Office Action 2: Notice of Allowance (2025-10-28)

CLAIMS:
Amendments to the Claims:

This listing of claims will replace all prior versions, and listings, of claims in the application:

1\. (Currently Amended) A downhole swivel, comprising:
a housing;
an actuation tubular that extends out of the housing and is engageable with a downhole actuator;
an inner tubular positioned at least partially within the housing;
an engaging member coupled to or integral with an end of the inner tubular, such that the engaging member and the inner tubular are rotationally locked together; \[\[and\]\] a rotation coupler selectively positionable relative to the engaging member, the rotation coupler having a first position in which the rotation coupler transmits torque between the housing and the inner tubular, and a second position in which the rotation coupler permits relative rotation between the housing and the inner tubular; and
a biasing member configured to bias the rotation coupler axially away from the inner tubular and toward the first position.
2\. (Original) The downhole swivel of claim 1, wherein, when the rotation coupler is in the second position, the rotation coupler does not transmit substantial torque between the inner tubular and the housing, such that the inner tubular and the housing are free to rotate relative to one another.
3\. (Canceled)
4\. (Currently Amended) The downhole swivel of claim \[\[3\]\] wherein the actuation tubular is configured to move axially in response to a force applied by the downhole actuator, and wherein the rotation coupler moves between the first and second positions responsive to the axial movement of the actuation tubular.SVG {EMBED HERE} 0.140.117
5\. (Canceled)

6\. (Original) The downhole swivel of claim 1, wherein:
the engaging member comprises first splines;
the housing comprises second splines that are axially and circumferentially aligned with the first splines and spaced radially outward therefrom; and
the rotation coupler comprises fingers having heads that fit between adjacent pairs of the first splines and adjacent pairs of the second splines, when the rotation coupler is in the first position, such that torque is transmitted between the engaging member and the housing via the heads.
7\. (Original) The downhole swivel of claim 6, wherein the heads are axially separated from the first splines when the rotation coupler is in the second position.
8\. (Original) The downhole swivel of claim 1, wherein the housing comprises an upper housing that is configured to transmit torque to the inner tubular via the rotation coupler, and a lower housing connected to the upper housing.
9\. (Withdrawn - Original) The downhole swivel of claim 1, wherein the rotation coupler comprises dogs or lugs, wherein the rotation coupler moving from the second position to the first position causes the dogs or lugs to extend radially and transmit torque between the engaging member and the housing.

10\. (Currently Amended) The downhole swivel of claim 1, wherein the downhole actuator is coupled to the housing and configured to move the rotation coupler between the first and second positions.

11\. (Currently Amended) A method, comprising:connecting a downhole swivel and a downhole actuator;
deploying the downhole swivel and the downhole actuator into a well;
signaling the downhole actuator to actuate, wherein signaling the downhole actuator to actuate causes the downhole actuator to move a rotation coupler of the downhole swivel from a

first position to a second position, wherein the rotation coupler in the first position rotationally locks an inner tubular of the downhole swivel and a housing of the downhole swivel together, \[\[and\]\] wherein the rotation coupler in the second position permits the inner tubular to rotate relative to the housing, wherein the rotation coupler comprises fingers, the inner tubular comprises an engaging member having splines, and the housing comprises splines that are axially and circumferentially aligned with the splines of the engaging member, wherein the fingers are between the splines of the engaging member and the splines of the housing in when the rotation coupler is in the first position, and wherein the fingers are not between the splines of the engaging member when the rotation coupler is in the second position; andsignaling the downhole actuator to release the downhole swivel, wherein signaling the downhole actuator to release the swivel causes the downhole actuator to permit the rotation coupler to move to the first position.

12\. (Original) The method of claim 11, wherein the force applied to the actuation tubular is a linear, axially-directed force, and wherein the rotation coupler moves axially from the first position to the second position in response to the force applied to the actuation tubular.

13\. (Canceled)

14\. (Currently Amended) The method of claim \[\[13\]\] 11, wherein the swivel comprises a biasing member that biases the rotation coupler linearly toward the first position.

