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 .
Status of Claims
The following is a Non-Final Office Action in response to the communication filed on 02/27/2026. Claims 1—5, 7—8, 11, 13—15, 17—22, and 26—28 are currently pending.
Information Disclosure Statement
Information Disclosure Statement received 09/06/2024 has been reviewed and considered.
Response to Arguments
Applicant's arguments filed 02/27/2026 regarding the deficiency of Fernandes with respect to the disclosure of a self-propelled downhole tool as set forth of page 1 of the Pre-Appeal Brief have been fully considered but are moot in view of the revised rejection necessitated by the invocation of 35 U.S.C. 112(f) with respect to the claim element “self-propelled downhole tool.” Please see the revised rejection as provided below.
Applicant's arguments filed 02/27/2026 regarding the deficiency of Fernandes with respect to the disclosure of a lubricator as set forth of page 2 of the Pre-Appeal Brief have been fully considered but are unpersuasive. Moreover, the arguments directed to the lubricator are substantially similar to those provided with the claim amendments dated 06/16/2025. While these arguments were previously addressed on pages 4—6 of the Non-Final Office Action dated 07/21/2025, a portion of the reasoning is resupplied below for the benefit of the Applicant. Additionally, certain sections of the argument have been revised in accordance with the modified claim interpretation and associated rejection.
The arguments at page 2 of the Pre-Appeal Brief assert, without supporting evidence, that mast 100 is not a lubricator as described in clam 1. The claims do not recite, nor does the Specification require (e.g., by provision of an explicit definition), an interpretation of lubricator which differs from that of mast 100 as presented in Fernandes. Whether Fernandes explicitly names mast 100 as a lubricator is of no consequence given that mast 100 functions to perform the tasks of a lubricator as required by the claims. For example,
-claim 1 recites a lubricator that is configured for fitting to a wellhead of the wellbore via a valve system providing communication between the lubricator and the wellbore (para. [0028] – “[t]he system of the invention is workable without withdrawing the well Christmas Tree, that is, it is possible to log with the well in operation (production or injection).”; para. [0086], “[a]t the lower end of the main body 15 of mast 100, a mechanical adaptor or connector 19 promotes the connection of said body 15 with the wellhead (not represented). The wellhead is a Christmas tree, a Production Head, a Casing Head or Blow out Preventer (BOP). Connection 19 is a flange, a thread or any other kind of mechanical connection compatible with the wellhead.” As such, mast 100 can be installed directly on top of a Christmas tree which is a flow control valve, thereby meeting the requirements of the limitation “a lubricator configured for fitting to a wellhead of the wellbore via a valve system.”);
-claim 1 recites a lubricator that is configured to house the self-propelled downhole tool when the self-propelled downhole tool is in a stowed position (para. [0068], “the tubular structure or body 15 serving as housing and launching pipe for an autonomous unit RAU carrying a logging or wellbore working tool.”);
-claim 1 recites a lubricator that comprises an input port configured to receive data from a remote unit, wherein in the stowed position the input port is physically engaged with the self-propelled downhole tool in a manner that provides electrical communication between the input port and the self-propelled downhole tool (As addressed in the modified rejection provided below, Fernandes discloses both wireless connections and physical connections (e.g., USB) capable of transferring both power and data.);
-claim 1 recites a lubricator that comprises second docking features that comprise one or more detent mechanisms (the interpretation of the claimed detent mechanisms has been modified as provided below. Specifically, further consideration of the claim element “detent mechanism” has resulted in an invocation of 35 U.S.C. 112(f). The subsequent analysis performed with respect to this invocation has resulted in the rejection of all claims under 35 U.S.C. 112(a) and 35 U.S.C. 112(b). For the purpose of the rejection, a USB would still fulfill the requisite limitations; however, as modified below, the USB connection is that of Fernandes.); and
-claim 1 recites a lubricator that comprises second docking features that are adapted to engage with first docking features of the self-propelled downhole tool to retain the self-propelled downhole tool in the lubricator in the stowed position (the USB of Fernandes, as modified in the rejection below, fulfills this limitation).
Notably, the Response fails to set forth any evidence beyond conclusory statements and reiteration of the claim limitations to support the assertion that “Fernandes does not disclose a lubricator as recited in claim 1.” For the foregoing reasons the allegations submitted against Fernandes are not persuasive.
Applicant's arguments filed 02/27/2026 regarding the inoperability of the combination of Fernandes and Hallundbaek with respect to teaching the limitations of the lubricator as claimed are moot. As addressed below, the disclosure Fernandes anticipates the limitations directed to the lubricator.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“detent mechanism” as recited in independent claims 1 and 26; and
“self-propelled downhole tool” as recited in independent claims 1 and 26.
With respect to the term “detent mechanism,” the term mechanism constitutes a generic, non-structural placeholder having no specific structural meaning (e.g., a nonce term) and the term detent is directed to the intended function of the mechanism. The Instant Application (US 20230203901 A1) does not recite any specific structures which perform the function of the detent mechanism which is addressed below in the rejection under 35 U.S.C. 112(a) and 35 U.S.C. 112(b).
