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 2-7 and 22-27 are objected to because of the following informalities:
Claim 2 should further recite “wherein the 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 3 should further recite “wherein the reactive colloidal dispersion of colloid particles is an extremely sturdy 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 4 should further recite “wherein the reactive colloidal dispersion of colloid particles is an excessively sturdy 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 5 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 6 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 7 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 22 should further recite “wherein the 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 23 should further recite “wherein the reactive colloidal dispersion of colloid particles is an extremely sturdy 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 24 should further recite “wherein the reactive colloidal dispersion of colloid particles is an excessively sturdy 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 25 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 26 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 27 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.
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 1-29 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 1-29 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,” and “positioning a reactive colloidal dispersion of colloid particles about a surface of the expandable metal member, thereby forming an expanded metal member having the colloid particles in interstitial spaces thereof,” 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,” and “positioning a reactive colloidal dispersion of colloid particles about a surface of the expandable metal member, thereby forming an expanded metal member having the colloid particles in interstitial spaces thereof,” 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 1-29 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 “an expandable metal member positioned about the housing, the expandable metal member comprising a metal configured to expand in response to hydrolysis.” Likewise, independent claim 11 recites “a metal configured to expand in response to hydrolysis.” Independent claim 11 further recites “positioning a reactive colloidal dispersion of colloid particles about a surface of the expandable metal member, 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, capable of “forming an expanded metal member having the colloid particles in interstitial spaces thereof”) 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” to form “an expanded metal member having the colloid particles in interstitial spaces thereof” 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 treated as written.
In response, Applicant may Amend the claims to incorporate 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 well system, comprising:
a wellbore positioned within a subterranean formation;
a downhole tool positioned within the wellbore, the downhole tool including:
a housing; and
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
a reactive colloidal dispersion of colloid particles surrounding a surface of the expandable metal member.”
“11. (Currently Amended) A method, comprising:
positioning a downhole tool within a wellbore of a subterranean formation, the downhole tool including:
a housing; and
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
positioning a reactive colloidal dispersion of colloid particles about a surface of the expandable metal member, thereby forming an expanded metal member having the colloid particles in interstitial spaces thereof.”
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 1-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of U.S. Patent No. 12,326,059 (also parent Application 18/466,202).
Regarding claims 1-29, these correspond to 12,326,059 claims 1-29.
Applicant should note that the suggestions above for the 112 Rejections would appear to make the claims identical, and Double Patenting over identical claims cannot be overcome by a Terminal Disclaimer. Accordingly, Applicant should additionally consider other changes to distinguish the current claims from 12,326,059 claims.
Claims 1-14 and 17-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-36 of U.S. Patent No. 12,326,063 (also U.S. Application 18/466,132) (sharing co-Inventors Vega; Evers; and Fripp).
Applicant may either file a Terminal Disclaimer over 12,326,063 or Amend the claims to incorporate claim 15 or claim 16. However, it is unclear how independent claim 1 would properly incorporate claims 15 or 16, these being drawn to method steps vs. claim 1 drawn to an apparatus.
Regarding independent claims 1 and 11, 12,326,063 claims the same in claim 30 (“wherein the subjecting causes the powder of colloid particles and the reactive fluid to form a reactive colloidal dispersion of colloid particles”) and/or claim 34 (“wherein the subjecting causes the colloid particles in the non-reactive colloidal dispersion of colloid particles and the reactive fluid to form a reactive colloidal dispersion of colloid particles”).
Regarding claims 2-9 and 22-29, these correspond to 12,326,063 claims 4-6, 9-13, 17-19, and 22-26.
Regarding claims 10 and 21, 12,326,063 claims 12 and 25 are directed to “latex colloidal particles,” which are disclosed as polymers such as those synthesized from monomers of acrylate and acetate (12,326,063 Col. 3, lines 3-8), which are ionically charged (specifically, anionic). Accordingly, these correspond to 12,326,063 claims 12 and 25.
Regarding claim 12, 12,326,063 claim 37 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”). Accordingly, 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 12,326,063 to include “filling the wellbore above the downhole tool with the reactive colloidal dispersion of colloid particle,” with a reasonable expectation of success, in order to ensure the expandable metal member reacts with the reactive fluid.
Regarding claims 13 and 14, 12,326,063 claim 37 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”. Subjecting the expandable metal member to a reactive fluid appears to necessarily provide claims 13 and 14, by virtue of the reactive fluid being a slug of fluid without the colloid particles and then also forming a reactive colloidal dispersion upon contact with the colloid particles.
Regarding claims 17-20, although 12,326,063 does not specifically claim relative lengths of the downhole tool comprising the metal member vs. the slug of reactive colloidal dispersion, it would of course be obvious to provide a greater amount of reactive colloidal dispersion than metal member in order to ensure “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” is successful. Accordingly, 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 12,326,063 to include e.g. wherein the slug of the reactive colloidal dispersion of colloid particles has a thickness (t) greater than the length (l) of the downhole tool and wherein the slug of the reactive colloidal dispersion of colloid particles has a thickness (t) less than 1.5 times the length (l) of the downhole tool, with a reasonable expectation of success, in order to ensure the expandable metal member reacts fully with the reactive fluid.
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 ‘104 (2022/0186104) (cited by Applicant and in parent) 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) (cited by Applicant and in parent) 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, the intermediate step having fine particles does not appear to form a colloidal dispersion of the particles. Thus, this reference fails to disclose or teach a reactive colloidal dispersion of colloid particles surrounding a surface of the expandable metal member.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW SUE-AKO whose telephone number is (571)272-9455. The examiner can normally be reached M-F 9AM-5PM EST.
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/ANDREW SUE-AKO/Primary Examiner, Art Unit 3674