15\. (Original) The method of claim 11, wherein signaling the downhole actuator to actuate comprises sending a hydraulic signal, an electric signal, a mechanical signal, or a combination thereof.

16\. (Withdrawn - Original) The method of claim 11, wherein the rotation coupler comprises dogs or lugs that radially extend in response to the force applied to the actuation tubular.

17\. (Currently Amended) A downhole swivel, comprising:a housing having first splines;
an inner tubular positioned at least partially within the housing;
an engaging member rotationally locked with the inner tubular, wherein the engaging member comprises second splines;
a rotation coupler selectively positionable relative to the engaging member, the rotation coupler having a first position in which the rotation coupler transmits torque between the housing and the engaging member, and a second position in which the rotation coupler permits relative rotation between the housing and the engaging member, wherein the rotation coupler comprises fingers that fit between the first and second splines and transmit torque between the housing and the engaging member; and
a downhole actuator configured to move the rotation coupler between the first and second positions.

18\. (Original) The downhole swivel of claim 17, further comprising an actuation tubular that extends out of the housing, wherein the actuation tubular is engageable with the downhole actuator and the rotation coupler.

19\. (Original) The downhole swivel of claim 17, wherein the downhole actuator is coupled to the housing and the rotation coupler.

20\. (Original) The downhole swivel of claim 17, further comprising a biasing member configured to bias the rotation coupler axially away from the inner tubular and toward the first position.

OFFICE ACTION:
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 .
Election/Restrictions
This application is in condition for allowance except for the presence of claims 9 and 16 directed to a species non-elected without traverse.  Accordingly, claims 9 and 16 been cancelled.
EXAMINER'S AMENDMENT
An examiner’s amendment to the record appears below. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312. To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee.
The application has been amended as follows:
In claim 11, line 12, “housing in when” has been replaced by --housing when--
Claims 9 and 16 have been cancelled
Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance: US 12152467 B2 lack at least the biasing member biasing the coupler away from the inner tubular in conjunction with the actuation tubular extending from the housing in conjunction with the remainder of the limitations of the independent claims. Similar failings apply to US 20180038202 A1. Also, no reference was found which disclosed fingers that fit between two sets of splines to couple/uncouple members of a swivel from rotation. A “downhole swivel” from the preamble is being incorporated into the claim since it breathes life into the claim since there is no way to know that the claims are drawn to a swivel without its inclusion and it is being given the weight of a term of art for a member which selectively allows rotation between two downhole components.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee.  Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion

APPLICANT REBUTTAL: REMARKSClaims 1-20 are currently pending in the application.Claims 1-4, 8, 10-12, 14, 15, and 17-20 are rejected.Claims 5-7 and 13 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.Claims 9 and 16 are withdrawn for being directed to a non-elected group.Claims 1, 4, 10, 11, 14, and 17 are amended. More particularly, independent claim 1 has been amended to include subject matter from allowable claim 5 and intervening claim 3.Independent 11 has been amended to include subject matter from allowable claim 13. Independent claim 17 has been amended to include subject matter from allowable claim 6.Claims 3, 5, and 13 are canceled.No new matter has been added.Accordingly, upon entry of this Response, claims 1, 2, 4, 6-12, and 14-20 are pending.Reconsideration of the claim in view of the foregoing amendments and following remarks is respectfully requested.Interview Summary Applicant thanks Examiner Wallace for taking the time to speak with Applicant's representatives on June 11, 2025. During the call, Examiner Wallace indicated that the amended independent claims appear to overcome the current rejections and should place the application in condition for allowance. If any issues remain, the Examiner is invited to call Applicant's representative to discuss a potential Examiner's Amendment.Rejections Under 35 U.S.C. § 102 Claims 1-4, 8, 10-12, 14, 15 and 17-19 are rejected under 35 U.S.C. § 102(a)(2) as being allegedly anticipated by McCullough  (U.S. Patent No. 12,152,467 B2, hereinafter, "McCullough").Without acquiescing to the rejection, Applicant has amended independent claim 1 to include subject matter from allowable claim 5 and intervening claim 3. Applicant has also amended independent claim 11 to include subject matter from allowable claim 13. Applicant thus submits that independent claims 1 and 11 should now be allowed. The dependent claims are allowable for at least the same reasons, as well as by reason of reciting additional features not disclosed in the cited art. Withdrawal of the rejection is respectfully requested.Claims 17-20 are rejected under 35 U.S.C. § 102 as being allegedly anticipated by Williamson (U.S. Publication No. 2018/0038202 Al, hereinafter, "Williamson").Without acquiescing to the rejection, Applicant has amended independent claim 17 to include subject matter from allowable claim 6. Applicant thus submits that independent claim 17 should now be allowed. The dependent claims are allowable for at least the same reasons, as well as by reason of reciting additional features not disclosed in the cited art. Withdrawal of the rejection is respectfully requested.Rejoinder Upon the allowance of independent claims 1 and 11, Applicant respectfully requests rejoinder of withdrawn claims 9 and 16.Conclusion In view of the foregoing amendments and remarks, Applicant respectfully requests reconsideration and reexamination of this application and the timely allowance of the pending claims. This is believed to be a complete and proper response to the pending Office Action.Please grant any extensions of time required to enter this response and charge any additional required fees to our deposit account 50-2961.Respectfully submitted, Date: June 11, 2025


