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 .
Election/Restrictions
Claims 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/5/26.
Drawings
The drawings are objected to because:
Figures 1, 7, 9, 11, 13 -14 have poor line quality such that they would result in unsatisfactory reproduction characteristics. See 37 CFR 1.84(L). The figures use improper shading/gray scale and lack the black, durable lines required.
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 title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The title indicates that it is directed, in part, to a method, but no method claims are present.
Claim Objections
Claims 7, 11, and 20 are objected to because of the following informalities:
Claim 7 recites “the device configured […]”. There appears to be a verb missing such as “is configured”.
Claim 11 recites “casing, .” There is a typographical error.
Claim 20 indicates that it is cancelled and therefore should not have any claim text. 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 and 16 (the corresponding structure is discussed in e.g. Para 0014).
“a device […] configured to […]” and “an electric […] configured to” in claims 1 and 16 (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 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.
Claim 21 is 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.
Claim 21 recites “a pressure-responsive member” and “a releasable restraining member” with additional positional and/or functional recitations. There is not textual support for this limitation and the claim appears to attempt to recite a recitation which attempts to capture a more generic invention defined largely functionally than what was originally disclosed. Accordingly, the recitation constitutes new matter.
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 1-11, 16-19, and 21 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 “the first procedure activates the object”. As phrased, it appears that the claim attempts to require a particular methodological step, as opposed to a particular functional limitation/configuration. This is incompatible with the preamble of the invention which directs the claim to a downhole tool. The claim is understood as being a functional limitation.
Dependent claims 2-11 are rejected for depending from a rejected claim.
Claim 10 recites “wherein coarse fluid [….]” It is unclear if the claim intends to positively require the presence of “coarse fluid”. If so, it would appear to be incompatible with the preamble which directs the invention to a “downhole tool”. The particulars the fluid have been recited as interacting with the tool, as opposed to being a sub-element of the tool.
Claim 10 recites “the sharable device” and “the inner diameter”. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 is rejected for depending from a rejected claim.
Claim 16 recites the limitation "the wellbore". There is insufficient antecedent basis for this limitation in the claim.
Claim 17-19 are rejected for depending from a rejected claim.
Claim 17 recites the limitation "the object or valve element". There is insufficient antecedent basis for this limitation in the claim.
Claim 21 recites the limitation “the restraining position”, "the object or valve element", and “the seated position”. 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, 5-10, 16-19, and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Naedler (US 20140060813 A1).
Regarding claim 1, Naedler teaches a downhole tool comprising:
an object (Fig 4-5, object/ball 42) configured to selectively form a seal across a passageway within a tubular to isolate communication (Fig 4, passageway/bore sealed via 30) between a first area and a second area during a first procedure that flows fluid in a first direction (Fig 4, first/second area are areas above/below the ball 42, seen. First direction is downhole flow), the object maintains the seal across the passageway after being activated (Fig 4, seal occurs by contact between 42 and 30), and the object being configured to release the seal after activating the object by flowing fluid in a second direction (Fig 4-5, the ball is hypothetically able to be unseated when flow occurs uphole), wherein the first procedure activates the object (Fig 4, downward flow/first procedure encourages sealing seating against 30);
a control chamber (Fig 4-6, void in the wall of tubular) with a proximal end in communication with the first area (Fig 5, portion/end at reference numeral 58 in communication with first area) and a distal end in communication with the second area (Fig 5, corner portion around 24b in communication with second area);
a device positioned within the control chamber (Fig 4, device collectively 46/12; this is collectively a shaft), the device being configured to limit movement of the object when the device is intact and allow movement of the object when the device is broken (Fig 4, when intact, object 42’s movement is limited; when broken, as seen in Fig 5, 42 is moveable, see also Para 0026);
wherein the device includes a lower portion (Fig 4-5, lower face/portion at 24b including portions of 30), an upper portion (Fig 6, uppermost portion/face at 24a), the device being configured to break between the lower portion and the upper portion (Para 0017, a device portion 12 breaks at a space between the two portions as defined).