With respect to the term “self-propelled downhole tool”, the term downhole tool constitutes a generic, non-structural placeholder having no specific structural meaning (e.g., a nonce term) and the term self-propelled is directed to the intended function of the tool. Regarding the self-propelled feature of the downhole tool, the Instant Application (US 20230203901 A1) states:
“[t]he self-propelled downhole tool may be configured to drive itself into the wellbore, powered by one or more motors. The one or more motors may be electric motors and may be provided with electrical power via a power supply similar to that shown in FIG. 2 . The self-propelled downhole tool may comprise a plurality of drive wheels. The drive wheels may be extendable on arms from a main body of the self-propelled downhole tool to engage an inner wall of the wellbore (or production tubing or casing). The drive wheels may be electrically or hydraulically driven.” (Instant Application, para. [0053]); and
“[t]he self-propelled downhole tool 302 is configured to propel itself along at least part of a length of the wellbore 304. That is, the self-propelled downhole tool 302 may propel itself along the wellbore 304 without receiving further electrical power and/or data communications from a remote unit during at least part of a time period when it is deployed. Accordingly, the self-propelled downhole tool 302 comprises a drive mechanism. The drive mechanism may comprise a motor. The drive mechanism may comprise one or more wheels 328 and/or caterpillar tracks, for example (although other means for propelling the self-propelled downhole tool will be clear to the skilled person). The motor may be an electric motor and may be powered by the battery pack 326. The motor may be configured to drive the one or more wheels 328, caterpillar tracks or other means. Further, the wheels 328, caterpillar tracks or other means may be positioned on arms extendable from a main body of the self-propelled downhole tool 302. The arms may extend until the wheels 328, caterpillar tracks or other means are in contact with a sidewall of the wellbore, which may comprise tubing, casing or an open hole.” (Instant Application, para. [0065]).
Accordingly, the self-propelled downhole tool is understood to be defined by one or more of the following structures to achieve the recited function: one or more motors, a plurality of drive wheels, and equivalents thereof.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1—5, 7—8, 11, 13—15, 17—22, and 26—28 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.
As provided above, the claim element of “detent mechanism” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. With respect to the claim element of “detent mechanism,” Instant Application (US 20230203901 A1) states the following:
“[t]he self-propelled downhole tool 302 may comprise docking features that engage with corresponding docking features 332 on the lubricator 310. The docking features 332 are arranged to retain the self-propelled downhole tool 302 in the lubricator 310 when stowed. Accordingly, the docking features 332 may comprise one or more detent mechanisms. The skilled person will be aware of a number of detent mechanisms and any may be used.” (Instant Application, para. [0066]);
“[i]n exemplary arrangements, the electrical terminals 322, 324 may form at least part of the docking features and/or detent mechanism. That is, the docking features may form an electrical connection between the self-propelled downhole tool 302 and the input port 318 and/or may control at least partly operation of the electrical terminals 322, 324 when the self-propelled downhole tool 302 is stowed. In exemplary arrangements, the electrical communication between the self-propelled downhole tool 302 and the input port 318 (or lubricator 310) is broken after deployment of the self-propelled downhole tool 302, e.g. after the detent mechanism is overcome.” (Instant Application, para. [0068]); and
“[i]n stowing the self-propelled downhole tool 302, the docking feature of the self-propelled downhole tool 302 may engage with the corresponding docking features 332 of the lubricator 310. The detent mechanism may be engaged.” (Instant Application, para. [0079]).
Accordingly, the Instant Application fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1—5, 7—8, 11, 13—15, 17—22, and 26—28 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claims 1 and 26 recite the claim element “detent mechanism,” where the Instant Application fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function of detention (e.g., see invocation of 35 U.S.C. 112(f) and rejection under 35 U.S.C. 112(b) as provided above). To this end, the MPEP states: “[a] means- (or step-) plus-function limitation that is found to be indefinite under 35 U.S.C. 112(b) based on failure of the specification to disclose corresponding structure, material or act that performs the entire claimed function also lacks adequate written description and may not be sufficiently enabled to support the full scope of the claim. The principal function of claims is to provide notice of the boundaries of the right to exclude by defining the limits of the invention, and means-plus-function claims rely on the disclosure to define those limits. Accordingly, an inadequate disclosure may give rise to both an indefiniteness rejection for a means-plus-function limitation and a failure to satisfy the written description and enablement requirements of section 112(a) or pre-AIA section 112, first paragraph.” (MPEP 2181, Section IV).
For the reasons set forth in the above citation, the Instant Specification fails to disclose the corresponding structure, material or act that performs the entire claimed function of the detent mechanism and therefore lacks adequate written description to support the claim element of “detent mechanism.” As such, claims 1—5, 7—8, 11, 13—15, 17—22, and 26—28 are rejected under 35 U.S.C. 112(a) for failing to comply with the written description requirement.
