DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed 13 April 2026 have been fully considered.
The 112(b) rejections are withdrawn due to amendments.
With regards to the 101 rejections, Applicant argues that the limitations (i)-(v) “recite a concrete, industrial process for opening and testing, specific-critical machinery…to solve a technical problem” and that cannot practically be performed by the human mind and therefore the analysis should end and the subject matter of claim 1 should be deemed patent eligible. Examiner respectfully disagrees. Limitations (ii) and (iv) related to the analyzing and classifying are abstract ideas that can be preformed by the human mind. Therefore, the analysis is needed to determine if the additional elements (I, iii, and v) integrate the abstract idea into a practical application. Applicant argues that the additional limitations are “sufficiently anchored” in a practical application.
Examiner respectfully disagrees since the additional elements are no more than mere instructions to apply the exception (i.e., “apply it”) or insignificant extra-solution activity as discussed below.
Applicant argues that claim 1 recites subject matter that is significantly mor in Step 2B that the proposed judicial exception, specifically related to if the well is inoperable. However, the limitation related to shutting in the well is a contingent limitation that only occurs if the well is classified as inoperable. If the well is classified as operable the limitation does not occur and there is nothing to integrate the abstract idea into a practical application. Therefore the 101 rejection of claim 1 is maintained.
Applicant argues that Al Muailu and Franklin fail to teach or suggest limitations (ii)-(iv) since Claim 1 “specifically requires that a single, final determination of the well’s operability (limitation iv) is based simultaneously on the combined results of two distinct, physically separate tests” where the results of the two separate tests are required to be evaluated together to produce a unified operational classification. Examiner respectfully disagrees. Claim 1 merely requires classifying the well as operable or inoperable “based on” (1) the pressure loss across the at least one surface valve and (2) the functionality of the surface controlled sub-surface safety valve. There is no recitation on how the classification occurs “based on” the test results. Applicant is arguing limitations (i.e., the results of the two separate tests are required to be evaluated together to produce a unified operational classification where both tests are passed) not in the claims that very broadly under BRI recite the classification is merely “based on” the test results. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that the references do not teach the limitations of claim 2. Examiner respectfully disagrees since the references teach the limitations as discussed below.
With respect to claim 21, applicant appears to be arguing that it would not be obvious to combine the references. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, since Rae teaches needing gas lift during the life of a well (Rae ¶ [0020]) and Al Muailu teaches monitoring operations during the entire life of a well (Al Muailu pg. 2 para. 1).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2 and 21-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1 of the Subject Matter Eligibility Test entails considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: Process, machine, manufacture, or composition of matter.
Claims 1-2, 4-5, and 21-22 are directed to a method (process), a system (machine or manufacture), and a non-transitory medium (manufacture), respectively. As such, the claims are directed to statutory categories of invention.
If the claim recites a statutory category of invention, the claim requires further analysis in Step 2A. Step 2A of the Subject Matter Eligibility Test is a two-prong inquiry. In Prong One, examiners evaluate whether the claim recites a judicial exception.
Claim 1 recites abstract limitations, including: “analyzing a pressure loss across the at least one surface valve” and “classifying the well as operable or inoperable based on the pressure loss across the at least one surface valve and the functionality of the surface controlled sub-surface safety valve”.
These limitations, as drafted, are a process that, under its broadest reasonable interpretation, cover performance of the limitations in the mind, or by a human using pen and paper, and therefore recite mental processes. Claims recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. More specifically, as there is no recitation of a processing structure (i.e., processor, etc.) nothing in the claim element precludes the aforementioned steps from practically being performed in the human mind, or by a human using pen and paper. The mere recitation of a generic computer does not take the claim out of the mental process grouping. Thus, the claim recites an abstract idea.
If the claim recites a judicial exception in step 2A Prong One, the claim requires further analysis in step 2A Prong Two. In step 2A Prong Two, examiners evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
The claim recites the additional elements of: a surface valve; a surface controlled sub-surface safety valve; closing the at least one surface valve; applying a predetermined pressure to the at least one surface valve; testing the surface controlled sub-surface safety valve for functionality wherein the functionality comprises opening and closing the surface controlled sub-surface safety valve using a control panel; and in response to classifying the well as inoperable performing a well control action comprising shutting in the well.
