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 Arguments
Applicant's arguments filed 07/16/2026 have been fully considered but they are not persuasive. Applicant’s argument that the check valve members 45/43 and 38/34 do not act as pistons and cannot be called pistons is not persuasive since the combination of 43 and 45 and 38 and 34 do form partially cylindrical shapes which fit within cylinders 44 and 41 and the cylinders formed by the housing in which 45 and 34 slides and the combination of 43/45 and 34/38 will force fluid flow to some degree when moving in both directions. Applicant’s argument that piston 43/45 will not force fluid from the first chamber to the second chamber is not fully persuasive since seating of 43 with seat 44 will force fluid to flow from the first chamber only to the second chamber by closing the passageway 42 but to promote compact prosecution US 3152644 A will be used to teach a relief check valve which will more clearly force fluid flow as claimed.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3, 5-10, 14, 15, 17-21, 24, and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zandmer (US 3086587 A), hereinafter Mer in light of Perkins (US 3152644 A).
With respect to claim 1, Mer discloses a method of deploying plugging devices into a subterranean well, the method comprising: conveying a bottom hole assembly (combination 20, 22, 23) into the well, the bottom hole assembly comprising a plug deployment tool (23); and actuating the plug deployment tool, thereby dispensing at least one of the plugging devices from an interior of the plug deployment tool into the well, in which the actuating comprises flowing fluid from a first chamber (space within upper portion of 25 including passages 40, 42, and annular area between 27 and upper portion of 25) to a second chamber (space below 38 and above bottom of 35) of the plug deployment tool (col. 4 l. 66 – col. 5. l. 19).
However, while piston 43/45 of Mer will force fluid to flow only from the first chamber to the second chamber and not through the bypass 42, for the sake of compact prosecution this will not be interpreted as the piston forcing fluid from the first to second chamber as claimed.
Nevertheless, Perkins discloses a relief valve 11 where the seating portion is a piston-like portion 11c which will force fluid to flow when closing.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have replaced the relief valve member 43 (or optionally 43 and 45) of Mer with the piston like protrusion 11c of relief valve member 11 (or with the entirety of member 11) of Perkins since this is the simple substitution of one prior art relief check valve member for another with predictable results and a reasonable expectation for success. In the combination, when valve member 43 of Mer closes, which will be a piston as taught by Perkins, it will force fluid from the first chamber to the second chamber since the piston will compress the fluid in the first chamber when closing and valve member 38 will still be open until the pressure fully drops below the closing pressure set by the spring 35 as discussed in Mer (col. 4 l. 66 – col. 5 l. 13).
With respect to claim 2, Mer discloses wherein actuating comprises opening a valve (combination 38, 39) that selectively permits and prevents flow of the fluid from the first chamber to the second chamber (col. 4 l. 66 – col. 5. l. 19).
With respect to claim 3, Mer discloses closing the valve, thereby preventing flow of the fluid from the first chamber to the second chamber and ceasing the dispensing (col. 4 l. 66 – col. 5. l. 19).
With respect to claim 5, Mer discloses wherein actuating the plug deployment tool comprises the first chamber being at a greater fluid pressure than the second chamber (col. 4 l. 66 – col. 5. l. 19).
With respect to claim 6, Mer discloses pressurizing the first chamber by exerting a spring force (46) against the first piston that forms a wall of the first chamber (shown in fig. 2, when 43 closes it will exert pressure on the first chamber and first chamber is pressurized by exerting spring force 46 against piston (43/45) since without this spring force pressure in the first chamber would be released past 43).
With respect to claim 7, Mer discloses wherein the opening the valve comprises displacing a second piston (combination 32, 34) of the plug deployment tool, thereby pushing the at least one of the plugging devices from the interior of the plug deployment tool (via 30, col. 4 l. 66 – col. 5. l. 19).
With respect to claim 8, Mer discloses further pressurizing the first chamber by exposing the first piston to hydrostatic pressure in the well (43 is also held closed against 44 by exposure to hydrostatic pressure thereby allowing chamber pressurization as discussed with respect to claim 6).
With respect to claims 9 and 10, Mer discloses wherein dispensing comprises dispensing less than all of the plugging devices from the plug dispensing tool and performing the actuating step multiple times in a single trip of the bottom hole assembly into the well (via 30, col. 4 l. 66 – col. 5. l. 19).
With respect to claim 14, Mer discloses a plug deployment tool for use with a subterranean well, the plug deployment tool comprising: a first chamber (first or second chamber detailed in the rejection of claim 1); a second chamber (the other of the first or second chamber detailed in the rejection of claim 1) isolated from the first chamber (discussed supra); multiple plugging devices (28) contained in an outer housing assembly (25); a first piston (combination 43/45, replaced partially or wholly by 11c or 11 of Perkins as discussed supra) configured to force fluid from the first to second chamber (discussed supra), and a second piston configured to displace at least one of the plugging devices out of the outer housing assembly in response to fluid communication between the first and second chambers (discussed supra).
With respect to claim 15, Mer discloses a valve (combination 38/39) that selectively permits and prevents fluid communication between the first and second chambers.
The limitations of claims 17, 18, 20, 21, 24, and 26 are substantially similar to those of claims 1, 3 6, 9, and 10, rejected supra.
With respect to claim 19, Mer discloses the second chamber (first chamber of the rejection of claim 1) is configured to expand in response to displacement of the piston (38 moving downwardly will expand the first chamber of the rejection of claim 1, being referred to as the second chamber in rejecting this claim).
Claim(s) 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mer and Perkins as applied to claim 1 above, and further in light of Funkhouser (US 20190162035 A1), hereinafter Funk.
With respect to claim 11, Mer discloses fracturing a formation of the well (col. 1 ll. 30-44) but fails to specifically discloses actuating the plug deployment tool is performed after the fracturing.
Nevertheless, Funk discloses actuating a ball sealer release tool after fracturing (pgph. 48).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have fractured the formation before releasing the ball sealers in Mer in order to create initial fractures and seal off those fractures receiving the most flow so other perforations can be fractured as taught by Funk (pgphs. 48, 49).
With respect to claims 12 and 13, Fuck also discloses locating the ball release device uphole or downhole of perforating guns (pgph. 219) which is also obviously applicable to Mer.
Allowable Subject Matter
Claims 4, 16, 22, 23, and 25 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.
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 KIPP CHARLES WALLACE whose telephone number is (571)270-1162. The examiner can normally be reached Monday - Friday 12:00 PM - 8:00 PM.
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/KIPP C WALLACE/Primary Examiner, Art Unit 3674 09/04/2026
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