DETAILED ACTION
Claims 1-23 are pending.
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
The most recent claim objections are being withdrawn in light of the current claim amendments.
Applicant's arguments filed 06/18/2025 have been fully considered but they are not persuasive.
Applicant’s representative argues the following:
“[...] Bebak describes an ‘[a]ssembly 11 [that] is suspended from a release adapter 17 located at the end of a string of coiled tubing 19 extending into bore 15.’ See Bebak, col. 2 In. 29-32. In other words, the release adapter 17 of Bebak (the alleged interconnect of claim 1) is formed with the coiled tubing 19 itself and moves with the coiled tubing 19 when released, not as part of the electric submersible artificial lift system. For example, the progression from FIGS. 2A-2B to FIGS. 5A and 5B of Bebak shows the release adapter 17 as separate from the pump 21, and gets released from the system with the coiled tubing 19. This is different from the claimed system of independent claim 1, which recites that the ‘interconnect [is] at an uphole end of the electric submersible artificial lift system.’ Thus, the mapping of the adapter 17 of Bebak to the interconnect of independent claim 1 is improper, since Bebak has not been shown to disclose or suggest the interconnect as recited in independent claim 1. Along these same lines, the cited portions of Bebak fail to disclose or suggest ‘an interconnect at an uphole end of the electric submersible artificial lift system’ and configured to ‘couple to [the] cable... to support the artificial lift system’, as recited in independent claim 1.”
Examiner respectfully disagrees. Examiner notes that the limitations in contention are taught by Bebak (see most recent claim 1 rejection), however, the claims are broad in nature. Specifically, the configuration, as shown in figure 1 in Bebak, teaches for the “interconnect” (17) to be at an uphole end of “electric submersible artificial lift system” (11). Examiner believes that rather the limitation reciting “[...] an interconnect at an uphole end of the electric submersible artificial lift system...” is not taught chronologically or at a specific time how Applicant’s representative is arguing, i.e., the “interconnect” being coupled to the “electric submersible artificial lift system” after the releasing of the “cable. Additionally, Examiner notes that this specific language is not recited in claim 1.
Furthermore, Applicant’s representative argues the following:
“In addition, the examiner asserts that ‘the ‘cable’ is being interpreted as at least the coiled tubing 19 [of Bebak] which comprises various lines therein, commensurate to that of the instant application, absent specific detail[.]’ See Office Action, Pages 4-5. The examiner further relies on Goodwin to allegedly disclose a cable: ‘... tool C may be conveyed by any device known in the art of instruments through a wellbore, including as non limiting examples armored electrical cable (‘wireline’), drill-pipe, coiled tubing, production tubing and slickline[.]’ See Office Action, Page 5. Applicant respectfully disagrees. The existence of different conveyance tools as described in Goodwin does not mean that all conveyance tools are interchangeable, and a person having ordinary skill in the art would recognize differences between a coiled tubing and a cable and know these not to be interchangeable in all instances of tool conveyance. Specifically, the cited portions of Bebak describe a coiled tubing, and a substitution of the alleged cable of Goodwin into the system of Bebak would be improper. For example, Bebak describes use of coiled tubing 19 with ‘a power cable 31 and a hydraulic capillary tube 33 [that] extend through coiled tubing 19[.]’ See Bebak, col. 2 In. 35-37. A person with ordinary skill in the art would not be motivated to substitute the coiled tubing 19 of Bebak, which is described as internally containing the power cable 31 and hydraulic capillary tube 33 within it, with the cable of Goodwin at least because a person having ordinary skill in the art could not substitute a cable for a coiled tubing without additional modification that would alter the function of the coiled tubing 19 of Bebak. Thus, the Office Action fails to provide sufficient motivation to substitute the coiled tubing of Bebak with the cable of Goodwin and arrive at the features of independent claim 1.”