Regarding claim 2, Naedler teaches wherein the device is a unitary piece before shearing, and the device breaks into to at least two pieces after being sheared (Fig 4, the device as defined above are collectively are a “unit”, see Fig 5, Fig 3, multiple pieces seen.).
Regarding claim 3, Naedler teaches wherein the device is a shaft (Fig 4, elements 46/12 are collectively a shaft) being configured to allow the object to rotate before activating the object (Fig 4, object 42 is a separate ball and capable of rotating).
Regarding claim 5, Naedler teaches wherein the control chamber is radially offset from the passageway (Fig 4-5, chamber as defined is radially offset, as seen).
Regarding claim 6, Naedler teaches wherein the lower portion is configured to form the seal across the control chamber before and after the device is broken (Fig 4, before the breaking seen in Fig 5, there is a seal. And Fig 6, after the breaking of Fig 6, there is a seal via 30 and 42).
Regarding claim 7, Naedler teaches wherein the device configured to break based on a pressure differential between the first area and the second area (Fig 4-5, Para 0026, “fluid pressure exerted on the uphole side of the ball 42” which causes the breaking seen).
Regarding claim 8, Naedler teaches wherein the upper portion is configured to be positioned within control chamber when the device is intact (Fig 4, upper portion is in the control chamber, as defined in the parent claim), and the upper portion can freely move in second direction after the device is broken (Fig 5, after breaking, the upper portion as defined is able to move in second direction, as seen).
Regarding claim 9, Naedler teaches wherein an entirety of the object can freely move uphole after the device is broken (Fig 5, after breaking object 42 is capable of moving uphole with sufficient pressure in the uphole direction).
Regarding claim 10, Naedler teaches wherein coarse fluid is configured to flow through the inner diameter of the downhole tool to erode the downhole tool from the inside out after the sharable device is broken and the object moves uphole (Fig 4-5, as best understood, the object 42 is capable of being displaced uphole and the tool is capable of accommodating coarse fluid to erode the tool internally).
Regarding claim 16, Naedler teaches a downhole tool comprising:
an object (Fig 4-5, object/ball 42) configured to selectively form a seal across a passageway within a tubular to isolate communication (Fig 4, passageway/bore sealed via 30) between a first area and a second area during a first procedure in which fluid flows in a first direction (Fig 4, first/second area are areas above/below the ball 42, seen. First direction is downhole flow);
a control chamber (Fig 4-6, void in the wall of tubular) having a proximal end in communication with the first area (Fig 5, portion/end at reference numeral 58 in communication with first area) and a distal end in communication with the second area (Fig 5, corner portion around 24b in communication with second area); and
an element within the control chamber (Fig 4, collectively 46/12; this is collectively a shaft), the element being configured to restrict movement of the object when intact and to allow movement of the object element when the element is broken or activated (Fig 4, when intact, object 42’s movement is limited; when broken, as seen in Fig 5, 42 is moveable, see also Para 0026);
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 (Fig 3, Fig 5, the seat 12 which is within chamber is broken/spread apart resulting in the chamber being unsealed).
Regarding claim 17, Naedler teaches a communication conduit extending between the passageway and the distal end of the control chamber, the conduit configured to communicate pressure from below the object or valve element into the control chamber to apply a differential across the element (Fig 3, Fig 5, the seat 12 which is within chamber is broken/spread apart resulting in the chamber being unsealed and pressure able to be applied).
Regarding claim 18, Naedler teaches wherein the control chamber comprises a proximal portion with a larger diameter and a distal portion with a smaller diameter (Fig 4, chamber has a taper at 52 resulting in the proximal/uphole portion having a larger diameter than the distal/downhole end), the element being positioned to travel within the distal portion upon breaking (Fig 4-5, element portion 12 moves within the distal portion as seen).