The functions of the control panel are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component.
Closing at least one surface valve and applying a predetermined pressure to the at least one surface valve amounts to insignificant extra-solution activity (i.e., activity incidental to the primary process that is merely a nominal or tangential addition to the claim, see MPEP 2106.05(g)).
Testing (i.e., opening and closing) the surface controlled subsurface safety valve amounts to insignificant extra-solution activity (i.e., activity incidental to the primary process that is merely a nominal or tangential addition to the claim, see MPEP 2106.05(g)).
The limitation of “in response to classifying the well as inoperable performing a well control action comprising shutting in the well” is a contingent limitation in a method claim. Therefore, the limitation only needs to be analyzed if the condition must occur. In the case of the current claim language the limitation is not required if the well is classified as operable. In order for a contingent limitation to overcome a 101 rejection, all possible contingencies must overcome the 101. Since the limitation is not required, no further analysis is performed.
Accordingly, in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
If the additional elements do not integrate the exception into a practical application in step 2A Prong Two, then the claim is directed to the recited judicial exception, and requires further analysis under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).
As discussed above, the additional element of the control panel amounts to mere instructions to apply the exception (using additional element of the control panel). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
As discussed above, the recited step of closing at least one surface valve and applying a predetermined pressure to the at least one surface valve is considered insignificant extra-solution activity as Flanders (US 2011/0061861 see ¶ [0006]) and Coronado (US 5,265,679 see Col. 1, lines 52-66) both disclose closing a surface valve (i.e., SSV) and applying a predetermined pressure (i.e., wellhead pressure) is well-known, routine, and conventional in the art.
As discussed above, the recited step of testing (i.e., opening and closing) a surface controlled subsurface safety valve for functionality wherein the functionality comprises opening and closing the surface controlled sub-surface safety valve is considered insignificant extra-solution activity as Douglas (US 2003/0230190 see ¶ [0005]) discloses opening and closing a subsurface valve from the surface is well-known, routine, and conventional in the art.
Claims 2 and 22 further recite:
“the well is operable when the pressure loss is equal to zero across every surface valve, and when the well is under full functionality of the surface controlled sub-surface safety valve”; and
“visually inspecting the at least one surface valve to determine a state of the at least one surface valve” which merely narrows the previously recited abstract idea limitations.
With respect to claim 21, “the well is a gas lift well comprising a gas lift mandrel” amounts to merely indicating a field of use or technological environment in which to apply a judicial exception and cannot integrate the judicial exception into a practical application (see MPEP 2106.05(h)).
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.
Claims 1-2 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Al Muailu (SPE 164425 – “Systemic Approach to Integrate a Comprehensive Surface and Subsurface Well Integrity Management System) in view of Franklin (US 2015/0128693).
With respect to claim 1: Al Muailu discloses a method for well integrity management on a well having at least one surface valve (valve discloses on pg. 3 section “Wellhead Integrity Test”) and a surface controlled sub-surface safety valve (SSSV disclosed on pg. 3 section “ESD System Surface and Subsurface Safety Valve Testing”), the method comprising:
closing the at least one surface valve (pg. 3 section “Wellhead Integrity Test”);
applying a predetermined pressure to the at least one surface valve (pg. 3 section “Wellhead Integrity Test”);
analyzing a pressure loss across the at least one surface valve (pg. 3 section “Wellhead Integrity Test”);
testing the surface controlled sub-surface safety valve for functionality wherein the functionality comprises opening and closing the surface controlled sub-surface safety valve using a controller (pg. 3 section “ESD System Surface and Subsurface Safety Valve Testing”; controller is the device that allows manual or automatic control of the system);
classifying the well as operable or inoperable based on the functionality of the surface controlled sub-surface safety valve (pg. 3 section “ESD System Surface and Subsurface Safety Valve Testing” discloses when there is a problem then the well is shut-in, i.e., inoperable, which means if it is not shut in the well is operable; pg. 2 para. 1 discusses shut-in the well when there are abnormal circumstances); and
in response to classifying the well as inoperable, performing a well control action comprising shutting in the well (pg. 3 section “ESD System Surface and Subsurface Safety Valve Testing” discloses when there is a problem then the well is shut-in, i.e., inoperable, which means if it is not shut in the well is operable; pg. 2 para. 1 discusses shut-in the well when there are abnormal circumstances).
