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
Claims 5 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/9/26. Please note the subsequent interview of 2/24/26 in which attorney confirmed that claims 5 and 10 should have been withdrawn. See interview summary for additional detail.
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.
Claim(s) 1-3, 6-8, and 11-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Perez (US 20180100367 A1).
Regarding claim 1, Perez teaches a downhole tool, comprising:
a downhole conductive feature (Fig 5, feature 480B, Para 0036, “conductive metal or metal alloy”);
expandable metal positioned proximate the downhole conductive feature (Fig 5, feature 480A, Para 0036, “conductive metal or metal alloy”; Para 0023-0024, metal includes magnesium, aluminum, calcium and their alloys. Note, this is identical to the material disclosed by applicant, see e.g. 0021 of the instant application and MPEP 2112.01(II), “if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”), the expandable metal configured to expand in response to hydrolysis (Para 0023-0024, metal includes magnesium, aluminum, calcium and their alloys. Note, this is identical to the material disclosed by applicant, see e.g. 0021 of the instant application and MPEP 2112.01(II), “if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”);
a first electrode coupled to the expandable metal (Fig 5, line from 410 to 480A, indicated at 430) and operable to couple to a first connection of a power source (Fig 5, connects to power source 430), and thereby provide a voltage to the expandable metal (Fig 5, Para 0036, conducting wire provides current and necessarily voltage); and
a second electrode coupled to the downhole conductive feature (Fig 5, line from 410 to 480B, opposite side of reference numeral 430) and operable to couple to a second connection of the power source (Fig 5, Para 0036, connects to power source 410).
Regarding claim 2, Perez teaches wherein the downhole conductive feature is conductive tubing positionable within a wellbore (Fig 5, 480B is a tubular structure, as seen).
Regarding claim 3, Perez teaches wherein the expandable metal is a first expandable metal feature (Fig 5, feature 480A, Para 0036, “conductive metal or metal alloy”; Para 0023-0024, metal includes magnesium, aluminum, calcium and their alloys. Note, this is identical to the material disclosed by applicant, see e.g. 0021 of the instant application and MPEP 2112.01(II), “if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”) and the downhole conductive feature is a second expandable metal feature (Fig 5, feature 480B, Para 0036, “conductive metal or metal alloy”; Para 0023-0024, metal includes magnesium, aluminum, calcium and their alloys. Note, this is identical to the material disclosed by applicant, see e.g. 0021 of the instant application and MPEP 2112.01(II), “if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”).
Regarding claim 6, Perez teaches a well system, comprising:
a wellbore extending through one or more subterranean formations (Fig 5, Para 0036, “downhole tool”, Para 0002, downhole tools are used in wellbores);
a power source (Fig 5, power source 410), the power source including a first connection and a second connection (Fig 5, connections to lines 430 on the left and right of 410); and
a downhole tool located within the wellbore (Fig 5, tool as seen, see following elements, excluding power source 410), the downhole tool including;
a downhole conductive feature (Fig 5, feature 480B, Para 0036, “conductive metal or metal alloy”);
expandable metal positioned proximate the downhole conductive feature (Fig 5, feature 480A, Para 0036, “conductive metal or metal alloy”; Para 0023-0024, metal includes magnesium, aluminum, calcium and their alloys. Note, this is identical to the material disclosed by applicant, see e.g. 0021 of the instant application and MPEP 2112.01(II), “if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”), the expandable metal configured to expand in response to hydrolysis (Para 0023-0024, metal includes magnesium, aluminum, calcium and their alloys. Note, this is identical to the material disclosed by applicant, see e.g. 0021 of the instant application and MPEP 2112.01(II), “if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”);
a first electrode coupled between the expandable metal (Fig 5, line from 410 to 480A, indicated at 430) and the first connection of the power source (Fig 5, connects to power source 430), the first electrode operable to provide a voltage to the expandable metal (Fig 5, Para 0036, connects to power source 410); and
a second electrode coupled between the downhole conductive feature (Fig 5, line from 410 to 480B, opposite side of reference numeral 430) and the second connection of the power source (Fig 5, Para 0036, connects to power source 410).
Regarding claim 7, Perez teaches wherein the downhole conductive feature is conductive tubing positioned within the wellbore (Fig 5, 480B is a tubular structure, as seen).
Regarding claim 8, Perez teaches wherein the expandable metal is a first expandable metal feature (Fig 5, feature 480A, Para 0036, “conductive metal or metal alloy”; Para 0023-0024, metal includes magnesium, aluminum, calcium and their alloys. Note, this is identical to the material disclosed by applicant, see e.g. 0021 of the instant application and MPEP 2112.01(II), “if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”) and the downhole conductive feature is a second expandable metal feature (Fig 5, feature 480B, Para 0036, “conductive metal or metal alloy”; Para 0023-0024, metal includes magnesium, aluminum, calcium and their alloys. Note, this is identical to the material disclosed by applicant, see e.g. 0021 of the instant application and MPEP 2112.01(II), “if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”).