CITED REFERENCE SUMMARIES: Ref US20180038202A1: Claims:
A rotary actuator that adjusts an inflow control device in a tubing string, the rotary actuator comprising: a stationary member; a drive member, wherein the drive member rotates relative to the stationary member, and the drive member adjusts the inflow control device in response to the rotation of the drive member; and a locator device that anchors the rotary actuator at a predetermined location in a tubing string.
a stationary member;
a drive member, wherein the drive member rotates relative to the stationary member, and the drive member adjusts the inflow control device in response to the rotation of the drive member; and
a locator device that anchors the rotary actuator at a predetermined location in a tubing string.
The actuator according to claim 1 , wherein the stationary member engages a first recess, wherein the engagement with the first recess substantially prevents relative rotation between the stationary member and the tubing string, wherein the drive member engages a second recess, and wherein the second recess rotates with the drive member when the drive member is rotated relative to the tubing string.
The actuator according to claim 2 , wherein the first recess is in an inner wall of at least one of the inflow control device and the tubing string, and wherein the second recess is in an inner wall of a closure member of the inflow control device.
The actuator according to claim 3 , wherein the rotation of the drive member rotates the closure member and wherein the inflow control device is selectively operated between closed, open, and partially open positions in response to the rotation of the closure member.
The actuator according to claim 1 , wherein the rotary actuator further comprises a motor, and wherein the motor rotates the drive member relative to the stationary member,
The actuator according to claim 1 , wherein the locator device includes a threaded sleeve and engagement members, and wherein rotation of the threaded sleeve selectively extends and retracts the engagement members.
The actuator according to claim 1 , wherein engagement members of the locator device engage a locator profile in an inner wall of at least one of the inflow control device and the tubing string when the engagement members are extended, and wherein the engagement between the engagement members and the locator profile anchor the rotary actuator at the predetermined location.
The actuator according to claim 1 , further comprising an intermediate sleeve and an inner sleeve, wherein the inner sleeve is positioned radially inward from the stationary member, and the intermediate sleeve is positioned radially between the stationary member and the inner sleeve, wherein a first magnetic device in the stationary member is magnetically coupled to a second magnetic device in the inner sleeve.
The actuator according to claim 8 , wherein the magnetic coupling prevents relative rotation between the stationary member and the inner sleeve, and wherein the intermediate sleeve rotates relative to the inner sleeve when the drive member rotates.
The actuator according to claim 1 , wherein the rotary actuator further comprises at least one sensor that detects an identifier of the inflow control device and transmits the detected identifier to a controller, wherein the controller compares the detected identifier to an expected identifier and validates that the rotary actuator is at the predetermined location when the detected identifier matches the expected identifier.
The actuator according to claim 1 , wherein a longitudinal flow passage extends through the tubing string, and wherein the rotary actuator further comprises at least one sensor that detects at least one characteristic of a fluid that flows through the longitudinal flow passage.
The actuator according to claim 13 , wherein the rotary actuator operates the inflow control device in response to the detected fluid characteristic.
The actuator according to claim 1 , wherein the rotary actuator further comprises at least one sensor that detects the azimuthal orientation of the stationary member.
A method of adjusting an inflow control device in a tubing string with a rotary actuator, the method comprising: conveying the rotary actuator to a predetermined location in the tubing string, wherein the rotary actuator comprises: (A) a stationary member; (B) a drive member; and (C) a locator device with engagement members; engaging the engagement members with a profile in at least one of the inflow control device and the tubing string, wherein the engagement prevents further longitudinal movement of the rotary actuator into the tubing string; and rotating the drive member relative to the stationary member, thereby adjusting the inflow control device.
conveying the rotary actuator to a predetermined location in the tubing string, wherein the rotary actuator comprises: (A) a stationary member; (B) a drive member; and (C) a locator device with engagement members;
