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 .
DETAILED ACTION
Claim Objections
Claims 5-7, 10-12, 19-21, and 24-26 are objected to because of the following informalities:
Claim 5 should further recite “wherein the non-reactive colloidal dispersion of colloid particles is a sturdy non-reactive colloidal dispersion of colloid particles, wherein “sturdy colloidal dispersion” means that less than 15 percent of the colloid particles would settle out of the dispersion within a 24 hour period” (incorporating the definition from [0024] “The phrase "sturdy colloidal dispersion," as used herein, is intended to mean that less than 15 percent of the colloid particles would settle out of the dispersion within a 24 hour period” for ease of reading).
Claim 6 should further recite “wherein the non-reactive colloidal dispersion of colloid particles is an extremely sturdy non-reactive colloidal dispersion of colloid particles, wherein “extremely sturdy colloidal dispersion” means that less than 10 percent of the colloid particles would settle out of the dispersion within a 24 hour period” (incorporating the definition from [0024] “The phrase "extremely sturdy colloidal dispersion," as used herein, is intended to mean that less than 10 percent of the colloid particles would settle out of the dispersion within a 24 hour period” for ease of reading).
Claim 7 should further recite “wherein the non-reactive colloidal dispersion of colloid particles is an excessively sturdy non-reactive colloidal dispersion of colloid particles, wherein “excessively sturdy colloidal dispersion” means that less than 5 percent of the colloid particles would settle out of the dispersion within a 24 hour period” (incorporating the definition from [0024] “The phrase "excessively sturdy colloidal dispersion," as used herein, is intended to mean that less than 5 percent of the colloid particles would settle out of the dispersion within a 24 hour period” for ease of reading).
Claim 10 should further recite “wherein the colloid particles are small colloid particles, wherein “small colloid particles” means particles with a greatest dimension of no more than 300 nm” (incorporating the definition from [0017] “The phrase "small colloid particles," as used herein, is intended to mean particles with a greatest dimension of no more than 300 nm” for ease of reading).
Claim 11 should further recite “wherein the colloid particles are extremely small colloid particles, wherein “extremely small colloid particles” means particles with a greatest dimension of no more than 150 nm” (incorporating the definition from [0017] “The phrase "extremely small colloid particles," as used herein, is intended to mean particles with a greatest dimension of no more than 150 nm” for ease of reading).
Claim 12 should further recite “wherein the colloid particles are excessively small colloid particles, wherein “excessively small colloid particles” means particles with a greatest dimension of no more than 50 nm” (incorporating the definition from [0017] “The phrase "excessively small colloid particles," as used herein, is intended to mean particles with a greatest dimension of no more than 50 nm” for ease of reading).
Claim 19 should further recite “wherein the non-reactive colloidal dispersion of colloid particles is a sturdy non-reactive colloidal dispersion of colloid particles, wherein “sturdy colloidal dispersion” means that less than 15 percent of the colloid particles would settle out of the dispersion within a 24 hour period” (incorporating the definition from [0024] “The phrase "sturdy colloidal dispersion," as used herein, is intended to mean that less than 15 percent of the colloid particles would settle out of the dispersion within a 24 hour period” for ease of reading).
Claim 20 should further recite “wherein the non-reactive colloidal dispersion of colloid particles is an extremely sturdy non-reactive colloidal dispersion of colloid particles, wherein “extremely sturdy colloidal dispersion” means that less than 10 percent of the colloid particles would settle out of the dispersion within a 24 hour period” (incorporating the definition from [0024] “The phrase "extremely sturdy colloidal dispersion," as used herein, is intended to mean that less than 10 percent of the colloid particles would settle out of the dispersion within a 24 hour period” for ease of reading).
Claim 21 should further recite “wherein the non-reactive colloidal dispersion of colloid particles is an excessively sturdy non-reactive colloidal dispersion of colloid particles, wherein “excessively sturdy colloidal dispersion” means that less than 5 percent of the colloid particles would settle out of the dispersion within a 24 hour period” (incorporating the definition from [0024] “The phrase "excessively sturdy colloidal dispersion," as used herein, is intended to mean that less than 5 percent of the colloid particles would settle out of the dispersion within a 24 hour period” for ease of reading).
Claim 24 should further recite “wherein the colloid particles are small colloid particles, wherein “small colloid particles” means particles with a greatest dimension of no more than 300 nm” (incorporating the definition from [0017] “The phrase "small colloid particles," as used herein, is intended to mean particles with a greatest dimension of no more than 300 nm” for ease of reading).
