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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10 and 17-20, and the Species of “wellbore temperature,” drawn to claims 1-6, 8, and 17-20, in the reply filed on 20 January 2026 is acknowledged. Accordingly, claims 1-6, 8, and 17-20 are under examination.
Claims 7 and 9-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Inventions, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 1-6, 8, and 17-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: the structure(s) necessary to perform the adjusting of the LCM pills from a contracted state to an expanded state (i.e. “the plurality of perimeter members comprising a rigid but bendable material configured to expand the framework of the LCM pill upon release of the plurality of interior members”).
Claims 1-6, 8, and 17-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claim 1 recites:
“a lost circulation sub-system comprising a plurality of lost circulation material (LCM) pills [each LCM pill comprising:
a housing;
a framework coupled to the housing and configured to adjust from a retracted state enclosed within the housing to an expanded state outside of the housing, the framework comprising:
a plurality of interior members configured to release from the framework based on a trigger of a controller for at least one wellbore parameter, and
a plurality of perimeter members connected to the plurality of interior members, the plurality of perimeter members configured to expand the framework of the LCM pill upon release of the plurality of interior members; and
a fiber material that forms a mesh across and coupled to the framework, the mesh exposed from the housing when the framework in the expanded state], each of the plurality of LCM pills configured to circulate, with the drilling fluid, through the drill string and the drill bit and into the wellbore in an inactive state, each of the LCM pills set to adjust from the inactive state to an active state based on at least one well bore criteria at a location of the well bore in which a portion of the drilling fluid circulated into the well bore is lost to the subterranean formation to reduce the portion of the drilling fluid circulated into the wellbore that is lost to the subterranean formation”
Upon consultation with the Specification, the Office observes that the only description of how the device adjusts from a retracted state to an expanded state is “The housing 202 can comprise a material that allows the LCM 200 to remain in a rigid or substantially rigid shape during emplacement in the wellbore 20, such as plastic fiber or a similar material. However, the material of the housing 202 can also have enough flexibility to allow and facilitate the LCM pill 200 to adjust from the inactive state to an active or expended state, as shown in FIG. 2A” ([0058]) and “Each of the members 206 and 208 can be formed from a rigid but bendable material that allows for the contraction as well as expansion of the framework 204 when the LCM pill 200 adjusts from the inactive state to the active state” ([0060]).
There is no other Description of what else, specifically, would be an expanding mechanism for expanding the framework from a retracted state to an expanded state.
First, although Applicant describes, inter alia, framework 204; controller 212; sensors; and RFID tag 213, none of these elements ordinarily would be considered inherently capable of providing an expanding mechanism or the like, as compared to perhaps, e.g., actuators, motors, shape-changing materials such as shape memory polymers or shape memory alloys, chemical reactions, etc. Accordingly, it is unclear what element(s) other than a “rigid but bendable material” would be required or even operable to provide “the plurality of perimeter members configured to expand the framework of the LCM pill upon release of the plurality of interior members.”
Accordingly, independent claim 1 is Indefinite as being incomplete for omitting essential elements, such omission amounting to a gap between the elements.
Second, while there is a presumption that an adequate Written Description of the claimed invention is present in the Specification as filed, a question as to whether a Specification provides an adequate Written Description may arise in the context of an original claim. An original claim may lack Written Description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad Genus claim is presented but the disclosure only describes a narrow Species with no evidence that the Genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement." Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002). See MPEP 2163.03 Typical Circumstances Where Adequate Written Description Issue Arises.
In this case, (2) a broad Genus claim is presented (broadly encompassing wherein the plurality of perimeter members are configured to expand the framework of the LCM pill upon release of the plurality of interior members by any/every possible mechanism, e.g., actuators, motors, shape-changing materials such as shape memory polymers or shape memory alloys, chemical reactions, etc.) but the disclosure only describes a narrow Species (specifically, wherein the plurality of perimeter members are configured to expand the framework of the LCM pill upon release of the plurality of interior members by use of a rigid but bendable material) with no evidence that the Genus is contemplated. For example, Applicant has provided no guidance on what structure(s) other than a rigid but bendable material would be suitable to expand the LCM pill, and it is unclear if Applicant intended this to refer to any of perhaps, e.g., actuators, motors, shape-changing materials such as shape memory polymers or shape memory alloys, chemical reactions, etc. Applicant furthermore has not actually described how any of these other possibilities would operate in practice, such as how the structure(s) would be arranged within the LCM pill and interact with the other parts of the LCM pill to provide “wherein the plurality of perimeter members are configured to expand the framework of the LCM pill upon release of the plurality of interior members.”