Examiner respectfully disagrees. Firstly, Examiner notes that the “cable” is being interpreted as comprising an outer sheath “116” with wires/lines, e.g., “218” (electrical and hydraulic) therein in light of the instant application (paragraphs [0020, 0023-0024, 0027-0029, 0034] and figures 2-5 and 7) for downhole communication means purposes. Specifically, paragraph [0020] cites: “[...] a cable 116, such as a wireline, slickline, e-line or other type of cable, supports the artificial lift string.” With that being said, Bebak teaches a coiled tubing “19” (flexible tubing) comprising both electrical wires, e.g., “31” and “35”, and hydraulic lines “33” therein which is similar structurally (i.e., flexible tubing covering electrical wires) and functionally (i.e., by providing conveyance and downhole communication means) to that of the “cable” in the instant application. However, due to Bebak being silent in regards to having its conveyance being a “cable” (such as, Applicant’s admitted types of “cables” which include from “a wireline, slickline, e-line or other type of cable”), Goodwin was introduced to cure the deficiencies under a 35 U.S.C. § 103 rejection (see most recent rejection). Goodwin teaches that wellbore conveyances are known to be from a group including at least: “[...] armored electrical cable ("wireline"), drill-pipe, coiled tubing, production tubing and slickline” (see paragraph [0077] of Goodwin). Having a wireline-type cable comprising downhole communication means therein (as taught by Goodwin) be substituted for the coiled tubing conveyance (as taught by Bebak) would have been obvious to one skilled in the art before the effective filing date of the invention (AIA ), as both Bebak and Goodwin are meant to do the same thing (i.e., convey tool(s) in the wellbore and provide downhole communication means). If Applicant’s representative is stating that the combination of both the references are incompatible due to one teaching away from another (or, something of the like), then detailed arguments need to be presented by the Applicant’s representative, as Examiner respectfully fails to see why the conveyance, as taught by Goodwin, cannot be substituted with Bebak’s conveyance for downhole communication means.
Lastly, after further examination of the Bebak, Examiner notes that claim 21 is broad in nature when it comes to the limitation reciting: “[...] a body configured to grip an exterior of the cable...”. Examiner believes the rejection did not clearly articulate in the previous Office action how “gripping” (that is indirect gripping) was being considered and has been updated in the rejection herein. Examiner highly suggests incorporating more claim language, such as, but not limited to, amending the claim to include for the “body” to have direct gripping contact to “grip an exterior of the cable” to overcome the prior art rejection herein and advance prosecution. Similarly, the same can be applied to claim 1 and its corresponding dependent claim(s) discussing the similar limitation.
Claim Rejections - 35 USC § 112
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.
Claim 22 is 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.
Claim 22 recites: “[...] wherein the line connector is configured to allow the electric and/or hydraulic line to release from the aspect of the artificial lift system after release of the interconnect from the cable.” Though there is support for each of the “electric and/or hydraulic line” and the “interconnect” to individually separate (paragraphs [0029-0035] of the instant specification), there is a lack of support for the chronological order of having the electric and/or hydraulic line release after releasing the interconnect from the cable.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claim(s) 1, 5-14, 16-20 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bebak et al. (US Patent Number 6,571,879 B1; herein “Bebak”) in view of Goodwin et al. (US Publication Number 2009/0200016 A1; herein “Goodwin”).
In regards to claim 1, Bebak discloses: An electric submersible artificial lift system (11), comprising:
an electric motor (25) configured to reside in a wellbore (13 — figure 1 and column 2, lines 27-42);
a fluid end (21) coupled to and configured to be driven by the electric motor, the fluid end configured to reside in the wellbore and configured to propel wellbore fluids through the wellbore when driven by the electric motor (figure 1 and column 2, lines 27-42); and
an interconnect (17) at an uphole end of the electric submersible artificial lift system (figure 1), the interconnect configured to (i) couple to a cable (Examiner notes that the “cable” is being interpreted as at least the coiled tubing 19 which comprises of various lines therein, commensurate to that of the instant application, absent specific detail) extending from a topside facility into the wellbore to support the artificial lift system depending from the cable (figures 1-2 and column 2, lines 27-42) and (ii) release from the cable while the artificial lift system is residing in the wellbore (i.e., releasement via 17 — column 2, line 58- column 3, line 6); and
a line connector (37) configured to couple an electric and/or hydraulic line (35) extending from a topside facility into the wellbore to an aspect of the artificial lift system, the line connector configured to allow the electric and/or hydraulic line to release from the aspect of the artificial lift system while the artificial lift system is residing in the wellbore (column 2, lines 36-42, 58- column 3, line 6).