Regarding claim 11, Perez teaches wherein the power source is a downhole battery power supply (Para 0060, “the current source comprises a battery, a device effective to generate an electric current in situ in a downhole environment, or a combination thereof.”).
Regarding claim 12, Perez teaches wherein the power source is a downhole power generator (Para 0060, “the current source comprises a battery, a device effective to generate an electric current in situ in a downhole environment, or a combination thereof.”).
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) 4, 9, and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Perez (US 20180100367 A1), in view of Sherman (US 20200056435 A1).
Regarding claim 4, while Perez, in the embodiment relied upon teaches a tubular structure which is conductive, Perez is silent on wherein the first expandable metal feature and the second expandable metal feature are positioned radially about a conductive tubular.
Sherman teaches a conductive tubular positioned within another tubular (Fig 2, tool 200 has a conductive tubular structure 210, see Para 0051; as a modification to Perez, the tubular structure of Fig 5 has the expandable metal features).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Perez by having the packer with the conductive tubular as disclosed by Sherman placed within the bore of Perez’s tool because it would allow for a pressure barrier to temporarily prevent undesired flow within the bore of Perez’s tool.
Regarding claim 9, while Perez, in the embodiment relied upon teaches a tubular structure which is conductive, Perez is silent on wherein the first expandable metal feature and the second expandable metal feature are positioned radially about a conductive tubular.
Sherman teaches a conductive tubular positioned within another tubular (Fig 2, tool 200 has a conductive tubular structure 210, see Para 0051; as a modification to Perez, the tubular structure of Fig 5 has the expandable metal features).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Perez by having the packer with the conductive tubular as disclosed by Sherman placed within the bore of Perez’s tool because it would allow for a pressure barrier to temporarily prevent undesired flow within the bore of Perez’s tool.
Regarding claim 15, Perez is silent on wherein the downhole tool is a downhole packer.
Sherman teaches wherein the downhole tool is a downhole packer (Fig 2, packer/anchor 200 has a conductive tubular structure 210, see Para 0051. Note the modification discussed below proposed to use the tubular structure of Perez as the degradable tubular 210).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Perez by having the dissolvable tubular (the structure of Perez’s Fig 5) used as the dissolvable tubular 210 in the packer/anchor as disclosed by Sherman because Perez’s tubular is only generic discussed and usable in the system of Sherman, as the degradable tubular 210, with predictable results (permitting selective degradation).
Regarding claim 16, Perez is silent on wherein the downhole tool is a downhole anchor.
wherein the downhole tool is a downhole anchor (Fig 2, packer/anchor 200 with anchor slips 240 has a conductive tubular structure 210, see Para 0051. Note the modification discussed below proposed to use the tubular structure of Perez as the degradable tubular 210).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Perez by having the dissolvable tubular (the structure of Perez’s Fig 5) used as the dissolvable tubular 210 in the packer/anchor as disclosed by Sherman because Perez’s tubular is only generic discussed and usable in the system of Sherman, as the degradable tubular 210, with predictable results (permitting selective degradation).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Perez (US 20180100367 A1), in view of Melo (US 20180058157 A1).
Regarding claim 13, Perez is silent on wherein the power source is an uphole power source, and further including an electric line extending from the uphole power source to the downhole tool.
Melo teaches wherein the power source is an uphole power source (Fig 3, power source 320), and further including an electric line extending from the uphole power source to the downhole tool (Para 0041, “power is transmitted from the surface through the embedded power conductor (for example 206A or 206B) to the downhole equipment”).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Perez by having the power source and its electric line as disclosed by Melo because it would be a simple substitution of one known element (the power source 410 of Perez) for another (the power source and line to supply power of Melo) to obtain predictable results (supplying power to a downhole tool which utilizes electrical power).
Regarding claim 14, Perez as modified teaches wherein the electric line is a tubing encapsulate conductor (TEC) (Para 0041 of Melo, “power is transmitted from the surface through the embedded power conductor (for example 206A or 206B) to the downhole equipment”).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fripp (US 20080135249 A1) teaches a device including an electrode in a galvanic cell. A flow blocking device for use in conjunction with a subterranean well includes a portion which delays an electrochemical reaction in a galvanic cell.
Robisson (US 20090139710 A1) teaches electrical stimulus may be applied pre-swelling, during swelling or post-swelling to control the rate and/or degree of swelling.
Gaudette (US 20130081814 A1) teaches a device is configured to disintegrate upon application of electrical current thereto; and applying current to the device in the wellbore using a tool to controllably disintegrate the device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THEODORE N YAO whose telephone number is (571)272-8745. The examiner can normally be reached typically 8am-4pm ET.
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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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/THEODORE N YAO/Primary Examiner, Art Unit 3676