DETAILED ACTION
Notice of 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 .
Terminal Disclaimer
The terminal disclaimer filed on 03/05/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Patent No. 12352132 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Double Patenting
The rejection of claims 1-20 have been withdrawn in light of the Terminal Disclaimer filed and approved on 03/05/2026.
Claim Rejections - 35 USC § 102
Regarding claim 13, the Applicant’s arguments, see page 2 of the filed Remarks (page 7 on the actual document), filed 03/02/2026, with respect to the rejection(s) of claim(s) 13 under 35 USC § 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of a newly found prior art reference which teaches the amended limitations of “wherein the retrieving the scab portion of the liner comprises: latching onto the scab portion” which has been further detailed below.
Claim Rejections - 35 USC § 103
Regarding claim 1, Applicant’s arguments, see page 3 of the filed Remarks (page 8 on the actual document), filed 03/02/2026, with respect to claim 1 have been fully considered and are persuasive. The 35 USC § 103 rejection of claim 1 has been withdrawn; however, the amendments to claim 1 raises new issues and has been rejected under 35 USC § 112(b) detailed below.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the limitation “wherein the scab portion of the liner comprises one or more lower seals” recited in claim 24 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 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 1-11, 21, 22 and 24 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.
Regarding claim 1, the claim recites the limitation “wherein the one or more portions comprise one or more colors configured to provide the visual indication” which is indefinite. The limitation “the one or more portions comprise one or more colors” is very confusing because a physical structure cannot structurally “comprise” a color because color is a visual element rather than a structural component. It is unclear from the claim language whether the one or more portions incorporate a physical colorant (such as a pigment) within its material matrix or if it reflects a specific wavelength of light. “Color” is not a physical material and a POSITA cannot determine what is structurally required by the claim language “one or more portions comprise one or more colors”. For the above reasons, the metes and bounds of this claim is indefinite. For examination purposes the Examiner will interpret the claim as requiring the limitation “the one or more portions are coated with the one or more colors configured to provide the visual indication.”
Regarding claim 24, the limitation “the scab portion of the liner comprises one or more lower seals configured to be protected during the running of the liner down the main wellbore” is indefinite. The term “lower seals” is very confusing because “lower” is relative and does not specify a location along the “scab portion”. As such, it is unclear where the “lower seals” should be positioned along the scab portion. Furthermore, the limitation “one or more lower seals configured to be protected during the running of the liner down the main wellbore” is unclear because the claim does not define what is structurally and/or functionally required to protect the “lower seals” nor is this disclosed in the specification. Are the “lower seals” temporarily covered by a sleeve? Are they kept in a retracted position during running? A POSITA would not know what is structurally and/or functionally required by the claim such that the “lower seals” are protected during running. For the above reasons, the metes and bounds of this claim is indefinite.
Claims 2-11, 21 and 22 are also rejected under this statute as the claims depend from claim 1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 13 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Vemuri et al. (U.S. Publication No. 20180274300) in view of Fairweather (U.S. Publication No. 20230061851).
Regarding claim 13, Vemuri teaches a method, comprising:
completing a main wellbore (the parent wellbore 102 may be completed by lining all or a portion of the parent wellbore 102 with casing 106; Fig. 1, pp[0019]);
running an anchor (includes seal 212, a latch profile 214 and latch coupling 216; Fig. 2, pp[0024]) and a whipstock (204) into the main wellbore (102; Fig. 2);
cutting a window along the main wellbore (the mills 210 are properly oriented relative to the pre-milled window 114 to form the casing exit (window); pp[0028], Fig. 2, 3);
pulling the whipstock from the main wellbore (whipstock 204 separated from the orienting latch anchor 206 and retrieved to the surface location; pp[0026]);
drilling a lateral section from the window (drill bit 402 drills a lateral wellbore 304; pp[0033], Fig. 4);
running a liner down the main wellbore and out into the lateral section (liner 504 is run down main wellbore 102 and into lateral wellbore 504; Fig. 5, 6, pp[0034]); and
retrieving a scab portion of the liner (the upper portion of liner 504 that is within the main wellbore 102 (scab portion of liner) is milled and removed; Fig. 7, 8, pp[0040],[0042]);
Vemuri discloses that the scab portion is milled and retrieved from the main wellbore (Fig. 7, 8, pp[0040],[0042]) but fails to disclose how the scab portion is retrieved which forces the reader to look elsewhere for such teachings.
Fairweather, drawn to a downhole pulling tool for retrieving cut portion of tubular, discloses wherein the retrieving the scab portion of the liner comprises:
latching onto the scab portion (apparatus 10 comprises a spear 48 which latches into the cut portion of tubing 12. The cut portion of tubing is pulled out of the wellbore; Figs. 2-6, pp[0072]-[0076]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Vemuri such that it includes the retrieval apparatus of Fairweather, with a reasonable expectation of success, because the apparatus will facilitate in removing the cut portion of the liner from the wellbore (pp[0065]).
Regarding claim 23, the combination of Vemuri and Fairweather teaches the method as recited in claim 13.
Fairweather further discloses comprising running a fishing tool down the main wellbore, wherein the latching onto the scab portion comprises latching onto the scab portion with the fishing tool (apparatus 10 is a fishing tool which comprises a spear 48 that latches into the cut portion of tubing 12. The cut portion of tubing is pulled out of the wellbore; Figs. 2-6, pp[0072]-[0076]).
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Vemuri et al. (U.S. Publication No. 20180274300) in view of Fairweather (U.S. Publication No. 20230061851) and in further view of Eslinger et al. (U.S. Publication No. 20020125005).
Regarding claim 24,the combination of Vemuri and Fairweather teaches the method recited claim 13.