However, Bebak is explicitly silent in regards to having a “cable”.
Nonetheless, Goodwin cites “[...] tool C may be conveyed by any device known in the art for conveyance of instruments through a wellbore, including as non limiting examples armored electrical cable ("wireline"), drill-pipe, coiled tubing, production tubing and slickline” (paragraph [0077]).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the coiled tubing conveyance, as taught by Bebak, with an electrical cable, as taught by Goodwin, in light of simple substitution of a known way of conveying tools in wellbore(s) since Goodwin expressly teaches known alternatives (further supported by MPEP 2143, section I, subsection B).
In regards to claim 5, Bebak further discloses: wherein the interconnect comprises a plurality of line connectors (37) each configured to couple an electric and/or hydraulic line (35) extending from the topside facility into the wellbore to an aspect of the artificial lift system (column 2, lines 36-42, 58- column 3, line 6).
In regards to claim 6, Bebak further discloses: wherein the interconnect is configured to release the cable before the electric and/or hydraulic line connector allows the electric and/or hydraulic line to release from the aspect of the artificial lift system (column 2, lines 36-42, 58- column 3, line 6).
In regards to claim 7, Bebak further discloses: wherein the cable comprises the electric and/or hydraulic line (column 2, lines 36-42, 58- column 3, line 6) and wherein the interconnect comprises a cable connector (i.e., combination of elements between the “cable” and 17) configured grip the exterior of the cable (figure 2A).
In regards to claim 8, Bebak further discloses: wherein the interconnect is configured to release from the cable in response to a specified tension applied to the cable (column 2, line 58- column 3, line 6).
In regards to claim 9, Bebak further discloses: wherein the interconnect comprises:
a tubular housing configured to internally receive the cable (as shown in figures 2-4);
a wedge (45) in the tubular housing moveable into gripping contact (i.e., indirect gripping contact) with an exterior of the cable (as shown in figures 2A and 3); and
a cap (47) coupled to the tubular housing retaining the wedge in the tubular housing (as shown in figure 3), the cap configured to release from the tubular housing upon a specified tension applied to the cable (as shown in figure 4 | see column 2, line 58- column 3, line 6).
In regards to claim 10, Bebak further discloses: wherein the interconnect is configured to release from the cable in response to a signal supplied to the interconnect (column 2, line 58- column 3, line 6).
In regards to claim 11, Bebak further discloses: wherein the interconnect comprises:
a tubular housing configured to internally receive the cable (as shown in figures 2-4);
a body configured to grip (i.e., indirect gripping contact) an exterior of the cable (as shown in figures 3-4); and
an actuator (as shown in figures 3-4) actuable to release the interconnect from gripping the cable in response to a signal (column 2, line 58- column 3, line 6).
In regards to claim 12, Bebak further discloses: wherein the body comprises a wedge (45) moveable to grip (i.e., indirect gripping contact) the cable by the actuator (column 2, line 58- column 3, line 6); and
wherein the actuator comprises a hydraulic piston (55) coupled to a hydraulic line (33) extending from a topside facility into the wellbore, the piston movable by a hydraulic signal transmitted on the hydraulic line (column 2, line 58- column 3, line 6).
In regards to claim 13, Bebak further discloses: an outer housing (43) extending to an uphole end of the artificial lift system (figures 5), the outer housing comprising a profile (i.e., of 43) adapted to engage with a corresponding profile of a retrieval tool for retrieving the artificial lift system (column 2, lines 43-57).
In regards to claim 14, Bebak discloses: A method (abstract and claim 11), comprising:
supporting an electric submersible artificial lift system (11) at an interconnect (17) thereof by a cable (Examiner notes that the “cable” is being interpreted as at least the coiled tubing 19 which comprises of various lines therein, commensurate to that of the instant application, absent specific detail) as the artificial lift system is lowered into a wellbore (13), the cable extending from a topside facility (column 2, lines 27-42);
powering the artificial lift system via the cable (column 2, lines 36-42); and
releasing (i.e., releasement via 17) the cable from the artificial lift system while the artificial lift system is in the wellbore (column 2, line 58- column 3, line 6).
However, Bebak is explicitly silent in regards to having a “cable”.
