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 Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-6, 9, 11, 20, 41-45 and 49 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2662277 A to Stone.
(Note independent claims are addressed first and like claims grouped together)
Regarding claim 1: Stone discloses 1. A downhole tool (Col 2, lines 29-32), comprising:
a first member 10, the first member having a first member inside diameter (ID1), a first member outside diameter (OD1), a first member thickness (t1), and a first member hardness value (HV1);
a second member 11, the second member having a second member inside diameter (ID2), a second member outside diameter (OD2), a second member thickness (t2), and a second member hardness value (HV2) the first and second members positioned proximate one another forming an overlapping space therebetween, wherein the first member and the second member further define a radially exterior notched overlapping junction that includes a notch formed by opposed angled surfaces of the first member and the second member; (Figure 1, as per applicant’s specification [0026] the overlap may be “, the overlap may be face-to-face, end-to-end, butt-to-butt, or any other overlap, as well as combinations of the same.” It would appear that Stone discloses an overlap junction that meets applicant’s definition, notch can be considered the space between sloped surfaces 14 and a first section just under the space between the surfaces 14)
a crack compliant seal positioned at the overlapping space and in the notch (16 silver solder, Figure 3, 22 figure 5, as per the defined notch above); and
a high yield strength weld 17 positioned at the overlapping space and at least partially within the notch and radially outside of the crack compliant seal (Figure 3),
However, Stone fails to disclose explicitly the crack compliant seal having a compliant seal hardness value (HVcs) less than or equal to one or more of the first member hardness value (HV1) and second member hardness value (HV2), or the high yield strength weld having a yield strength of at least 50 ksi.
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have made it such that the solder of Stone had a hardness value (HVcs) less than or equal to one or more of the first member hardness value (HV1) and second member hardness value (HV2), as "Obvious to try" – choosing from a finite number of identified, predictable solutions (higher, lower or equal), with a reasonable expectation of success.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the weld of Stone such that the weld has a yield strength of at least 50 ksi, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 41: Stone discloses 41. A method, comprising:
obtaining a first member 10, the first member having a first member inside diameter (ID1), a first member outside diameter (OD1), a first member thickness (t1), and a first member hardness value (HV1);
obtaining a second member 11, the second member having a second member inside diameter (ID2), a second member outside diameter (OD2), a second member thickness (t2), and a second member hardness value (HV2);
positioning the first and second members proximate one another forming an overlapping space therebetween wherein the first member and the second member further define a radially exterior notched overlapping junction that includes a notch formed by opposed angled surfaces of the first member and the second member (Figure 1, as per applicant’s specification [0026] the overlap may be “, the overlap may be face-to-face, end-to-end, butt-to-butt, or any other overlap, as well as combinations of the same.” It would appear that Stone discloses an overlap junction that meets applicant’s definition, notch can be considered the space between sloped surfaces 14 and a first section just under the space between the surfaces 14)
, wherein a crack compliant seal is positioned at the overlapping space and in the notch (16 silver solder, Figure 3, 22 figure 5 as per the defined notch above), and a high yield strength weld 17 is positioned at the overlapping space and at least partially within the notch and radially outside of the crack compliant seal,
However, Stone fails to disclose explicitly the crack compliant seal having a compliant seal hardness value (HVcs) less than or equal to one or more of the first member hardness value (HV1) and second member hardness value (HV2), or the high yield strength weld having a yield strength of at least 50 ksi.
