DETAILED ACTION
Claim Objections
Claim 7 is objected to because of the following informalities: The term “the ICV” lacks antecedent basis. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
Claims 13, 15, and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO’521 (WO 2014/209521).
With respect to claim 13, WO’521 discloses a method of operating a well, comprising: receiving an operating fluid (via line 14) in the well; flowing the operating fluid to a control system 10 disposed in the well; treating the well by selectively injecting the operating fluid from within the control system into the well (via 82); and actuating a valve 20 in the well by selectively directing the operating fluid from within the control system to the valve (via 82). See Figs. 1-3, pars. 11, 13-15, 17, and claim 2.
With respect to claim 15, WO’521 teaches wherein the valve comprises an inflow control valve that is selectively changed into open and closed configurations by rerouting the operating fluid, wherein the control system comprises a directional valve 82, the method further comprising determining a position of the inflow control valve based on the amount of time the directional valve allows flow of the operating fluid. See above, especially par. 17.
With respect to claim 16, WO’521 teaches further comprising operating a directional valve 82 to reroute the operating fluid. See especially par. 17.
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.
Claim(s) 14, and 17-20 is/are rejected under 35 U.S.C. 103 as
being unpatentable over WO'521 alone, or in the alternative in view of EP'326 (EP
2630326 cited by applicant).
With respect to claim 14, WO’521 fails to explicitly teach wherein the operating fluid is selected from the group consisting of a foaming agent, an anti-foaming agent, a biocide, a corrosion inhibitor, a scale inhibitor, an asphaltene inhibitor, an agent to prevent hydrate formation, an adsorbent, an emulsifier, an emulsion breaker, a viscosity reducer, and combinations thereof as claimed. WO'521 and EP'326 both disclose a chemical
injection system for hydrocarbon production. The fluids used are not detailed but all
fluids listed in this claim are obvious well-known chemical agents.
With respect to claim 17, WO’521 fails to explicitly teach wherein the directional valve comprises a spool with multiple passages formed within that move in and out of alignment with the fluid line by operating an actuator coupled with the spool as claimed. The type of valve is an obvious constructional choice for the skilled person. EP'326
teaches a bi-stable actuator for the valve. A directional valve is an obvious alternative
as well as a spool valve.
With respect to claim 18, WO’521 teaches or makes obvious further comprising automatically calibrating operation of the inflow control valve based on sensing conditions in the well. See pars. 3-5.
With respect to claims 19-20, WO'521 teaches or makes obvious further comprising using multiple stages each with a directional valve and flow control valve or a packer; further comprising using multiple stages each with a directional valve and flow control valve or packer, and directing fluid into a single return line. See fig. 1.
Allowable Subject Matter
Claims 1-6 and 8-12 are allowed.
Claim 7 would be allowable if rewritten to overcome the objection in par. 1 above.
Response to Arguments
Applicant's arguments filed 2/19/26 have been fully considered but they are not persuasive. Applicant alleges that the WO’521 reference fails to teach both treating a well and actuating a valve with fluid from within the same control system. A “control system” was not previously claimed with respect to claim 13+. The control system is represented by numeral 10. See rejection made in par. 3 above, and including Figs. 1-3, pars. 11, 13-15, 17, and claim 2.
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 ZAKIYA W BATES whose telephone number is (571)272-7039. The examiner can normally be reached M-F 8:30am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 5712724137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZAKIYA W BATES/Primary Examiner, Art Unit 3674 5/28/2026
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