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 Arguments
Applicant's arguments filed 3/2/2026 have been fully considered but they are not persuasive.
On pages 5-6, Applicant alleges that Varkey’s conductive polymer jacket 68 does not teach claim 1’s “conductive binder configured to melt . . . to form a liquid conductor.” Applicant further alleges that Varkey does not disclose or suggest a liquid-state connectivity of the conductive polymer jacket 68, and solid-state conductivity does not guarantee or suggest conductivity in the liquid state.
The Examiner respectfully disagrees with Applicant’s analysis and conclusion.
Varkey, [0039] discloses “the conductive polymer jacket 68 may be heated and melted during assembly of the cable 18, such that the outer armor wire strength members 56 may be rolled into the conductive polymer jacket 68. As such, the conductive polymer jacket 68 may also physically contact the inner armor wire strength members 54.” Emphasis added.
Varkey, [0037], discloses “materials embedded in the conductive polymer jacket 68 may include conductive carbon black, chopped or milled carbon fiber, chopped metallic fibers, and/or conductive Nano-particles. In other embodiments, a metallic powder may be doped into the conductive polymer jacket 68. The metallic powder may include, but is not limited to, materials such zinc, copper, iron, or any suitable other conductive metallic particles.” Emphasis added.
Varkey does not explicitly disclose a liquid-state connectivity of the conductive polymer jacket 68. However, the Examiner respectfully submits that a person having ordinary skill in the electrical arts, before the effective filing date of the claimed invention, would have reasonably understood that Varkey’s conductive polymer jacket 68, which comprises conductive metallic particles such as zinc, copper, iron, conductive carbon black, chopped or milled carbon fiber, chopped metallic fibers, and/or conductive Nano-particles, is conductive in the liquid state. Therefore, the Examiner respectfully submits that Applicant’s allegation that Varkey does not disclose or suggest a liquid-state connectivity of the conductive polymer jacket 68 is not persuasive.
On page 6, Applicant alleges that Varkey does not teach claim 1’s conductive binder configured to melt in response to a condition in the wellbore. Applicant further alleges that nothing in Varkey suggests that Varkey’s cable is configured to melt outside of the assembly process. Applicant further alleges that a person of ordinary skill in the art would understand that the melting of Varkey’s conductive polymer jacket 68 during operation would be undesirable, as it would compromise the mechanical integrity or the electrical performance of the cable. Therefore, Applicant alleges that Varkey does not teach or suggest “a conductive binder configured to melt in response to a condition during operation in the wellbore” as recited in claim 1.
The Examiner respectfully disagrees with Applicant’s analysis and conclusion.
It is noted that the limitations, “1. An electrical cable for use in a wellbore proximate to a subsurface formation” (emphasis added) and “a conductive binder configured to melt in response to a condition during operation in the wellbore” (emphasis added) is an intended use of the electrical cable, and is therefore interpreted to only require the ability to so perform under MPEP 2114 II, below.
MPEP 2114 Apparatus and Article Claims — Functional Language [R-07.2015]
II. MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE APPARATUS CLAIM FROM THE PRIOR ART
"[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) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.).
Under MPEP 2114 II, in the case of a product claim (such as the electrical cable of claim 1), only the structure of the claim distinguishes over the prior art. Furthermore, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be used (such as the intended use of the electric cable in a wellbore, and the conductive binder configured to melt in response to a condition during the use in the wellbore, as set forth in claim 1) does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations.
Varkey’s electric cable 18 is a wellbore cable. See Varkey, [0002]: “This disclosure relates to a system and method for electrically grounding outer strength member layers of a wellbore cable.” Emphasis added. When Varkey’s electric cable 18 is used in a wellbore, the polymer jacket 68 may be heated and melted in response to a condition during its use in the wellbore. The recitation in claim 1 that the electric cable is used in a wellbore and that the claimed conductive binder melts in response to a raised temperature in the wellbore does not differentiate the electric cable of claim 1 from Varkey’s electric cable. Therefore, the Examiner respectfully submits that Applicant’s allegation that Varkey does not teach claim 1’s conductive binder configured to melt in response to a condition in the wellbore is not persuasive.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Varkey” (US 2021/0210252).
