DETAILED ACTION
Claims 1-15 are pending.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of species I (figures 1-3) corresponding to claims 1-3, 14, and 15 in the reply filed on 12/29/2025 is acknowledged. Claims 4-13 are withdrawn.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 23A (figure 1). Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because of the following informalities and should likely read as follows: “[...] an expandable sleeve surrounding the tubular metal part and having a first end part and a second end part, an outer face facing towards the inner face of the borehole or the second well tubular metal structure, and the expandable sleeve having an inner face facing the outer face of the tubular metal part...”. Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baker (US Patent Number 2,368,399; herein “Baker”) in view of Roberts (US Publication Number 2013/0341049 A1; herein “Roberts”).
In regard to claim 1, Baker discloses: A completion component (as shown in figures 1-3) for providing an annular barrier (as shown in figure 2) in a well (i.e., well comprising “C”) between a first well tubular structure (11) and an inner face of a borehole or a second well tubular structure (i.e., inner radial surface of casing “C”) for providing zone isolation between a first zone (i.e., zone uphole of 15 — figures 2-3) and a second zone (i.e., zone downhole of 15 — figures 2-3) of an annulus (i.e., space between 11 and “C” — see at least page 1, left column, lines 1-4, 45-55 to page 1, right column, lines 1-17, and figures 1-3), comprising:
- a tubular part (11 | Examiner notes that the “a first well tubular structure” and the “tubular part” are essentially the same element, commensurate to that of the instant application) for mounting as part of the first well tubular structure, the tubular part having an axial extension (i.e., longitudinal axis extension) and an outer face (i.e., radial outer surface/face of 11),
- an expandable sleeve (15) surrounding the tubular part and having a first end part (14) and a second end part (16), an outer face (i.e., radial outer surface of 15) facing towards the inner face of the borehole or the second well tubular structure (as shown in figures 1-3), and the expandable sleeve having an inner face (i.e., radial inner surface/face of 15) facing the outer face of the tubular part (as shown in figures 1-3),
- an annular space between the expandable sleeve and the tubular part (as shown in figures 1-3), and
- an expansion opening (27) in the tubular part through which fluid may enter the annular space in order to expand the expandable sleeve (page 1, right column, line 18-55 and page 2, right column, lines 44-68 | also, see transitioning from figure 1 to figure 2),
wherein the first end part of the expandable sleeve is fixedly fastened with the tubular part and the second end part is slidable along the axial extension (page 1, right column, line 18-55 and page 2, right column, lines 44-68 | also, see transitioning from figure 1 to figure 2), and
wherein the completion component further comprises a first connection part (21) having a first condition (as shown in figure 1) in which the first connection part is fixedly arranged along the axial extension by means of a breakable element (24 — page 1, right column 1, line 18-55), and a second condition (as shown in at least figure 2) in the first connection part is slidable along the axial extension, the second end part of the expandable sleeve abutting and being slidable in relation to the first connection part (page 1, right column, line 18-55 and page 2, right column, lines 44-68 | also, see transitioning from figure 1 to figure 2).
However, even though Baker indicates metal cross-hatching for its tubular — see MPEP 608.02, section IX and 37 CFR 1.84(h)(3), Baker is explicitly silent in regard to the tubular being metal.
Nonetheless, Roberts teaches a similar type of wellbore expansion tool (100 — paragraphs [0027-0031]) to that of Baker. Roberts cites: “Downhole tool 100 includes a mandrel 105. Mandrel 105 may be formed from various metals, such as aluminum, stainless steel, other metal alloys, or in certain embodiments, from various composites, such as fiberglass with epoxy resins” (paragraph [0027]).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the tubular, as taught by Baker, to be made of metal, as taught by Roberts, since it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. In re Leshing, 125 USPQ 416 (CCPA 1960) and Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945).
In regard to claim 2, Baker further discloses: wherein the second end part of the expandable sleeve is slidable in relation to the first connection part (page 1, right column, line 18-55 and page 2, right column, lines 44-68 | also, see transitioning from figure 1 to figure 2).
In regard to claim 3, Baker further discloses: wherein the first connection part in the first condition is fixedly arranged by means of a breakable element which is breakable at predetermined differential pressure between the pressure in the annular space and the first zone (page 1, right column, line 18-55 and page 2, right column, lines 44-68 | also, see transitioning from figure 1 to figure 2).
In regard to claim 14, Baker further discloses: Downhole system comprising the completion component according to claim 1 and a well tubular metal structure (11 | Examiner notes that the “a first well tubular structure” and “well tubular metal structure” are essentially the same element, commensurate to that of the instant application | as disclosed in the claim 1 rejection).
In regard to claim 15, Baker discloses: Cementing method of providing cement in an annulus between the well tubular metal structure and a wall of a borehole or a second well tubular metal structure (as disclosed in the claim 1 rejection1), comprising:
- mounting a tubular metal part of a completion component according to claim 1 as part of the well tubular metal structure (as disclosed in the claim 1 rejection),
- lowering the well tubular metal structure into the borehole,
- expanding the expandable sleeve by pressurising the well tubular metal structure with cement until the predetermined pressure differential is reached,
- providing an aperture (i.e., lower most opening adjacent 53 — figure 3), and
- letting cement out through the aperture and into the annulus (page 3, left column, lines 14-42).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The references in the PTO-892 relate to downhole expandable/inflatable sealing tools.
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/NEEL GIRISH PATEL/Primary Patent Examiner, Art Unit 3676