Accordingly, the claim lacks an adequate Written Description for its full scope.
Claims 2-6, 8, and 17-20 are rejected by dependency, also failing to set forth the essential element(s) or structure(s) for providing “wherein the plurality of perimeter members are configured to expand the framework of the LCM pill upon release of the plurality of interior members” and for failing to limit the claims to the Described scope. Although not under examination, Applicant may observe that independent claim 11 would face a similar deficiency, and the deficiency in independent claim 1 may be remedied by Amending the language in claim 11 accordingly.
For examination purposes, claims will be read as though independent claim 11 requires the “rigid but bendable material,” thereby requiring the same in independent claim 1, i.e.:
“11. (Withdrawn - Currently Amended) A lost circulation material (LCM) pill, comprising:
a housing;
a framework coupled to the housing and configured to adjust from a retracted state enclosed within the housing to an expanded state outside of the housing, the framework comprising:
a plurality of interior members configured to release from the framework based on a trigger of a controller for at least one wellbore parameter, and
a plurality of perimeter members connected to the plurality of interior members, the plurality of perimeter members comprising a rigid but bendable material configured to expand the framework of the LCM pill upon release of the plurality of interior members; and
a fiber material that forms a mesh across and coupled to the framework, the mesh exposed from the housing when the framework in the expanded state.”
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6, 8, and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No 12,371,955 (also parent Application 18/455,348).
Applicant may note that the Restriction/Election Requirement set forth in parent 18/455,348 on 23 April 2024 was fully withdrawn in the Notice of Allowability mailed 7 April 2025.
Regarding independent claim 1, 12,371,955 claims A system (e.g., independent claims 1/13/20), comprising:
a drilling sub-system configured to form at least a portion of a wellbore from a terranean surface toward a subterranean formation by rotating a drill bit on a drill string (e.g., “drilling at least a portion of a wellbore from a terranean surface toward a subterranean formation by rotating a drill bit on a drill string”);
a drilling fluid circulation sub-system configured to circulate a drilling fluid downhole through the drill string, to and through the drill bit, into the wellbore, and uphole toward the terranean surface while the drilling sub-system drills the portion of the wellbore (e.g., “while drilling the portion of the wellbore, circulating a drilling fluid downhole through the drill string, to and through the drill bit, into the wellbore, and uphole toward the terranean surface”); and
a lost circulation sub-system comprising a plurality of lost circulation material (LCM) pills (e.g., “a plurality of lost circulation material (LCM) pills”) [the lost circulation material (LCM) pills, comprising:
a housing (e.g., “a housing of the LCM pill”);
a framework coupled to the housing and configured to adjust from a retracted state enclosed within the housing to an expanded state outside of the housing (e.g., “each of the LCM pills comprising a framework of rigid but bendable material that is set to adjust from the contracted state to an expanded state based on at least one wellbore criteria”), the framework comprising:
a plurality of interior members configured to release from the framework based on a trigger of a controller for at least one wellbore parameter (e.g., “releasing a plurality of interior members of the framework of the LCM pill from a controller based on a trigger for the at least one wellbore criteria”), and
a plurality of perimeter members connected to the plurality of interior members, the plurality of perimeter members comprising a rigid but bendable material configured to expand the framework of the LCM pill upon release of the plurality of interior members (“each of the LCM pills comprising a framework of rigid but bendable material that is set to adjust from the contracted state to an expanded state based on at least one wellbore criteria”); and
a fiber material that forms a mesh across and coupled to the framework, the mesh exposed from the housing when the framework in the expanded state (e.g., claim 20 “exposing a lost circulation material mesh coupled within the framework of the LCM pill from a housing of the LCM pill by adjusting the plurality of LCM pills from the contracted state to the expanded state”)],
each of the plurality of LCM pills configured to circulate, with the drilling fluid, through the drill string and the drill bit and into the wellbore in an inactive state, each of the LCM pills set to adjust from the inactive state to an active state based on at least one wellbore criteria at a location of the wellbore in which a portion of the drilling fluid circulated into the wellbore is lost to the subterranean formation to reduce the portion of the drilling fluid circulated into the wellbore that is lost to the subterranean formation (e.g., “based on the determination, circulating a plurality of lost circulation material (LCM) pills in a contracted state through the drill string and the drill bit and into the wellbore… adjusting the plurality of LCM pills from the contracted state to the expanded state based on the at least one wellbore criteria, the adjusting comprising: for each LCM pill, releasing a plurality of interior members of the framework of the LCM pill from a controller based on a trigger for the at least one wellbore criteria”).
