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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 19-21, 23-28, 30 and 31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fripp et al. (US 2023/0160276, hereafter Fripp).
With regards to claim 1 and 25, Fripp discloses a downhole tool and method for using it, comprising: material to be protected (220); a sacrificial conductive protection layer (230) positioned about the material to be protected, the sacrificial conductive protection layer configured to isolate the material to be protected from an undesirable material; and a positive electrode and a negative electrode (para 32, battery), the positive electrode coupled to the sacrificial conductive protection layer and the negative electrode coupled to a separate conductive feature, the sacrificial conductive protection layer configured to receive a voltage via the positive electrode from a trigger device to trigger a corrosion thereof based upon a triggering event (para 32).
With regards to claim 2 and 23, Fripp discloses a protective housing (housing would be the combination of 120, 240 and 2330), wherein the material to be protected (220) is located at least partially within a cavity of the protective housing.
With regards to claim 3, Fripp discloses (Fig. 2) the sacrificial conductive protection layer (330) seals against the protective housing around the cavity to form a sealed chamber around the material to be protected.
With regards to claim 19 and 30, Fripp discloses the material to be protected (220) is swellable material configured to swell by absorption after the triggering event (para 30).
With regards to claim 20 and 31, Fripp discloses the material (220) to be protected is a collection of solid particles configured to move to a different location within a wellbore after the triggering event (broadly read a swellable elastomer, para 30, is a collection of solid particles that shift to a different location radially after being triggered).
With regards to claim 21, Fripp discloses the collection of solid particles are located within a volume of fluid (the triggering mechanism is a fluid, thus after being triggered 220 would meet this limitation).
With regards to claim 24, Fripp discloses a protective housing (120, 230 and 240) in combination); a sacrificial conductive protection layer (230) sealing against the protective housing, the protective housing and sacrificial conductive protection layer forming a sealed chamber (where 220 is located); material to be protected (220) disposed within the sealed chamber; and a trigger device (battery, para 32) positioned proximate the sacrificial conductive protection layer, the trigger device including a positive electrode coupled to the sacrificial conductive protection layer and a negative electrode coupled to a separate downhole conductive layer, the trigger device configured to apply a voltage to the sacrificial conductive protection layer to trigger a corrosion thereof based upon a triggering event (para 32).
With regards to claim 26, Fripp discloses applying the voltage includes applying the voltage from a triggering device located proximate the sacrificial conductive protection layer (battery; para 32).
With regards to claim 27, Fripp discloses the triggering device applies the voltage based upon a triggering event (para 32).
With regards to claim 28, Fripp discloses (Fig. 2) the material to be protected is at least partially located within a cavity of the protective housing and the sacrificial conductive protection layer (230) seals against the protective housing around the cavity to form a sealed chamber around the material to be protected.
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.
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.
Claim(s) 16 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fripp in view of Holderman et al. (2022/0341280, hereafter Holderman).
With regards to claim 16, Fripp shows all the limitation of the present invention except, it fails to explicitly disclose the material to be protected (220) includes metal configured to expand in response to hydrolysis after the triggering event. Holderman discloses a swellable metal (210) for use downhole. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the swellable metal of Holderman with the apparatus of Fripp with a reasonable expectation of success. This would be done to provide alternative forms of the swellable packer which may be better for design or cost.
With regards to claim 17, Holderman discloses the metal configured to expand in response to hydrolysis includes one or more layers of metal configured to expand in response to hydrolysis (para 18, 19, Fig. 4).
Allowable Subject Matter
Claims 4-15, 18, 22, 29 and 32 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited prior art all show similar features to those of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL P STEPHENSON whose telephone number is (571)272-7035. The examiner can normally be reached M-F 10am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tara Schimpf can be reached at 571-270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL P STEPHENSON/Primary Examiner, Art Unit 3676
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