DETAILED ACTION
Email Communication
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Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment of 11/21/2025 does not place the Application in condition for allowance.
Claims 1-13 and 21-22 are currently pending. In response to Office Action mailed on 08/25/2025, Applicant has amended claims 1-2, 4-9, and 11-13, cancelled claims 14-20, and added new claims 21-22.
Status of the Rejections
Due to Applicant’s amendment of claims 1-2, 4-9, and 11-13, all rejections from the Office Action mailed on 08/25/2025 are withdrawn. However, upon further consideration, a new ground of rejection is presented below.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-13 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Tosi et al. (US 2013/0061899 A1) in view of Scott et al. (US 2020/0203033 A1).
Regarding claim 1, Tosi discloses a downhole power source to be positioned in a wellbore (20) to supply electrical power in the wellbore (20), the downhole power source comprising:
a radioisotope source (radioisotope 62) to be positioned downhole in the wellbore (20) (figures 1-2, [0001] and [0021-0029]) to emit non-thermal radiation (the radioisotope generator 22 comprises radioisotope source (62) that emits heat ([0028]) by undergoing radioactive decay, which is different than non-thermal radiation), and
thermocouple (64) that comprises p-type and n-type semiconductor layers ([0028] and figures 2-3) that is positioned downhole in the wellbore (20) to generate the electrical power based on temperature differential between to the hot side/heat source or radioisotope source (62) and the cold side (80) (figures 1-3, [0001] and [0021-0029]).
However, Tosi does not explicitly disclose that one or more semiconductor layers to be positioned downhole in the wellbore (20) to capture the non-thermal radiation emitted from the radioisotope source (62) and to generate the electrical power based on the captured non-thermal radiation.
Scott discloses a radiation powered device for downhole drilling ([0231]). Scott further discloses that radiation powered device can be thermal such as thermoelectric generator ([0003]) and non-thermal such as beta-voltaic devices ([0003]) and that both can used in combination to produce electricity ([0003] – last sentence). Scott further discloses that the beta-voltaic device comprises a semiconductor (14) between two electrodes (10 and 12) (fig. 1 and [0122-0126]), wherein the semiconductor comprises diamond material ([0126]) similar to instant application ([0010] of instant application).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have used the diamond based beta-voltaic device as taught by Scott in combination with the thermoelectric generator (64) of Tosi in the wellbore of Tosi such that more electricity can be produced using thermal (via thermocouple) and non-thermal (via betavoltaic device) processes, as taught by Scott ([0003]).
Thus, Tosi as modified by Scott discloses one or more semiconductor layers (betavoltaic device of Scott comprising the diamond) is positioned downhole in the wellbore (20) to capture the non-thermal radiation emitted from the radioisotope source (62) and to generate the electrical power based on the captured non-thermal radiation.
Regarding claim 2, Tosi as modified by Scott further disclose that one or more semiconductor layers (diamond layer) are to generate the electrical power independent of thermal emission from the radioisotope source (Scott discloses that electric power source of Scott comprises a radioactive source embedded in the diamond that goes through beta emission, [0098])
Regarding claim 3, Tosi as modified by Scott further discloses that the one or more semiconductor layers (betavoltaic device of Scott) are to be electrically coupled to the electrical device (energy storage device, [0031] and fig. 3) to be positioned in the wellbore to supply the electrical power from the one or more semiconductor layers (diamond layer of Scott) to the electrical device.
Regarding claim 4, Tosi as modified by Scott further discloses that the one or more semiconductor layers (diamond layer) are to be electrically coupled to a power storage device (energy storage device) to be positioned in the wellbore (20) (fig. 3 and [0031]).
Regarding claim 5, Tosi further discloses that the power storage device comprises at least one of a capacitor or a battery ([0022]).
Regarding claim 6, Tosi further discloses that the one or more semiconductor layers (diamond layer of Scott) are electrically coupled to a power controller (processor, [0031]), wherein the power controller is configured to store the electrical power in the power storage device (energy storage device, [0031]), and wherein the power controller (processor) is configured to control the power storage device such that the power storage device is to supply electrical power to the electrical device in response to a level of the electrical power stored in the power storage device exceeding a threshold of power to enable operation of the electrical device (see paragraph [0031] and figure 3: the electrical current (80) may be applied to charge the energy storage device or may be used immediately, and a processor (not shown) regulates a flow of the energy such as transferring to the energy storage device).
Regarding claim 7, Tosi further discloses that the one or more semiconductor layers (diamond layer of Scott) are electrically coupled to a power controller (processor), wherein the power controller is electrically coupled to a different downhole power source that is to generate different electrical power that is greater than the electrical power generated based on the captured non-thermal radiation, wherein the electrical device comprises a sensor to measure a property of a subsurface formation in which the wellbore is formed, and wherein the power controller is to control the different downhole power source to cause the different downhole power source to initiate generation of the different electrical power in response to the sensor measuring a value of the property of the subsurface formation that exceeds a property threshold (see claims 19, 21, 25-30: the radioisotope thermoelectric generator is connected to a sensor to measure characteristics of the wellbore such as temperature, pressure, or composition of fluid).