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have made it such that the solder of Stone had a hardness value (HVcs) less than or equal to one or more of the first member hardness value (HV1) and second member hardness value (HV2), as "Obvious to try" – choosing from a finite number of identified, predictable solutions (higher, lower or equal), with a reasonable expectation of success.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the weld of Stone such that the weld has a yield strength of at least 50 ksi, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claims 2 and 42: Stone, as modified discloses wherein the compliant seal hardness value (HVcs) is a post weld heat treatment compliant seal hardness value (HVcs-pw).(see above)
Regarding claims 3 and 43: Stone, as modified discloses the claimed invention except wherein the post weld compliant seal hardness value (HVcs-pw) is 250 or less.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modified the weld of Stone such that the post weld compliant seal hardness value (HVcs-pw) is 250 or less, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claims 4 and 44: Stone, as modified discloses the claimed invention except wherein the post weld compliant seal hardness value (HVcs-pw) is 250 or less after being subjected to the post weld heat treatment of at least 620 ºC.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modified Stone such that the post weld compliant seal hardness value (HVcs-pw) is 250 or less after being subjected to the post weld heat treatment of at least 620 ºC, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claims 5 and 45: Stone discloses wherein the crack compliant seal includes no more than 1 % mass fraction of nickel. (Stone makes no mention of any nickel and therefore is interpreted as zero percent)
If one were to disagree, It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified the silver solder of Stone to have no more than 1 % mass fraction of nickel, as since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 6: Stone discloses 6. The downhole tool as recited in Claim 1, wherein the crack compliant seal is located radially inside of the high yield strength weld.(Figures 1-3)
Regarding claim 9: Stone discloses the claimed invention except 9. The downhole tool as recited in Claim 1, wherein the crack compliant seal is located radially outside of the high yield strength weld.
The reversal of components in a prior art reference, where there is no disclosed significance to such reversal, is a design consideration within the skill of the art. In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955); In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Therefore It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Stone such that the weld were on the inside and the solder radially outside the weld, as a design consideration, such as for a stinger section, where the outside diameter needs to be uniform rather than the inside.
10. The downhole tool as recited in Claim 9, wherein the crack compliant seal is a crack compliant weld.
Regarding claim 11: Stone discloses 11. The downhole tool as recited in Claim 1, wherein the overlapping space is a butt joint.(Figure 1, (“butt type” Col 1, line 5-7))
Regarding claims 20 and 49: Stone discloses the claimed invention except explicitly wherein the high yield strength weld has a yield strength of at least 80 ksi.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the weld of Stone such that the weld has a yield strength of at least 80 ksi, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim(s) 1-6, 12-13, 20-26, 41-44 and 49 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20100187018 A1 to Choe.
Regarding claim 1: Choe discloses 1. A downhole tool comprising:
a first member 70, the first member having a first member inside diameter (ID1), a first member outside diameter (OD1), a first member thickness (t1), and a first member hardness value (HV1);
a second member 52, the second member having a second member inside diameter (ID2), a second member outside diameter (OD2), a second member thickness (t2), and a second member hardness value (HV2) the first and second members positioned proximate one another forming an overlapping space therebetween wherein the first member and the second member further define a radially exterior notched overlapping junction that includes a notch formed by opposed angled surfaces of the first member and the second member (Figure 4, note the examiner interpreters the joint as an overlapping joint/ junction with a notch formed between 70 and 56 at its exterior surface between “opposed angled surfaces of the first member and the second member” Furthermore, the notch can be considered to be the “V” shaped area between elements 70 and 56 where weld 24 is shown, and the gap between 70 and 56 just adjacent to the weld to, for example, the first corner)
a crack compliant seal positioned at the overlapping space and in the notch ( 74 silver solder [0042], Figure 4, as defined above the brazing material is in both the overlapping space and in the notch ); and
a high yield strength weld 24 positioned at the overlapping space and at least partially within the notch and radially outside of the crack compliant seal (Figure 4),
However, Choe fails to explicitly disclose the crack compliant seal having a compliant seal hardness value (HVcs) less than or equal to one or more of the first member hardness value (HV1) and second member hardness value (HV2), or the high yield strength weld having a yield strength of at least 50 ksi.