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.
Claim(s) 1—5, 7—8, 15, 17—22, and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable Published US Patent Application to Fernandes et al., hereinafter “Fernandes,” (US 20200157909 A1) in view of Issued US Patent to Barrett et al., hereinafter “Barrett” (US 6446718 B1).
Regarding claim 1, Fernandes discloses [a]n apparatus for fitting to a wellbore (mast 100 and robotic autonomous unit (“RAU”)), the apparatus comprising:
a downhole tool (Robotic Autonomous Unit/Remote Autonomous Unit/RAU/autonomous tool/autonomous unit; para. [0051], “[t]he invention provides further an operational system for autonomous units carrying tools for tasks in oil and gas wells, the wells being vertical, horizontal or inclined.”; para. [0075], “the autonomous tool RAU reduces its displacement speed from the well (not represented) and is housed in the interior of body 15 of mast or system 100. The displacement system of said autonomous tool or unit is then deactivated and an electrical connection is established…”; para. [0096], “[t]he purpose of the present invention is a launching system for robot autonomous units (RAU) without need of wireline, coiled tubing or drilling or completion pipes. The system and method of the invention therefore enable any logging operation with the well in flow.”) configured for deployment within the wellbore (para. [0028], “… remote autonomous units carrying tools for performing any subsurface task in oil wells.”), and configured to propel itself along at least part of a length of the wellbore (para. [0051], “[t]he invention provides further an operational system for autonomous units carrying tools for tasks in oil and gas wells, the wells being vertical, horizontal or inclined.”; para. [0075], “the autonomous unit arrival can be monitored at the end of the tasks for which it has been scheduled. When this occurs, the autonomous tool RAU reduces its displacement speed from the well (not represented) and is housed in the interior of body 15 of mast or system 100. The displacement system of said autonomous tool or unit is then deactivated and an electrical connection is established between said autonomous unit and the finishing component of the upper portion of main body 15, said finishing component being End Cap 18.”);
a lubricator (mast 100 including main body 15 and end cap 18) configured for fitting to a wellhead of the wellbore via a valve system providing communication between the lubricator and the wellbore (para. [0069], “body 15 is adapted for being compatible with a Christmas Tree or any other surface equipment.”; para. [0034], “[t]he surface equipment is a Christmas Tree, BOP, Casing Head or other.”; para. [0086], “At the lower end of the main body 15 of mast 100, a mechanical adaptor or connector 19 promotes the connection of said body 15 with the wellhead (not represented). The wellhead is a Christmas tree, a Production Head, a Casing Head or Blow out Preventer (BOP). Connection 19 is a flange, a thread or any other kind of mechanical connection compatible with the wellhead.” Examiner notes that a Christmas tree and a blowout preventor include valves to manage wellbore flow), and configured to house the downhole tool when the downhole tool is in a stowed position (para. [0068], “… body 15 serving as housing and launching pipe for an autonomous unit RAU carrying a logging or wellbore working tool.”; para. [0075], “… an electrical connection is established between said autonomous unit and the finishing component of the upper portion of main body 15, said finishing component being End Cap 18.” Examiner notes the RAU is considered to be in the stowed position when electrically connected to the end cap.); and
a sealed end cap fitted to a distal end of the lubricator (please see above citation to para. [0075] related to end cap 18; see also FIG. 3);
wherein the lubricator comprises an input port (penetrator 21 and communication umbilical 22 of end cap 18, para. [0080], “[a] penetrator 21 makes the electrical connection between said control center and the further End Cap 18 components in a sealed manner. The feeding and communication umbilical 22 promotes a connection with a control central (not represented) for data transmission and electrical feeding.”) configured to receive data from a remote unit (“control center”/ “control central”, para. [0088], “[t]hrough the control central and the communication with End Cap 18, an operator (not represented) positioned remotely to the well can check if the RAU is attached, confirm the charge of the RAU battery, recharge the batteries and further collect data stored or schedule tasks for the RAU.”),
wherein in the stowed position the input port is physically engaged with the downhole tool in a manner that provides electrical communication between the input port and the downhole tool (para. [0084], “[i]t is possible to convey data collected during the operation of the robot autonomous unit (RAU) in the well and stored in the RAU data module towards devices external to the launching system 100. This is done when the RAU is connected to End Cap 18, enabling data collection. Transmission is performed through conventional wire connectors, USB or serial, for instance, or with the aid of a Bluetooth device to a cell phone/tablet/computer or by wireless to a control central.”), wherein the received data comprises instructions for operating the downhole tool (para. [0088], “[t]hrough the control central and the communication with End Cap 18, an operator (not represented) positioned remotely to the well can check if the RAU is attached, confirm the charge of the RAU battery, recharge the batteries and further collect data stored or schedule tasks for the RAU.”);