Nonetheless, Goodwin cites “[...] tool C may be conveyed by any device known in the art for conveyance of instruments through a wellbore, including as non limiting examples armored electrical cable ("wireline"), drill-pipe, coiled tubing, production tubing and slickline” (paragraph [0077]).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the coiled tubing conveyance, as taught by Bebak, with an electrical cable, as taught by Goodwin, in light of simple substitution of a known way of conveying tools in wellbore(s) since Goodwin expressly teaches known alternatives (further supported by MPEP 2143, section I, subsection B).
In regards to claim 16, Bebak further discloses: supplying a hydraulic signal via the cable (column 2, line 58- column 3, line 6).
In regards to claim 17, Bebak further discloses: after releasing the cable from the artificial lift system, retrieving the artificial lift system by engaging a profile (i.e., of 43) in an uphole end of the artificial lift system to a retrieval tool (column 2, lines 43-57).
In regards to claim 18, Bebak further discloses: wherein releasing comprises releasing in response to at least one of a signal or a specified tension on the cable (see column 2, line 58- column 3, line 6).
In regards to claim 19, Bebak discloses: An artificial lift system (11), comprising:
an electric powered fluid end (21) configured to propel wellbore fluids through a wellbore (13 — figure 1 and column 2, lines 27-42); and
a cable (17) interconnect coupled to the electric powered fluid end (figures 1-2), the interconnect configured to couple to a cable (Examiner notes that the “cable” is being interpreted as the coiled tubing 19 which comprises of various lines therein, commensurate to that of the instant application, absent specific detail) to support and power the electric powered fluid end and configured to release (i.e., releasement via 17) from the cable while the electric powered fluid end is in the wellbore (column 2, line 58- column 3, line 6).
However, Bebak is explicitly silent in regards to having a “cable”.
Nonetheless, Goodwin cites “[...] tool C may be conveyed by any device known in the art for conveyance of instruments through a wellbore, including as non limiting examples armored electrical cable ("wireline"), drill-pipe, coiled tubing, production tubing and slickline” (paragraph [0077]).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the coiled tubing conveyance, as taught by Bebak, with an electrical cable, as taught by Goodwin, in light of simple substitution of a known way of conveying tools in wellbore(s) since Goodwin expressly teaches known alternatives (further supported by MPEP 2143, section I, subsection B).
In regards to claim 20, Bebak further discloses: a retrieval tool profile (i.e., of 43 — see column 2, lines 43-57).
In regards to claim 21, Bebak discloses: An electric submersible artificial lift system (11), comprising:
an electric motor (25) configured to reside in a wellbore (13 — figure 1 and column 2, lines 27-42);
a fluid end (21) coupled to and configured to be driven by the electric motor, the fluid end configured to reside in the wellbore and configured to propel wellbore fluids through the wellbore when driven by the electric motor (figure 1 and column 2, lines 27-42); and
an interconnect (17) at an uphole end of the electric submersible artificial lift system (figure 1), the interconnect configured to (i) couple to a cable (Examiner notes that the “cable” is being interpreted as the coiled tubing 19 which comprises of various lines therein, commensurate to that of the instant application, absent specific detail) extending from a topside facility into the wellbore to support the artificial lift system depending from the cable (figures 1-2 and column 2, lines 27-42) and (ii) release from the cable while the artificial lift system is residing in the wellbore (i.e., releasement via 17 — column 2, line 58- column 3, line 6); and
wherein the interconnect is configured to release from the cable in response to a signal supplied to the interconnect (column 2, line 58- column 3, line 6), and the interconnect comprises:
a tubular housing (i.e., unlabeled outermost housing) configured to internally receive the cable (as shown in figures 2-4);
a body (47) configured to grip (i.e., indirect gripping contact) an exterior of the cable (as shown in figures 3-4); and
an actuator (as shown in figures 3-4) actuable to release the interconnect from gripping the cable in response to the signal (column 2, line 58- column 3, line 6), and
wherein the body comprises a wedge (45) moveable to grip the cable by the actuator and the actuator comprises a hydraulic piston (55) coupled to a hydraulic line (33) extending from a topside facility into the wellbore, the piston movable by a hydraulic signal transmitted on the hydraulic line (column 2, line 58- column 3, line 6).
However, Bebak is explicitly silent in regards to having a “cable”.