Claim 25 should further recite “wherein the colloid particles are extremely small colloid particles, wherein “extremely small colloid particles” means particles with a greatest dimension of no more than 150 nm” (incorporating the definition from [0017] “The phrase "extremely small colloid particles," as used herein, is intended to mean particles with a greatest dimension of no more than 150 nm” for ease of reading).
Claim 26 should further recite “wherein the colloid particles are excessively small colloid particles, wherein “excessively small colloid particles” means particles with a greatest dimension of no more than 50 nm” (incorporating the definition from [0017] “The phrase "excessively small colloid particles," as used herein, is intended to mean particles with a greatest dimension of no more than 50 nm” for ease of reading).
Appropriate correction is required.
Allowable Subject Matter
Claims 2-9, 13, 14, 16-23, 27, 28, and 30-36 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112 (and informalities as above) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims, and having Terminal Disclaimers.
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.
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 1-36 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1-36 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for:
“an expandable metal member positioned about the housing, the expandable metal member comprising a metal configured to expand in response to hydrolysis,” wherein the metal is selected from the group consisting of magnesium and aluminum,
does not reasonably provide enablement for:
“an expandable metal member positioned about the housing, the expandable metal member comprising a metal configured to expand in response to hydrolysis,” wherein the metal is any/every metal.
The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
Claims 1-36 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.
Independent claim 1 recites “a metal configured to expand in response to hydrolysis.” Likewise, independent claims 15 and 29 each recite “a metal configured to expand in response to hydrolysis.” Independent claim 29 further recites “subjecting the expandable metal member to a reactive fluid while in the presence of the colloid particles, thereby forming an expanded metal member having the colloid particles in interstitial spaces thereof.”
Upon consultation with the Specification, the Office observes that Applicant discloses “The hydrolysis of the expandable metal can create a metal hydroxide. The formative properties of alkaline earth metals (Mg - Magnesium, Ca - Calcium, etc.) and transition metals (Zn - Zinc, Al - Aluminum, etc.) under hydrolysis reactions demonstrate structural characteristics that are favorable for use with the present disclosure. Hydration results in an increase in size from the hydration reaction and results in a metal hydroxide that can precipitate from the fluid” ([0031]); “It should be noted that the starting expandable metal, unless otherwise indicated, is not a metal oxide (e.g., an insulator)” ([0032]); and further “The hydration reactions for magnesium is:
Mg + 2H2O → Mg(OH)2 + H2,
where Mg(OH)2 is also known as brucite. Another hydration reaction uses aluminum hydrolysis. The reaction forms a material known as Gibbsite, bayerite, boehmite, aluminum oxide, and norstrandite, depending on form. The possible hydration reactions for aluminum are:
Al + 3H2O → Al(OH)3 + 3/2 H2.
Al + 2H2O → AlO(OH) + 3/2 H2
Al + 3/2 H2O → ½ Al2O3 + 3/2 H2
Magnesium hydroxide is considered to be relatively insoluble in water. Aluminum hydroxide can be considered an amphoteric hydroxide, which has solubility in strong acids or in strong bases. Alkaline earth metals (e.g., Mg, Ca, etc.) work well for the expandable metal, but transition metals (Al, etc.) also work well for the expandable metal” ([0033]). However, Applicant does not describe or propose the hydration reactions for any of the other metals, nor does Applicant specify which other metals would expand under hydrolysis and under which mechanisms such metals would expand.
First, while there is a presumption that an adequate Written Description of the claimed invention is present in the Specification as filed, a question as to whether a Specification provides an adequate Written Description may arise in the context of an original claim. An original claim may lack Written Description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad Genus claim is presented but the disclosure only describes a narrow Species with no evidence that the Genus is contemplated. See MPEP 2163.03 Typical Circumstances Where Adequate Written Description Issue Arises.
Also, the written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice…, reduction to drawings …, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus... A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. Satisfactory disclosure of a "representative number" depends on whether one of skill in the art would recognize that the inventor was in possession of the necessary common attributes or features possessed by the members of the genus in view of the species disclosed. For inventions in an unpredictable art, adequate written description of a genus which embraces widely variant species cannot be achieved by disclosing only one species within the genus. Instead, the disclosure must adequately reflect the structural diversity of the claimed genus, either through the disclosure of sufficient species that are "representative of the full variety or scope of the genus," or by the establishment of "a reasonable structure-function correlation." See MPEP 2163.
