DETAILED ACTION
This communication is a first office action on the merits. All currently pending claims have been considered below. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 following features must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The "fixing device" that is "a grapple [or] an anchor" of claim 6 is not shown. Only a "spear" (element 48) and "overshot" (element 49) are shown. Applicant expressly recites "a grapple and an anchor" as alternatives to the "spear [and] overshot" in claim 6, thus implying a meaningful structural difference between them, which necessitates their being shown in appropriate detail. If Applicant regards there as being no difference between an "overshot" and a "grapple", for example, then the terms are redundant & indefinite because they imply a difference without there actually being one.
The features of the spear as recited in claim 7 are not shown, nor are they supported by the incorporation by reference to US 2017/0098279.
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.
Specification
The disclosure is objected to because of the following informalities:
In the paragraph bridging pages 20 & 21 of the as-filed specification, Applicant states "The FRM Spear is described in US 2017/0098279 A1, the disclosure of which is incorporated herein in its entirety by reference."
This reference is not directed to oilfield equipment, but rather is titled "Methods and apparatuses for risk assessment and insuring intermittent electrical systems" and is not directed to subject matter relevant to the present specification. As this appears to clearly be an error, appropriate correction is required.
Claim Objections
Claim 7 is objected to because of the following informalities: The phrase "the casing spear" in line 9 lacks proper antecedent basis and should read "the spear". Appropriate correction is required.
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.
Claim 7 is rejected under 35 U.S.C. 112(a) 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 at the time the application was filed, had possession of the claimed invention. This is a "written description" rejection per MPEP 608.01(p) and 2163.03, subsection V.
Claim 7 recites structural features of the "spear". However, none of these features are shown in the figures, and the document that is incorporated by reference to support these features (the paragraph bridging pages 20 & 21 of the as-filed specification, Applicant states "The FRM Spear is described in US 2017/0098279 A1, the disclosure of which is incorporated herein in its entirety by reference") does not teach the structure asserted by Applicant. This reference is not directed to oilfield equipment, but rather is titled "Methods and apparatuses for risk assessment and insuring intermittent electrical systems" and is not directed to subject matter relevant to the present specification.
Therefore, the examiner is respectfully obliged to hold claim 7 as not being supported by the specification as originally filed. While claim 7 is an original claim, the features therein require an incorporation by reference that simply does not teach the alleged structure.
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.
Claims 6 & 7 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 6 recites "wherein the fixing device [may be] an anchor". However parent claim 1 already recites "an open hole anchor". It is unclear how or if these redundantly names features differ from each other. Claim 7 depends from claim 6.
Claim 7 depends from claim 6, and recites "wherein the spear comprises…" However parent claim 6 does not expressly require the "spear", but rather recites "selected from a group comprising: a spear, an overshot, a grapple and an anchor". It is therefore unclear how or if claim 7 further limits parent claim 6 if the "overshot" (for example) is applied to claim 6. If it is Applicant's intent with claim 7 to narrow claim 6 to just the spear, claim 7 should be clearly worded to convey as such, such as "wherein the fixing device is the spear, the spear comprising…" or some grammatical variation thereof.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over US 8,365,826 (Braddick) in view of US 5,417,289 (Carisella).
Independent claim 1. Braddick discloses an apparatus to move an object (title, abstract) in an open hole section of a wellbore (Intended use; not a method claim. Also addressed in the modification in of Carisella below), comprising:
a string for running into the well ("a fishing tool includes an upper connector 12 for interconnection with a lower end of the workstring via threads 14" - col 2:24-26), the string being arranged to carry a fluid in a throughbore thereof ("…in response to pressurized fluid transmitted through the work string" - abstract) and including a downhole assembly (figs 1-5), the downhole assembly comprising:
a downhole pulling tool ("plurality of pistons (16, 28, 34) each movable in response to pressurized fluid transmitted through the work string… so that axial movement of the mandrel in response to the plurality of pistons dislodges the stuck tool or tubular" - abstract), the downhole pulling tool comprising an anchor ("anchor 52" - abstract & fig 3) for axially fixing the downhole assembly to a borehole wall ("A slip assembly as shown in FIG. 3 is a suitable mechanism serving as an anchor to axially position tool housing in the well." - col 3:19-21) of a section of the wellbore (ibid) and
an inner mandrel ("mandrel 35" & "mandrel extension 40") axially moveable relative to the anchor in response to the fluid in the throughbore (the fluid flow actuates the pistons, which in turn moves the mandrel relative to the anchor: "plurality of pistons (16, 28, 34) each movable in response to pressurized fluid transmitted through the work string… so that axial movement of the mandrel in response to the plurality of pistons dislodges the stuck tool or tubular" - abstract);
a fishing device connected to the inner mandrel for engaging the object ("a fishing device, such as a grapple, a spear, a taper tap or any other type of fishing device 82 that is operated to engage the fish and break the fish loose by application of tensile forces" - fig 5 & col 3:15-18);
wherein an increase in fluid pressure in the throughbore operates the downhole pulling tool to anchor the downhole assembly to the borehole wall ("A slip assembly provides an anchor for axially fixing the position of the tool housing in the well, and is movable to a set position in response to axial movement of the plurality of pistons" - col 1:57-60. The pistons are fluid pressure actuated: abstract as cited above. "…since the mandrel axially moves with the grapple or other fishing tool or device in response to the same force from the pistons. More particularly, the axial force applied to the plurality of slips [the anchor device] is reactive to the force exerted on the fishing device by the plurality of pistons, so as the force on the slips is increased, the engaging force of the fishing device is increased" - col 3:23-29. Claims 2 & 15), raise the inner mandrel relative to the open hole anchor ("plurality of pistons (16, 28, 34) each movable in response to pressurized fluid transmitted through the work string… so that axial movement of the mandrel in response to the plurality of pistons dislodges the stuck tool or tubular" - abstract) and pull the object (ibid).