(A) a stationary member;
(B) a drive member; and
(C) a locator device with engagement members;
engaging the engagement members with a profile in at least one of the inflow control device and the tubing string, wherein the engagement prevents further longitudinal movement of the rotary actuator into the tubing string; and
rotating the drive member relative to the stationary member, thereby adjusting the inflow control device.
The method according to claim 16 , wherein the step of conveying further comprises conveying the rotary actuator near a predetermined location in the tubing string, radially outwardly extending the engagement members, and then moving the rotary actuator to the predetermined location.
The method according to claim 16 , further comprising engaging the stationary member with a first recess in at least one of the inflow control device and the tubing string, and preventing relative rotation between the stationary member and the tubing string when the stationary member abuts a wall of the first recess.
The method according to claim 18 , the method further comprising engaging the drive member with a second recess in a closure member of the inflow control device, thereby rotating the closure member when the drive member rotates relative to the tubing string.
The method according to claim 19 , wherein the step of rotating the closure member further comprises selectively operating the inflow control device between closed, open, and partially open positions in response to the rotation of the closure member.
The method according to claim 16 , wherein the rotary actuator further comprises at least one sensor, and wherein the method further comprises: detecting an identifier of the inflow control device with the sensor; and transmitting the detected identifier to a controller, wherein the controller compares the detected identifier to an expected identifier and validates that the rotary actuator is at the predetermined location when the detected identifier matches the expected identifier.
detecting an identifier of the inflow control device with the sensor; and
transmitting the detected identifier to a controller, wherein the controller compares the detected identifier to an expected identifier and validates that the rotary actuator is at the predetermined location when the detected identifier matches the expected identifier.
The method according to claim 16 , wherein the rotary actuator further comprises at least one sensor, and wherein the method further comprises: detecting at least one characteristic of a fluid that flows through a longitudinal flow passage of the tubing string; and adjusting the inflow control device in response to the detection.
detecting at least one characteristic of a fluid that flows through a longitudinal flow passage of the tubing string; and
adjusting the inflow control device in response to the detection.
Ref US12152467B2: Claims:
A system for a drill string, comprising: a clutch assembly comprising: a driveshaft having an axial bore extending therethrough, an external surface, and a first coupling element comprising a plurality of outer teeth extending radially outwards from the external surface; a shuttle having an uphole end, a downhole end, an internal surface defining a channel extending through the shuttle from the uphole end to the downhole end, the channel partially receiving the driveshaft therein, and a second coupling element comprising a plurality of inner teeth extending radially inwards from the internal surface into the channel; wherein the shuttle is axially movable between an engaged position in which the second coupling element engages the first coupling element and a disengaged position in which the second coupling element is disengaged from the first coupling element; wherein a portion of the driveshaft remains within the channel of the shuttle when the shuttle is in the disengaged position; a circulation assembly comprising a tubular housing having at least one first aperture extending radially therethrough and a circulation piston received within the housing, the circulation piston having at least one second aperture extending radially therethrough, wherein the circulation piston is axially movable within the housing between a closed position in which the at least one first and second apertures are axially offset and an open position in which the at least one first and second apertures are axially aligned; and an actuation mechanism operatively connected to the clutch assembly and the circulation assembly, the actuation mechanism selectively actuatable to move the shuttle between the engaged position and the disengaged position and the circulation piston between the closed position and the open position.
