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 .
Drawings
The drawings are objected to because they contain improper shading/cross-hatching and/or are missing proper shading/cross-hatching. Specific cross hatching depicts specific materials. See MPEP 608.02 IX for cross hatching / shading patterns.
The drawings are objected to because they are grey scale and of poor line quality. Every line, number, and letter must be durable, clean, black, sufficiently dense and dark, and uniformly thick and well-defined. See MPEP 608.02 and 37 CFR 1.84.
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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5, 11-12, 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-7, 15-17, 21 of copending Application No. 19/379632 in view of Drakeley (US 6176318).
Claims 5-7, 15-17, 21 of the copending application teach all of the elements of claims 1-5, 11-15, 21 of the present application but do not expressly state a second actuator. Drakeley teaches a downhole flow control valve comprising a sliding sleeve and a first actuator (Drakeley Abstract, 1:39-48, 5:20-27, 7:10-16) and a second actuator (Drakeley Abstract, 1:39-48, 5:20-27, 7:10-16) wherein the actuators can be electromechanical and/or hydraulic, the same type, or different types (Drakeley Abstract, 1:39-54, 5:20-27, 7:10-16).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date (AIA ) or at the time the invention was made (Pre-AIA ), to have modified the co-pending application to include a second actuator wherein the actuators are electromechanical and/or hydraulic, the same type, or different types in order to allow the operator to customize the actuators for the specific downhole operations (continuous actuation, speed of actuation, expected duty cycles, etc.) to be performed and the specific environmental characteristics (pressure, temperature, formation type, etc.) where the tool is to be used, additionally Drakeley teaches using a second actuator in the even the primary actuator system fails Drakeley Abstract, 1:39-54.
This is a provisional nonstatutory double patenting rejection.
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) 1-5, 11-15, 21 is/are, as best understood, rejected under 35 U.S.C. 103 as being unpatentable over El Mallawany (US 20180163521) in view of Drakeley (US 6176318).
Regarding claim 1, El Mallawany teaches: A flow control valve, comprising:
a housing (El Mallawany comprising 202) including a central bore (El Mallawany near A/206) extending axially there through, the central bore configured to convey subsurface fluids there through;
an opening (El Mallawany near 204) located in a sidewall of the housing;
a flow trim (El Mallawany comprising 308) coupled with the housing and covering (El Mallawany Fig. 3A) the opening, the flow trim including one or more flow trim ports (El Mallawany 310) configured to (El Mallawany Fig. 3A/3B) allow the subsurface fluids to pass between the housing and a subterranean formation surrounding the housing;
a sliding sleeve (El Mallawany 304) disposed in the central bore of the housing, the sliding sleeve configured to move between a first state covering (El Mallawany Fig. 3A) the opening and engaging a housing seal and second state (El Mallawany Fig. 3B) disengaging from the housing seal and exposing at least a portion of the one or more flow ports; an actuator (El Mallawany [0024]) coupled with the sliding sleeve
but does not expressly state: first and second actuators coupled with the sliding sleeve, the first and second actuators configured to move the sliding sleeve between the first state and the second state, and further wherein the first and second actuators are configured such that only one of the first or second actuator is operable move the sliding sleeve between the first state and the second state at a given moment in time.
Drakeley teaches a downhole flow control valve comprising a sliding sleeve and a first actuator (Drakeley Abstract, 1:39-48, 5:20-27, 7:10-16) and a second actuator (Drakeley Abstract, 1:39-48, 5:20-27, 7:10-16) the first and second actuators configured (Drakeley Abstract, 1:39-48, 5:20-27, 7:10-16) to move the sliding sleeve between the first state and the second state, and further wherein the first and second actuators are configured (Drakeley Abstract, 1:39-48, 5:20-27, 7:10-16) such that only one of the first or second actuator is operable move the sliding sleeve between the first state and the second state at a given moment in time, wherein the actuators can be electromechanical and/or hydraulic, the same type, or different types (Drakeley Abstract, 1:39-48, 5:20-27, 7:10-16).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date (AIA ) or at the time the invention was made (Pre-AIA ), to have modified El Mallawany to include a second actuator wherein the actuators are electromechanical and/or hydraulic, the same type, or different types in order to allow the operator to customize the actuators for the specific downhole operations (continuous actuation, speed of actuation, expected duty cycles, etc.) to be performed and the specific environmental characteristics (pressure, temperature, formation type, etc.) where the tool is to be used, additionally Drakeley teaches using a second actuator in the even the primary actuator system fails Drakeley Abstract, 1:39-54.