Braddick does not disclose that the anchor has an elastomeric element. And while the use in an open hole wellbore is intended use in an apparatus claim, Braddick does not explicitly disclose the anchor is used in an open hole.
Carisella discloses an anchor device (abstract) with an elastomeric anchor element ("annular elastomeric packing cover 75" - col 4:33-36) that anchors to an open hole section of wellbore ("The well bore may be cased or uncased. If [the] well bore is uncased, the wellbore will have a wall" - col 2:26-24; "The wall of the well bore A may be cased or uncased" - col 5:58-59).
Therefore it would have been obvious to PHOSITA at the time of filing to use the elastomeric packer assembly taught by Carisella on the pulling tool assembly taught by Braddick. First, this increases the usability of the pulling tool assembly by facilitating use in both open holes and cased holes (Carisella, as cited above), not just cased holes taught by Braddick. This improves the industrial applicability of the tool. Second, it is also a releasable and resettable as a packer ("After actuation of the packer 10, the packer may be deflated and thereupon removed from the well bore A or moved to a new pre-determined position within the well bore A for subsequent actuation" - col 6:14-17), and will therefore be reusable if the initial stroke of Braddick does not fully free the stuck object (col 3:32-41).
2. The apparatus according to claim 1, wherein the open hole anchor is re-settable (Carisella: "After actuation of the packer 10, the packer may be deflated and thereupon removed from the well bore A or moved to a new pre-determined position within the well bore A for subsequent actuation" - col 6:14-17).
3. The apparatus according to claim 2, wherein the elastomeric anchor element comprises an inflatable packer element (Carisella: title, abstract).
4. The apparatus according to claim 2, wherein the anchor ("anchor 52" of Braddick in combination with "packer 10" of Carisella as modified in claim 1 above) further comprises at least one gripping element ("slips 52 [with] teeth53" - fig 3 of Braddick) to engage the borehole wall in the open hole section (capable of engaging an open hole section). The examiner notes that, while the present case shows "anchor 56" with "gripping elements 64" thereon (present figure 1), this is at an extremely high level of generality and is shown and discussed only schematically. There is no commensurate disclosure for the "gripping elements" in the more detailed description of "anchor 56" in present figure 3, and no apparent features which could incidentally be the "gripping elements" as they are shown in fig 1. This raises 112(a) "written description" questions regarding the present assembly as were similarly discussed at length in the parent application, (US serial number 17/800,252), specifically pages 7-10 of the non-final rejection mailed 1/29/2024. Without fully repeating that discussion here, the examiner respectfully notes that if it is Applicant's position that PHOSITA would be able to make and use an inflatable packer with additional gripping elements based off the present disclosure, the same is true of the prior art. Broadness and the skill of PHOSITA is a two way street. Applicant can not reasonably argue expansively with respect to the skill of PHOSITA to support their application under 112(a) and then minimize the skill of PHOSITA with respect to the prior art.
Put yet another way, Braddick teaches an anchor with gripping elements. Carisella teaches the use of an inflatable open hole packer. And there is motivation to combine these elements as discussed in the 103 modification of claim 1 above.