a clutch assembly comprising: a driveshaft having an axial bore extending therethrough, an external surface, and a first coupling element comprising a plurality of outer teeth extending radially outwards from the external surface; a shuttle having an uphole end, a downhole end, an internal surface defining a channel extending through the shuttle from the uphole end to the downhole end, the channel partially receiving the driveshaft therein, and a second coupling element comprising a plurality of inner teeth extending radially inwards from the internal surface into the channel; wherein the shuttle is axially movable between an engaged position in which the second coupling element engages the first coupling element and a disengaged position in which the second coupling element is disengaged from the first coupling element; wherein a portion of the driveshaft remains within the channel of the shuttle when the shuttle is in the disengaged position;
a driveshaft having an axial bore extending therethrough, an external surface, and a first coupling element comprising a plurality of outer teeth extending radially outwards from the external surface;
a shuttle having an uphole end, a downhole end, an internal surface defining a channel extending through the shuttle from the uphole end to the downhole end, the channel partially receiving the driveshaft therein, and a second coupling element comprising a plurality of inner teeth extending radially inwards from the internal surface into the channel;
wherein the shuttle is axially movable between an engaged position in which the second coupling element engages the first coupling element and a disengaged position in which the second coupling element is disengaged from the first coupling element;
wherein a portion of the driveshaft remains within the channel of the shuttle when the shuttle is in the disengaged position;
a circulation assembly comprising a tubular housing having at least one first aperture extending radially therethrough and a circulation piston received within the housing, the circulation piston having at least one second aperture extending radially therethrough, wherein the circulation piston is axially movable within the housing between a closed position in which the at least one first and second apertures are axially offset and an open position in which the at least one first and second apertures are axially aligned; and
an actuation mechanism operatively connected to the clutch assembly and the circulation assembly, the actuation mechanism selectively actuatable to move the shuttle between the engaged position and the disengaged position and the circulation piston between the closed position and the open position.
The system of claim 1 , wherein the shuttle is in the engaged position when the circulation piston is in the closed position and the shuttle is in the disengaged position when the circulation piston is in the open position.
The system of claim 1 , wherein the actuation mechanism comprises a pressure-activated actuator.
The system of claim 3 , wherein the pressure-activated actuator comprises: an activation piston operatively connected to the shuttle and the circulation piston and operable to axially move the shuttle and the circulation piston; a biasing device that exerts a biasing force on the activation piston to maintain the shuttle in the engaged position and the circulation piston in the closed position; a pressure differential mechanism that provides a pressure differential within the system downhole of the biasing device; and wherein, when the pressure differential reaches a pre-determined threshold, the activation piston overcomes the biasing force to axially move the shuttle to the disengaged position and the circulation piston to the open position.
an activation piston operatively connected to the shuttle and the circulation piston and operable to axially move the shuttle and the circulation piston;
a biasing device that exerts a biasing force on the activation piston to maintain the shuttle in the engaged position and the circulation piston in the closed position;
a pressure differential mechanism that provides a pressure differential within the system downhole of the biasing device; and
wherein, when the pressure differential reaches a pre-determined threshold, the activation piston overcomes the biasing force to axially move the shuttle to the disengaged position and the circulation piston to the open position.
The system of claim 4 , wherein the pressure differential mechanism comprises a flow restrictor.
The system of claim 4 , wherein the biasing device comprises a spring.
The system of claim 1 , wherein the actuation mechanism comprises: a mandrel coupled between the shuttle and the circulation piston and axially movable therewith; a biasing device that exerts a biasing force on the mandrel to maintain the shuttle in the engaged position and the circulation piston in the closed position; a valve seat to receive a ball thereon; and wherein, when the ball is seated on the valve seat, the mandrel overcomes the biasing force to axially move the shuttle to the disengaged position and the circulation piston to the open position.
a mandrel coupled between the shuttle and the circulation piston and axially movable therewith;