Regarding claim 19, Naedler teaches wherein the element is configured to break at a first pressure differential (Fig 4, first pressure to result in breaking, see Para 0052) and thereafter maintain pressure integrity up to a higher second pressure to allow a fracturing operation (Fig 5-6, integrity otherwise maintained during operation seen; note, Abstract, device is a fracture plug so all uses are broadly and reasonably at least a part of a fracturing operation).
Regarding claim 21, Naedler teaches a downhole tool comprising:
a flow passage extending through a tubular (Fig 4, passageway/bore 18 in tubular, as seen);
an object (Fig 4-5, object/ball 42)configured to selectively form a seal across the flow passage to isolate fluid communication (Fig 4, passageway/bore sealed via 30) between a first region and a second region during a first operation in which fluid flows in a first direction (Fig 4, first/second area are areas above/below the ball 42, seen. First direction is downhole flow);
an axially adjacent control chamber (Fig 4-6, void in the wall of tubular) having a proximal end in fluid communication with the first region (Fig 5, portion/end at reference numeral 58 in communication with first area) and a distal end in fluid communication with the second region (Fig 5, corner portion around 24b in communication with second area);
a pressure-responsive member disposed within the control chamber (Fig 4, device collectively 46);
a releasable restraining member mechanically coupled to the pressure-
responsive member (Fig 4, member 12) such that axial or radial displacement of the pressure-responsive member in response to a differential pressure between the first region and the second region transitions the releasable restraining member from the restraining condition to a released condition (Fig 4-5, differential pressure responds, at least indirectly, to pressure applied to 42 which then moves 46 and causes the released state of Fig 5);
wherein, while the releasable restraining member is in the released condition,
the object or valve element remains in the seated position under the first operation (Fig 5, the ball 42 is able to remain in the seated/engaged position, as seen, in the first operation);
wherein, upon establishment of fluid flow in a second direction opposite the
first direction, the object is permitted to move from the seated position to an unseated
position to allow fluid communication in both directions (Fig 5, the ball 42 is completely displaced in an unseated position;.
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.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naedler (US 20140060813 A1), in view of Tolman (US 20180135381 A1).
Regarding claim 4, Naedler is silent on wherein the object is a flapper.
Tolman teaches the object is a flapper (please note the claim does not require the object be a flapper valve, the examiner has thus broadly interpreted a flapper as an object with flaps. Fig 9-10, ball 350 has flaps 370 ).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Naedler by having a ball with the secondary sealing/flaps as disclosed by Tolman because it would limit the potential from an inadvertent leak from occurring around the ball when seated.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Naedler (US 20140060813 A1), in view of Frazier (US 20150285026 A1).
Regarding claim 11, while Naedler teaches the downhole tool used in fracturing applications (Title, abstract), Naedler is silent on a frac plug with slips that are configured to engage casing.
Frazier teaches a frac plug with slips that are configured to engage casing (Fig 2, frac plug 10 has slips 18).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Naedler by having the frac plug contain slips as disclosed by Frazier because it would allow the frac plug to be securely anchored within the wellbore (Para 0057).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nichols (US 11486226 B2) teaches a sealing element comprising a deformable material and an inner bore forming at least a portion of the fluid communication pathway; a support ring disposed within the bore of the sealing element; a rotatable sealing component coupled to the support ring with a flapper valve.
Eriksen (US 20230243230 A1) teaches a plug assembly including: the glass assembly, arranged in a housing the glass assembly including a top surface and a bottom surface; a sealing bearing ring at least partially made of a non-elastomeric material the sealing bearing ring arranged on the top surface or the bottom surface of the plug; a seat arranged to support the plug.
Herrera (US 20210285555 A1) teaches a flapper check valve employed to prevent flow up the work string while allowing flow down the work string and into the well is disclosed. The check valve is activated by a compression spring, which then acts on a ball which will further act on a cam profile attached to the back of a flapper.
Allamon (US 6920930 B2) teaches a drop ball catcher apparatus for use with downhole tools in oil well drilling and installation operations. A drop ball catcher apparatus is used to receive and stow a drop ball ejected from a ball-actuated downhole tool.
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
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