Regarding claims 2, 3, 4, 5, 6, 8, 17, 18, 19, and 20, these correspond to 12,371,955 claims 2, 3, 4, 5, 8, 10, 8, 3, 4, and 5.
Conclusion
As above, all claims only face 112 Rejections and Double Patenting rejections. Accordingly, Applicant may remedy the 112 Rejections in line with the Office’s suggestions and file an e-Terminal Disclaimer over 12,371,955.
However, as below, withdrawn independent claim 11 would not be rejoinable with independent claim 1. Accordingly, claims 11-16 should be pursued in a Divisional or the like.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
The reference to Li (2021/0172281) discloses a lost circulation fabric (LCF) to seal a lost circulation zone during a drilling operation and may include a controller and sensors to detect the presence of a lost circulation zone (abstract) e.g. using a temperature sensor ([0047]), including a housing 102 with a release system 116 and actuator 126 and motor that opens the door 112 to release the LCF ([0048]), which then unfolds and spreads to form a seal and reduce fluid loss ([0091]). However, this reference fails to disclose or teach circulating the LCF through a drill string and drill bit, and it appears the LCF deployment system (LCFDS) would not be readily adapted for use such that the LCF could be put through a drill string and drill bit.
That is, although not under examination, regarding non-elected independent claim 11, Li discloses A lost circulation material (LCM) pill (abstract “a lost circulation fabric (LCF) to seal a lost circulation zone during a drilling operation. The LCF may be contained within a lost circulation fabric deployment system (LCFDS)”), comprising:
a housing (e.g., [0034] “a housing 102 coupled to a tubular 104”);
a framework coupled to the housing and configured to adjust from a retracted state enclosed within the housing to an expanded state outside of the housing, the framework comprising:
“one internal member” configured to release from the framework based on a trigger of a controller for at least one wellbore parameter ([0057] “An actuator 816 may release the springs 814 from a compressed configuration, allowing the springs 814 to expand”), and
a plurality of perimeter members connected to the internal member, the plurality of perimeter members comprising a rigid but bendable material configured to expand the framework of the LCM pill upon release of the plurality of interior members ([0056] “In addition, the LCFDS 800 also includes a launch system 812. The launch system 812 operates to forcefully eject the LCF 804 from the housing 806” and [0057] “In the illustrated example of FIG. 8, the launch system 812 includes a pair of springs 814 that are maintained in a compressed configuration when the LCF 804 is stored within the housing 806 (that is, prior to deployment of the LCF 804). … During deployment, the floats 808 and LCF 804 are forcefully ejected by releasing the compressed configuration of the springs 814, thereby converting the stored potential energy of the springs 814 into kinetic energy of the LCF 804”); and
a fiber material that forms a mesh across and coupled to the framework, the mesh exposed from the housing when the framework in the expanded state ([0035] “The LCF 114 is a pliable membrane, mesh, or net formed from a composite material, such as a fiber-reinforced polymer”).
The Office observes that, in the Specification, Applicant defines that “Thus, although the term "pill" refers to a shape that can be generally spherical or capsule shaped, the present disclosure does not
exclude LCM pills of different three-dimensional shapes when in an inactive state” ([0045]). Accordingly, Li provides a LCM “pill” by virtue of providing a LCFDS of a three-dimensional shape when in an inactive state.
