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 .
Application Status
This communication is in response to the Amendment and Request for Reconsideration filed 14 October 2025. Claims 1-4 and 6-21 are pending in the application. Claims 1 and 6-13 have been amended. Claim 5 has been cancelled. Claims 15-21 are withdrawn from consideration as being drawn to a non-elected invention.
The 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejection of claim 7 is hereby withdrawn in light of the amendments to the claims.
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.
Claims 1-4, 6-10, 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Ekambaram et al. (U. S. Patent Application Publication No. 2025/0172148) in view of Kumar et al. (U. S. Patent No. 9,809,712) and Cheney et al. (U. S. Patent Application Publication No. 2013/0167965).
As to claim 1, Ekambaram et al. discloses a system for reducing scale inhibitor demand for protecting an electrical submersible pump (ESP) 22 for downhole service in a wellbore comprising (FIG.’s 1-3, para. 0019, pumping system 22, __preamble limitation of intended use/results within capability of the applied art):
a motor 24 (FIG. 1, para. 0020) comprising a housing (shown surrounding motor 24, housing 54 is shown around pump that houses a motor stator, not shown, electrical ESP motors inherently have at least a stator and a rotor1);
a pump intake 48 Id., coupled to a pump stage 50 (para. 0021), wherein the pump stage 50 comprises:
an impeller 54 (FIG. 2, para. 0022); and a diffuser 58 Id.,
and a diffuser 58 Id., wherein the pump stage 50 is operatively coupled to the motor stator (as shown in FIG. 1, pump stage 50 connected to motor 24 that inherently includes a stator);
Ekambaram is silent as to a hydrophobic coating substantially covering each surface of the motor, motor stator, housing, pump stage, impeller, and diffuser, that is in direct contact with fluids in the wellbore. In this regard, Kumar teaches hydrophobic coatings that are generally applicable to internal and external components of an ESP system (col. 6, ll. 25-45, inter alia). With this in mind, it would have been obvious to one having ordinary skill in the art before the effective filing date of the instant application to modify Ekambaram by treating the exposed surfaces of components with a hydrophobic coating substantially covering surfaces in direct contact with wellbore fluids to take advantage of their favorable anti-scale, anti-corrosion and low friction properties as taught by Kumar (col. 6, ll. 26-30).
Ekambaram is also silent as to the hydrophobic coating comprises a diamond-like carbon coating and a second material comprising zinc oxide. Kumar further teaches the hydrophobic coating comprises a diamond-like carbon coating (col. 2, ll. 10-15, “diamond like carbon doped with 10 to 35 atomic percentage of Si (silicon). O (oxygen), F, (fluorine)…”, the dopant applied within the overlapping range of atomic percentage(s) claimed). And, Cheney teaches coating a DLC intermediate layer with zinc-oxide (para.’s 0032 & 0045). With this in mind, it would have been obvious to one having ordinary skill in the art before the effective filing date of the instant application to form the coating of DLC with a second material of zinc-oxide__materials known in the art for their suitable intended use in wear resistant, anti-corrosion coatings in applications involving fluid transport, as taught by Cheney (para. 0004). MPEP 2144.07.
As to claim 2, Ekambaram further discloses the motor 24 further comprises a motor head, or a motor base (top and bottom of motor 24 as shown in FIG. 1 form a base and head accordingly).
As to claim 3, once modified, Kumar further teaches the hydrophobic coating comprises a polymer selected from the group consisting of polytetrafluoroethylene (PTFE) (col. 3, ll. 30-50, “[e]xamples are polytetrafluoroethylene”), fluorinated ethylenepropylene (FEP), perfluoro alkoxy (PFA), phenolics, polyether ether ketone (PEEK), and polyphenylene sulfide (PPS).
As to claim 4, once modified, Kumar further teaches the hydrophobic coating comprises a ceramic (col. 2, ln. 66).
As to claims 6-8, once modified, Kumar further teaches the hydrophobic coating comprises a diamond-like carbon coating, comprising a dopant, with at least one member selected from the group consisting of fluorine, oxygen, nitrogen, and silicone, the diamond-like coating comprises from 5 atomic percentage (at %) to 20 at % of the dopant (col. 2, ll. 10-15, “diamond like carbon doped with 10 to 35 atomic percentage of Si (silicon). O (oxygen), F, (fluorine)…”, the dopant applied within the overlapping range of atomic percentage(s) claimed).
As to claim 9, once modified, Kumar further teaches a contact angle for the diamond-like carbon coating is from 90 to 180 degrees (FIG. 9, showing example coatings having contact angles from over 60 to about 140 degrees __values within the range claimed).
As to claim 10, once modified, Kumar further teaches a thickness of the diamond-like carbon coating is from 0.5 µm to 50 µm (col. 5, ll. 14-17, 0.01 to 100 micrometers __covering the claimed range).