a biasing device that exerts a biasing force on the mandrel to maintain the shuttle in the engaged position and the circulation piston in the closed position;
a valve seat to receive a ball thereon; and
wherein, when the ball is seated on the valve seat, the mandrel overcomes the biasing force to axially move the shuttle to the disengaged position and the circulation piston to the open position.
The system of claim 7 , wherein the valve seat is positioned downhole of the biasing device.
The system of claim 1 , wherein the actuation mechanism comprises at least one electric motor assembly operatively connected to at least one of the clutch assembly and the circulation assembly.
The system of claim 1 , wherein the actuation mechanism further comprises an indexing mechanism to maintain the clutch and circulation assemblies in a selected position.
The system of claim 10 , wherein the indexing mechanism comprises a barrel cam assembly.
A drill string comprising: an uphole portion rotatable from surface and a downhole portion comprising a rotary steerable system and a drill bit; a mud motor operable to drive rotation of the drill bit; and a clutch and circulation system, the system comprising: a clutch assembly comprising: a driveshaft coupled to the uphole portion of the drill string, the driveshaft having an axial bore extending therethrough, an external surface, and a first coupling element comprising a plurality of outer teeth extending radially outwards from the external surface; a shuttle coupled to the downhole portion of the drill string, the shuttle having an uphole end, a downhole end, an internal surface defining a channel extending through the shuttle from the uphole end to the downhole end, the channel partially receiving the driveshaft therein, and a second coupling element comprising a plurality of inner teeth extending radially inwards from the internal surface into the channel; wherein the shuttle is axially movable between an engaged position in which the second coupling element engages the first coupling element such that the downhole portion rotates with the uphole portion, and a disengaged position in which the second coupling element is disengaged from the first coupling element such that the uphole portion rotates independently of the downhole portion; wherein a portion of the driveshaft remains within the channel of the shuttle when the shuttle is in the disengaged position; a circulation assembly comprising a tubular housing having at least one first aperture extending radially therethrough and a circulation piston received within the housing, the circulation piston having at least one second aperture extending radially therethrough, wherein the circulation piston is axially movable within the housing between a closed position in which the at least one first and second apertures are axially offset and an open position in which the at least one first and second apertures are axially aligned; and an actuation mechanism operatively connected to the clutch assembly and the circulation assembly, the actuating mechanism selectively actuatable to move the shuttle between the engaged position and the disengaged position and the circulation piston between the closed position and the open position.
an uphole portion rotatable from surface and a downhole portion comprising a rotary steerable system and a drill bit;
a mud motor operable to drive rotation of the drill bit; and
a clutch and circulation system, the system comprising: a clutch assembly comprising: a driveshaft coupled to the uphole portion of the drill string, the driveshaft having an axial bore extending therethrough, an external surface, and a first coupling element comprising a plurality of outer teeth extending radially outwards from the external surface; a shuttle coupled to the downhole portion of the drill string, the shuttle having an uphole end, a downhole end, an internal surface defining a channel extending through the shuttle from the uphole end to the downhole end, the channel partially receiving the driveshaft therein, and a second coupling element comprising a plurality of inner teeth extending radially inwards from the internal surface into the channel; wherein the shuttle is axially movable between an engaged position in which the second coupling element engages the first coupling element such that the downhole portion rotates with the uphole portion, and a disengaged position in which the second coupling element is disengaged from the first coupling element such that the uphole portion rotates independently of the downhole portion; wherein a portion of the driveshaft remains within the channel of the shuttle when the shuttle is in the disengaged position; a circulation assembly comprising a tubular housing having at least one first aperture extending radially therethrough and a circulation piston received within the housing, the circulation piston having at least
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