Regarding the “plurality of internal members,” although Li discloses only one actuator 816 to release the springs 814 from a compressed configuration, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Li to alternatively include an individual actuator for each spring 814, thereby providing “a plurality of internal members,” with a reasonable expectation of success, in order to controllably actuate each spring individually with the controller in the case that different deployment arrangements of the LCF are desired to best cure fluid losses.
Additional references made of record and not relied upon that are considered pertinent to applicant's disclosure:
The reference to Rodriguez (9,657,219) discloses an expandable proppant having an expandable outer shell layer (abstract) wherein “In addition to using spring 125 or the inherent properties of expandable proppant 100 to cause the expansion of expandable proppant 100 into a partially expanded or open position, external expanders may also be used. For example, expandable proppant 100 may be actuated by external mechanical, hydraulic, explosive, SMA, magnetic, pneumatic, or chemical actuators” (6:43-49). However, this reference is directed to proppants, which are intended to allow flow through/past the proppant pack, in contrast to lost circulation materials, which are intended to block flow, and moreover this reference fails to disclose or teach a controller to provide “interior members configured to release from a framework based on a trigger of a controller for at least one wellbore parameter” or a fiber material that forms a mesh across and coupled to the framework.
The reference to Jamison (11,479,709) discloses a treatment fluid comprising compressed lost circulation material including a binding material that is degraded or dissolved to allow the compressed LCM to expand (abstract), which can be used during drilling (10:21). However, this reference fails to disclose or teach a controller to provide “interior members configured to release from a framework based on a trigger of a controller for at least one wellbore parameter” or a fiber material that forms a mesh across and coupled to the framework.
The reference to Hoskins (2010/0193244) discloses a drilling fluid additive (abstract) that is a swellable material encapsulated in a wax coating, to reduce lost circulation during drilling ([0037]). However, this reference fails to disclose a lost circulation mesh within the coating/housing.
The reference to Ramirez (2017/0327726) discloses a treatment fluid with a swelling agent (abstract) that forms a diverter plug by swelling i.e. expanding in the presence of aqueous fluid and entering lost circulation zones to form a plug ([0010]) during drilling operations ([0004]) wherein the treatment fluid contacts downhole equipment such as drill bits ([0040]). However, this reference fails to disclose or teach providing a housing and a lost circulation material mesh to be exposed during expansion.
The reference to Dahi Taleghani (2018/0037803) discloses loss circulation materials (abstract) used by adding to a drilling mud during drilling ([0144]) comprising shape memory polymers wherein “Upon exposure to the first temperature, the shape memory polymer in the programed state is converted to the shape memory polymer in the activated state, where the diameter of the shape memory polymer in the activated state has a diameter that is greater than the diameter of the shape memory polymer in the programed state” ([0061]). However, this reference fails to disclose or teach a controller to provide “interior members configured to release from a framework based on a trigger of a controller for at least one wellbore parameter” or a fiber material that forms a mesh across and coupled to the framework.
The reference to Al-Abduljabbar (2021/0115755) discloses sealing a problem zone of a subterranean well (abstract) such as a loss circulation zone ([0040]) using a wire mesh member that “can bend, maintain potential energy in a bent configuration, and return to an original shape when unbent” ([0045]) and “Removable fastener 48 can be used to maintain wire mesh member 34 in the reduced orientation so that wire mesh member 34 can be delivered into wellbore 12. Removable fastener 48 can be a tie such as a strap, a weld, glue or other destructible, dissolvable, or disappearing material” ([0048]) and “wire mesh member 34 is moved to a reduced orientation where wire mesh member is sized to move through drill string 16 with reduced outer diameter 46 that is less than an inner diameter of bit nozzle 50” ([0051]). However, this reference appears to disclose only using one such member at a time, not a plurality of LCM pills, and moreover, this reference fails to disclose or teach using a controller to release the frameworks of the LCM pills based on a trigger for the wellbore criteria.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW SUE-AKO whose telephone number is (571)272-9455. The examiner can normally be reached M-F 9AM-5PM EST.
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/ANDREW SUE-AKO/Primary Examiner, Art Unit 3674