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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/29/2025 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Objections
Claim 20 objected to because of the following informalities:
Claim 20 is missing semicolon at line 5 to separate different clauses.
Claim 20 line 5, "towards the surface"
should read
--towards the surface;--
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claim 18, recites “controlling, via a first inflow control device coupled to the first wellbore within the first subsurface storage zone, a flow of the second fluid into the first wellbore; and halting, via the first inflow control device, a flow of the first fluid into the first wellbore.”
non-structural nonce term “inflow control device” paired with the function of controlling an flow of the second fluid into the first wellbore, and halting a flow of the first fluid into the first wellbore.
Claim 19, recites “controlling, via a second inflow control device coupled to the first wellbore within the second subsurface storage zone, the flow of the second fluid into the first wellbore; and selectively producing the second fluid from the first subsurface storage zone and the second subsurface storage zone via the first inflow control device and the second inflow control device.”
non-structural nonce term “inflow control device” paired with the function of controlling the flow of the second fluid into the first wellbore and selectively producing the second fluid from the first subsurface storage zone and the second subsurface storage zone via the first inflow control device and the second inflow control device.
The specification discusses an inflow control device with reference characters 114 and 118, and according to applicant’s paragraph [0021], an inflow control device may refer to one or a combination of inflow control valves, electronic inflow control devices, density autonomous inflow control devices, density autonomous inflow control devices, autonomous devices, etc..
Applicant’s paragraph [0021] recites: The inflow control device 118 and an inflow control device 114 may help mitigate gas production from the gas caps 122, 132. For example, the inflow control devices 114, 118 (ICDs) may be configured to manage inflow control of fluids during production and mitigate gas inflow into the first wellbore 140. In some implementations, the ICDs 114, 118 may include any one or a combination of inflow control valves (ICVs), electronic inflow control devices (EICDs), autonomous inflow control devices (AICDs), density autonomous inflow control devices (DAICDs), etc. In some implementations, the ICDs 114, 118 may be autonomous devices configured to close upon gas detection. These autonomous devices may be configured to identify liquids and gases based on measured fluid properties such as density, viscosity, etc., although other AICDs may be used. In other implementations, the ICDs 114, 118 may be remotely operated by an operator. During discharge of a storage zone, a water table may move toward the producing well (first wellbore 140) as water is produced to the surface 101. The gas cap 132, for example, may follow the water table. Upon gas breakthrough at the ICDs 114, 118, the ICDs 114, 118 may be configured to close and halt flow into the first wellbore 140. Gas inflow may lower the efficiency of power generation at the turbine 108 and hydroelectric generator 145.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 14 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 14 recites “injecting the first fluid into the first subsurface storage zone via a second wellbore”. However, claim 14 depends from claim 13 which recites “injecting the first fluid into the first subsurface storage zone comprises injecting the first fluid into the first subsurface storage zone via the first wellbore”. As best understood, applicant’s disclosure does not support injecting the first fluid into the first subsurface storage zone from both a first wellbore and a second wellbore. Applicants disclosure appears to only discuss injecting a first fluid into the firs subsurface storage zone via the second wellbore 150 t6o form the gas cap 122 to form the downhole accumulator as discussed in applicant’s paragraph [0031].
Claim Rejections - 35 USC § 102
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.
Claim(s) 11, 12, 13, 16, 17, 19, 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sweatman et al. (US 9726157), hereinafter ‘Sweatman’.
Sweatman discloses:
11. (Currently Amended) A method comprising:
forming a subsurface energy storage system including at least a first subsurface storage zone (120a) and a second subsurface storage zone (120b),
wherein the first subsurface storage zone and the second subsurface storage zone are coupled via a first wellbore (108) extending from an above ground surface, and
wherein at least the first subsurface storage zone includes a first plurality of fractures configured to store fluid (Col. 4 lines 5-67 discloses fractures in zone 113, Col. 6 lines 9-42 discloses injecting fluid into formations 102; Col. 8 lines 22-35 discloses selectively opening and closing the flow control devices 118 therefore fluid is stored in the fractures for at least some time); and
pressure isolating the first subsurface storage zone from the second subsurface storage zone (zones 120a, 120b, 120c are pressure isolated via the flow control devices 116 and 118, see Fig. 1).
12. (Currently Amended) The method of claim 11, further comprising:
generating the first plurality of fractures within the first subsurface storage zone (Col. 4 lines 50-67 discloses generating the fracture; Col. 14 lines 31-34 discloses "fractures created in the production zone 113" which indicates generating the fractures within zones 120a, 120b, 10c);
injecting a first fluid into the first subsurface storage zone (Col. 8 lines 2-7 discloses injecting fluid into zone 120a, a first fluid is interpreted to be a first amount of fluid); and
injecting, via the first wellbore, a second fluid into at least the first subsurface storage zone (a second fluid is interpreted to be an amount of fluid that is injected after the first amount of fluid of the "first fluid"), wherein the second fluid compresses the first fluid (injecting the second amount of fluid into the zone 120a when the first amount of fluid is already in the zone 120a, the first amount of fluid would be compressed, Col. 6 discloses the fluid can be a mixture of solids, liquids, and/or gases); and
producing the second fluid through the first wellbore (the second fluid is produced through the first wellbore when further fluid is injected into zone 120a and then extracted via the production flow control device 118).
13. (Currently Amended) The method of claim 12, wherein injecting the first fluid into the first subsurface storage zone forms a downhole accumulator, and wherein injecting the first fluid into the first subsurface storage zone comprises injecting the first fluid into the first subsurface storage zone via the first wellbore (Col. 8 lines 2-7 discloses injecting fluid into zone 120a, a first fluid is interpreted to be a first amount of fluid, zone 120a is effectively an accumulator as it accumulates fluid).