In this case, a broad Genus claim is presented (broadly encompassing all metals “configured to expand in response to hydrolysis,” including alkali metals, alkaline earth metals, and transition metals, i.e., Li, Na, K, Rb, Cs, Fr, Be, Mg, Ca, Sr, Ba, Ra, Sc, Y, La, Ac, Ce, Th, Pr, Pa, Nd, U, Pm, Np, Sm, Pu, Eu, Am, Gd, Cm, Tb, Bk, Dy, Cf, Ho, Es, Er, Fm, Tm, Md, Yb, No, Lu, Lr, Ti, Zr, Hf, Rf, V, Nb, Ta, Db, Cr, Mo, W, Sg, Mn, Tc, Re, Bh, Fe, Ru, Os, Hs, Co, Rh, Ir, Mt, Ni, Pd, Pt, Ds, Cu, Ag, Au, Rg, Zn, Cd, Hg, Cn, Al, Ga, In, Tl, Nh, Sn, Pb, Fl, Bi, Mc, Lv) but the disclosure only describes a narrow Species (specifically, Mg and Al) with no evidence that the Genus is contemplated. For example, it is unclear under what conditions and how Ca expands in response to hydrolysis. Similarly, it is unclear under what conditions and how Au expands in response to hydrolysis. Similarly, it is unclear under what conditions and how Tc expands in response to hydrolysis. Similarly, it is unclear under what conditions and how Li, Na, K, Rb, Cs, Fr, Be, Sr, Ba, Ra, Sc, Y, La, Ac, Ce, Th, Pr, Pa, Nd, U, Pm, Np, Sm, Pu, Eu, Am, Gd, Cm, Tb, Bk, Dy, Cf, Ho, Es, Er, Fm, Tm, Md, Yb, No, Lu, Lr, Ti, Zr, Hf, Rf, V, Nb, Ta, Db, Cr, Mo, W, Sg, Mn, Re, Bh, Fe, Ru, Os, Hs, Co, Rh, Ir, Mt, Ni, Pd, Pt, Ds, Cu, Ag, Rg, Zn, Cd, Hg, Cn, Ga, In, Tl, Nh, Sn, Pb, Fl, Bi, Mc, or Lv expand in response to hydrolysis, especially how to do so for thereby forming an expanded metal member having the colloid particles in interstitial spaces thereof.
Furthermore, Applicant has not satisfactorily disclosed a “representative number of species” because the disclosure does not adequately reflect the structural diversity of the claimed genus. For example, although Applicant points to various metals, “metals” is not a sufficient description because the metals are well-known to have significant structural diversity e.g. in their electron configurations/orbitals, the differences of which result in highly-diverse reaction chemistries. Also, Applicant has only disclosed hydration reactions for Mg and Al ([0033]), but even these two examples are disclosed by Applicant to have distinct hydration reaction chemistries. Accordingly, Applicant has not adequately demonstrated possession of all of the claimed Species for “a metal configured to expand in response to hydrolysis,” especially how to do so for thereby forming an expanded metal member having the colloid particles in interstitial spaces thereof.
Accordingly, the claims lack an adequate Written Description for their full scopes.
Second, based on the foregoing, per In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), the following Undue Experimentation factors support a determination that the disclosure satisfies the Enablement requirement for the Full claim Scope:
(C) The state of the prior art – because there appears to be Prior Art directed to expanding aluminum (e.g., WO 2013/033531, cited by Applicant);
However, the following Undue Experimentation factors do not support a determination that the disclosure satisfies the Enablement requirement for the Full claim Scope:
(A) The breadth of the claims – because the claims appear to broadly encompass all metals “configured to expand in response to hydrolysis,” including alkali metals, alkaline earth metals, and transition metals, i.e., Li, Na, K, Rb, Cs, Fr, Be, Mg, Ca, Sr, Ba, Ra, Sc, Y, La, Ac, Ce, Th, Pr, Pa, Nd, U, Pm, Np, Sm, Pu, Eu, Am, Gd, Cm, Tb, Bk, Dy, Cf, Ho, Es, Er, Fm, Tm, Md, Yb, No, Lu, Lr, Ti, Zr, Hf, Rf, V, Nb, Ta, Db, Cr, Mo, W, Sg, Mn, Tc, Re, Bh, Fe, Ru, Os, Hs, Co, Rh, Ir, Mt, Ni, Pd, Pt, Ds, Cu, Ag, Au, Rg, Zn, Cd, Hg, Cn, Al, Ga, In, Tl, Nh, Sn, Pb, Fl, Bi, Mc, and Lv, but Applicant has only described how Mg and Al would be configured to expand in response to hydrolysis via specifically described means/mechanisms;
(B) The nature of the invention – because Applicant has disclosed that the metals may expand via different chemical mechanisms (e.g., compare Mg vs. Al in [0033]) and the chemistries appear to not necessarily apply across multiple chemicals;
