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 .
Election/Restrictions
Claims 19 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 13, 2026.
Claim Objections
Claim 1 is objected to because of the following informalities: In line 9, the term “the first position” lacks antecedent basis. Appropriate correction is required.
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.
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 8 and 12-14 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.
Claim 8 contains a number of confusing limitations:
First, claim 8 recites dimensions of (a) 7.5 – 8.6 inches, or (b) 9.25 inches – 19 inches for the “packer gauge diameter.” However, claim 8 also recites that “the outer diameter of the packer apparatus in an unset state is greater than 11.0 inches and less than 15.0 inches.” It is the examiner’s understanding that the “packer gauge diameter” and “the outer diameter of the packer apparatus in an unset state” are actually the same dimension. Therefore, it seems that 11.0 – 15.0 inches is actually a third option for the packer gauge diameter, or option “c.” However, it is improper to claim a “range within a range” in the same claim, i.e. the claim cannot recite both 9.25 inches – 19 inches and 11 – 15 inches. It is unclear what is intended by the claim.
Claim 8 states that “the inner diameter of the mandrel is at least 5.5 inches,” and also that “the minimum inner diameter of the mandrel is at least 8.0 inches.” It is unclear if the inner diameter and the minimum inner diameter are the same dimension. If they are, then the limitations are contradictory.
Claim 8 encompasses a number of dimensional combinations of the mandrel inner diameter and outer gauge diameter that do not meet the 1.6 ratio requirement of claim 1. For example, 9.25 inches / 5.5 inches = 1.68. 19 inches / 11 inches = 1.73.
With regard to claim 12, the phrase “further comprising a one-piece mandrel” is confusing, because claim 1 already mentions a mandrel. It is unclear whether these mandrels are the same thing. Additionally, the term “the low-pressure chamber” lacks antecedent basis.
With regard to claim 13, the term “the port” lacks antecedent basis.
With regard to claim 14, the phrase “further comprises the one or more pistons” is confusing, because the one or more pistons have already been recited and thus the device already comprises the pistons and cannot further comprise them.
With further regard to claim 14, it is unclear if the term “an external port” is the same as “the port” in line 2 of claim 13.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,305,474. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim 1 of the instant application is broader than patented claim 8 (for example, the patented claim recites “a hydrostatic setting mechanism…”, and the current claim does not), and is thus fully encompassed by claim 8 and obviously directed to the same invention.
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) 1-3, 7, 8, 15, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hopper (US 5,040,606) in view of Barrington (US 4,378,850) and “Big Bore Casing Packer” (hereinafter Big).
With regard to claim 1, Hopper discloses a casing packer (20, which seals the tubing-casing annulus and can thus be called a “casing packer.” Note that the claim does not positively recite a casing or require that the mandrel be threaded into a string of casing. Furthermore, there is precedent in the prior art for using the term “casing packer” for a packer that simply seals against the inside surface of a casing. See US 4,573,537 to Hirasuna et al., US 4,411,314 to Shearhart, and US 2,082,112 to Layne et al.). Also, applicant’s specification does not provide a special definition for the term “casing packer,” but states only “packers are commonly used inside casing but packers outside of the casing have also been disclosed”—paragraph 0005—and “the casing packer can be deployed, usually as an integral part of the casing string”—paragraph 0009. These statements are not definitive.) apparatus comprising:
a mandrel (Unlabeled, proximate numeral 20, i.e. the metal element upon which the slips 22 and unlabeled sealing element are mounted) having a throughbore (see Fig. 2, which shows a central open bore within the mandrel) extending in a longitudinal direction;
a packer element (unlabeled, proximate numeral 20 in Fig. 2) mounted on the mandrel, the packer element comprising an outer sealing face (Fig. 2 shows the outer sealing face in contact with the outer casing);
a bypass conduit (35, 36, see Fig. 2) extending from one side of the outer sealing face to an opposite side of the outer sealing face (Fig. 2); and
a bypass valve (33) to control the bypass conduit (compare “open” and “closed” illustrations in Fig. 2).
Hopper fails to teach a wireless receiver to receive wireless signals to control the bypass valve.
