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 .
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.
Claim 15 is 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 15 recites the limitation "the upper extremity and the lower extremity" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim.
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 and 12 is/are rejected under 35 U.S.C. 102a1 as being anticipated by US 20070246226 to Macias et al.
Regarding claim 1, Macias discloses a downhole completion comprising a perforated base pipe 12 having a central longitudinal axis, concentrically surrounded by a sand screen 40, said sand screen comprising an upper extremity 56 and a lower extremity 60 separated from each other in longitudinal direction, wherein at least one of the upper extremity and the lower extremity is slidable on the perforated base pipe (figs. 1-4; wherein 56 and 60 are slidable when the shear pin breaks).
Regarding claim 2, the downhole completion of claim 1, wherein both the upper extremity and the lower extremity are slidable (they both have shear pins 52 that can break allowing them to slide – paragraphs 0033 and 0048).
Regarding claim 3, the downhole completion of claim 1, further comprising two longitudinally separated stop rings 90 configured to be secured to the perforated base pipe stationary thereto, wherein the sand screen is located between these stop rings with additional spacing in between the screen and at least one of the two stop rings, to allow for longitudinal slidability of one or both of the upper extremity and the lower extremity of the screen (figs. 1-4; paragraph 0040).
Regarding claim 12, the downhole completion of claim 1, wherein the perforated base pipe is connected to a compaction compliance section 44/48 (figs. 1 and 4; see paragraph 0048 wherein the base pipe can slide relative to 44/48 when there is a formation collapse, which will compact the components).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Macias et al in view of US 20110108477 to Hammer.
Regarding claim 5, Macias teaches the sand screen from claim 1 above, wherein it is further taught that the screen is a wire wrapped screen (paragraph 0031). However, it is not specifically taught that there is a plurality of ribs surrounded by the wire wrapping.
Hammer teaches a downhole screen similar to that of Macias, wherein it is further taught that a plurality of ribs 26a or 31 are surrounded by a wire wrapped screen 26 or 210 (figs. 1-3). It would have been obvious to one of ordinary skill in the art, having the teachings of Macias and Hammer before him prior to the effective filing date of the claimed invention, to modify the screen taught by Macias to include the ribs of Hammer, in order to obtain the predictable result of providing structural support for the screen and to create fluid flow channels (paragraph 0016).
Regarding claim 6, the downhole completion of claim 5, wherein the wire wrapped screen is a direct wire-wrapped screen (paragraph 0014 of Hammer teaches the wire wrap, and fig. 3 shows the screen directly over the ribs 31).
Allowable Subject Matter
Claims 4, 7-11, and 13-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 15 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
Conclusion
The prior art made of record on form 892 and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE BOMAR whose telephone number is (571)272-7026. The examiner can normally be reached 7:30am-3:30pm EST M-Th.
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, Doug Hutton can be reached at 571-272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHANE BOMAR/
Primary Examiner
Art Unit 3674
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