(D) The level of one of ordinary skill – because oilfield artisans are medium-skilled and may select suitable amounts of given materials from preset lists but do not themselves assay chemicals to ascertain which chemicals may or may not be operable in the first place;
(E) The level of predictability in the art – because the chemical arts are relatively unpredictable, and the reaction by one metal would not reasonably predict reaction by another metal;
(F) The amount of direction provided by the inventor – because Applicant has not actually provided any guidance on what conditions or what reaction mechanisms would be appropriate for use of any of Li, Na, K, Rb, Cs, Fr, Be, Ca, Sr, Ba, Ra, Sc, Y, La, Ac, Ce, Th, Pr, Pa, Nd, U, Pm, Np, Sm, Pu, Eu, Am, Gd, Cm, Tb, Bk, Dy, Cf, Ho, Es, Er, Fm, Tm, Md, Yb, No, Lu, Lr, Ti, Zr, Hf, Rf, V, Nb, Ta, Db, Cr, Mo, W, Sg, Mn, Tc, Re, Bh, Fe, Ru, Os, Hs, Co, Rh, Ir, Mt, Ni, Pd, Pt, Ds, Cu, Ag, Au, Rg, Zn, Cd, Hg, Cn, Ga, In, Tl, Nh, Sn, Pb, Fl, Bi, Mc, and Lv;
(G) The existence of working examples – because Applicant has not actually disclosed or described any working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure – because the quantity of experimentation needed to test which of the other metals are expandable in response to hydrolysis and under what conditions and via which reaction mechanisms appears to require at least testing each of the 89 metals which have not had reaction mechanisms described but which are claimed, vs. the 2 which have been described and which are claimed.
That is, one of the Wands factors support Enablement, while seven factors do not support Enablement, five of which relate directly to the current claim scope (A/B/D/F/H).
Accordingly, there also exists a Scope of Enablement deficiency for the current claims.
Third, based on the foregoing, it is unclear which metals are “configured to expand in response to hydrolysis” i.e. via what conditions and mechanisms. For example, it is unclear under what conditions and how Ca would be “configured to expand in response to hydrolysis” or not. Similarly, it is unclear under what conditions and how Au would be “configured to expand in response to hydrolysis” or not. Similarly, it is unclear under what conditions and how Tc would be “configured to expand in response to hydrolysis” or not. Similarly, it is unclear under what conditions and how Li, Na, K, Rb, Cs, Fr, Be, Sr, Ba, Ra, Sc, Y, La, Ac, Ce, Th, Pr, Pa, Nd, U, Pm, Np, Sm, Pu, Eu, Am, Gd, Cm, Tb, Bk, Dy, Cf, Ho, Es, Er, Fm, Tm, Md, Yb, No, Lu, Lr, Ti, Zr, Hf, Rf, V, Nb, Ta, Db, Cr, Mo, W, Sg, Mn, Re, Bh, Fe, Ru, Os, Hs, Co, Rh, Ir, Mt, Ni, Pd, Pt, Ds, Cu, Ag, Rg, Zn, Cd, Hg, Cn, Ga, In, Tl, Nh, Sn, Pb, Fl, Bi, Mc, or Lv would be “configured to expand in response to hydrolysis” or not. Applicant has not adequately described the invention in a manner that would put the public on notice of which metal(s) under what condition(s) would be “a metal configured to expand in response to hydrolysis” or not.
Accordingly, the claim scopes are also rendered Indefinite.
The dependent claims are rejected by dependency, also failing to limit the claims to the Described and Enabled scope in a Definite manner.
For examination purposes, claims will be read as though requiring the described and enabled Mg or Al embodiments as below. It is possible that Applicant has implicitly described additional embodiments based on what is known in the art at the time of filing (e.g., Ca - calcium), but Applicant must particularly point out and explain for each additional embodiment i) how each species has been sufficiently described such that one of ordinary skill in the art would recognize that the inventor was in possession of each species and ii) that those of ordinary skill are sufficiently enabled to practice each species. Mere generic statements referring to the disclosure are not sufficient to overcome these rejections. If Applicant alleges that all metals are “a metal configured to expand in response to hydrolysis,” Applicant must make a clear statement on the record of this to overcome the Definiteness rejection. However, such a statement would not be sufficient to overcome the Written Description and Scope of Enablement rejections, which require additional showings as above.
