DETAILED ACTION
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/Restriction
This application contains claims directed to the following patentably distinct species:
Species I – as best represented by Figure 6, a localized heater with a valve 660
Species II – as best represented by Figure 7, a localized heater using a rupture tool 710
The species are independent or distinct because of patentably distinct variations in the structure and/or arrangement of the elements of the apparatus. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, at least claim 1 appears to be generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: There is an examination and search burden for these patentably distinct species due to their mutually exclusive characteristics. The species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search queries); and/or the prior art applicable to one species would not likely be applicable to another species; and/or the species are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph/A.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Greg Parker on 12/9/25 a provisional election was made without traverse to prosecute the invention of Species II, claims 1, 3-6. Affirmation of this election must be made by applicant in replying to this Office action. Claim 2 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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) 1 and 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mazyar (US 20130056209 A1).
Regarding claim 1, Mazyar teaches a downhole localized heater, comprising:
an enclosure (Fig 1, element 2);
a heating section located within the enclosure (Fig 1, one of the sections 3 and 5; although not explicit on which, the “heating section” is regarded as the section containing the reactants), the heating section including exothermic reactants contained therein (Para 0016, “individual reactants and a catalyst, if needed, are stored in compartments 3 and 5”); and
a control section located within the enclosure (Fig 1, the other of the sections 3 and 5), the control section operable to allow reactant fluid to react with the exothermic reactants and create a temperature spike after a period of time (Para 0016, when barrier 4 fails, “reactants with a catalyst, if any, can come together for an exothermic reaction”).
Mazyar is not explicit on the specific content of each of the compartments (and specifically the another reactant being a fluid).
Elsewhere in Mazyar, Mazyar teaches “one compartment contains […] for example NaCl aqueous solution” and “The second compartment contains dry super-corroding Mg alloy powder or sintered powder” and upon removal of the barrier contact between the contents of the two compartments “will initiate the exothermic reaction between the chemicals in two compartments” (Para 0023).
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 Mazyar by having one compartment (the heating section) contain Mg alloy powder or sintered powder and the other compartment (control section) contain NaCl aqueous solution as disclosed by a description of another variation within Mazyar because, in the embodiment relied upon, Mazyar is silent on the specific content of the sections. In the other embodiment, Mazyar teaches specifical chemicals which would be required to implement the embodiment relied upon and demonstrates that they would yield the predictable result of “initiat[ing] the exothermic reaction” upon contact after removal of the barrier (Para 0023).
Regarding claim 3, Mazyar teaches wherein a barrier within the enclosure separates the heating section from the control section (Fig 1, barrier 4).
Regarding claim 4, Mazyar in the embodiment relied upon is silent on the recited particulars of the rupture tool.
In an alternative embodiment, Mazyar teaches further including a rupture tool located within the enclosure (Fig 3, tip of knife 26), the rupture tool configured to rupture the barrier after the period of time to allow the reactant fluid to react with the exothermic reactants (Para 0020, Fig 3, “the knife 26 axially or radially through the barrier 4”).
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 Mazyar by having the knife ruptured barrier as disclosed by a description of another variation within Mazyar because it would be a simple substitution of one known element (the pressure rupture-able barrier of Figure 1) for another (having the knife ruptured barrier of Figure 3) to obtain predictable results (rupturing a barrier to permit contact between the components of two compartments).
Regarding claim 5, Mazyar teaches wherein the reactant fluid is fully contained within the enclosure (Fig 3, Para 0023, the one compartment with the “NaCl aqueous solution” would be fully contained within the enclosure as defined. Both compartments are within the enclosure.).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mazyar (US 20130056209 A1), in view of Marya (US 20160145968 A1).
Regarding claim 6, Mazyar is silent on a fusible alloy located within the enclosure, the fusible alloy operable to regulate a temperature of the downhole localized heater through the heat of fusion.
Marya teaches a fusible alloy located within the enclosure (Para 0020, 0024, there is inclusion of alloys 102 within the elastomeric material 103. This sealing material is the enclosure as a modification to Mazyar. See Para 0040 of the instant specification which broadly envisions fusible alloys as “melt-able materials”, which the alloys of the prior art would be), the fusible alloy operable to regulate a temperature of the downhole localized heater through the heat of fusion (Para 0020, 0024, the alloys are “operable” to regulate temperature by virtue of their absorption of generated heat, the amount of which is governed by its material properties including heat of fusion).
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 Mazyar by having the alloy included within the enclosure/elastomer as disclosed by Marya because it would allow the elastomeric sealing material to become responsive to additional stimuli which would permit it to be actuated/deactivated in response to that stimuli and it “may provide greater pressure ratings and enable mill-free, self-degradation” (Para 0018).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mazyar (US 20150047841 A1) teaches a shape conforming material is disclosed that in one non-limiting embodiment may include: providing a base shape memory material having a glass transition temperature; and adding a selected amount of heat transfer nanoparticles to the base shape conforming material.
Wayte (US 3195637 A) teaches chemical heating equipment, more particularly to chemical heating tools, processes, and apparatus employ ed in oil wells in heat treating the oil well tubing to melt and remove paraffin.
Fripp (US 20230340854 A1) teaches an elastomer matrix and a substance embedded within the elastomer that expands at a phase change temperature.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
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