wherein the downhole tool comprises first docking features (USB connection of the RAU; see para. [0084] as provided above) and the lubricator comprises second docking features (associated USB connection of the End Cap 18; see para. [0084] as provided above) comprising one or more detent mechanisms (under the broadest reasonable interpretation the USB, the engagement faces of the USB connections function as a detent mechanism), and
wherein the first docking features of the downhole tool are adapted to engage with the second docking features of the lubricator to retain the downhole tool in the lubricator in the stowed position (physical docking features such as USBs are understood to be capable of retaining/restricting the movement the apparatus to which they are connected thereby achieving the limitation of the claim);
wherein the input port forms part of the end cap (penetrator 21 and communication umbilical 22 of end cap 18 – see above.); and
wherein the downhole tool further comprises at least one sensor (see para. [0013], [0078], and [0084] of Fernandes. For example, para. [0084] states “[i]t is possible to convey data collected during the operation of the robot autonomous unit (RAU) in the well and stored in the RAU data module towards devices external to the launching system 100… Transmission is performed… by wireless to a control central.” The RAU includes logging sensors as described in para. [0013] and collects data during the downhole operations as described in para. [0084]) configured to sense one or more downhole parameters during deployment (Fernandes, para. [0054], “… an operational system for launching logging tools of any kind, either based on acoustic, electrical, magnetic, radioactive, optical or any combination of these principles, said tools being carried by an autonomous system housed in the present system.”; Please see also para. [0016]]); and
wherein the downhole tool is configured to transmit sensor data sensed within the wellbore (“data collected during the operation of the robot autonomous unit (RAU) in the well”) from the at least one sensor to a receiver on a surface (para. [0084], “[i]t is possible to convey data collected during the operation of the robot autonomous unit (RAU) in the well and stored in the RAU data module towards devices external to the launching system 100. This is done when the RAU is connected to End Cap 18, enabling data collection. Transmission is performed through conventional wire connectors, USB or serial, for instance, or with the aid of a Bluetooth device to a cell phone/tablet/computer or by wireless to a control central.”) using wireless electromagnetic communication (Bluetooth protocol is a wireless electromagnetic communication protocol).
As discussed above with respect to the claim interpretation under 35 U.S.C. 112(f), the limitation “a self-propelled downhole tool” is understood to be a tool with either a motor, wheels, or equivalents thereof. While Fernandes discloses a robotic autonomous unit including a displacement system (see para. [0075]) for use in wellbore operations, Fernandes may not explicitly disclose that the displacement system of the robotic autonomous unit is a motor. However, Fernandes states “[a]s for the RAU, it should be clear to the experts that the RAU has not been represented in the Figures of the present specification and that it can be any device of the kind and of common use in the practice of the art, and therefore the RAU is not an object of the present application.” (Fernandes, para. [0081]). Fernandes additionally recites multiple pieces of prior art, in para. [0024]—[0027], upon which the disclosure of Fernandes is an intended improvement. For example, Fernandes states “[t]he description above confirms that contrary to other documents such as U.S. Pat. No. 9,528,348 B2 and other patent documents cited above in the present specification, the purpose of the present invention is a launching system for robot autonomous units (RAU) without need of wireline, coiled tubing or drilling or completion pipes.” (Fernandes, para. [0096]).
One such application which Fernandes identifies as prior art (see para. [0024]) includes Issued US Patent to Barrett (US 6446718 B1) which is in the same field of endeavor as the instant application insofar as it is directed to autonomous wellbore operations. Barrett teaches the deficiencies of Fernandes with respect to the claim interpretation requirement related the limitation of “self-propelled downhole tool.” For example, Barrett teaches an autonomous downhole tool including an electric motor unit 111 and a wheel 13 as depicted in FIGs. 1A and 2.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the generically recited displacement system of Fernandes for the specific electric motor unit and wheels of Barrett. Both the displacement system of Fernandes and the electric motor unit and wheels of Barrett had the known function of displacing the autonomous downhole tools in the wellbore such that the substitution would generate the predictable result of providing for an electric motor unit and wheels for displacement within the wellbore. Moreover, Fernandes explicitly states that any of the features of the prior art technology would be obvious to use in conjunction with the robotic autonomous unit of Fernandes.
Regarding claim 2, Fernandes modified by Barrett teaches wherein the lubricator is configured to transfer the received data communications to the self-propelled downhole tool when in the stowed position (Fernandes, para. [0084], “[i]t is possible to convey data collected during the operation of the robot autonomous unit (RAU) in the well and stored in the RAU data module towards devices external to the launching system 100. This is done when the RAU is connected to End Cap 18, enabling data collection.” Examiner notes the above-cited para. [0088] discloses that the control central/center can also send/schedule tasks to the RAU via connection with the end cap.).