Al Muailu does not disclose the controller is a control panel or that the classifying the well as operable or inoperable is also based on the pressure loss across the at least one surface valve.
Franklin teaches a controller is a control panel (15, 25, 35, 28; ¶ [0027-28]) and it is known to classify a well as operable or inoperable based on the pressure loss during a pressure test (¶ [0034]; the need for repairs classifies the well as inoperable while not failing the test classifies the well as operable).
It would be obvious to one having ordinary skill in the art before the effective filing date to substitute the control panel of Franklin for the controller of Al Muailu with a reasonable expectation of success since doing so would perform the same predictable result of controlling the system and having the additional equipment (i.e., display) would make it easier for operators to determine what was occurring during operations. It would be obvious to one having ordinary skill in the art before the effective filing date to combine the consideration of well status classification and repair based on a pressure test and the analysis of said pressure test with the invention of Al Muailu with a reasonable expectation of success since doing so would allow remediation to occur (Franklin ¶ [0034]).
With respect to claim 2: Al Muailu from the combination of Al Muailu and Franklin further teaches the well is operable when the pressure loss is equal to zero across the at least one surface valve (pg. 3 section “Wellhead Integrity Test” teaches the desired results of the test, i.e., normal operations for an operable well, are when pressure is holding, i.e., not changing), and when the well is under full functionality of the surface controlled sub-surface safety valve (pg. 3 section “ESD System Surface and Subsurface Safety Valve Testing” teaches if the valve is not opening/closing then repairs must be made).
With respect to claim 22: Al Muailu from the combination of Al Muailu and Franklin further teaches visually inspecting the at least one surface valve to determine a state of the at least one surface valve (pg. 3 section “Wellhead Integrity Test” teaches “internal inspection to the valve components”).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Al Muailu and Franklin as applied to claim 1 above, and further in view of Sorensen (US 2019/0389038).
With respect to claim 3: Al Muailu from the combination of Al Muailu and Franklin further teaches maintaining all valves in good condition. Franklin form the combination of Al Muailu and Franklin further teaches analyzing the pressure loss across the at least one surface valve further comprises detecting that the at least one surface valve comprises at least one failed equipment/surface valve (¶ [0034]) and repairing the equipment/valve (¶ [0034]). The combination of Al Muailu and Franklin does not teach the repair is injecting the at least one failed surface valve with sealant. Sorensen teaches it is known in the art to inject sealant into the equipment to repair a leak (¶ [0011]). It would be obvious to one having ordinary skill in the art before the effective filing date to substitute the sealant injection of Sorensen for the generic repair of Al Muailu and Franklin with a reasonable expectation of success since doing so would perform the predictable result of stopping the leak (Sorensen ¶ [0011]).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Al Muailu and Franklin as applied to claim 1 above, and further in view of Rae (US 2013/0220599).
With respect to claim 21: Al Muailu from the combination of Al Muailu and Franklin further teaches a well is monitored though its entire life for any issues (pg. 2 para. 1) The combination of Al Muailu does not explicitly teach the well is a gas lift well comprising a gas lift mandrel. Rae teaches it is known in the art that during the life of a well will be a gas lift well comprising a gas lift mandrel (30; ¶ [0020]; Abstract). It would be obvious to one having ordinary skill in the art before the effective filing date to combine the gas lift well of Rae with the invention of Al Muailu and Franklin with a reasonable expectation of success since Rae teaches needing gas lift during the life of a well (Rae ¶ [0020]) and Al Muailu teaches monitoring operations during the entire life of a well (Al Muailu pg. 2 para. 1). Furthermore, combining the gas lift equipment would aid in increasing production from the well as gas lift equipment is designed to do.
Allowable Subject Matter
Claims 4-5 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.
The following is a statement of reasons for the indication of allowable subject matter: the art of record does not teach or make obvious the application of the predetermined pressure to the at least one failed valve occurs after the injection of sealant into said valve in combination with the other claim limitations.
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 KRISTYN A HALL whose telephone number is (571)272-8384. The examiner can normally be reached M-F 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at (571) 272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISTYN A HALL/Primary Examiner, Art Unit 3672
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