As to claim 12, the applied art is discussed above but is silent as to the diamond-like carbon coating has a hardness of from 8 GPa to 25 GPa. To this point, Kumar teaches the DLC coating having hardness greater than 100 ksi but not the specific range claimed. Kumar further evidences that hardness is a result effective parameter that affects wear resistance (col. 2, ll. 19-25). With this in mind, one having ordinary skill in the art would recognize hardness is a routine optimization. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify the DLC coating so that is has hardness values in the claimed range in order to optimize wear resistance as indicated by Kumar Id., since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art. MPEP 2144.05(II).
As to claim 13, Ekambaram further discloses a produced hydrocarbon (during normal intended use, hydrocarbon(s) well fluids are capable of being produced from the well using the ESP system (para. 0002)). Once modified, the applied art teaches or suggests the produced hydrocarbon forms a film between a produced water and the diamond-like carbon coating (upon Kumar modification of coated surfaces on treated components, the hydrophobic properties of the Kumar coating would produce the claimed result).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Ekambaram et al. (U. S. Patent Application Publication No. 2025/0172148) in view of Kumar et al. (U. S. Patent No. 9,809,712) and Cheney et al. (U. S. Patent Application Publication No. 2013/0167965) as applied to claim 1 above, further in view of Zadesky et al. (U. S. Patent Application Publication No. 2013/0128462).
As to claim 11, the applied art is discussed above but is silent as to the diamond-like carbon coating has a thermal conductivity of from 400 Wm-1K 1 to 1500 Wm1-K1. In this regard, Zadesky teaches using diamond-like coatings (DLC) to increase the thermal conductivity of a component (para.’s 0036 & 0041, inter alia), __evidencing that thermal conductivity is a result effective parameter that affects heat dissipation, Id. With this in mind, one having ordinary skill in the art would recognize that applying a DLC coating to increase thermal conductivity as a routine optimization. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify the applied art with a DLC coating having thermal conductivity in the range claimed in order to optimize heat dissipation of the treated components as indicated by Zadesky Id., since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art. MPEP 2144.05(II).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Ekambaram et al., (U. S. Patent Application Publication No. 2025/0172148) in view of Kumar et al. (U. S. Patent No. 9,809,712) and Cheney et al. (U. S. Patent Application Publication No. 2013/0167965) as applied to claim 1 above, further in view of Bailey et al. (U. S. Patent Application Publication No. 2010/0206553).
As to claim 14, the applied art is silent as to a scale inhibitor applied by a scale inhibitor squeeze (SIS) treatment.2 In this regard, Bailey teaches using a chemical injection system for injecting scale inhibitors into a wellbore to prevent deposits from forming on equipment in the well (para.’s 0065, 0074, 0140, inter alia). With this in mind, it would have been obvious to one having ordinary skill in the art before the effective filing date of the instant application to apply a scale inhibitor using a SIS treatment (interpreted as providing resulting material characteristics equivalent to chemical injection) in order to prevent to build up of scale deposits on the equipment in the well as suggested by Bailey, Id.
Response to Arguments
Applicant’s arguments with respect to the 35 U.S.C 103 rejections over Ekambaram and Kumar have been considered. Applicant’s amendments have necessitated new grounds of rejection using the teachings of Cheney in combination with the applied art as set forth above.
Applicant argues on p. 6 of the response that “Kumar states that "the coating can be applied to internal, external, or both ... of articles." Id. Kumar goes on to list specific examples of "articles" - inner wall tube, pipe, safety valve, flow control valves, to name a few.” “Kumar further lists "electric submersible pump (ESP) flow intake sub" as another example of an "article.Id.” “Contrary to the Office's statement, Kumar does not teach that the coating can be applicable to "components of an ESP system." “Rather, Kumar lists specific articles, e.g., an ESP flow intake sub, and states that the coating can be applied to the internal/external surfaces of such articles.” “In particular, Kumar does not describe or suggest "the motor" or the "motor stator" as articles to which the coating can be applied.” The Examiner respectfully disagrees. Kumar’s hydrophobic coating(s) are applicable to a host of ESP components as indicated by Applicant. Once it was known to use such coatings generally, extending their application to other ESP components such as the motor and stator would be well within the level of ordinary skill in the art in order to take advantage of their desirable wear and corrosion resistance properties. This argument must fail.
Applicant has not presented any substantive arguments with regard to the rejections of the dependent claims over the art of record including the combinations of proposed modification, rationale, or motivations to make those combinations. Applicant simply asserts that they are allowable for the same reasons made for the independent claims.
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 KENNETH J HANSEN whose telephone number is (571)272-6780. The examiner can normally be reached Monday Friday 7:00 AM to 4:00 PM (MT).
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/KENNETH J HANSEN/Primary Examiner, Art Unit 3746
1 Refer to https://en.wikipedia.org/wiki/Stator.
2 The phrase “applied by a scale inhibitor squeeze (SIS) treatment” is a product-by-process limitation. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). MPEP 2113(I).