“1. (Currently Amended) A downhole tool, comprising:
a housing;
an expandable metal member positioned about the housing, the expandable metal member comprising a metal configured to expand in response to hydrolysis, wherein the metal is selected from the group consisting of magnesium and aluminum; and
colloid particles surrounding a surface of the expandable metal member.”
“15. (Currently Amended) A well system, comprising:
a wellbore positioned within a subterranean formation;
a downhole tool positioned within the wellbore, the downhole tool including:
a housing;
an expandable metal member positioned about the housing, the expandable metal member comprising a metal configured to expand in response to hydrolysis, wherein the metal is selected from the group consisting of magnesium and aluminum; and
colloid particles surrounding a surface of the expandable metal member.”
“29. (Currently Amended) A method, comprising:
positioning a downhole tool within a wellbore of a subterranean formation, the downhole tool including:
a housing;
an expandable metal member positioned about the housing, the expandable metal member comprising a metal configured to expand in response to hydrolysis, wherein the metal is selected from the group consisting of magnesium and aluminum; and
colloid particles surrounding a surface of the expandable metal member;
subjecting the expandable metal member to a reactive fluid while in the presence of the colloid particles, thereby forming an expanded metal member having the colloid particles in interstitial spaces thereof.”
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1, 10-12, 15, 24-26, and 29 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Pelto (2022/0186579) (cited by Applicant and in parent 18/466,132).
Regarding independent claim 1, Pelto discloses A downhole tool (abstract “The wellbore packer includes an expandable metal sealing element” and Figs.), comprising:
a housing (e.g., [0026] “a mandrel 210”);
an expandable metal member positioned about the housing (e.g., [0026] “the expandable metal sealing element 104 positioned around a mandrel 210”), the expandable metal member comprising a metal configured to expand in response to hydrolysis ([0014] “The expandable metal material of the expandable metal sealing elements may swell by undergoing hydrolysis reactions in the presence of brines to form metal hydroxides”), wherein the metal is selected from the group consisting of magnesium and aluminum ([0015] “Examples of suitable metals for the expandable metal material include, but are not limited to, magnesium, calcium, aluminum” and [0014] “For example, a mole of magnesium has a molar mass of 24 g/mol and a density of 1.74 g/cm.sup.3 which results in a volume of 13.8 cm/mol. Magnesium hydroxide has a molar mass of 60 g/mol and a density of 2.34 g/cm3 which results in a volume of 25.6 cm/mol. 25.6 cm/mol is 85% more volume than 13.8 cm/mol. As another example, a mole of calcium has a molar mass of 40 g/mol and a density of 1.54 g/cm.sup.3 which results in a volume of 26.0 cm/mol. Calcium hydroxide has a molar mass of 76 g/mol and a density of 2.21 g/cm.sup.3 which results in a volume of 34.4 cm/mol. 34.4 cm/mol is 32% more volume than 26.0 cm/mol. As yet another example, a mole of aluminum has a molar mass of 27 g/mol and a density of 2.7 g/cm.sup.3 which results in a volume of 10.0 cm/mol. Aluminum hydroxide has a molar mass of 63 g/mol and a density of 2.42 g/cm.sup.3 which results in a volume of 26 cm/mol. 26 cm/mol is 160% more volume than 10 cm/mol”); and
colloid particles surrounding a surface of the expandable metal member ([0020] “In some examples, the metal hydration reaction may include an intermediate step in which the metal hydroxides are small particles. When confined, these small particles may lock together to create the seal. Thus, there may be an intermediate step where the expandable metal material forms a series of fine particles between the steps of being solid metal and forming a seal. The small particles may have a maximum dimension less than 0.1 inch and generally have a maximum dimension less than 0.01 inches” = less than ~254 nm).
As above, regarding the “colloid particles surrounding a surface of the expandable metal member,” Pelto discloses an “intermediate step where the expandable metal material forms a series of fine particles.” It appears that this must refer to an intermediate step wherein the expandable metal sealing element 104 has a layer of fine particles surrounding it, during the hydrolysis reactions. Accordingly, this would inherently or implicitly provide “colloid particles surrounding a surface of the expandable metal member.”
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Pelto to include an intermediate step including “colloid particles surrounding a surface of the expandable metal member”, with a reasonable expectation of success, in order to provide “small particles” which “may lock together to create the seal.”