Regarding claim 3, Fernandes modified by Barrett teaches wherein the input port comprises an electrical connector for connection to the self-propelled downhole tool when in the stowed position for creating an electrical connection between the input port and the self-propelled downhole tool (Fernandes, penetrator 21 and communication umbilical 22 of end cap 18, para. [0080], “[a] penetrator 21 makes the electrical connection between said control center and the further End Cap 18 components in a sealed manner. The feeding and communication umbilical 22 promotes a connection with a control central (not represented) for data transmission and electrical feeding.”; Please see also Fernandes para. [0084], [0085], and [0088]).
Regarding claim 4, Fernandes modified by Barrett teaches wherein electrical connector and/or the self- propelled downhole tool are configured such that the electrical connection is broken when the self-propelled downhole tool is not in the stowed position (Fernandes, para. [0082], “[a]fter the RAU approaches the sensor 16 which is close to lower valve 14, said valve is automatically opened enabling the RAU to leave the body 15 of the mast 100 and enter the well. After the RAU displacement and therefore its distancing from upper and lower valves 13, 14, these valves close automatically.”; para. [0096], “the purpose of the present invention is a launching system for robot autonomous units (RAU) without need of wireline, coiled tubing or drilling or completion pipes.”; Examiner notes that the electrical connection occurs when the RAU is connected to the end cap as taught in para. [0084]. Once the RAU leaves the mast, the valves which allow fluidic connection between the mast and the wellbore, are closed. As such, it is understood that the electrical connection only exists when the RAU is disposed in the mast and connected to the end cap.).
Fernandes modified by Barrett teaches the limitations of claim 5. Please see the citations to para. [0075], [0080], [0084], [0085], and [0088] of Fernandes.
Fernandes modified by Barrett teaches the limitations of claim 7. As previously cited, Fernandes states “[a] penetrator 21 makes the electrical connection between said control center and the further End Cap 18 components in a sealed manner. The feeding and communication umbilical 22 promotes a connection with a control central (not represented) for data transmission and electrical feeding.” (Fernandes, para. [0080]). Please also see para. [0084] and [0088].
Regarding claim 8, Fernandes modified by Barrett teaches wherein the received data comprising instructions for operating the self-propelled downhole tool further comprises one or more instructions based on the one or more sensed downhole parameters (Fernandes, para. [0075], “[s]ensors 16 indicate the proximity of the autonomous unit (not represented) to the surface so that the autonomous unit arrival can be monitored at the end of the tasks for which it has been scheduled. When this occurs, the autonomous tool RAU reduces its displacement speed from the well (not represented).”; It is understood that a sensor or signal receiver on the RAU detects (e.g., “sensed downhole parameters”) the sensors 16 disposed on mast 100. Examiner notes the RAU is sensing/detecting the sensors 16 while in the wellbore and therefore, the sensing/detecting is considered a “sensed downhole parameter.” The sensing causes the RAU to reduce its speed (e.g., “the instructions”) for re-entry in mast 100. Please see also para. [0082] which discusses the interaction between the mast 100 and the RAU in order to allow for deployment.); wherein the received data communications comprise data instructing the self-propelled downhole tool to deploy within the wellbore (Fernandes, para. [0088], “[t]hrough the control central and the communication with End Cap 18, an operator… can check if the RAU is attached, confirm the charge of the RAU battery, recharge the batteries and further collect data stored or schedule tasks for the RAU.”; para. [0083], “[a]fter performing tasks in the well, such as logging tasks, the RAU returns to the body 15 of the mast 100…. the RAU follows its schedule, being uninstalled or returning to the well to perform further tasks.”; In view of the foregoing, it is understood that the RAU can perform multiple runs into the wellbore if additional tasks are received.); and wherein the data communications comprise one or more instructions setting deployment parameters for a deployment of the self-propelled downhole tool (Fernandes, para. [0092], “… enabling the RAU to enter the well and start the tasks, such as logging.”; Deployment parameters are understood to be an assigned task of one or more tasks. Fernandes highlights multiple tasks which can be performed in para. [0053]-[0055]. Please also see para. [0092]-[0095] which discuss the full cycle of a first deployment operation and the potential for additional deployment operations).
Regarding claim 11, Fernandes discloses a downhole tool (e.g., “Robotic Autonomous Unit/Remote Autonomous Unit” or “RAU”) which is capable of receiving tasks and relaying data via an electrical connection, as well as collecting logging data. However, the disclosure of Fernandes is not specifically focused on the details of the RAU. For example, Fernandes states “it should be clear to the experts that the RAU has not been represented in the Figures of the present specification and that it can be any device of the kind and of common use in the practice of the art, and therefore the RAU is not an object of the present application.” (Fernandes, para. [0081]). As such, Fernandes does not expressly disclose the limitations directed to the downhole tool as recited in claim 11. Barrett, which is in the same field of endeavor as the instant application insofar as it is directed to autonomous tools used in subterranean wellbore environments, teaches the deficient limitations.