5. The apparatus according to claim 1, wherein the downhole pulling tool includes a housing (Braddic: "A tool housing is supported in a well on a work string, and the housing encloses a plurality of pistons (16, 28, 34)" - abstract; "A tool housing is supported in the well by a work string, which in turn supports a plurality of axially stacked pistons each movable in response to pressurized fluid transmitted downhole on the workstring" - col 1:53-57; "outer sleeve or housing 22" - figs 1-3 & col 2:34-44) supported in the well by the string ("…supported in the well by a work string" - col 1:53-57 as quoted above) and enclosing a plurality of axially stacked pistons ("…the housing encloses a plurality of pistons (16, 28, 34)" - abstract) generating a cumulative axial force ("… a plurality of axially stacked pistons each movable in response to pressurized fluid transmitted downhole on the workstring" - col 1:53-57. "a plurality of axially stacked pistons generating a cumulative axial force" - claim 1 of Braddick), each of the plurality of pistons axially movable in response to the fluid increase in the throughbore (ibid); and
wherein movement of the pistons also moves the inner mandrel ("… such that axial movement of the tool mandrel in response to the plurality of pistons dislodges the stuck tool or tubular" - col 1:63-65).
6. The apparatus according to claim 1, wherein the fixing device is selected from a group comprising: a spear (Braddick: "a fishing device, such as a grapple, a spear, a taper tap or any other type of fishing device 82" - col 3:15-17), an overshot, a grapple (ibid) and an anchor (ibid).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over US 8,365,826 (Braddick) & US 5,417,289 (Carisella), as applied above, in further view of US 2019/0048677 (Evertsen).
7. The combination discloses all the limitations of the parent claims but does not expressly disclose those of the present claim. However Eversten discloses a casing removal system (title) with a fishing spear ("tool 10" - fig 1 & ¶ 60, which is inserted into the casing to-be-removed 3s - ¶ 59) comprising:
a sliding assembly ("A sliding assembly 18…" - ¶ 62) mounted on the inner mandrel ("…is mounted on the mandrel 12" - ibid);
at least one gripper ("a plurality of grippers 22…" - ¶ 62) for gripping onto an inner wall of the object ("…for gripping onto an inner wall of the section of casing 3c, when inserted thereinside" - ibid), the gripper being coupled to the sliding assembly (ibid);
the sliding assembly being operable for moving the gripper between a first position in which the gripper is arranged to grip onto the inner wall of the object in at least one gripping region of the object ("The sliding assembly 18 is movable axially along the longitudinal axis 50 with respect to the mandrel 12. When the sliding assembly 18 is moved axially, the grippers 22 travel along the mandrel on slip surfaces 14 which are pitched at a shallow angle with respect to the longitudinal axis 50, so as to allow the grippers to move into different radial positions accordingly" - ¶ 62) and a second position in which the gripper is held away from the inner wall (ibid); and
a switcher ("a locking device 40 (a "switcher")" - ¶ 66) which, when advanced into the object, locks the sliding assembly to the inner mandrel with the gripper in the second position ("when placed in the locking position, the position of the sliding assembly 18 relative to the mandrel 12 is such that the grippers 22 are retracted and brough inwardly against the mandrel to obtain a radial position away from the inner wall of the casing section 3c" - ¶ 68); and
when the casing spear is pulled upward out of the stuck object and the switcher exits the end of the object, automatically allows engagement of the object by the gripper in the first position ("On pulling the switcher from the casing section, the grippers are automatically engaged and grip the upper end of the casing section so that it can be removed" - abstract).
Therefore it would have been obvious to PHOSITA at the time of filing to use the casing spear taught by Evertsen as the fishing tool taught by the combination. As discussed above, Braddick discloses the type of stuck element / "fish" generically, which suggests a broad applicability of the tool, rather than hyper specialization. Further, Braddick is clear that a variety of fishing tools may be used ("a fishing device, such as a grapple, a spear, a taper tap or any other type of fishing device 82 that is operated to engage the fish and break the fish loose by application of tensile forces" - fig 5 & col 3:15-18), thus clearly allowing for variation. Evertsen teaches the removal of casing using a very analogous tool assembly (abstract) as being known and suitable in the art. Casing is removed for a variety of reasons, including replacement of worn or damaged casing, re-completion of the wellbore, drilling laterals off the main wellbore, and abandonment. The spear taught by Evertsen overcomes difficulties associated with prior spears by not requiring rotation (¶s 9 & 10).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US 8,365,826 (Braddick) & US 5,417,289 (Carisella), as applied above, in further view of WO 2015/065196 (Evertsen 2). A copy of Evertsen 2 is included with this action.