Note: Alternative citations based on different embodiments and/or different interpretations of the same embodiment have been provided to address the different variations and/or alteration of features in the dependent claims.
Regarding claim 2, the combination of El Mallawany and Drakeley teaches: The flow control valve as recited in claim 1, wherein the first actuator is a first electric actuator (El Mallawany [0024] / Drakeley 5:20-27, 7:10-16).
Regarding claim 3, the combination of El Mallawany and Drakeley teaches: The flow control valve as recited in claim 2, wherein the second actuator is a second electric actuator (El Mallawany [0024] / Drakeley 5:20-27, 7:10-16).
Regarding claim 4, the combination of El Mallawany and Drakeley teaches: The flow control valve as recited in claim 2, wherein the second actuator is a second hydraulic actuator (El Mallawany [0024] / Drakeley 5:20-27, 7:10-16).
Regarding claim 5, the combination of El Mallawany and Drakeley teaches: The flow control valve as recited in claim 4, wherein the second hydraulic actuator is a second non-electric actuator (El Mallawany [0024] / Drakeley 5:20-27, 7:10-16).
Regarding claim 11, El Mallawany teaches: A method, comprising: positioning a downhole tool within a wellbore extending through one or more subterranean formations, the downhole tool having a flow control valve (El Mallawany comprising 202), including:
a housing (El Mallawany comprising 202) including a central bore (El Mallawany near A/206) extending axially there through, the central bore configured to convey subsurface fluids there through;
an opening (El Mallawany near 204) located in a sidewall of the housing;
a flow trim (El Mallawany comprising 308) coupled with the housing and covering (El Mallawany Fig. 3A) the opening, the flow trim including one or more flow trim ports (El Mallawany 310) configured to (El Mallawany Fig. 3A/3B) allow the subsurface fluids to pass between the housing and a subterranean formation surrounding the housing;
a sliding sleeve (El Mallawany 304) disposed in the central bore of the housing, the sliding sleeve configured to move between a first state covering (El Mallawany Fig. 3A) the opening and engaging a housing seal and second state (El Mallawany Fig. 3B) disengaging from the housing seal and exposing at least a portion of the one or more flow ports; an actuator (El Mallawany [0024]) coupled with the sliding sleeve
but does not expressly state:
first and second actuators coupled with the sliding sleeve, the first and second actuators configured to move the sliding sleeve between the first state and the second state, and further wherein the first and second actuators are configured such that only one of the first or second actuator is operable move the sliding sleeve between the first state and the second state at a given moment in time; and actuating the sliding sleeve between the first state and the second state.
Drakeley teaches a downhole flow control valve comprising a sliding sleeve and a first actuator (Drakeley Abstract, 1:39-48, 5:20-27, 7:10-16) and a second actuator (Drakeley Abstract, 1:39-48, 5:20-27, 7:10-16) the first and second actuators configured (Drakeley Abstract, 1:39-48, 5:20-27, 7:10-16) to move the sliding sleeve between the first state and the second state, and further wherein the first and second actuators are configured (Drakeley Abstract, 1:39-48, 5:20-27, 7:10-16) such that only one of the first or second actuator is operable move the sliding sleeve between the first state and the second state at a given moment in time, wherein the actuators can be electromechanical and/or hydraulic, the same type, or different types (Drakeley Abstract, 1:39-48, 5:20-27, 7:10-16).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date (AIA ) or at the time the invention was made (Pre-AIA ), to have modified El Mallawany to include a second actuator wherein the actuators are electromechanical and/or hydraulic, the same type, or different types in order to allow the operator to customize the actuators for the specific downhole operations (continuous actuation, speed of actuation, expected duty cycles, etc.) to be performed and the specific environmental characteristics (pressure, temperature, formation type, etc.) where the tool is to be used, additionally Drakeley teaches using a second actuator in the even the primary actuator system fails Drakeley Abstract, 1:39-54.