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have made it such that the brazing alloy of Choe had a hardness value (HVcs) less than or equal to one or more of the first member hardness value (HV1) and second member hardness value (HV2), as "Obvious to try" – choosing from a finite number of identified, predictable solutions (higher, lower or equal), with a reasonable expectation of success.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the weld of Choe such that the weld has a yield strength of at least 50 ksi, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 21: Choe discloses 21. A well system, comprising:
a wellbore;
a downhole tool positioned within the wellbore [0028], the downhole tool including:
a first member 70, the first member having a first member inside diameter (ID1), a first member outside diameter (OD1), a first member thickness (t1), and a first member hardness value (HV1);
a second member 52, the second member having a second member inside diameter (ID2), a second member outside diameter (OD2), a second member thickness (t2), and a second member hardness value (HV2) the first and second members positioned proximate one another forming an overlapping space therebetween wherein the first member and the second member further define a radially exterior notched overlapping junction that includes a notch formed by opposed angled surfaces of the first member and the second member (Figure 4, note the examiner interpreters the joint as an overlapping joint/ junction with a notch formed between 70 and 56 at its exterior surface between “opposed angled surfaces of the first member and the second member” Furthermore, the notch can be considered to be the “V” shaped area between elements 70 and 56 where weld 24 is shown, and the gap between 70 and 56 just adjacent to the weld to, for example, the first corner)
a crack compliant seal positioned at the overlapping space and in the notch ( 74 silver solder [0042], Figure 4, as defined above the brazing material is in both the overlapping space and in the notch ); and
a high yield strength weld 24 positioned at the overlapping space and at least partially within the notch and radially outside of the crack compliant seal (Figure 4),
However, Choe fails to explicitly disclose the wellbore, the crack compliant seal having a compliant seal hardness value (HVcs) less than or equal to one or more of the first member hardness value (HV1) and second member hardness value (HV2), or the high yield strength weld having a yield strength of at least 50 ksi.
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have made it such that the brazing alloy of Choe had a hardness value (HVcs) less than or equal to one or more of the first member hardness value (HV1) and second member hardness value (HV2), as "Obvious to try" – choosing from a finite number of identified, predictable solutions (higher, lower or equal), with a reasonable expectation of success.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the weld of Choe such that the weld has a yield strength of at least 50 ksi, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Choe and use his drill bit in a wellbore, as this is notoriously conventional and would amount to using a known device in a known manner.
Regarding claim 41: Choe discloses 41. A method, comprising:
obtaining a first member 70, the first member having a first member inside diameter (ID1), a first member outside diameter (OD1), a first member thickness (t1), and a first member hardness value (HV1);
obtaining a second member 52, the second member having a second member inside diameter (ID2), a second member outside diameter (OD2), a second member thickness (t2), and a second member hardness value (HV2);
positioning the first and second members proximate one another forming an overlapping space therebetween, wherein the first member and the second member further define a radially exterior notched overlapping junction that includes a notch formed by opposed angled surfaces of the first member and the second member (Figure 4, note the examiner interpreters the joint as an overlapping joint/ junction with a notch formed between 70 and 56 at its exterior surface between “opposed angled surfaces of the first member and the second member” Furthermore, the notch can be considered to be the “V” shaped area between elements 70 and 56 where weld 24 is shown, and the gap between 70 and 56 just adjacent to the weld to, for example, the first corner), wherein a crack compliant seal having a compliant seal; positioned at the overlapping space and in the notch ( 74 silver solder [0042], Figure 4, as defined above the brazing material is in both the overlapping space and in the notch ), and a high yield strength weld 24 is positioned at the overlapping space and at least partially within the notch and radially outside of the crack compliant seal (Figure 4), the high yield strength weld.
However, Choe fails to explicitly disclose the wellbore, the crack compliant seal having a compliant seal hardness value (HVcs) less than or equal to one or more of the first member hardness value (HV1) and second member hardness value (HV2), or the high yield strength weld having a yield strength of at least 50 ksi.
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have made it such that the brazing alloy of Choe had a hardness value (HVcs) less than or equal to one or more of the first member hardness value (HV1) and second member hardness value (HV2), as "Obvious to try" – choosing from a finite number of identified, predictable solutions (higher, lower or equal), with a reasonable expectation of success.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the weld of Choe such that the weld has a yield strength of at least 50 ksi, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Choe and use his drill bit in a wellbore, as this is notoriously conventional and would amount to using a known device in a known manner.
