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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 3-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20190226299 A1 to ANDERSEN in view of US 20100032151 A1 to Duphorne.
Regarding claim 1: ANDERSEN discloses 1. A method for creating an annular edge (top of 29, figure 2b) in a well tubular metal structure 30 on which a projection unit of an intervention downhole tool may land, comprising:
- lowering a downhole tool section comprising a tubular metal element 29 having a first outer diameter in a first condition into an existing well to a predetermined position, (Figure 2A)
- expanding the tubular metal element from the first condition to a second condition having a second outer diameter in which the tubular metal element abuts an inner face of the well tubular metal structure, creating the annular edge in the well (Figure 2b)
However Andersen fails to disclose: a landing nipple, - landing the projection unit on the annular edge, and - performing an operation by an operational tool at a predetermined distance from the annular edge.
Duphorne teaches a downhole device 30 in a wellbore to act as a landing surface, wherein “upper surface 50 can provide a landing surface for tubing, a work string, a downhole tool, or other downhole component so that further downhole operations can be performed above downhole device 30.”*[0036] see also figure 3, and [0038] [0040-0041])
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Andersen and use the top edge of his metal element 29 as a landing surface/ landing nipple and to perform the steps of landing the projection unit on the annular edge, and - performing an operation by an operational tool at a predetermined distance from the annular edge, in view of Duphorne, so as to perform an operation above the landing location [0036]. Furthermore, performing an additional operation as taught by Duphorne, such as setting a packer, allowing pressure build up, or any number of well-known operations would amount to no more than combining prior art elements according to known methods to yield predictable results.
Regarding claim 3: ANDERSEN discloses the claimed invention except 3. A method according to claim 1, further comprising activating the projection unit to move from a retracted position to a projected position before landing the projection unit on the annular edge.
Duphorne teaches that it is well-known that downhole tool can have at least one dawg that is hydraulically actuated to engage profiles.[0041]
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have further modified Anderson, and perform the step of further comprising activating the projection unit to move from a retracted position to a projected position before landing the projection unit on the annular edge, in view of Duphorn, as no more than Use of known technique to improve similar devices (methods, or products) in the same way.
Regarding claim 4: ANDERSEN discloses 4. A method according to claim 1, further comprising releasing the downhole tool section from the tubular metal element after expansion of the tubular metal element.(Claim 14 and [0063])
Regarding claim 5: ANDERSEN discloses the claimed invention except 5. A method according to claim 1, further comprising moving the projection unit to land on the annular edge after expansion of the tubular metal element.
However, since the metal patch of Anderson would not be located downhole until after expansion, It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified the method such that the moving of the projection unit to land on the annular edge was after expansion of the tubular metal element, so that the annual edge was located in the borehole prior to the operation tool being landed on it.
Regarding claim 5: ANDERSEN discloses 6. A method according to claim 1, wherein the downhole tool section comprises an expansion tool 6
Regarding claims 7 : ANDERSEN discloses the claimed inventions except 7. A method according to claim 1, wherein the tubular metal element has a first wall thickness of 0.5-50 mm, preferably 10-30 mm, in the first condition.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have a first wall thickness of 0.5-50 mm, preferably 10-30 mm, in the first condition , 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).
Regarding claims 8: ANDERSEN discloses that second wall thickness in the second condition is smaller than the first wall thickness (this is considered met, as the metal patch mush thin out as it radially expands under pressure from the expandable bladder- same as applicant’s) however does not disclose 0.5-50 mm.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have a second wall thickness of 0.5-50 mm in the second condition, 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).
Regarding claims 9: ANDERSEN discloses the claimed inventions except 9. A method according to claim 1, wherein the predetermined distance is 100-5000 mm, preferably 200-2000 mm.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the predetermined distance is 100-5000 mm, preferably 200-2000 mm., 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).
Regarding claims 10: ANDERSEN discloses 10. A method according to claim 1, further comprising retracting the downhole tool section from the well tubular metal structure. .(Claim 14 and [0063], pulling the inflation tool out of the well is interpreted as meeting this limitation)
Regarding claim 11: ANDERSEN discloses the claimed invention except 11. A method according to claim 1, further comprising introducing the intervention downhole tool after expansion of the tubular metal element.
However, since the metal patch of Anderson would not be located downhole until after expansion, it would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified the method such that the intervention downhole tool was introduced after expansion of the tubular metal element, in order for there to be a landing sight for the intervention downhole tool to land.
Regarding claim 12: ANDERSEN discloses the claimed invention except 12 A method according to claim 1, wherein the operational tool is a milling bit, a drilling bit, a manipulation tool, a tubing punching tool, a stroking tool, a perforation tool, a tubing cutting tool or a similar tool.
Duphorne teaches that it is well-known that downhole tool can be a running tool [0038]
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have further modified Anderson, and have an operation tool be a running tool, in view of Duphorn, as no more than combining prior art elements according to known methods to yield predictable results.
Claim(s) 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20190226299 A1 to ANDERSEN and US 20100032151 A1 to Duphorne, further in view of US 20140124199 A1 to Gorrara.
Regarding claim 13: Andersen discloses the claimed invention except 13. A method according to claim 1, wherein the tubular metal element has a first section with a first inner diameter and a second section with a second inner diameter, the first inner diameter being smaller than the second inner diameter, at least in the second condition.
Gorrara teaches a similar expandable metal sleeve 1 [0008] with multiple diameters in both an unexpanded state and an expanded state (figure 1 and 2)
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Andersen and use a sleeve in the style of Gorrara, so that the interior can act as a Polished Bore Receptacle (PBR) [0059].
Regarding claim 14: Andersen discloses the claimed invention except 14. A method according to claim 13, wherein the first section is expanded less than the second section.
Gorrara teaches a similar expandable metal sleeve 1 [0008] with multiple diameters in both an unexpanded state and an expanded state (figure 1 and 2) and where there are sections that expand less than other sections [0017], [0058]
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Andersen and use a sleeve in the style of Gorrara, so that the interior can act as a Polished Bore Receptacle (PBR) [0059].
Regarding claim 15: Andersen discloses the claimed invention except 15. A method according to claim 13, wherein the first section has a first section wall thickness that is larger than a second section wall thickness of the second section.
Gorrara teaches a similar expandable metal sleeve 1 [0008] with different wall thicknesses (Figures 3 and 4)
It would have been considered obvious to one of ordinary skill in the art, at the time the invention was made (pre-AIA ) or before the effective filing date (AIA ) to have modified Andersen and use a sleeve in the style of Gorrara, so that the interior can act as a Polished Bore Receptacle (PBR) [0059].
Allowable Subject Matter
Claim 2 is 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure..
US 20120312561 A1 teaches a tubular expandable to be located in a wellbore.
US 20160053591 A1 teaches a downhole expandable tubular.
US 20160138361 A1 teaches a downhole expandable metal sleeve
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN MACDONALD whose telephone number is (571)272-8763. The examiner can normally be reached M-F 9:00-5:30 EST.
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/STEVEN A MACDONALD/ Primary Examiner, Art Unit 3674
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