Note: Alternative citations based on different embodiments and/or different interpretations of the same embodiment have been provided to address the different variations and/or alteration of features in the dependent claims.
Regarding claim 12, the combination of El Mallawany and Drakeley teaches: The method as recited in claim 11, wherein the first actuator is a first electric actuator (El Mallawany [0024] / Drakeley 5:20-27, 7:10-16).
Regarding claim 13, the combination of El Mallawany and Drakeley teaches: The method as recited in claim 12, wherein the second actuator is a second electric actuator (El Mallawany [0024] / Drakeley 5:20-27, 7:10-16).
Regarding claim 14, the combination of El Mallawany and Drakeley teaches: The method as recited in claim 12, wherein the second actuator is a second hydraulic actuator (El Mallawany [0024] / Drakeley 5:20-27, 7:10-16).
Regarding claim 15, the combination of El Mallawany and Drakeley teaches: The method as recited in claim 14, wherein the second hydraulic actuator is a second non-electric actuator (El Mallawany [0024] / Drakeley 5:20-27, 7:10-16).
Regarding claim 21, El Mallawany teaches: A well system, comprising:
a wellbore (El Mallawany Fig. 1) extending through one or more subterranean formations; and a downhole tool (El Mallawany comprising 116/200) located within the wellbore, the downhole tool having a flow control valve including:
a housing (El Mallawany comprising 202) including a central bore (El Mallawany near A/206) extending axially there through, the central bore configured to convey subsurface fluids there through;
an opening (El Mallawany near 204) located in a sidewall of the housing;
a flow trim (El Mallawany comprising 308) coupled with the housing and covering (El Mallawany Fig. 3A) the opening, the flow trim including one or more flow trim ports (El Mallawany 310) configured to (El Mallawany Fig. 3A/3B) allow the subsurface fluids to pass between the housing and a subterranean formation surrounding the housing;
a sliding sleeve (El Mallawany 304) disposed in the central bore of the housing, the sliding sleeve configured to move between a first state covering (El Mallawany Fig. 3A) the opening and engaging a housing seal and second state (El Mallawany Fig. 3B) disengaging from the housing seal and exposing at least a portion of the one or more flow ports; but does not expressly state:
first and second actuators coupled with the sliding sleeve, the first and second actuators configured to move the sliding sleeve between the first state and the second state, and further wherein the first and second actuators are configured such that only one of the first or second actuator is operable move the sliding sleeve between the first state and the second state at a given moment in time; and actuating the sliding sleeve between the first state and the second state.
Drakeley teaches a downhole flow control valve comprising a sliding sleeve and a first actuator (Drakeley Abstract, 1:39-48, 5:20-27, 7:10-16) and a second actuator (Drakeley Abstract, 1:39-48, 5:20-27, 7:10-16) the first and second actuators configured (Drakeley Abstract, 1:39-48, 5:20-27, 7:10-16) to move the sliding sleeve between the first state and the second state, and further wherein the first and second actuators are configured (Drakeley Abstract, 1:39-48, 5:20-27, 7:10-16) such that only one of the first or second actuator is operable move the sliding sleeve between the first state and the second state at a given moment in time, wherein the actuators can be electromechanical and/or hydraulic, the same type, or different types (Drakeley Abstract, 1:39-48, 5:20-27, 7:10-16).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date (AIA ) or at the time the invention was made (Pre-AIA ), to have modified El Mallawany to include a second actuator wherein the actuators are electromechanical and/or hydraulic, the same type, or different types in order to allow the operator to customize the actuators for the specific downhole operations (continuous actuation, speed of actuation, expected duty cycles, etc.) to be performed and the specific environmental characteristics (pressure, temperature, formation type, etc.) where the tool is to be used, additionally Drakeley teaches using a second actuator in the even the primary actuator system fails Drakeley Abstract, 1:39-54.