Regarding claims 2, 22 and 42: Choe, as modified discloses wherein the compliant seal hardness value (HVcs) is a post weld heat treatment compliant seal hardness value (HVcs-pw).(see modification above)
Regarding claims 3, 23 and 43: Choe, as modified, discloses the claimed invention except wherein the post weld compliant seal hardness value (HVcs-pw) is 250 or less.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modified the weld of Choe such that the post weld compliant seal hardness value (HVcs-pw) is 250 or less, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claims 4, 24 and 44: Choe, as modified discloses the claimed invention except wherein the post weld compliant seal hardness value (HVcs-pw) is 250 or less after being subjected to the post weld heat treatment of at least 620 ºC.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modified Choe such that the post weld compliant seal hardness value (HVcs-pw) is 250 or less after being subjected to the post weld heat treatment of at least 620 ºC, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claims 5, 25 and 45: Choe discloses wherein the crack compliant seal includes no more than 1 % mass fraction of nickel. (Choe discloses a silver based alloy [0042])
If one were to disagree, It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified the silver alloy of Choe to have no more than 1 % mass fraction of nickel, as since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 6 and 26: Choe discloses 6. The downhole tool as recited in Claim 1, wherein the crack compliant seal is located radially inside of the high yield strength weld.(Figure 4)
Regarding claim 12 and 32: Choe discloses wherein the second member outside diameter (OD2) is less than the first member inside diameter (ID1), the second member having slid into the first member to form an overlapping joint.(Figure 4)
Regarding claim 13 and 33: Choe discloses wherein the crack compliant seal is at least partially located within an axial extending portion of the overlapping joint and the high yield strength weld is at least partially located within a radial extending portion of the overlapping joint. (Figure4)
Regarding claims 20 and 49: Choe discloses the claimed invention except explicitly wherein the high yield strength weld has a yield strength of at least 80 ksi.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modified the weld of Choe such that the weld has a yield strength of at least 80 ksi, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 46: Choe discloses 46. The method as recited in Claim 41, wherein the first member and second member form at least a portion of a downhole tool, and further including positioning the downhole tool including the crack compliant seal and the high yield strength weld within a wellbore. [0020]
Claim(s) 15 and 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20100187018 A1 to Choe in view of US 20070102198 A1 to Oxford.
Regarding claim 15 and 35: Choe discloses the claimed invention except further including a geometric mechanical strengthening feature located between the first member and the second member.
Oxford teaches a similar downhole tool with a geometric mechanical strengthening feature 80 located between the first member and the second member.
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Choe to include a geometric mechanical strengthening feature located between the first member and the second member, in view of Oxford, so as to prevent longitudinal separation of the two members, and prevent rotation of one member about a longitudinal axis of the other member.” [0047]
Claim(s) 1 , 6-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20130136540 A1 to Jones.
(Note Jones is only introduced to address claims not addressed by either Stone or Choe.)
Regarding claim 1: Jones discloses 1. A downhole tool comprising:
a first member 10a, the first member having a first member inside diameter (ID1), a first member outside diameter (OD1), a first member thickness (t1), and a first member hardness value (HV1);
a second member 10b, the second member having a second member inside diameter (ID2), a second member outside diameter (OD2), a second member thickness (t2), and a second member hardness value (HV2) the first and second members positioned proximate one another forming an overlapping space therebetween wherein the first member and the second member further define a radially exterior notched overlapping junction that includes a notch formed by opposed angled surfaces of the first member and the second member; (Figure 1, as per applicant’s specification [0026] the overlap may be “, the overlap may be face-to-face, end-to-end, butt-to-butt, or any other overlap, as well as combinations of the same.” It would appear that Jones discloses an overlap junction that meets applicant’s definition, the notch can be considered portions of the space between sloped surfaces of 10a and 10b near and can be arbitrarily defined )
a crack compliant seal 14 positioned at the overlapping space and in the notch (Figure 1 14 can be considered to span the overlapping space and the notch ); and
a high yield strength weld 22 positioned at the overlapping space and at least partially within the notch and radially outside of the crack compliant seal,, (Jones teaches connecting two tubulars via a series of welding passes of different materials, carbon steel filler 13, filler 14, a corrosion resistant alloy filler 21 and a carbon steel filler 22, See [0043-0049] CRA 21, 14 and 22 can each be considered to be a crack compliant seal, and weld 13 a high strength weld)
However, Jones fails to disclose explicitly the crack compliant seal having a compliant seal hardness value (HVcs) less than or equal to one or more of the first member hardness value (HV1) and second member hardness value (HV2), or the high yield strength weld having a yield strength of at least 50 ksi.