The Office recognizes that, in the Specification, Applicant states “The phrase "colloid particles," as used herein, is intended to mean particles with a greatest dimension of no more than 500 nm” ([0016]).
Regarding claims 10-12, Pelto discloses “The small particles may have a maximum dimension less than 0.1 inch and generally have a maximum dimension less than 0.01 inches” = less than ~254 nm ([0020]).
Furthermore, these small particles formed by reaction of the metal into metal hydroxides would include however small such metal hydroxides would form, which presumably includes down to molecule-sized particles, which are smaller than 50 nm. Accordingly, as in claim 1, Pelto further provides:
(claim 10) wherein the colloid particles are small colloid particles, wherein “small colloid particles” means particles with a greatest dimension of no more than 300 nm; and/or
(claim 11) wherein the colloid particles are extremely small colloid particles, wherein “extremely small colloid particles” means particles with a greatest dimension of no more than 150 nm; and/or
(claim 12) wherein the colloid particles are excessively small colloid particles, wherein “excessively small colloid particles” means particles with a greatest dimension of no more than 50 nm.
Alternatively, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Pelto to include e.g., down to <50 nm sized fine particles, with a reasonable expectation of success, in order to provide particles which “may lock together to create the seal” which are smaller in order to create a tighter seal. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Regarding independent claim 15, Pelto discloses A well system (abstract “The wellbore packer includes an expandable metal sealing element” and Figs.), comprising:
a wellbore positioned within a subterranean formation ([0024] “a set of swell packers 102 having at least one expandable metal sealing element 104 disposed in a wellbore 106”);
a downhole tool positioned within the wellbore ([0024] “a set of swell packers 102”), the downhole tool including:
a housing (e.g., [0026] “a mandrel 210”);
an expandable metal member positioned about the housing (e.g., [0026] “the expandable metal sealing element 104 positioned around a mandrel 210”), the expandable metal member comprising a metal configured to expand in response to hydrolysis ([0014] “The expandable metal material of the expandable metal sealing elements may swell by undergoing hydrolysis reactions in the presence of brines to form metal hydroxides”), wherein the metal is selected from the group consisting of magnesium and aluminum ([0015] “Examples of suitable metals for the expandable metal material include, but are not limited to, magnesium, calcium, aluminum” and [0014] “For example, a mole of magnesium has a molar mass of 24 g/mol and a density of 1.74 g/cm.sup.3 which results in a volume of 13.8 cm/mol. Magnesium hydroxide has a molar mass of 60 g/mol and a density of 2.34 g/cm3 which results in a volume of 25.6 cm/mol. 25.6 cm/mol is 85% more volume than 13.8 cm/mol. As another example, a mole of calcium has a molar mass of 40 g/mol and a density of 1.54 g/cm.sup.3 which results in a volume of 26.0 cm/mol. Calcium hydroxide has a molar mass of 76 g/mol and a density of 2.21 g/cm.sup.3 which results in a volume of 34.4 cm/mol. 34.4 cm/mol is 32% more volume than 26.0 cm/mol. As yet another example, a mole of aluminum has a molar mass of 27 g/mol and a density of 2.7 g/cm.sup.3 which results in a volume of 10.0 cm/mol. Aluminum hydroxide has a molar mass of 63 g/mol and a density of 2.42 g/cm.sup.3 which results in a volume of 26 cm/mol. 26 cm/mol is 160% more volume than 10 cm/mol”); and
colloid particles surrounding a surface of the expandable metal member ([0020] “In some examples, the metal hydration reaction may include an intermediate step in which the metal hydroxides are small particles. When confined, these small particles may lock together to create the seal. Thus, there may be an intermediate step where the expandable metal material forms a series of fine particles between the steps of being solid metal and forming a seal. The small particles may have a maximum dimension less than 0.1 inch and generally have a maximum dimension less than 0.01 inches” = less than ~254 nm).
As above, regarding the “colloid particles surrounding a surface of the expandable metal member,” Pelto discloses an “intermediate step where the expandable metal material forms a series of fine particles.” It appears that this must refer to an intermediate step wherein the expandable metal sealing element 104 has a layer of fine particles surrounding it, during the hydrolysis reactions. Accordingly, this would inherently or implicitly provide “colloid particles surrounding a surface of the expandable metal member.”
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Pelto to include an intermediate step including “colloid particles surrounding a surface of the expandable metal member”, with a reasonable expectation of success, in order to provide “small particles” which “may lock together to create the seal.”
