DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicants’ election without traverse of Group I, claims 1-10, in the reply filed on 12/23/2025 is acknowledged.
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12-23-2025.
Drawings
The drawings filed 7/27/2023 are accepted.
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 1-10 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. Specifically, it is unclear what is meant by “and a butane crosslinker to prevent or reduce gas invasion in a downhole environment” Specifically, it is unclear if the claim requires the coating prevent/reduce gas invasion in a downhole environment or if the claim requires the butane crosslinker to perform said functions. Furthermore, it is unclear what objective criteria a skilled artisan would utilize to determine if a component/coating “prevent or reduce gas invasion in a downhole environment.”
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.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Evans et al (US 2022/0034218) in view of Nakamura (US 2009/0012232) and Zondler et al (US 41,82,832).
Evans teaches a downhole tool (abstract) comprising a drill string (herein understood to read on the claimed” drilling assembly”), a sensor apparatus secured to the drilling assembly (abstract). The sensor apparatus comprises one or more sensors coupled to a circuit board (abstract).
Evans is relied upon as above but does not teach at least a portion of the surface of the circuit board is covered with a coating made of an epoxy resin composition comprising one or more benzene rings. However, Nakamura teaches an epoxy resin composition comprising one or more benzene rings (see formulas 7-10) may be utilized to encapsulate electronic components such as circuit boards (0139). Said compositions provide favorable reflow crack resistance, high-temperature storage properties, and excellent reliability (0025). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to encapsulate the circuit board of Evans with the benzene ring containing epoxy encapsulation composition disclosed in Nakamura in order to provide the board with favorable reflow crack resistance, high-temperature storage properties, and excellent reliability. Said epoxy resin also offers a favorable balance over a wide range of properties, including moldability, electrical properties, moisture resistance, heat resistance, mechanical properties, and the level of adhesion to inserts (0002). Said coating is understood “to prevent or reduce gas invasion in a downhole environment" since any encapsulating coating will reduce gas invasion to some extent.
Evans in view of Nakamura is relied upon as above. Specifically, Nakamura teaches an epoxy composition which may comprise diamine curing agents (103) but does not teach the epoxy composition should comprise a butane crosslinker. However, Zondler teaches the use of a 1, 4 diaminobutane derivative as a crosslinker for epoxy compositions (abstract). Siad butane crosslinker is particularly useful in fields of surface protection and in the electrical industry (col 6, lines 9+). Said crosslinker results in longer pot life, easy processing and better color stability (col 12, lines 1+). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize the butane crosslinker taught in Zondler in the epoxy composition of Nakamura. The motivation for doing so would have been to provide a composition with longer pot life, better color stability, and easy processibility.
With regards to claim 2, the epoxy resin of the prior art is compositionally identical to applicant’s preferred epoxy resin of claim 10. Thus, said epoxy resin is understood to be “configured to prevent permeation of helium or hydrogen into the circuit board at least between -15°C and 230°C.”
With regards to claim 3, Nakamura teaches the circuit board comprises one or more electronic components mounted on the surface of the circuit board, and an outer surface of the one or more electronic components is covered with the coating made of the epoxy resin composition (0139).
With regards to claim 4, Nakamura teaches the epoxy resin composition comprises at least two benzene rings (see formulas).
With regards to claim 5, Nakamura teaches the epoxy resin composition comprises at least two ether groups (see formulas).
With regards to claim 6, Nakamura teaches each of the two ether groups is directly linked to a benzene ring (see formulas).
With regards to claims 7 and 8, Nakamura does not teach the claimed coating thickness. However, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the coating thickness of the coating composition through routine experimentation. Specifically, Nakamura teaches the encapsulation epoxy composition provides favorable reflow crack resistance, high-temperature storage properties, and excellent reliability (0025). Thus, it would have been obvious to one ordinary skill in the art at the time the invention was filed to optimize the coating thickness in order to ensure said properties are achieved.
With regards to claim 9, Nakamura teaches the epoxy resin composition comprises a curing agent (herein understood to read on the claimed “hardener component”) comprising at least one anhydride (103).
With regards to claim 10, Nakamura teaches the epoxy resin composition may comprise diglycidyl ethers of bisphenol A (0087)-herein understood to be synonymous with the claimed
bis-[4-(2,3-epoxipropoxi)phenyl]propane.
Response to Arguments
Rejections Under 35 U.S.C. § 103
With regards to the rejection of claims 1-10 under 35 U.S.C. 103 as being allegedly unpatentable over U.S.Patent App. Pub. No. 2022/0034218 ("Evans") in view of U.S. Patent App. Pub. No.
2009/0012232 ("Nakamura"), Applicant argues independent claim 1 has been amended and submits that the amended claims are patentable over the cited art. Specifically, Applicant has amended
independent claim 1 to recite wherein at least a portion of a surface of the circuit board is
covered with a coating made of an epoxy resin composition comprising one or more benzene rings
and “a butane crosslinker to prevent or reduce gas invasion in a downhole environment." Applicants argue neither Nakamura nor Evans, either alone or in combination, disclose (1) encapsulating the circuit board to reduce gas invasion, or (2) an epoxy resin composition for the coating that includes a butane crosslinker. Said argument is noted but is moot in view of the new grounds of rejection.
For the reasons noted above, Applicant’s arguments are not persuasive and the claims are rejected for the reasons set forth herein.
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are 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 KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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, Callie Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787
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