Barrington is analogous to Hopper in the sense that Barrington discloses a downhole valve that is controlled from the surface. Barrington’s valve is also hydraulically operated. However, Barrington does not use a hydraulic control line extending from the surface to the downhole valve. Instead, Barrington uses a downhole pressure source that is activated by wireless signal (column 1, line 64 – column 2, line 6) when that signal is received by a receiver (101).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Hopper by replacing the hydraulic control line connected to the surface with Barrington’s downhole wireless receiver and downhole pressure source, in order to eliminate “numerous problems…primarily attributable to the hydraulic lines” (see Background section of the Barrington reference, which discusses all of the disadvantages of hydraulic control lines).
Hopper, as modified by Barrington, fails to teach that the ratio between a gauge diameter of the packer apparatus in the first position and an inner diameter of the packer apparatus in the first position is less than 1.6. Hopper is simply silent as to any specific dimensions of the packer 20, forcing one of ordinary skill in the art to look elsewhere for instruction on how to select a proper size for the packer in a real-world application.
Big provides specifications for a “Big Bore Casing Packer” that has a O.D. to I.D. ratio below 1.6 in many cases (see Fig. below).
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It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Hopper in view of Barrington by selecting the packer of Big with an OD/ID ratio of less than 1.6, with a reasonable expectation of success given that Big teaches that such dimensions were typical of packers being used in the art, and because Big also teaches that such a packer would have versatility as it has a “full opening,” can be “used to isolate damaged casing and for production or injection,” and can be “set in open hole or a scaly casing” (see Big, opening paragraph and “special features” list).
With regard to claim 2, Hopper teaches that the bypass valve (34) is moveable more than once (the valve can be re-opened after closing—see column 5, lines 55-68).
With regard to claim 3, Hopper teaches that the bypass valve (34) comprises one or more of a multi-cycle valve (the valve can be re-opened after closing—see column 5, lines 55-68) or a piston valve (valve 34 is acted upon by piston 52 and is therefore a “piston valve”).
With regard to claim 7, Hopper teaches a threaded portion (proximate numeral 29) for threaded attachment to a casing (note that the threaded portion proximate numeral 29 is “for threaded attachment” to any type of pipe), and the minimum inner diameter of the packer is no less than a drift diameter of an API casing with a corresponding size and weight of thread (the claims do not actually require a casing, but are only directed to a “casing packer.” Thus, the casing is not positively recited in the claim and given little patentable weight. Furthermore, in Hopper, the packer 20 is shown as having a greater inner diameter than the tubular element 23 that it is threadedly connected to).
With regard to claim 8, as best understood, Hopper in view of Barrington and Big discloses dimensions for the modified packer that fall within the claimed ranges.
With regard to claim 15, Hopper and Barrington, in combination, teach at least one of a wireless transmitter (Barrington’s system includes a wireless transmitter 70 that sends the acoustic signal downhole. This acoustic transmitter would have been incorporated from Barrington into Hopper in order to make the wireless system work) and a wireless transceiver which comprises the wireless receiver, and wherein the wireless signals include acoustic (Barrington’s system works on acoustics) and/or electromagnetic signals.
With regard to claim 21, Hopper in view of Barrington and Big discloses that the bypass conduit extends generally in said longitudinal direction from a first end to a second end (see element 36, Fig. 2), and having at least one first port at the first end (proximate numeral 35 in Fig. 2) and at least one second port at the second end (proximate numeral 28), the bypass conduit extending through the apparatus from the at least one first port on said one side of the outer sealing face to the at least one second port on said opposite side of the outer sealing face (bypass pathway 36 in Fig. 2 pass from above packer element 20 to below packer element 20), and wherein the bypass valve is moveable between, at least, an open position (“Closed,” right side of Fig. 2) where pressure can communicate through the apparatus via the ports and the bypass conduit, and a closed position where pressure cannot communicate through the apparatus.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hopper in view of Barrington and Big as applied to claim 1 above, and further in view of Savage (US 4,253,521).
With regard to claim 4, Hopper in view of Barrington fails to disclose that the flow area through the bypass valve (34) is at most 0.5 square inches. Hopper is simply silent as to the size of the openings in valve 34.
Savage discloses a device analogous to Hopper’s, in that it is a downhole packer which incorporates a sleeve valve (154). Savage teaches that “the sliding valve sleeve ports 184 and the packer mandrel ports 182 are so dimensioned…so that sufficient flow area is provided therebetween” (Savage, column 9, lines 1-12). In other words, Savage teaches that the flow area of a sleeve valve is a result-effective variable.
