [Fig. 4D; para. 0046]. It would be obvious to include the Lende landing packer in the Beach bailer system.
Lende et al. (US2021037) discloses a bailer 62 and an associated vibrator 104 carried by the body [Figs. 2A,2B; para. 0029].
Beach et al. (US6595281) discloses a bailer with a traveling plug that can be shattered by pressure [col. 9, lines 1-34].
Bourque (US20140318782) discloses a dump bailer with a traveling plug and a lower seal with a burst mechanism [Figs. 4A-4D].
Mineo et al. (US20150240583) discloses a bailer having a lower seal punctured by a lance from above [Fig. 4].
Brown et al. (US20030150614) discloses a bailer having a traveling plug and a lower seal with a burst mechanism [Fig. 1].
Tucker (US2618345) discloses a dump bailer having a plug connected to the bailer lower end [Figs. 1,2].
Conclusion
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 on 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