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have made it such that the CRA of Jones had a hardness value (HVcs) less than or equal to one or more of the first member hardness value (HV1) and second member hardness value (HV2), as "Obvious to try" – choosing from a finite number of identified, predictable solutions (higher, lower or equal), with a reasonable expectation of success.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modified the weld of Jones such that the weld has a yield strength of at least 50 ksi, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 6: Jones discloses 6. The downhole tool as recited in Claim 1, wherein the crack compliant seal is located radially inside of the high yield strength weld.(Figures 1-3 )
Regarding claim 7: Jones discloses 7. The downhole tool as recited in Claim 6, wherein the crack compliant seal 14 is a first crack compliant seal, and further including a second crack compliant seal 22 located radially outside of the high yield strength weld 13.(See figures. Filler 14 can be considered a second crack compliant seal)
Regarding claim 8: Jones discloses 8. The downhole tool as recited in Claim 7, wherein the second crack compliant seal is a second crack compliant weld. [0049]
Regarding claim 9: Jones discloses 9. The downhole tool as recited in Claim 1, wherein the crack compliant seal 14 is located radially outside of the high yield strength weld 13.
Regarding claim 10: Jones discloses 10. The downhole tool as recited in Claim 9, wherein the crack compliant seal 14 is a crack compliant weld.[0045]
Claim(s) 19, 21-26, 29,39-40,46 and 48 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2662277 A to Stone, in view of US 20110180271 A1 to Brekke.
Regarding claims 19 and 48: Stone discloses the claimed invention except 19. The downhole tool as recited in Claim 1, wherein the first member and the second member form at least a portion of downhole packer.
Brekke teaches a wellbore system with a packer 26, wherein the packer mechanism is connected to other components by welding see at least [0004],[0017].
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Stone to have at least one of the tubulars be part of a downhole packer, in view of Brekke, as it is well known to connect different downhole components including a packer and another tubular via welding as no more than combining prior art elements according to known methods to yield predictable results.
Regarding claim 21: Stone discloses 21. A well system, comprising:
a downhole tool (Col 2, line29-32), comprising:
a first member 10, the first member having a first member inside diameter (ID1), a first member outside diameter (OD1), a first member thickness (t1), and a first member hardness value (HV1);
a second member 11, the second member having a second member inside diameter (ID2), a second member outside diameter (OD2), a second member thickness (t2), and a second member hardness value (HV2) the first and second members positioned proximate one another forming an overlapping space therebetween, wherein the first member and the second member further define a radially exterior notched overlapping junction that includes a notch formed by opposed angled surfaces of the first member and the second member; (Figure 1, as per applicant’s specification [0026] the overlap may be “, the overlap may be face-to-face, end-to-end, butt-to-butt, or any other overlap, as well as combinations of the same.” It would appear that Stone discloses an overlap junction that meets applicant’s definition, notch can be considered the space between sloped surfaces 14 and a first section just under the space between the surfaces 14)
a crack compliant seal positioned at the overlapping space and in the notch (16 silver solder, Figure 3, 22 figure 5, as per the defined notch above); and
a high yield strength weld 17 positioned at the overlapping space and at least partially within the notch and radially outside of the crack compliant seal (Figure 3),
However, Stone fails to disclose explicitly a wellbore, the crack compliant seal having a compliant seal hardness value (HVcs) less than or equal to one or more of the first member hardness value (HV1) and second member hardness value (HV2), or the high yield strength weld having a yield strength of at least 50 ksi.
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have made it such that the solder of Stone had a hardness value (HVcs) less than or equal to one or more of the first member hardness value (HV1) and second member hardness value (HV2), as "Obvious to try" – choosing from a finite number of identified, predictable solutions (higher, lower or equal), with a reasonable expectation of success.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modified the weld of Stone such that the weld has a yield strength of at least 50 ksi, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Brekke teaches a wellbore system (figure 1) with tubulars where devices are welded together.
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Stone and use his welded tubular in a wellbore, since his tubulars are well pipes, and in view of Brekke, as no more than combining prior art elements according to known methods to yield predictable result.
