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 .
Response to Arguments
Applicant’s filings on 8/25/26 have resolved the previously presented drawing objections, specification objection, 112(a) rejection, and 112(b) rejections. Please note that although the exact problematic claim language may be resolve, applicant has introduced new 112 issues, as discussed below.
Applicant’s amendments have necessitated the 112 rejection presented below for claim 1. Please see the discussion of allowable subject matter below for how the claim differentiates from the best available prior art.
Claim Objections
Claim 4 is objected to because of the following informalities:
Claim 4 presents claim text that is entirely lined through. It appears that it is intended to be cancelled but lacks the appropriate status indicator.
Claim 16 recites “the object element”. There is a typographical error and this should read “the object”.
Appropriate correction is required.
Claim Interpretation
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“an object configured” in claims 1, 17, and 23 (the corresponding structure is discussed in e.g. Para 0014).
“a frangible device […] configured to […]” and “an element[…] configured to” in claims 1, 17, and 23 (the corresponding structure if a shearing device 740, the depiction found in e.g. Fig 11, and a shaft in original claim 3).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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, 3, and 5-12 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.
Claim 1 recites and appears to require the active performance of “during a first procedure […]” and that “the object remains in the isolating state upon and after transition of the frangible device to the split state until fluid flow in the second direction transitions the object to the released state”. However, to the extent that applicant is intending to require these method steps be performed, this is incompatible with the preamble which directs the invention to an apparatus.
To the extent that applicant regards the particular recitation as a functional limitation, it is not clearly recited as such. And even if it were construed as a functional claim, it has been recited in a manner which is problematic. As expressed in MPEP 2173.05(g), “the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008) (noting that the Supreme Court explained that a vice of functional claiming occurs "when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty")”. Here, the recitation if construed functionally, merely recites “a description of a problem to be solved or a function or result achieved by the invention” (i.e. the operation during the first operation and subsequent operations).
Dependent claims 3, 5-12 are rejected for depending from a problematic claim or otherwise containing a similar problematic claim structure.
Claim 3 recites “the to physically restrict movement”. There appears to be a typographical error, but it is in such a way that the examiner is unable to determine the meaning of the claim, rendering it unclear.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 17-20 and 23 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Eriksen (US 20230243230 A1).
Regarding claim 17, Eriksen teaches a downhole tool comprising:
an object (Fig 6A, object 10) configured to selectively form a seal across a passageway within a tubular to isolate communication between a first area and a second area (Fig 6A, sealing within tubular 130 to prevent communication between first area/area above 10 and second area/area blow 10) during a first procedure in which fluid flows in a first direction (capable of operating during a first procedure/limited fluid flow);
a control chamber (Fig 6A, chamber which surrounds 10 and is the relatively recessed position of the tubular 130 accommodating the device, as mapped below) having a proximal end in communication with the first area (please note the embodiment in which 16 is located at the uphole location indicated at 14 is being relied upon, see Para 0137, Fig 6A, proximal end near 41 is in communication with the first area) and a distal end in communication with the second area (Fig 6A, end below 16, see also state of 6F which is permitted by the claim); and
an element within the control chamber (Fig 6A, device including 31 and 50), the element being configured to restrict movement of the object when intact (Fig 6A, intact state seen, object 10 held in place) and to allow movement of the object element when the element is broken or activated (Fig 6E, broken by virtue of the breaking off of 51);
wherein the control chamber is configured to transition from a sealed state to an unsealed state without requiring removal of the downhole tool from the wellbore (movement from Fig 6A to 6F occurs within the well; sealed state is Fig 6A to 6C, unsealed state is seen in Fig 6F), wherein the control chamber remains in the sealed state while the object maintains pressure integrity between the first area and the second area before and after the elements breaks when the element is broken or activate to move in the first direction within the control chamber (Fig 6A to 6C, 6C shows instance in which “ring 50 has sheared”, see Para 0149 and there is pressure integrity as 10 is intact).
Regarding claim 18, Eriksen teaches a communication conduit extending between the second area and the distal end of the control chamber (Fig 6A, conduit defined by 20), the communication conduit configured to communicate pressure from below the object into the control chamber to apply a differential across the element (as expressed in the parent claim, please note the embodiment in which 16 is located at the uphole location indicated at 14 is being relied upon, see Para 0137, Fig 6A, pressure is communicable on the downhole end/corner edge of 10).
Regarding claim 19, Eriksen teaches wherein the control chamber comprises a proximal portion with a larger diameter (Fig 6E, portion accommodating 52) and a distal portion with a smaller diameter (Fig 6E, portion with 51), the element being positioned to travel within the distal portion upon breaking (see movement from Fig 6A to 6E).
Regarding claim 20, Eriksen teaches wherein the element is configured to break at a first pressure differential and thereafter maintain pressure integrity up to a higher second pressure to allow a fracturing operation (Para 0149, the element shears only at Fig 6C and the pressure applied and it is able to survive higher pressure operations, as seen in the subsequent operation including hypothetical fracturing operations).
Regarding claim 23, Eriksen teaches a downhole tool comprising:
an object (Fig 6A, object 10) configured to selectively form a seal across a passageway within a tubular to isolate communication between a first area and a second area (Fig 6A, sealing within tubular 130 to prevent communication between first area/area above 10 and second area/area blow 10) during a first procedure in which fluid flows in a first direction (capable of operating during a first procedure/limited fluid flow), the object being configured to maintain the seal during the first procedure and to transition from a sealing position (Fig 6A, intact position seen) to a released position after the first procedure in response to fluid flowing in a second direction, wherein the first procedure actuates the object (Fig 6C-6D, released position is when 10 is moving downhole);
a control chamber (Fig 6A, chamber which surrounds 10 and is the relatively recessed position of the tubular 130 accommodating the device, as mapped below) having a proximal end in fluid communication with the first area (Fig 6A, uphole end above 16, such as end near 14. Note 14 is non-sealing, only 16 seals, see Para 0137) and a distal end in fluid communication with the second area (Fig 6A, end below 16, see also state of 6F which is permitted by the claim);
a device disposed within the control chamber (Fig 6A, device including 31 and 50), the device being configured, in an intact state, to limit movement of the object and (Fig 6A, intact state seen), after transitioning to a broken state, to permit movement of the object (Fig 6E, broken by virtue of the breaking off of 51);
wherein the device includes a lower portion (Fig 6E, lower portion 51; note the open ended transitional phrase “includes”) and an upper portion (Fig 6E, upper portion 52) and is configured to break between the lower portion and the upper portion during the first procedure (Fig 6E, breaking between 51/52 seen); and
wherein the object maintains pressure integrity across the passageway before, during, and after the device transitions to the broken state during the first procedure (Fig 6A-6D, note that 10 is intact and thus maintains integrity even after breaking in FIG 6D, at that moment).
Allowable Subject Matter
Claims 1, 3, and 5-12 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.
As discussed with respect to claim 23, Eriksen is the best available reference for the amended claims. The examiner notes that, as best understood, claim 1 appears to require the active performance of “during a first procedure […]” and that “the object remains in the isolating state upon and after transition of the frangible device to the split state until fluid flow in the second direction transitions the object to the released state”. These particular method steps are not taught by Eriksen.
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 THEODORE N YAO whose telephone number is (571)272-8745. The examiner can normally be reached typically 8am-4pm ET.
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.
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/THEODORE N YAO/ Primary Examiner, Art Unit 3676