Regarding claims 24-26, Pelto discloses “The small particles may have a maximum dimension less than 0.1 inch and generally have a maximum dimension less than 0.01 inches” = less than ~254 nm ([0020]).
Furthermore, these small particles formed by reaction of the metal into metal hydroxides would include however small such metal hydroxides would form, which presumably includes down to molecule-sized particles, which are smaller than 50 nm. Accordingly, as in claim 15, Pelto further provides:
(claim 24) wherein the colloid particles are small colloid particles, wherein “small colloid particles” means particles with a greatest dimension of no more than 300 nm; and/or
(claim 25) wherein the colloid particles are extremely small colloid particles, wherein “extremely small colloid particles” means particles with a greatest dimension of no more than 150 nm; and/or
(claim 26) wherein the colloid particles are excessively small colloid particles, wherein “excessively small colloid particles” means particles with a greatest dimension of no more than 50 nm.
Alternatively, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Pelto to include e.g., down to <50 nm sized fine particles, with a reasonable expectation of success, in order to provide particles which “may lock together to create the seal” which are smaller in order to create a tighter seal. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Regarding independent claim 29, Pelto discloses A method (abstract “The wellbore packer includes an expandable metal sealing element” and Figs.), comprising:
positioning a downhole tool within a wellbore of a subterranean formation ([0024] “a set of swell packers 102 having at least one expandable metal sealing element 104 disposed in a wellbore 106”), the downhole tool including:
a housing (e.g., [0026] “a mandrel 210”);
an expandable metal member positioned about the housing (e.g., [0026] “the expandable metal sealing element 104 positioned around a mandrel 210”), the expandable metal member comprising a metal configured to expand in response to hydrolysis ([0014] “The expandable metal material of the expandable metal sealing elements may swell by undergoing hydrolysis reactions in the presence of brines to form metal hydroxides”), wherein the metal is selected from the group consisting of magnesium and aluminum ([0015] “Examples of suitable metals for the expandable metal material include, but are not limited to, magnesium, calcium, aluminum” and [0014] “For example, a mole of magnesium has a molar mass of 24 g/mol and a density of 1.74 g/cm.sup.3 which results in a volume of 13.8 cm/mol. Magnesium hydroxide has a molar mass of 60 g/mol and a density of 2.34 g/cm3 which results in a volume of 25.6 cm/mol. 25.6 cm/mol is 85% more volume than 13.8 cm/mol. As another example, a mole of calcium has a molar mass of 40 g/mol and a density of 1.54 g/cm.sup.3 which results in a volume of 26.0 cm/mol. Calcium hydroxide has a molar mass of 76 g/mol and a density of 2.21 g/cm.sup.3 which results in a volume of 34.4 cm/mol. 34.4 cm/mol is 32% more volume than 26.0 cm/mol. As yet another example, a mole of aluminum has a molar mass of 27 g/mol and a density of 2.7 g/cm.sup.3 which results in a volume of 10.0 cm/mol. Aluminum hydroxide has a molar mass of 63 g/mol and a density of 2.42 g/cm.sup.3 which results in a volume of 26 cm/mol. 26 cm/mol is 160% more volume than 10 cm/mol”); and
colloid particles surrounding a surface of the expandable metal member ([0020] “In some examples, the metal hydration reaction may include an intermediate step in which the metal hydroxides are small particles. When confined, these small particles may lock together to create the seal. Thus, there may be an intermediate step where the expandable metal material forms a series of fine particles between the steps of being solid metal and forming a seal. The small particles may have a maximum dimension less than 0.1 inch and generally have a maximum dimension less than 0.01 inches” = less than ~254 nm);
subjecting the expandable metal member to a reactive fluid while in the presence of the colloid particles ([0036] “At block 504, the process 500 involves injecting a reactive fluid into the wellbore 106. The reactive fluid may be a brine that reacts with the expandable metal sealing element 104 to cause the expandable metal material to swell by undergoing a hydrolysis reaction to form metal hydroxides with a greater volume than the expandable metal sealing element 104.”), thereby forming an expanded metal member having the colloid particles in interstitial spaces thereof (i.e., because the small particles are locked together therein).
