DETAILED ACTION
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 Amendment
The response of 17 June 2026 is acknowledged and has been entered. With the response, applicant suggests that independent claims 1 and 10 are not anticipated under 35 U.S.C. § 102(a)(1) by US 7,032,675 B2 (Steele et al.) because the overall length of the Steele et al. apparatus does not change in length. With respect to the rejection of claim 1, these remarks are persuasive and the rejection is withdrawn. New grounds of rejection are provided.
With respect to the rejection of claim 10, the remarks are not persuasive. The examiner notes that claim 10 only refers to an apparatus that expands and contracts, which is disclosed by Steele et al. Claim 10 does not require any change in the overall length of the apparatus. This rejection will be maintained.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 10-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 7,032,675 B2 (Steele et al.).
As concerns claim 10, Steele et al. discloses a 6:14-16), comprising a plurality of steam diverters (6:50-53) which comprise a selectively openable section 14 for controlling steam diversion during a steam injection operation and a plurality of expansion joints each comprising a telescoping mechanism 15 for expanding or contracting the apparatus in response to thermally induced expansion or contraction of the tubing string during the SAGD operation (see, 8:1-2, “The expansion chambers 16, 18, 20, and 22 may expand and contract in response to changes in temperature”).
As concerns claim 11, Steele et al. discloses the tubing string of claim 10 comprising two or more apparatuses, spaced apart along the horizontal portion, wherein each apparatus comprises an apparatus as claimed in claim 1 (6:50+, “In an embodiment, a plurality of TCV's may be disposed in a delivery conduit that conveys steam into a wellbore for heating oil residing in a subterranean formation penetrated by the wellbore” ).
Claim(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2010/0163250 A1 (Schultz et al.).
As concerns claim 1, Schultz et al. discloses an apparatus for installation into a tubing string 118, having a length, and comprising a selectively openable section 152 for controlling steam diversion during a SAGD operation and an integral expansion joint section 148 comprising a telescoping mechanism 202/204 for expanding or contracting the length of the apparatus in response to thermally induced expansion or contraction of the tubing string during the SAGD operation (0040 et seq.).
As concerns claim 2, Schultz et al. discloses the apparatus of claim 1 wherein the selectively openable section comprises a sliding sleeve section comprising a sliding sleeve mechanism (figure 2A and figure 2B).
Claim Rejections - 35 USC § 103
Claim(s) 3, 9 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schultz et al. as applied to claim 1 or Steele et al. as applied to claim 10, in view of US 2009/0050318 A1 (Kasevich).
As concerns claim 3, Schultz et al. discloses the apparatus of claim 2, but lacks to expressly disclose the apparatus comprising a slotted mandrel which forms part of the telescoping mechanism and which extends into the sliding sleeve section.
Kasevich discloses an apparatus for use in SAGD applications comprising a slotted mandrel which forms part of the telescoping mechanism and which extends into the sliding sleeve section (see, figure 5, figure 6 and figure 7, and 0058, describing the presence of slotted liners as "typical", note the sliding section of figure 7, although the apparatus in figure 6 and figure 7 has been retrofitted for RF energy instead of steam).
Nevertheless, one of ordinary skill in the art, prior to the effective filing, would have incorporated the slotted liner into the SAGD operation shown by Schultz et al. et al. with a reasonable expectation of success, as this facilitates the introduction of the steam into the formation.
As concerns claims 9 and 12, the combination lacks to expressly disclose the ranges for the length of the telescoping travel, nevertheless it would have been obvious to one having ordinary skill in the art prior to the effective filing, to contrive any number of desirable ranges for the claimed travel, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Refer to MPEP § 2144.05.
Claim(s) 4-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schultz et al., as modified, and further in view of US 2011/0048741 A1 (Durst).
As concerns claim 4, the combination discloses the apparatus of claim 3 wherein the telescoping mechanism comprises an outer housing which is concentrically disposed around the slotted mandrel (see Kasevich, figure 7) but lacks express disclosure of a plurality of shear pins which pin the outer housing to the slotted mandrel in an initial configuration.
Durst discloses a telescoping tool useful in steam injection applications that has a plurality of shear pins 260 which pin the outer housing to the slotted mandrel in an initial configuration. One of ordinary skill in the art, prior to the effective filing, would have considered it obvious to incorporate the shear pins into the apparatus with a reasonable expectation of success, as this facilitates maintaining the device in its contracted position while being lowered into the wellbore, as well as providing a controllable way to actuate the tool when desired or required.
As concerns claim 5, Durst discloses the apparatus of claim 4 further comprising a sleeve concentrically disposed around the slotted mandrel and defining at least one radial groove which receives the plurality of shear pins (figure 4).
As concerns claim 6, Durst discloses the apparatus of claim 5 wherein the sleeve defines at least two radial grooves, axially spaced along the sleeve, such that the apparatus can be configured in a contracted configuration or an expanded configuration (note the radially spaced grooves 216, figure 5).
As concerns claim 7, Durst discloses the apparatus of claim 6 wherein the sleeve defines at least three radial grooves, axially spaced along the sleeve, such that the apparatus can be configured in a contracted configuration or an expanded configuration or configuration intermediate the contracted and expanded configurations (Id.).
As concerns claim 8, Durst discloses the apparatus of claim 3, wherein the telescoping mechanism comprises an elongate locking key which prevents relative rotational movement of the outer housing and the slotted mandrel (splines, shown at 237, are considered to be equivalent structure here).
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 JAMES G. SAYRE whose telephone number is (571)270-7045. The examiner can normally be reached from 9:30-6:00 Monday-Friday.
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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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JAMES G. SAYRE
Primary Examiner
Art Unit 3672
/JAMES G SAYRE/Primary Examiner, Art Unit 3672
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