Regarding claim 8, Tosi discloses a downhole system for use in a wellbore (20), the downhole system comprising:
a radioisotope source (radioisotope 62) to be positioned in the wellbore (20) (figures 1-2, [0001] and [0021-0029]) to emit non-thermal radiation (the radioisotope generator 22 comprises radioisotope source (62) that emits heat ([0028]) by undergoing radioactive decay, which is different than non-thermal radiation),
thermoelectric generator (thermocouple 64) that comprises p-type and n-type semiconductor layers ([0028] and figures 2-3) that is positioned downhole in the wellbore (20) to generate the electrical power based on temperature differential between to the hot side/heat source or radioisotope source (62) and the cold side (80) (figures 1-3, [0001] and [0021-0029]); and.
an electrical device (energy storage device, [0031] and fig. 3) configured to be electrically coupled to the one or more semiconductor layers (64).
However, Tosi does not explicitly disclose that one or more semiconductor layers to be positioned downhole in the wellbore (20) to capture the non-thermal radiation emitted from the radioisotope source (62) and to generate the electrical power based on the captured non-thermal radiation.
Scott discloses a radiation powered device for downhole drilling ([0231]). Scott further discloses that radiation powered device can be thermal such as thermoelectric generator ([0003]) and non-thermal such as beta-voltaic devices ([0003]) and that both can used in combination to produce electricity ([0003] – last sentence). Scott further discloses that the beta-voltaic device comprises a semiconductor (14) between two electrodes (10 and 12) (fig. 1 and [0122-0126]), wherein the semiconductor comprises diamond material ([0126]) similar to instant application ([0010] of instant application).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have used the diamond based beta-voltaic device as taught by Scott in combination with the thermoelectric generator (64) of Tosi in the wellbore of Tosi such that more electricity can be produced using thermal (via thermocouple) and non-thermal (via betavoltaic device) processes, as taught by Scott ([0003]).
Thus, Tosi as modified by Scott discloses one or more semiconductor layers (betavoltaic device of Scott comprising the diamond) is positioned downhole in the wellbore (20) to capture the non-thermal radiation emitted from the radioisotope source (62) and to generate the electrical power based on the captured non-thermal radiation.
Regarding claim 2, Tosi as modified by Scott further disclose that one or more semiconductor layers (diamond layer) are to generate the electrical power independent of thermal emission from the radioisotope source (Scott discloses that electric power source of Scott comprises a radioactive source embedded in the diamond that goes through beta emission, [0098])
Regarding claim 10, Tosi as modified further discloses that the one or more semiconductor layers (diamond layer of Scott) are to be electrically coupled to a power storage device (energy storage device) to be positioned in the wellbore (20) (fig. 3 and [0031]).
Regarding claim 11, Tosi further discloses that the power storage device comprises at least one of a capacitor or a battery ([0022]).
Regarding claim 12, Tosi as modified further discloses that the one or more semiconductor layers (diamond layer of Scott) are electrically coupled to a power controller (processor, [0031]), wherein the power controller is configured to store the electrical power in the power storage device (energy storage device, [0031]), and wherein the power controller (processor) is configured to control the power storage device such that the power storage device is to supply electrical power to the electrical device in response to a level of the electrical power stored in the power storage device exceeding a threshold of power to enable operation of the electrical device (see paragraph [0031] and figure 3: the electrical current (80) may be applied to charge the energy storage device or may be used immediately, and a processor (not shown) regulates a flow of the energy such as transferring to the energy storage device).
Regarding claim 13, Tosi as modified further discloses that the one or more semiconductor layers (diamond layer of Scott) are electrically coupled to a power controller (processor), wherein the power controller is electrically coupled to a different downhole power source that is to generate different electrical power that is greater than the electrical power generated based on the captured non-thermal radiation, wherein the electrical device comprises a sensor to measure a property of a subsurface formation in which the wellbore is formed, and wherein the power controller is to control the different downhole power source to cause the different downhole power source to initiate generation of the different electrical power in response to the sensor measuring a value of the property of the subsurface formation that exceeds a property threshold (see claims 19, 21, 25-30: the radioisotope thermoelectric generator is connected to a sensor to measure characteristics of the wellbore such as temperature, pressure, or composition of fluid).
Regarding claims 21 and 22, there is no structural and material difference between the claimed downhole system of the instant claim and that of the Tosi as moidifed. Thus, the downhole system of Tosi as modified must be capable of producing power of at least one milliwatt or a microwatt, as in the case of the instant application.
It is further noted that “[A]pparatus claims cover what a device is, not what a device does” (Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)), and therefore, “[W]hile features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function” (In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429 1431-32 (Fed. Cir. 1997)) (MPEP §2114).
Response to Arguments
Applicant's arguments with respect to claims 1-13 and 21-22 have been considered but are moot in view of the new ground(s) of rejection as necessitated by the amendments.
Applicant argues that Tosi does not disclose that one or more semiconductor layers generates electrical power based on captured non-thermal radiation.
This is found persuasive and is moot in view of new ground of rejection.
Conclusion
Applicant's amendment of 11/21/2025 necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Correspondence/Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GOLAM MOWLA whose telephone number is (571)270-5268. The examiner can normally be reached on M-Th, 7am - 4pm.
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/GOLAM MOWLA/ Primary Examiner, Art Unit 1721
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