For example, Barrett teaches wherein the self-propelled downhole tool (autonomous unit or robot 21) comprises a processor (“programmable microprocessors” of “logic unit”) configured to store the one or more instructions and/or one or more preloaded instructions (Barrett, Col. 2, Lines 26—36; “[t]he autonomous unit further comprises a logic unit which enables the tool to make autonomous decisions based on measured values of two or more parameters. The logic unit is typically one or a set of programmable microprocessors connected to sensors and actuators through appropriate interface systems… The logic unit can be programmed as a neural network or with fuzzy logic so as to enable a quasi-intelligent behavior under down hole conditions.”); wherein the processor is configured to control the self-propelled downhole tool to undertake the one or more instructions and/or the one or more preloaded instructions (please see above citation).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the generic internal components of the downhole tool of Fernandes with the specific components of the downhole tool of Barrett. The substitution would yield the predictable result of an autonomous downhole tool capable of performing wellbore operations while disconnected from the surface equipment.
Fernandes modified by Barrett teaches the limitations of claim 13 as cited above with respect to claim 11. Please see Barrett, Col. 2, Lines 26—36 which states “[t]he autonomous unit further comprises a logic unit which enables the tool to make autonomous decisions based on measured values of two or more parameters.”
Regarding claim 14, Fernandes modified by Barrett teaches wherein the processor (“multiprocessor” of “logic unit”) is configured to control the self-propelled downhole tool autonomously (Barrett, Col. 3, Lines 63—67; “[t]he on-board processing system or logic unit includes a multiprocessor (e.g, a Motorola 680X0 processor) that controls via a bus system 114 with I/O control circuits and a high-current driver for the locomotion unit and other servo processes, actuators, and sensors.”).
Regarding claim 15, Fernandes modified by Barrett teaches wherein the one or more instructions comprise a plurality of instructions (Fernandes, para. [0088], “… schedule tasks for the RAU.”; Based on the disclosure of Fernandes, it is understood that a plurality of tasks would require a plurality of instructions); and wherein the plurality of instructions comprise a complete operation within the wellbore (Fernandes, para. [0088], “… schedule tasks for the RAU.”; please see also Fernandes para. [0053]-[0055] and [0092]-[0095] as cited above. ), including returning the self-propelled downhole tool to the stowed position (Fernandes, para. [0083], “[a]fter performing tasks in the well, such as logging tasks, the RAU returns to the body 15 of the mast 100.”). Examiner notes that, while not utilized in the rejection of claim 15, Barrett, as utilized below in the rejection under 35 USC 103, states “[a]fter having performed the logging operation, the measured data is collected in the memory of the autonomous unit or robot 21 and is indexed by the location of the perforation cluster (in terms of the sequence of clusters from the wireline unit 22). The autonomous unit a robot 21 can then, move on to another cluster of perforations.” (Barrett, Col. 5, Lines 22—27). Again, while Barrett is not relied upon to reject claim 15, because the claims are considered to be covered by Fernandes as noted above, Barrett is noted here should amendments be brought in to further define the claim.
Regarding claim 17, Fernandes modified by Barrett teaches wherein, after deployment, the self-propelled downhole tool is configured to operate autonomously (Fernandes, para. [0082], “[a]fter the RAU approaches the sensor 16 which is close to lower valve 14, said valve is automatically opened enabling the RAU to leave the body 15 of the mast 100 and enter the well. After the RAU displacement and therefore its distancing from upper and lower valves 13, 14, these valves close automatically.”; para. [0096], “the purpose of the present invention is a launching system for robot autonomous units (RAU) without need of wireline, coiled tubing or drilling or completion pipes.”; Examiner notes that Fernandes discloses that the RAU is not connected to the surface equipment after deployment and that the data gathered during deployment is relayed once the RAU is reconnected with the end cap 18. It is therefore understood that the RAU operates autonomously in the wellbore.).
Regarding claim 18, Fernandes modified by Barrett teaches wherein, after deployment, the self-propelled downhole tool has no direct and/or physical connection to the remote unit (Fernandes, para. [0082], “[t]he autonomous unit is at first positioned and identified at the upper portion of said body 15. After the RAU approaches the sensor 16 which is close to lower valve 14, said valve is automatically opened enabling the RAU to leave the body 15 of the mast 100 and enter the well. After the RAU displacement and therefore its distancing from upper and lower valves 13, 14, these valves close automatically.”; Examiner notes that after the RAU is deployed in the wellbore, the valves disposed on mast 100 are closed which precludes the ability for the RAU to be in connection with the control central/center.).
Regarding claim 19, Fernandes modified by Barrett teaches wherein the self-propelled downhole tool comprises a battery to provide power for propelling the self-propelled downhole tool (Fernandes, para. [0095], “…the battery of the autonomous unit RAU can be recharged, have data collected and return to the well if required following the same steps described above in the present specification.”).
Regarding claim 20, Fernandes modified by Barrett teaches wherein the input port is further configured to receive electrical power from the, or a further, remote unit (Fernandes, para. [0080], “[a] penetrator 21 makes the electrical connection between said control center and the further End Cap 18 components in a sealed manner. The feeding and communication umbilical 22 promotes a connection with a control central (not represented) for data transmission and electrical feeding.”; Please see FIGs. 4A and 4B).