8. The combination discloses all the limitations of the parent claims and further discloses that the downhole assembly includes a valve for blocking the flow of fluid through the throughbore (Braddick: "ball seat 66" and the ball which lands on it, form a check valve - fig 4 & ¶ bridging cols 2 & 3). This valve is used to control the application of fluid pressure to the other elements of the tool, witch the pistons of the pulling tool section being uphole of the valve (figs 2-4) and the fishing tool downhole of the valve (figs 4-5). Braddick does not disclose the valve being actuated by raising the pulling tool. Rather the valve is a ball seat check valve as discussed above.
However Evertsen 2 discloses a downhole anchoring ("fixing device 18" - page 1 & ¶ bridging cols 5 & 6), pulling ("hydraulic jack 14" & "telescopic element 16" - ibid), and fishing assembly ("fishing device with fixing device 22" - fig full ¶ of page 6), with a valve ("valve 24" - fig 1 & abstract) between the uphole pulling tool section and the downhole fishing device (as shown in fig 1). The valve controls the application of fluid pressure to the uphole hydraulic pulling assembly (first full ¶ of page 2 & page 6:18-27, as is similarly true for Braddick, as discussed above) and is expressly taught as being an alternative to ball drop type check valves (ibid). The valve is closed by raising the downhole pulling tool relative to the fishing device when the fishing device engages the object (page 6:18-27; page 9:24-31; claim 2; open in figs 2 / 5, closed in figs 4 / 6) and opened by setting pressure down on the downhole pulling tool ("main spring 56" will transition the valve open by collapsing the telescoping section and moving from open to closed: page 9:12-31. However if it is still attached to the fish, the biasing force of spring 56 will not be overcome. Therefore, "setting down" on the pulling tool - the opposite motion from which opens it, as cited above - will inherently collapse the telescoping joint and open the valve: transition from fig 4 to fig 2).
Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to use the valve assembly taught by Evertsen 2 in place of the ball drop check valve taught by Braddick. The tools are very analgous as discussed above and Evertsen 2 expressly teaches the valve as an alternative to a ball dro check valve, as well as Evertsen 2's "style" working better in non-vertical wellbores (page 2:3-20).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over US 8,365,826 (Braddick) & US 5,417,289 (Carisella), as applied above, in further view of GB 2556461 A (Forde), a copy of which was included with an IDS on 10/31/2025.
Claim 9. The combination discloses all the limitations of the parent claim but just discloses the stuck element or "fish" generically, and does not disclose that it is a cut section of tubular.
However Forde discloses a downhole pulling ("pull tool 42" - abstract) and fishing assembly ("spear tool 40" - abstract) with a cutting tool in the downhole assembly ("cutting device 36" - fig 2 and page 12:29-26) and using the cutting tool to cut a section of tubular to be removed (page 14:16-26).
Therefore it would have been obvious skill in the art at the time of filing to add the casing tool taught by Forde to the fishing assembly taught by the combination. As discussed above, Braddick discloses the type of stuck element / "fish" generically, which suggests a broad applicability of the tool. However the generic disclosure of Braddick forces the reader to look elsewhere for a more detailed discussion with regards to the fish in particular. Forde teaches an analogous system used to remove casing, with the added functionality of being able to perform the cutting and pulling operation in a single trip (page 14:25-26). Casing is removed for a variety of reasons, including replacement of worn or damaged casing, re-completion of the wellbore, drilling laterals off the main wellbore, and abandonment.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over US 8,365,826 (Braddick) & US 5,417,289 (Carisella), as applied above, in further view of US 2015/0300154 (Hallundbaek).
Claim 10. The combination discloses all the limitations of the parent claim but does not expressly disclose those of the present.
However Hallundbaek discloses the use of inflatable packers (17, figs 1, 2, & 10; ¶ 57) that seat against a wall of an open hole wellbore (figs 1 & 10), wherein the downhole assembly further comprises a jetting tool ("second end 21" - ¶ 73; "before sealing the second end 21 of the first production casing 3 [by "ball 29" which is used to control the application of fluid pressure to the inflatable packers - ¶ 58], a flushing fluid may be injected from the second end of the first production casing 3 to perform a clean-out by flushing most of the drilling mud outside the first production casing 3 along the outside of the first production casing 3 and along the outside of the drill pipe") to wash an inner wall of the open hole section (ibid).
Therefore it would have been obvious to PHOSITA at the time of filing to jet fluid from the downhole assembly taught by the combination to clean the open hole walls as taught by Hallundbaek. This cleans out the wellbore and aids in the creation of a tight seal against the wellbore wall (¶ 73).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blake Michener whose telephone number is (571)270-5736. The examiner can normally be reached Approximately 9:00am to 6:00pm CT.
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/BLAKE MICHENER/
Primary Examiner, Art Unit 3676