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made, to have modified Hopper in view of Barrington such that the flow area through the bypass valve opening was at most 0.5 square inches, since it has been held that discovering an optimum value of a result effective variable (and Savage shows that the flow area is a result effective variable) involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hopper in view of Barrington and Big as applied to claim 1 above, and further in view of Bissonnette et al. (US 2004/0159447, hereinafter Bissonette).
With regard to claim 5, Hopper in view of Barrington and Big fails to teach that the bypass conduit incorporates a filter with maximum openings smaller than the smallest restriction in the bypass conduit and the bypass valve.
Bissonette teaches a downhole bypass valve, in which ports 60 that are open to the wellbore annulus are provided with screen elements 62.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Hopper in view of Barrington and Big by providing the filter of Bissonette at an entrance to the bypass conduit, in order “to prevent particulate of the fluid…from contaminating and potentially fouling the sliding sleeve valve mechanism” (Bissonette, paragraph 0033). Furthermore, in making such a modification, the smallest restriction within Hopper’s bypass conduit is the entrance ports themselves (i.e. 35), where the filter from Bissonette would be positioned. Thus, the openings in the filter would have to be smaller than those restrictions.
Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hopper in view of Barrington and Big as applied to claim 1 above, and further in view of Li et al. (US 2009/0223675, hereinafter Li).
With regard to claim 9, Hopper in view of Barrington and Big fails to disclose a hydrostatic setting mechanism including a member comprising a wedge portion mounted on the mandrel, and wherein the member comprising the wedge portion and the packer element is moveable so that the wedge portion deflects the packer element radially outwards. However, it is noted that Hopper’s illustration of the packer device is quite schematic. Hopper at least teaches wedge-like slip elements (see annotated Fig. provided below), but Hopper fails to show how they actually work.
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Savage (unlike Hopper) actually shows details of a downhole packer device. Savage shows slip wedges (e.g. 204) that are expanded by wedge portions (202) that are movably mounted to a mandrel (164).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Hopper in view of Barrington by providing the movable wedge portions of Savage, with a reasonable expectation of success, giving that Savage provides evidence that such an arrangement is typical for downhole packers.
Hopper, as modified by Barrington, Big, and Savage, fails to teach at the setting mechanism is a hydrostatic setting mechanism.
Li teaches a downhole packer, in which a hydrostatic setting mechanism is provided. The hydrostatic pressure setting mechanism has an external port (230) which communicates hydrostatic pressure from the annulus that acts against a low-pressure chamber (224). Li also discloses a piston (i.e. the lower surface 232 of the actuation member 214).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Hopper in view of Barrington, Big, and Savage by providing the hydrostatic pressure setting mechanism of Li (with an external port, piston, and low-pressure chamber), since “a separate control line does not have to be provided in the tool string” (Li, paragraph 0015).
With regard to claim 10, Hopper teaches that (c) a piston is configured to move at least one of the member comprising the wedge portion or the packer element from the first position to the second portion (“pistons acting to expand the packer and drive out slips 22 which seal and lock the packer in place,” column 4, lines 14-24).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hopper in view of Barrington and Big as applied to claim 1 above, and further in view of Curington et al. (US 4,798,243, hereinafter Curington).
With regard to claim 16, Hopper in view of Barrington and Big fails to teach that the mandrel has an eccentric shape, that is, the central axis of the inner diameter of the mandrel is different to the central axis of the outer diameter of the mandrel.
Curington discloses a downhole packer in which the central axis of the inner diameter of the mandrel is different than the central axis of the outer diameter of the mandrel (see, for example, Figs. 4 and 6).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified the mandrel of Hopper in view of Barrington and Big to be an eccentric mandrel as shown by Curington, in order to provide space for the running of additional equipment, such as electric lines (see numerals 12 and 13 of Curington, also column 4, lines 20-34).
Allowable Subject Matter
Claims 11, 17, and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 12-14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT E FULLER whose telephone number is (571)272-6300. The examiner can normally be reached M-F 8:30AM - 5:30PM.
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/ROBERT E FULLER/ Primary Examiner, Art Unit 3676