Regarding claim 22: Stone, as modified discloses 22. The downhole tool as recited in Claim 21, wherein the compliant seal hardness value (HVcs) is a post weld heat treatment compliant seal hardness value (HVcs-pw).(see above, this must be the case to some extent)
Regarding claim 23: Stone, as modified discloses the claimed invention except 23. The downhole tool as recited in Claim 22, wherein the post weld compliant seal hardness value (HVcs-pw) is 250 or less.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modified the weld of Stone such that the post weld compliant seal hardness value (HVcs-pw) is 250 or less, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 24: Stone, as modified, discloses the claimed invention except wherein the post weld compliant seal hardness value (HVcs-pw) is 250 or less after being subjected to the post weld heat treatment of at least 620 ºC.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modified Stone such that the post weld compliant seal hardness value (HVcs-pw) is 250 or less after being subjected to the post weld heat treatment of at least 620 ºC, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 25: Stone discloses 25. The downhole tool as recited in Claim 24, wherein the crack compliant seal includes no more than 1 % mass fraction of nickel. (Stone makes no mention of any nickel and therefore is interpreted as zero percent)
If one were to disagree, It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified the silver solder of Stone to have no more than 1 % mass fraction of nickel, as since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 26: Stone discloses 26. The downhole tool as recited in Claim 21, wherein the crack compliant seal is located radially inside of the high yield strength weld.(Figures 1-3)
Regarding claim 29: Stone discloses the claimed invention except 29. The downhole tool as recited in Claim 21, wherein the crack compliant seal is located radially outside of the high yield strength weld.
The reversal of components in a prior art reference, where there is no disclosed significance to such reversal, is a design consideration within the skill of the art. In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955); In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Therefore It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Stone such that the weld were on the inside and the solder radially outside the weld, as a design consideration, such as for a stinger section, where the outside diameter needs to be uniform rather than the inside.
Regarding claim 39: Stone discloses the claimed invention except 39. The downhole tool as recited in Claim 21, wherein the first member and the second member form at least a portion of the downhole packer.
Brekke teaches a wellbore system with a packer 26, wherein the packer mechanism is connected to other components by welding see at least [0004],[0017].
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Stone to have at least one of the tubulars be part of a downhole packer, in view of Brekke, as it is well known to connect different downhole components including a packer and another tubular via welding as no more than combining prior art elements according to known methods to yield predictable results.
Regarding claim 40: Stone discloses the claimed invention except explicitly 40. The downhole tool as recited in Claim 21, wherein the high yield strength weld has a yield strength of at least 80 ksi.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modified the weld of Stone such that the weld has a yield strength of at least 80 ksi, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 46: Stone discloses the claimed invention except explicitly 46. The method as recited in Claim 41, wherein the first member and second member form at least a portion of a downhole tool, and further including positioning the downhole tool including the crack compliant seal and the high yield strength weld within a wellbore.
Brekke teaches a wellbore system (figure 1) with tubulars where devices are welded together.
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Stone and use his welded tubular in a wellbore, since his tubulars are well pipes, and in view of Brekke, as no more than combining prior art elements according to known methods to yield predictable result.
Claim(s) 21, 27-31 and 48 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jones as applied above, in view of US 20110180271 A1 to Brekke.
(Note this rejection based on Jones is only introduced to address claims not addressed by Stone or Choe.)
Regarding claim 21: Jones discloses 1. A downhole tool comprising:
a first member 10a, the first member having a first member inside diameter (ID1), a first member outside diameter (OD1), a first member thickness (t1), and a first member hardness value (HV1);
a second member 10b, the second member having a second member inside diameter (ID2), a second member outside diameter (OD2), a second member thickness (t2), and a second member hardness value (HV2) the first and second members positioned proximate one another forming an overlapping space therebetween wherein the first member and the second member further define a radially exterior notched overlapping junction that includes a notch formed by opposed angled surfaces of the first member and the second member; (Figure 1, as per applicant’s specification [0026] the overlap may be “, the overlap may be face-to-face, end-to-end, butt-to-butt, or any other overlap, as well as combinations of the same.” It would appear that Jones discloses an overlap junction that meets applicant’s definition, the notch can be considered portions of the space between sloped surfaces of 10a and 10b near and can be arbitrarily defined )
a crack compliant seal 14 positioned at the overlapping space and in the notch (Figure 1 14 can be considered to span the overlapping space and the notch ); and a high yield strength weld positioned at the overlapping space and at least partially within the notch and radially outside of the crack compliant seal, (Jones teaches connecting two tubulars via a series of welding passes of different materials, carbon steel filler 13, filler 14, a corrosion resistant alloy filler 21 and a carbon steel filler 22, See [0043-0049] CRA 21, 14 and 22 can each be considered to be a crack compliant seal, and weld 13 a high strength weld)
However, Jones fails to disclose explicitly a wellbore, the crack compliant seal having a compliant seal hardness value (HVcs) less than or equal to one or more of the first member hardness value (HV1) and second member hardness value (HV2), or the high yield strength weld having a yield strength of at least 50 ksi.