Claim(s) 6, 8, 10, 16, 18, 20 is/are, as best understood, rejected under 35 U.S.C. 103 as being unpatentable over the combination of El Mallawany and Drakeley in view of Carmody (US 6041857).
Regarding claim 6, the combination of El Mallawany and Drakeley teaches: The flow control valve as recited in claim 1, but does not expressly state: further including a decoupling mechanism positioned between the sliding sleeve and the first actuator or the sliding sleeve and the second actuator,
the decoupling mechanism configured to allow the sliding sleeve to move between the first state and the second state apart from an operation of an other of the second actuator or the first actuator.
Carmody teaches a flow control valve comprising a sliding sleeve (Carmody not labeled in Fig. 1-6; near 11; 4:13-40) disposed in the central bore of the housing, the sliding sleeve configured to move between a first state covering (Carmody Fig. 3) the opening and second state (Carmody Fig. 6) exposing at least a portion of the one or more flow ports;
further including a decoupling mechanism (Carmody 5:15-29; 11:30-60) positioned between the sliding sleeve and the first actuator or the sliding sleeve and the second actuator, the decoupling mechanism configured (Carmody 5:15-29; 11:30-60) to allow the sliding sleeve to move between the first state and the second state apart from an operation of an other of the second actuator or the first actuator.
wherein a radially inside surface of the sliding sleeve includes a latch profile (Carmody 44), the latch profile configured (Carmody 5:15-29; 11:30-60) to allow a backup sliding mechanism to engage with the sliding sleeve and move the sliding sleeve between the first state and the second state apart from an operation of the actuator.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date (AIA ) or at the time the invention was made (Pre-AIA ), to have modified the combination to include an inner latch profile in order to allow the operator to use a conventional shifting tool in the event of failure of the actuator power conveyance system (e.g. shorted or broken electrical line; cut or crushed hydraulic line; etc.) Carmody 5:15-29; 11:30-60.
Regarding claim 8, the combination of El Mallawany, Drakeley and Carmody teaches: The flow control valve as recited in claim 6, wherein the decoupling mechanism is a shear feature (Carmody 12/222),
the shear feature configured to allow the sliding sleeve to move between the first state and the second state apart from an operation of an other of the second actuator or the first actuator.
Regarding claim 10, the combination of El Mallawany and Drakeley teaches: The flow control valve as recited in claim 1, but does not expressly state: wherein a radially inside surface of the sliding sleeve includes a latch profile, the latch profile configured to allow a backup sliding mechanism to engage with the sliding sleeve and move the sliding sleeve between the first state and the second state apart from an operation of the first actuator or the second actuator.
Carmody teaches a flow control valve comprising a sliding sleeve (Carmody not labeled in Fig. 1-6; near 11; 4:13-40) disposed in the central bore of the housing, the sliding sleeve configured to move between a first state covering (Carmody Fig. 3) the opening and second state (Carmody Fig. 6) exposing at least a portion of the one or more flow ports; wherein a radially inside surface of the sliding sleeve includes a latch profile (Carmody 44), the latch profile configured (Carmody 5:15-29; 11:30-60) to allow a backup sliding mechanism to engage with the sliding sleeve and move the sliding sleeve between the first state and the second state apart from an operation of the actuator.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date (AIA ) or at the time the invention was made (Pre-AIA ), to have modified the combination to include an inner latch profile in order to allow the operator to use a conventional shifting tool in the event of failure of the actuator power conveyance system (e.g. shorted or broken electrical line; cut or crushed hydraulic line; etc.) Carmody 5:15-29; 11:30-60.