As above, regarding the colloid particles and forming an expanded metal member having colloid particles in interstitial spaces, Pelto discloses an “intermediate step where the expandable metal material forms a series of fine particles.” It appears that this must refer to an intermediate step wherein the expandable metal sealing element 104 has a layer of fine particles surrounding it, during the hydrolysis reactions. Accordingly, this would inherently or implicitly provide:
“the downhole tool including:
a housing;
an expandable metal member positioned about the housing, the expandable metal member comprising a metal configured to expand in response to hydrolysis, wherein the metal is selected from the group consisting of magnesium and aluminum; and
colloid particles surrounding a surface of the expandable metal member;
subjecting the expandable metal member to a reactive fluid while in the presence of the colloid particles, thereby forming an expanded metal member having the colloid particles in interstitial spaces thereof.”
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Pelto to include an intermediate step including “colloid particles surrounding a surface of the expandable metal member,” and thereby “forming an expanded metal member having the colloid particles in interstitial spaces thereof,” with a reasonable expectation of success, in order to provide “small particles” which “may lock together to create the seal.”
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.
Claims 1-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-37 of U.S. Patent No. 12,326,063 (also parent Application 18/466,132).
Applicant should avoid Amending any current claims to be identical to those of 12,325,063, or else they would face statutory Double Patenting rejections, which cannot be overcome by Terminal Disclaimer. Applicant should also note 12,325,063 independent claims 35-37.
Regarding independent claims 1, 15, and 29, these correspond to 12,325,063 claims 1, 14, and 27.
Regarding claims 2-14, 16-28, and 30-36, these correspond to 12,325,063 claims 1-13, 14-26, and 27-34.
Claims 1, 10-15, and 24-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of U.S. Patent No. 12,326,059 (sharing Applicant Halliburton and co-Inventors Vega, Evers, and Fripp).
Regarding independent claims 1, 15, and 29, these correspond to 12,325,059 claims 1 and 11.
Regarding claims 10-14 and 24-28, these correspond to 12,325,059 claims 5-9 and 25-29.
Claims 1, 10-15, and 24-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of copending Application No. 19/210,530 (sharing Applicant Halliburton and co-Inventors Vega, Evers, and Fripp).
This is a provisional nonstatutory double patenting rejection.
Regarding independent claims 1, 15, and 29, these correspond to 19/210,530 claims 1 and 11.
Regarding claims 10-14 and 24-28, these correspond to 19/210,530 claims 5-9 and 25-29.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
The reference to Wood (WO 2013033531) (cited by Applicant) discloses a downhole sealing system including a reactive material provided on a tubular including an oxidizable substance (abstract) wherein a degradable protective coating 20 can be placed on the reactive material 10 that may degrade such that the reactive material 10 is exposed ([0015] and Fig. 2) and the oxidizable material may be a powdered metal such as Aluminum ([0013]) and the unoxidized state of the oxidizable material has smaller dimensions than an oxidizer state, thus taking up a larger volume upon oxidation to form a cement seal 24 ([0017]). However, this reference fails to disclose or teach an expandable metal member positioned about a housing.
The reference to Fripp ‘817 (2021/0189817) discloses a barrier coating layer on an expandable member (abstract) that is a metal configured to expand in response to hydrolysis ([0029]) wherein the barrier coating layer corrodes to postpone the reaction of the expandable member ([0014]). However, this reference fails to disclose or teach providing the barrier coating layer positioned about colloid particles surrounding a surface of the expandable metal member.
The reference to Fripp ‘222 (2022/0178222) discloses an expandable metal plug comprising a metal configured to expand in response to hydrolysis (abstract) having a coating 420 configured to delay the expansion of the metal in response to hydrolysis such as metals, polymer glass, PTFE, wax, grease, paint etc. ([0035]). However, this reference fails to disclose or teach the coating positioned about colloid particles surrounding a surface of the expandable metal member.
The reference to Fripp ‘104 (2022/0186104) discloses an expandable metal slurry (abstract) which may be mixed with other particles, wherein multiple sizes are used to provide a more effective packing density ([0042]). However, this reference fails to disclose or teach an expandable metal member positioned about a housing.
The reference to Pelto (2022/0186579) discloses a wellbore packer with expandable metal elements (Title and abstract) wherein “the metal hydration reaction may include an intermediate step in which the metal hydroxides are small particles. When confined, these small particles may lock together to create the seal. Thus, there may be an intermediate step where the expandable metal material forms a series of fine particles between the steps of being solid metal and forming a seal. The small particles may have a maximum dimension less than 0.1 inch and generally have a maximum dimension less than 0.01 inches” = less than 254 nm ([0020]). However, this reference fails to disclose or teach a dissolvable sleeve positioned about the colloid particles surrounding a surface of the expandable metal member.
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/ANDREW SUE-AKO/Primary Examiner, Art Unit 3674