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have made it such that the CRA of Jones had a hardness value (HVcs) less than or equal to one or more of the first member hardness value (HV1) and second member hardness value (HV2), as "Obvious to try" – choosing from a finite number of identified, predictable solutions (higher, lower or equal), with a reasonable expectation of success.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modified the weld of Jones such that the weld has a yield strength of at least 50 ksi, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Brekke teaches a wellbore system (figure 1) with tubulars where devices are welded together.
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Jones and use his welded tubular in a wellbore, since his tubulars are well pipes, and in view of Brekke, as no more than combining prior art elements according to known methods to yield predictable result.
Regarding claim 27: Jones discloses 7. The downhole tool as recited in Claim 6, wherein the crack compliant seal 14 is a first crack compliant seal, and further including a second crack compliant seal 22 located radially outside of the high yield strength weld 13.(See figures. Filler 14 can be considered a second crack compliant seal)
Regarding claim 28: Jones discloses 8. The downhole tool as recited in Claim 7, wherein the second crack compliant seal is a second crack compliant weld. [0049]
Regarding claim 29: Jones discloses 9. The downhole tool as recited in Claim 1, wherein the crack compliant seal 14 is located radially outside of the high yield strength weld 13.
Regarding claim 30: Jones discloses 10. The downhole tool as recited in Claim 9, wherein the crack compliant seal 14 is a crack compliant weld.[0045]
Regarding claim 31: Jones discloses 31. The well system as recited in Claim 27, wherein the overlapping space is a butt joint.[0053]
Allowable Subject Matter
Claim 50 and 51 are allowed.
Claims 14, 16-18, 34, 36-38 and 47 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.
Response to Arguments
Applicant’s amendments and arguments dated 9/1/2026 have been fully considered.
Applicant argues that “Stone fails to teach or suggest the claimed radially exterior notched overlapping junction and fails to teach or suggest the required arrangement of the crack compliant seal and the high yield strength weld within the claimed notch.”
The Examiner respectfully disagrees.
The Examiner’s position is that the space between surfaces 14 and some portion below the V-shaped geometry can be considered a notch. Applicant has not defined the extents of the notch and as such the specifics can be broadly interpreted.
Applicant’s argument directed at Choe are similar to that of Stone and are directed to what is the notch.
The Examiner respectfully disagrees that Choe does not disclose the notch.
The Examiner’s position is that the space where weld 24 is located and a portion of the linear gap between 70 and 52 below 24 is a notch. The extent of the notch is arbitrary and can be considered to include some portion of the linear section just adjacent the weld, prior to the 90 degree bend. This appears very much like applicant’s Figure 5, with an angled surface between two parts of the overlapping joint.
Applicant argues that Jones does not disclose “the claimed radially exterior notched overlapping junction formed by opposed angled surfaces of first and second overlapping members. Nor does Jones disclose a crack compliant seal positioned in such a notch and a high yield strength weld positioned at least partially within that notch and radially outside of the crack compliant seal.
The Examiner disagrees.
Applicant defines an overlapping joint may be “, the overlap may be face-to-face, end-to-end, butt-to-butt, or any other overlap, as well as combinations of the same.”[0026]. Furthermore, applicant does not narrowly define what the claimed notch is. As per the applicant’s specification and the claim, Jone’s end to end overlapping joint with notch between the ends of sloped surfaces meets the structural limitations of the claims. Additionally, Jones discloses a weld positioned at least partially within that notch and radially outside of the crack compliant seal.
Conclusion THIS ACTION IS MADE FINAL. 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 STEVEN MACDONALD whose telephone number is (571)272-8763. The examiner can normally be reached M-F 9:00-5:30 EST.
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, Doug Hutton can be reached at (571) 272-4137. 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. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEVEN A MACDONALD/Primary Examiner, Art Unit 3674
Prosecution Insights