Regarding claim 21, Fernandes modified by Barrett teaches wherein the battery is chargeable when the self-propelled downhole tool is in the stowed position (Fernandes, para. [0079, “[c]ontrol electronics 26 manages the autonomous unit RAU battery charging as well as the communication between said RAU and the said control center.”; para. [0085], “[w]ith the RAU connected to the End Cap 18, the electronics for battery recharging is activated and checks the amount of charge stored in the RAU.” Examiner notes that control electronics 26 are a component of end cap 18 as depicted in FIGs. 4A and 4B. The RAU is considered to be in the stowed position when connected to the end cap.).
Regarding claim 22, Fernandes modified by Barrett teaches wherein the input port comprises an electrical connector for fitting to an external cable (Fernandes, penetrator 21 allows for an electrical connection between the RAU and the control central/center via communication umbilical 22 disposed in end cap 18).
Regarding claim 26, Fernandes discloses stowing the downhole tool in a stowed position (para. [0068], “… body 15 serving as housing and launching pipe for an autonomous unit RAU carrying a logging or wellbore working tool.”; para. [0075], “… an electrical connection is established between said autonomous unit and the finishing component of the upper portion of main body 15, said finishing component being End Cap 18.” Examiner notes the RAU is considered to be in the stowed position when connected to the end cap.), in which the downhole tool is received within a lubricator (mast 100 including main body 15 and end cap 18) fitted to a wellhead of the wellbore via a valve system providing communication between the lubricator and the wellbore (para. [0069], “body 15 is adapted for being compatible with a Christmas Tree or any other surface equipment.”; para. [0034], “[t]he surface equipment is a Christmas Tree, BOP, Casing Head or other.”; please see also paragraph [0086]), a sealed end cap fitted to a distal end of the lubricator (see above citation to para. [0075] related to end cap 18; see also FIG. 3), wherein the downhole tool comprises first docking features (USB connection of the RAU; see para. [0084] as provided above) and the lubricator comprises second docking features (associated USB connection of the End Cap 18; see para. [0084] as provided above) comprising one or more detent mechanisms (under the broadest reasonable interpretation the USB, the engagement faces of the USB connections function as a detent mechanism), wherein the first docking features of the downhole tool are adapted to engage with the second docking features of the lubricator to retain the downhole tool in the lubricator in the stowed position (physical docking features such as USBs are understood to be capable of retaining/restricting the movement the apparatus to which they are connected thereby achieving the limitation of the claim);
transmitting, from a remote unit (“control central/center”), data communications for operating the downhole tool (para. [0088], “[t]hrough the control central and the communication with End Cap 18, an operator (not represented) positioned remotely to the well can check if the RAU is attached, confirm the charge of the RAU battery, recharge the batteries and further collect data stored or schedule tasks for the RAU.”);
receiving, at an input port of the end cap (penetrator 21 provides a sealed conduit for communications umbilical 22 through end cap 18, see FIG. 3), the transmitted data communications (para. [0080], “[t]he feeding and communication umbilical 22 promotes a connection with a control central (not represented) for data transmission and electrical feeding.”), the input port being physically connected with and in electrical communication with the downhole tool (para. [0084], “[i]t is possible to convey data collected during the operation of the robot autonomous unit (RAU) in the well and stored in the RAU data module towards devices external to the launching system 100. This is done when the RAU is connected to End Cap 18, enabling data collection. Transmission is performed through conventional wire connectors, USB or serial, for instance, or with the aid of a Bluetooth device to a cell phone/tablet/computer or by wireless to a control central.”);
deploying the downhole tool based on the received data communications (para. [0088] states that the control central can schedule tasks for the RAU which would be relayed through the data communications system including the communications umbilical and control electronics 26. Para. [0083], “[b]y the approach of the RAU of the upper valve 13, the RAU follows its schedule, being uninstalled or returning to the well to perform further tasks.”); sensing one or more downhole parameters during deployment via at least one sensors of the downhole tool (see para. [0013], [0078], and [0084] of Fernandes. For example, para. [0084] states “[i]t is possible to convey data collected during the operation of the robot autonomous unit (RAU) in the well and stored in the RAU data module towards devices external to the launching system 100… Transmission is performed… by wireless to a control central.” The RAU includes logging sensors as described in para. [0013] and collects data during the downhole operations as described in para. [0084]; Fernandes, para. [0054], “… an operational system for launching logging tools of any kind, either based on acoustic, electrical, magnetic, radioactive, optical or any combination of these principles, said tools being carried by an autonomous system housed in the present system.”; Please see also para. [0016]);
transmitting data corresponding to the one or more downhole parameters during deployment within the wellbore (para. [0084], “data collected during the operation of the robot autonomous unit (RAU) in the well”) to a receiver on a surface (“to a control central”) using wireless electromagnetic communication (para. [0084], “[i]t is possible to convey data collected during the operation of the robot autonomous unit (RAU) in the well and stored in the RAU data module towards devices external to the launching system 100. This is done when the RAU is connected to End Cap 18, enabling data collection. Transmission is performed through conventional wire connectors, USB or serial, for instance, or with the aid of a Bluetooth device to a cell phone/tablet/computer or by wireless to a control central.” Bluetooth protocol is a wireless electromagnetic communication.).