The combination of Vemuri and Fairweather fails to teach that the scab portion of the liner comprises one or more lower seals configured to be protected during the running of the liner down the main wellbore.
Fairweather further discloses that the cut portion (12) of the liner (24) comprises a packer (28a); pp[0054, Fig. 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of the combination with the packer of Fairweather, with a reasonable expectation of success, in order to facilitate in holding the liner in place within the wellbore (pp[0054]).
However, the combination does not explicitly teach that the one or more lower seals configured to be protected during the running of the liner down the main wellbore.
Eslinger, drawn to a tubing conveyed tool, discloses one or more lower seals configured to be protected during the running of the tubular down the main wellbore (At the retracted positions of the packers, the packers 22, 24 are positioned out of contact with the casing 12, thus preventing wear or erosion of the packers during running and retrieving operations; pp[0035]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the packer of the combination of Vemuri and Fairweather such that the packer is retracted during running as taught by Eslinger, with a reasonable expectation of success, as this will prevent wear or erosion of the packer (pp[0035]).
Allowable Subject Matter
Claim 1 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 2-11, 21 and 22 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding claim 1, Vemuri A method for use in a well, comprising: completing a main wellbore;
running an anchor (includes seal 212, a latch profile 214 and latch coupling 216; Fig. 2, pp[0023], [0024]) and a whipstock (204) into the main wellbore (102; Fig. 2);
milling a window along the main wellbore (the mills 210 are properly oriented relative to the pre-milled window 114 to form the casing exit (window); pp[0028], Fig. 2, 3);
pulling the whipstock from the main wellbore (whipstock 204 separated from the orienting latch anchor 206 and retrieved to the surface location; pp[0026]);
running a production deflector (204; Fig. 2, 3, pp[0023]) into a main wellbore (102; Fig. 2,3);
drilling a lateral section from the window (drill bit 402 drills a lateral wellbore 304; pp[0033], Fig. 4);
running a liner down the main wellbore and out into the lateral section (liner 504 is run down main wellbore 102 and into lateral wellbore 504; Fig. 5, 6, pp[0034]);
subsequently running an upper lateral completion into the lateral section (lateral liner 504 may also include one or more completion tools (not shown) used to regulate and/or control production flow from the formation 104 including, but not limited to, well screens, slotted liners, perforated liners, wellbore packers, inflow control devices, valves, chokes, sliding sleeves; pp[0035]);and
removing a scab portion of the liner, wherein removing the scab portion of the liner comprises milling the scab portion (the upper portion of liner 504 that is within the main wellbore 102 (scab portion of liner) is milled and removed; Fig. 7, 8, pp[0042]).
Vemuri is silent regarding the upper lateral completion is a sandface completion.
Steele, drawn to a completion system for a multilateral wellbore, discloses that the completion string (32) in the lateral wellbore (15) includes one or more sandface completion (Each completion string 30, 32 may include one or more filter assemblies 24. Filter assemblies 24 may filter sand, fines and other particulate matter out of the production fluid stream; pp[0032]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the lateral wellbore of Vemuri with the filter assemblies of Steele in order to filter out sand, fines and other particulate matter out of the production fluid stream (pp[0032], Steele).
The combination of Vemuri and Steele is silent regarding an indicator layer of the scab portion, wherein the indicator layer is configured to provide a visual indication of the milling based on removal of one or more portions of the indicator layer from the liner, and wherein the one or more portions are coated with the one or more colors configured to provide the visual indication.
It would not be obvious to modify the scab portion with an indicator layer as claimed because no prior art was found, alone or in combination with Vemuri and Steele, to teach this feature. Therefore, such a modification would be based on impermissible hindsight reasoning.
Claims 17-20 are allowed.
Regarding claim 17, Vemuri teaches a method, comprising:
drilling a lateral wellbore section from the main wellbore (Rotating the mills 210 via the drill string 202 will mill out the pre-milled window 114 and thereby create a casing exit 302 in the casing 106 and the start to a lateral wellbore 304 that extends from the parent wellbore 102; pp[0031]);
running a liner into the lateral wellbore section (liner 504 is run down main wellbore 102 and into lateral wellbore 504; Fig. 5, 6, pp[0034]) until a scab portion of the liner is disposed across the main wellbore at an angle (the upper portion of liner 504 that is within the main wellbore 102 and is at an angle as shown; Fig. 5); and
removing the scab portion of the liner to provide communication with both the lateral wellbore section and the main wellbore below the lateral wellbore section (the upper portion of liner 504 that is within the main wellbore 102 (scab portion of liner) is milled and removed; Fig. 7, 8, pp[0042]) wherein removing the scab portion of the liner comprises milling the scab portion (the upper portion of liner 504 that is within the main wellbore 102 (scab portion of liner) is milled and removed; Fig. 7, 8, pp[0042]),
Vemuri is silent regarding wherein the scab portion includes a series of internal ridges formed along an interior of the scab portion oriented to catch a mill bit during the milling of the scab portion.
It would not be obvious to modify the combination with the above features because no prior art, alone or in combination with Vemuri, to teach the above limitations. As such, modifying Vemuri with the above features would be based on improper hindsight reasoning. Furthermore, the mill of Vemuri mills the scab portion of the liner along the outer surface of the liner. Therefore, there is no need to add ridges to the internal surface of the scab portion of the liner of Vemuri. As such, claim 17 is allowable over Vemuri.
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 Lamia Quaim whose telephone number is (469)295-9199. The examiner can normally be reached Monday-Friday 10AM - 6PM CST.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LAMIA QUAIM/Examiner, Art Unit 3676
Prosecution Insights