Regarding claim 16, the combination of El Mallawany and Drakeley teaches: The method as recited in claim 11, but does not expressly state: further including a decoupling mechanism positioned between the sliding sleeve and the first actuator or the sliding sleeve and the second actuator, the decoupling mechanism configured to allow the sliding sleeve to move between the first state and the second state apart from an operation of an other of the second actuator or the first actuator.
Carmody teaches a flow control valve comprising a sliding sleeve (Carmody not labeled in Fig. 1-6; near 11; 4:13-40) disposed in the central bore of the housing, the sliding sleeve configured to move between a first state covering (Carmody Fig. 3) the opening and second state (Carmody Fig. 6) exposing at least a portion of the one or more flow ports;
further including a decoupling mechanism (Carmody 5:15-29; 11:30-60) positioned between the sliding sleeve and the first actuator or the sliding sleeve and the second actuator, the decoupling mechanism configured (Carmody 5:15-29; 11:30-60) to allow the sliding sleeve to move between the first state and the second state apart from an operation of an other of the second actuator or the first actuator.
wherein a radially inside surface of the sliding sleeve includes a latch profile (Carmody 44), the latch profile configured (Carmody 5:15-29; 11:30-60) to allow a backup sliding mechanism to engage with the sliding sleeve and move the sliding sleeve between the first state and the second state apart from an operation of the actuator.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date (AIA ) or at the time the invention was made (Pre-AIA ), to have modified the combination to include an inner latch profile in order to allow the operator to use a conventional shifting tool in the event of failure of the actuator power conveyance system (e.g. shorted or broken electrical line; cut or crushed hydraulic line; etc.) Carmody 5:15-29; 11:30-60.
Regarding claim 18, the combination of El Mallawany, Drakeley and Carmody teaches: The method as recited in claim 16, wherein the decoupling mechanism is a shear feature, the shear feature (Carmody 12/222) configured to allow the sliding sleeve to move between the first state and the second state apart from an operation of an other of the second actuator or the first actuator.
Regarding claim 20, the combination of El Mallawany and Drakeley teaches: The method as recited in claim 11, but does not expressly state: wherein a radially inside surface of the sliding sleeve includes a latch profile, the latch profile configured to allow a backup sliding mechanism to engage with the sliding sleeve and move the sliding sleeve between the first state and the second state apart from an operation of the first actuator or the second actuator.
Carmody teaches a flow control valve comprising a sliding sleeve (Carmody not labeled in Fig. 1-6; near 11; 4:13-40) disposed in the central bore of the housing, the sliding sleeve configured to move between a first state covering (Carmody Fig. 3) the opening and second state (Carmody Fig. 6) exposing at least a portion of the one or more flow ports; wherein a radially inside surface of the sliding sleeve includes a latch profile (Carmody 44), the latch profile configured (Carmody 5:15-29; 11:30-60) to allow a backup sliding mechanism to engage with the sliding sleeve and move the sliding sleeve between the first state and the second state apart from an operation of the actuator.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date (AIA ) or at the time the invention was made (Pre-AIA ), to have modified the combination to include an inner latch profile in order to allow the operator to use a conventional shifting tool in the event of failure of the actuator power conveyance system (e.g. shorted or broken electrical line; cut or crushed hydraulic line; etc.) Carmody 5:15-29; 11:30-60.
Allowable Subject Matter
Claims 7, 9, 17, 19 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.
Prior Art
The following prior art made of record and not relied upon is considered pertinent to Applicant's disclosure.
Schnatzmeyer (US 5957208) teaches a flow control valve comprising a sliding sleeve and flow trim.
Candiani (US 20240368966) teaches a flow control valve formed from high erosion resistant material, the valve comprising a flow trim, housing, and sliding sleeve.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David Carroll whose telephone number is (571)272-4808. The examiner can normally be reached M-F 2:00-10:00 PM EDT.
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/David Carroll/ Primary Examiner, Art Unit 3674
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