As discussed above with respect to the claim interpretation under 35 U.S.C. 112(f), the limitation “a self-propelled downhole tool” is understood to be a tool with either a motor, wheels, or equivalents thereof. While Fernandes discloses a robotic autonomous unit including a displacement system (see para. [0075]) for use in wellbore operations, Fernandes may not explicitly disclose that the displacement system of the robotic autonomous unit is a motor. However, Fernandes states “[a]s for the RAU, it should be clear to the experts that the RAU has not been represented in the Figures of the present specification and that it can be any device of the kind and of common use in the practice of the art, and therefore the RAU is not an object of the present application.” (Fernandes, para. [0081]). Fernandes additionally recites multiple pieces of prior art, in para. [0024]—[0027], upon which the disclosure of Fernandes is an intended improvement. For example, Fernandes states “[t]he description above confirms that contrary to other documents such as U.S. Pat. No. 9,528,348 B2 and other patent documents cited above in the present specification, the purpose of the present invention is a launching system for robot autonomous units (RAU) without need of wireline, coiled tubing or drilling or completion pipes.” (Fernandes, para. [0096]).
One such application which Fernandes identifies as prior art (see para. [0024]) includes Issued US Patent Application to Barrett (US 6446718 B1) which is in the same field of endeavor as the instant application insofar as it is directed to autonomous wellbore operations. Barrett teaches the deficiencies of Fernandes with respect to the claim interpretation requirement related the limitation of “self-propelled downhole tool.” For example, Barrett teaches an autonomous downhole tool including an electric motor unit 111 and a wheel 13 as depicted in FIGs. 1A and 2.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the generically recited displacement system of Fernandes for the specific electric motor unit and wheels of Barrett. Both the displacement system of Fernandes and the electric motor unit and wheels of Barrett had the known function of displacing the autonomous downhole tools in the wellbore such that the substitution would generate the predictable result of providing for an electric motor unit and wheels for displacement within the wellbore. Moreover, Fernandes explicitly states that any of the features of the prior art technology would be obvious to use in conjunction with the robotic autonomous unit of Fernandes.
Claim(s) 27 and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable Published US Patent Application to Fernandes et al., hereinafter “Fernandes,” (US 20200157909 A1) and Issued US Patent Application to Barrett et al., hereinafter “Barrett,” (US 6446718 B1) as applied to claim 1 and 26 above, and further in view of Published WIPO Patent Application to Bowman (WO 2019038557 A1).
Regarding claims 27 and 28, while Fernandes at para. [0028] discloses “a launching system (mast) for remote autonomous units carrying tools for performing any subsurface task in oil wells,” Fernandes may not explicitly disclose that the operation performed by the robot includes paraffin/wax removal. However, Bowman, which is in the same field of endeavor as the instant application insofar as it is directed to autonomous systems (e.g., robots/vehicles) used in wellbore operations, teaches the deficient limitations. For example, Bowman teaches “[a]n operator may wish to carry out intervention operations a number of times in order to mitigate deferred production or otherwise maintain production at optimal levels. One such intervention operation involves the removal of paraffin wax, asphaltenes and/or other solids, residues and the like which can accumulate in the wellbore over time and which reduce production or otherwise reduce the optimal operation of the well.” (Bowman, page 1, lines 26—31). Bowman further teaches “[t]he intervention system 110 is configured to deploy an intervention tool 118 (shown in Figure 13) into the wellbore 112 and in the illustrated embodiment the intervention tool 118 comprises a paraffin wax removal tool for cleaning paraffin deposits from the wellbore 112 and associated infrastructure and equipment. However, it will be recognised that the intervention system 110 may be configurable to perform a number of different intervention operations using a suitable intervention tool.” (Bowman, page 19, lines 27—32).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the remote autonomous units of Fernandes to perform the operation of paraffin wax removal. As stated above, Fernandes envisioned the remote autonomous units being usable to carry tools to perform any subsurface task, while Bowman provides motivation for utilizing the remote autonomous units to remove wax/paraffin from a wellbore. Specifically, performing well intervention to maintain full-bore flow through the wellbore helps with maintaining production levels at optimum levels and reduces deferred production (e.g., due to reduced flow capacity in the wellbore).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to URSULA NORRIS whose telephone number is (703)756-4731. The examiner can normally be reached Monday to Friday, 7 AM to 4 PM.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/U.L.N./Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676
Prosecution Insights