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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3 and 14-15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Election/Restrictions
Applicant’s election without traverse of species I (figures 1-3) corresponding to claims 1-3 and 14-15 in the reply filed on 12/29/2025 is acknowledged. Claims 4-13 are withdrawn.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. EP 24176732, filed on 05/17/2024.
Drawings
The most recent objection has been withdrawn in light of the current specification amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3 and 14-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “[...] wherein at least one of the second end part and the first connecting part is configured to move along the axial extension to open an aperture providing fluid communication between the annulus and the expandable space of the expandable metal sleeve, when the expandable metal sleeve has been expanded.” There is insufficient antecedent basis for this limitation in the claim. The phrase “expandable space” was not previously recited causing confusion as to whether the element was meant to correspond to a previously recited element or meant to correspond to a newly recited element. For examination purposes, the Examiner will give its broadest reasonable interpretation in light of the instant specification and will assume for the phrase to correspond to the previously recited “annular space”. Due to claim 1 being rejected under 35 U.S.C. § 112(b), the corresponding dependent claims are also rejected.
Claim 1 recites the limitation “[...] wherein at least one of the second end part and the first connecting part is configured to move along the axial extension to open an aperture providing fluid communication between the annulus and the expandable space of the expandable metal sleeve, when the expandable metal sleeve has been expanded.” There is insufficient antecedent basis for this limitation in the claim. The phrase “expandable metal sleeve” was not previously recited causing confusion as to whether the element was meant to correspond to a previously recited element or meant to correspond to a newly recited element. For examination purposes, the Examiner will give its broadest reasonable interpretation in light of the instant specification and will assume for the latter interpretation. Due to claim 1 being rejected under 35 U.S.C. § 112(b), the corresponding dependent claims are also rejected.
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 Vasques (US Publication Number 2022/0259940 A1; herein “Vasques”).
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 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 (i.e., radially 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),
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), and
wherein at least one of the second end part and the first connecting part is configured to move along the axial extension to open an aperture (i.e., space within seat 30 — i.e., as shown in the transitioning from figure 2 to figure 3) providing fluid communication between the annulus and the expandable space of the expandable sleeve (note 35 U.S.C. § 112(b) rejection herein | furthermore, Examiner notes that absent specific detail, the location “between the annulus and the expandable space” is being considered as arbitrary annulus locations comprising the space in which the “annulus” and the “expandable space/annular space” is being considered as by Examiner relative to the teachings of Baker), when the expandable sleeve has been expanded (see page 1, right column, line 34- page 2, left column, line 9 and page 2, right column, line 69- page 3, left column, line 12 and figures 2-3).
However, even though Vasques 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. Furthermore, in light of Examiner’s broadest reasonable interpretation introduced in the 35 U.S.C. § 112(b) rejection herein, Vasques is silent in regard to an expandable metal sleeve.
Nonetheless, Vasques teaches a similar type of wellbore expansion tool (100 — paragraphs [0079] and figures 1-3) to that of Baker. Vasques teaches that the tubular (i.e., 3, 7) and expandable sleeve (8) can be made of metal (paragraphs [0079-0083]).
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 and expandable sleeve, as taught by Baker, to be made of metal, as taught by Vasques, 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 the aperture (as shown in figure 3), and
- letting cement out through the aperture and into the annulus (page 3, left column, lines 14-42).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NEEL PATEL whose telephone number is (469)295-9168. The examiner can normally be reached M-F, 9:00AM-5:00PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tara Schimpf can be reached at (571) 270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NEEL GIRISH PATEL/Primary Patent Examiner, Art Unit 3676
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