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 were received on December 3, 2025. These drawings are accepted.
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 3, 4, and 15 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.
Regarding claims 3 and 15: The use of pronouns, such as “its”, in a claim render that claim indefinite as it is unclear as to which element or step is being further limited. As such the meets and bounds of the claim cannot be determined. Structural limitations and steps must always be referred to by name.
Regarding claim 4: Claim 4 is considered indefinite due to its dependence on claim 3.
Claim Rejections - 35 USC § 103
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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, 2, 5-7, 9-11, 16, 17, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fripp et al. (US 2021/0189817, Fripp) in view of Sherman (US 2020/0080401).
Regarding claims 1 and 11: Fripp discloses a slip ring Fig 6, [0026] – the outer gripping surface of the expandable metal ring member for use with a sealing assembly, comprising:
an expandable metal ring 220, Fig 2 member having a width (w) Fig 2 – longitudinal length, a wall thickness (t) Fig 6 – distance between 220 and inner surface, an inside diameter (di) Fig 6 – inner surface of 220, and an outside diameter (do) Fig 6 – outer surface of 220, the expandable metal ring member comprising a metal configured to expand in response to hydrolysis [0014].
Fripp discloses all of the limitations of the above claim(s) except the slip rig including one or more cuts located in the wall thickness (t) and spaced around a circumference of the expandable metal ring member, the one or more cuts configured to allow the expandable metal ring member to move between a radially reduced state and a radially enlarged state.
Sherman discloses ‘In situ Expandable Tubulars’ reciting “Expandable tube members that are fabricated from … structural plastic includes phase change materials that undergo a permanent expansion upon exposure to wellbore conditions” – abstract; and “the tube member can optionally include one or more pores, slots or perforations. When the tube member includes one or more pores, slots or perforations, such structures can be designed to cause the one or more pores, slots or perforations to maintain their shape or be reduced in size or increased in size when the tube member is expanded” [0058], Fig 9.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed to include the slots/cutouts as taught by Sherman in the system of Fripp, with a reasonable expectation of success, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the combination would result in controlling fluid loss, patch wells, stabilize a formation in a wellbore, enhance flow, provide sand screening and/or repair damaged pipes, casings or liners.
Regarding claim 2: Wherein the one or more cuts are a plurality of axial cuts located in the wall thickness (t) Fig 9 of Sherman.
Regarding claims 5 and 16: Wherein the expandable metal ring member is a beam spring structure 200, Fig 2 of Fripp – as defined by the instant application in [0029], [0046], and [0048].
Regarding claims 6 and 16: Wherein one or more of the one or more cuts extend entirely through the width (w) Fig 9 of Sherman.
Regarding claims 7 and 17: Wherein the expandable metal ring member is a biflex structure [0112] of Sherman, and further wherein one or more of the one or more cuts are geometric shapes Fig 8, 9 of Sherman.
Regarding claims 9 and 19: Fripp, as modified, discloses all of the limitations of the above claim(s) except the width (w) being no greater than 2.75 meters.
However, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Fripp so that the width was no greater than 2.75 meters, since 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).
Further, those of ordinary skill in the art would appreciate that a modification such as a mere change in size of a component would be obvious. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). See also, MPEP § 2144.04 which states: In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 537 F.2d at 1053, 189 USPQ at 148.). In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Regarding claim 10: Fripp, as modified, discloses all of the limitations of the above claim(s) except the width (w) ranging from .3 meters to 1.2 meters.
However, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Fripp so that the width ranged from .3 meters to 1.2 meters, since 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).
Further, those of ordinary skill in the art would appreciate that a modification such as a mere change in size of a component would be obvious. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). See also, MPEP § 2144.04 which states: In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 537 F.2d at 1053, 189 USPQ at 148.). In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Regarding claim 11: Fripp, as modified, discloses a sealing tool 180 of Fripp, comprising:
a mandrel 210 of Fripp; and
the above described tool.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-4, 8, 11, 15, and 20 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims1, 2, 5, 13, and 14 of prior U.S. Patent No. 12,509,958. This is a statutory double patenting rejection.
Claims 1-3 of the instant application correspond to claim 1of U.S. Patent No. 12,509,958.
Claim 4 of the instant application corresponds to claim 2 of U.S. Patent No. 12,509,958.
Claims 1 and 8 of the instant application correspond to claim 14 of U.S. Patent No. 12,509,958.
Claims 11 and 15 of the instant application correspond to claim 5 of U.S. Patent No. 12,509,958.
Claim 20 of the instant application corresponds to claim 13 of U.S. Patent No. 12,509,958.
Allowable Subject Matter
Claims 12-14 and 18 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.
While the prior art of record fails to disclose or suggest the subject matter of claims 3, 4, 8, 15, and 20, these claims are not considered allowable due the statutory double patenting rejection thereof.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 12: The prior art of record fails to disclose or suggest a sealing assembly that includes an expandable metal ring with one or more cuts and one or more sealing elements positioned about the mandrel, the one or more sealing elements operable to move between a radially relaxed state and a radially expanded state as recited in the claimed combination.
Regarding claim 13: Claim 13 is considered allowable due to its dependence on claim 12.
Regarding claim 14: The prior art of record fails to disclose or suggest a sealing assembly that includes an expandable metal ring with one or more cuts and one or more wedges positioned about the mandrel, the one or more wedges operable to move the expandable metal ring member between the radially reduced state and a radially enlarged state as recited in the claimed combination.
Regarding claim 18: The prior art of record fails to disclose or suggest a sealing assembly that includes an expandable metal ring with one or more cuts, wherein the expandable metal ring member is a spiral split ring, and further wherein the one or more cuts are a plurality of circumferential cuts as recited in the claimed combination.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER H GAY whose telephone number is (571)272-7029. The examiner can normally be reached Monday through Thursday, 6-3:30 and every other Friday 6-11.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Y Coupe can be reached at (571)270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER H GAY/Primary Examiner, Art Unit 3619
JHG
7/21/2026
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