16. (Previously Presented) The method of claim 12, further comprising: generating a second plurality of fractures within the second subsurface storage zone (Col. 4 lines 50-67 discloses generating the fracture; Col. 14 lines 31-34 discloses "fractures created in the production zone 113" which indicates generating the fractures within zones 120a, 120b, 10c); ); injecting the first fluid into the second subsurface storage zone; and injecting, via the first wellbore, the second fluid into the second subsurface storage zone, wherein the second fluid compresses the first fluid (injecting the second amount of fluid into the zone 120b when the first amount of fluid is already in the zone 120b, the first amount of fluid would be compressed, Col. 6 discloses the fluid can be a mixture of solids, liquids, and/or gases).
17. (Currently Amended) The method of claim 12, further comprising:
isolating, via at least a first packer, the first subsurface storage zone from the second subsurface storage zone (valves 116 and 118 have seals which are interpreted to be a form of packer).
19. (Currently Amended) The method of claim 18, further comprising:
coupling the second subsurface storage zone to the first wellbore via a second inflow control device;
actuating the second inflow control device between the open position and the closed position; and
selectively producing the second fluid from the first subsurface storage zone and the second subsurface storage zone via the first inflow control device and the second inflow control device (116, 118 selectively produces the second fluid from the first subsurface storage zone 120a; Col. 7 lines 62-67, Col. 8 lines 1-9; Col. 12 lines 1-27).
20. (Currently Amended) The method of claim 12, wherein producing the second fluid through the first wellbore comprises:
producing, via the first wellbore, the second fluid from at least one of the first subsurface storage zone and the second subsurface storage zone, wherein a downhole pressure propels the second fluid towards the surface
receiving, via a turbine at the surface, the second fluid; and generating power via a generator coupled to the turbine (Col. 3 lines 41-54, see Figure 1).
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) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sweatman in view of Heidenreich (US 7281371).
Regarding claim 15, Sweatman discloses the method of claim 12, but does not disclose injecting, at a first power price, the second fluid into the first subsurface storage zone; and producing, via a second wellbore and at a second, higher power price, the second fluid from the first subsurface storage zone.
However, Heidenreich discloses a geomechanical energy storage system similar to Sweatman and the present application and therefore constitutes analogous art. Heidenreich teaches a second well bore 80 for injecting the first fluid (gas) into the first subsurface storage zone 42, 44 via the second well bore 80, wherein the down hole accumulator 44 comprises an artificial gas cap 48. Heidenreich Col. 1 lines 54-56, discloses a “new concept for energy storage is the compressed air system. These systems use large underground cavities or caverns to store compressed air”; and Heidenreich Col. 2 lines 44-49 discloses “15) Yet another aspect of the invention is the provision of a compressed air pumped hydro energy system that is adaptive for use with preexisting caverns, mines or cavities beneath the earth's surface, and which can employ previously existing surface reservoirs.” This teaches that caverns, cavities, etc. or obvious equivalents, and therefore the teachings of Heidenreich would be applicable to the system of Sweatman which uses caverns and the teachings of Sweatman would be applicable to the system of Heidenreich.
Heidenreich teaches pumping the fluid into the subsurface storage zone 12 in periods of low demand of electricity, and producing the pressurized fluid 16 through the second well bore 20 during periods of peak demand (see abstract of Heidenreich and Col. 3 lines 52-67, Col. 4 lines 1-9). It should be noted that one of ordinary skill in the art would recognize that periods of low demand corresponds to a lower price relative to periods of high demand for electricity, based on well-known economic principles and historical information and current electricity pricing information readily available to the public.
Since injecting, at a first power price, the second fluid into the first subsurface storage zone; and producing, via the second wellbore and at a second, higher power price, the second fluid from the first subsurface storage zone is a known technique in the art, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have implemented this teaching from Heidenreich into the system of Sweatman to maximize monetary profit when operating the energy storage system.
Allowable Subject Matter
Claim 18 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art does not disclose nor render obvious a method of coupling the first subsurface storage zone to the first wellbore via a first inflow control device;
actuating the first inflow control device between an open position and a closed position, wherein the first inflow control device is configured to close upon detecting the first fluid; and halting, via the first inflow control device, a flow of the first fluid into the first wellbore as recited in claim 18 in combination with its base claims limitations.
Conclusion
The art made of record and not relied upon is considered pertinent to applicant's disclosure.
Cook et al. (US 2025/0237412) discloses a method comprising:
forming a subsurface energy storage system including at least a first subsurface storage zone and a second subsurface storage zone,
wherein the first subsurface storage zone and the second subsurface storage zone are coupled via a first wellbore extending from an above ground surface, and
wherein at least the first subsurface storage zone includes a first plurality of fractures configured to store fluid
Hendrix et al. (US 2880587) discloses hydraulic fracturing to develop underground storage caverns
Schmidt et al. (US 2024/0418188) discloses repurposing depleted oil and gas field for geomechanical pumped storage systems.
Mendell (US 10012064) discloses a fracturing method discloses a movable isolation device 1100
Kaminsky (US 8820075) discloses a system for producing geothermal energy including a well bore that injects and produces fluid
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Dustin T Nguyen whose telephone number is (571)270-0163. The examiner can normally be reached M - F: 8:00am - 4:30pm.
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, Nathaniel E. Wiehe can be reached at (571) 272-8648. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DUSTIN T NGUYEN/Primary Examiner, Art Unit 3745 March 4, 2026