Nonetheless, Goodwin cites “[...] tool C may be conveyed by any device known in the art for conveyance of instruments through a wellbore, including as non limiting examples armored electrical cable ("wireline"), drill-pipe, coiled tubing, production tubing and slickline” (paragraph [0077]).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the coiled tubing conveyance, as taught by Bebak, with an electrical cable, as taught by Goodwin, in light of simple substitution of a known way of conveying tools in wellbore(s) since Goodwin expressly teaches known alternatives (further supported by MPEP 2143, section I, subsection B).
In regards to claim 23, Bebak further discloses: wherein the interconnect is fixed to or integrated with a housing (e.g., 21) of the artificial lift system at the uphole end of the electric submersible artificial lift system (figures 1-2).
Claim(s) 2-4 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bebak et al. (US Patent Number 6,571,879 B1; herein “Bebak”) in view of Goodwin et al. (US Publication Number 2009/0200016 A1; herein “Goodwin”) in further view of Head et al. (US Publication Number 2019/0017357 A1; herein “Head”).
In regards to claim 2, Bebak discloses: wherein the electric motor, fluid end and interconnect are configured to reside within a casing (13) of the wellbore.
However, Bebak in view of Goodwin are silent in regards to having a production tubing.
Nonetheless, Head teaches a downhole pumping system (abstract and figures 1-2), similar to that of Bebak. Head teaches for a production tubing (4) incorporated within the casing (1) to have the pumping system reside there within (paragraph [0019]).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the wellbore system, as taught by Bebak, to include a production tubing, as taught by Head, to enable the electrical powered device to be installed and operated (paragraph [0019] — Head). Furthermore, the wellbore system of Head allows for positioning/setting the pumping system anywhere in the wellbore, meeting the same end-result as Bebak.
In regards to claim 3, Bebak in view of Goodwin and Head disclose claim 2 above.
However, the modification of Bebak in view of Goodwin and Head are silent in regards to: an outer housing comprising a seal and a latch configured to seal and latch into a corresponding profile of the production tubing.
Nonetheless, Head teaches a downhole pumping system (abstract and figures 1-2), similar to that of Bebak. Head teaches: an outer housing comprising a seal and a latch (2/3/6/7) configured to seal and latch into a corresponding profile of the production tubing (paragraphs [0019-0020]).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the wellbore system, as taught by Bebak, to include “an outer housing”, as taught by Head, to enable the electrical powered device to be installed and operated (paragraph [0019] — Head). Furthermore, the wellbore system of Head allows for positioning/setting the pumping system anywhere in the wellbore, meeting the same end-result as Bebak.
In regards to claim 4, Bebak in view of Goodwin and Head disclose claim 2 above.
However, the modification of Bebak in view of Goodwin and Head are silent in regards to a packer configured to seal and grip an interior wall of the production tubing.
Nonetheless, Head teaches a downhole pumping system (abstract and figures 1-2), similar to that of Bebak. Head teaches a packer (2 — paragraphs [0019-0020]).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the wellbore system, as taught by Bebak, to include a packer, as taught by Head, to enable the electrical powered device to be installed and operated (paragraph [0019] — Head). Furthermore, the wellbore system of Head allows for positioning/setting the pumping system anywhere in the wellbore, meeting the same end-result as Bebak.
In regards to claim 15, Bebak discloses: wherein the releasing comprises releasing after positioning the artificial lift system (column 2, line 58- column 3, line 6).
However, Bebak in view of Goodwin are silent in regards to: sealing and supporting the artificial lift system in a production tubing.
Nonetheless, Head teaches a downhole pumping system (abstract and figures 1-2), similar to that of Bebak. Head teaches for a production tubing (4) incorporated within the casing (1) to have the pumping system be sealed and supported there within (paragraph [0019]).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the wellbore system, as taught by Bebak, to include a production tubing for sealing and supporting the artificial lift system, as taught by Head, to enable the electrical powered device to be installed and operated (paragraph [0019] — Head). Furthermore, the wellbore system of Head allows for positioning/setting the pumping system anywhere in the wellbore, meeting the same end-result as Bebak.
Conclusion
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/NEEL GIRISH PATEL/Patent Examiner, Art Unit 3676
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