Regarding claim 1, Varkey anticipates 1. An electrical cable for use in a wellbore proximate to a subsurface formation, the electrical cable comprising: a conductive element comprising one or more electrically conductive fibers (Figs. 1, 5, [0035], [0039]; the electric cable 18 is used in a wellbore, comprising the wire strength members 54 and 56. Examiner’s note: the limitation “for use in a wellbore proximate to a subsurface formation” is an intended use of the apparatus, and is therefore interpreted to only require the ability to so perform. In the case of a product claim, only the structure of the claim distinguishes over the prior art. Furthermore, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ 2d 1647 (1987).);
and a conductive binder configured to melt in response to a condition during operation in the wellbore to form a liquid conductor that is configured to, when in a liquid state, contact the conductive element (Figs. 1, 5, [0037], [0039]; the polymer jacket 68 melts to form a liquid conductor that contacts the wire strength members 54 and 56. Examiner’s note: the limitation “in response to a condition during operation in the wellbore” is an intended use of the apparatus, and is therefore interpreted to only require the ability to so perform.).
Regarding claim 2, Varkey anticipates 2. The electrical cable of claim 1, wherein the conductive binder comprises a fusible alloy (Figs. 1, 5, [0037], [0039]; the polymer jacket 68 comprises metal particles of zinc).
Regarding claim 3, Varkey anticipates 3. The electrical cable of claim 1, wherein the conductive binder comprises a non-metallic conductive material (Figs. 1, 5, [0037], [0039]; the polymer jacket 68 comprises conductive carbon black).
Regarding claim 4, Varkey anticipates 4. The electrical cable of claim 1, wherein the conductive binder is a solid at surface and configured to melt based on at least one of a depth, pressure, power threshold, or a temperature in the wellbore (Figs. 1, 5, [0037], [0039]; the polymer jacket 68 is heated and melted. Examiner’s note: the limitation “configured to melt based on . . . a temperature in the wellbore” is an intended use of the apparatus, and is therefore interpreted to only require the ability to so perform.).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Varkey in view of “Liu” (WO 2017/157446).
Regarding claim 5, Varkey discloses the claimed invention as applied to claim 4, above.
Varkey discloses 5. The electrical cable of claim 4, wherein the conductive binder is selected to have a melting point lower than a formation temperature (Figs. 1, 5, [0037], [0039]; the polymer jacket 68 is heated and melted at a temperature that is lower than a predetermined temperature).
Varkey does not disclose wherein the conductive binder is configured to melt to form the liquid conductor proximate to the subsurface formation.
Liu discloses the conductive binder is configured to melt to form the liquid conductor proximate to the subsurface formation (page 8, lines 11-13; the cable body is subjected to increased temperature to activate the polymeric material).
It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have constructed Varkey’s cable with Liu’s structure in order to fill the spaces and voids in the insulation system, as suggested by Liu at page 8, lines 12-13.
Regarding claim 6, Varkey discloses the claimed invention as applied to claim 4, above.
Varkey discloses 6. The electrical cable of claim 4, wherein the conductive binder is selected to have a melting point higher than a formation temperature (Figs. 1, 5, [0037], [0039]; the polymer jacket 68 is heated and melted at a temperature that is higher than a predetermined temperature).
Varkey does not disclose wherein the conductive binder is configured to melt to form the liquid conductor when a supplementary heat source is introduced to the electrical cable.
Liu discloses wherein the conductive binder is configured to melt to form the liquid conductor when a supplementary heat source is introduced to the electrical cable (page 8, lines 11-13; the cable body is subjected to increased temperature to activate the polymeric material).
It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have constructed Varkey’s cable with Liu’s structure in order to fill the spaces and voids in the insulation system, as suggested by Liu at page 8, lines 12-13.
Regarding claim 7, Varkey in view of Liu discloses the claimed invention as applied to claim 6, above.
Varkey does not disclose the limitations of claim 7.
Liu discloses 7. The electrical cable of claim 6, wherein the conductive binder is configured to melt and to repair the electrical cable, wherein the supplementary heat source is at least one of a resistive heating from a short circuit in the electrical cable, or an increased power through the electrical cable controlled by a user at surface (page 8, lines 11-13; the cable body is subjected to increased temperature to activate the polymeric material. Examiner’s note: the limitation “an increased power through the electrical cable controlled by a user at surface” is a process limitation in a product claim and is treated in accordance with MPEP 2113. As this process limitation uses a product structure that is the same as the product of Liu, this limitation is therefore disclosed by Liu).
Conclusion
Applicant's amendment 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STANLEY TSO whose telephone number is (571)270-0723. The examiner can normally be reached Tu-Thurs 6am-6pm, alt M 6am-2pm.
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/STANLEY TSO/Primary Examiner, Art Unit 2847