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 .
Response to Arguments
Applicant’s arguments, see remarks, filed 06/04/2026, with respect to the objections and U.S.C. 112, 102, and 103 rejections have been fully considered and are persuasive. The objections and rejections of the office action dated 03/09/2026 has been withdrawn.
However, applicant's arguments filed 06/04/2026 pertaining to the Sweatman reference not being a compartmentalized energy storage system have been fully considered but they are not persuasive. Applicant’s remarks state that “Sweatman’s geothermal production system is not a compartmentalized energy storage system”, but does not elaborate on why. It is not understood why the pressure isolated/separated zones 120a, 120b, 120c does not meet the limitation of compartmentalized subsurface storage zones since they are separated/compartmentalized relative to each other (fluid from one zone is unable to reach a different zone when the valves are closed). Since there is not specific reasoning to support applicant’s assertion, applicant’s arguments pertaining to the system of Sweatman not being compartmentalized is not persuasive.
See below for updated rejections.
Specification
The amendment filed 06/04/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
Claim 21 recites” further comprising: isolating, via a first inflow control device, the first subsurface storage zone from fluid communication with the first wellbore in response to a degradation or a failure of the first subsurface storage zone; and forming, in response to the isolating, one or more additional pressure-isolated subsurface storage zones to extend the compartmentalized subsurface energy storage system.”
The originally disclosed application does not appear to support this subject matter.
Applicant is required to cancel the new matter in the reply to this Office Action.
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 21 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 21 recites “recites “isolating, via a first inflow control device, the first subsurface storage zone from fluid communication with the first wellbore in response to a degradation or a failure of the first subsurface storage zone; and forming, in response to the isolating, one or more additional pressure-isolated subsurface storage zones to extend the compartmentalized subsurface energy storage system”. Applicant’s original disclosure does not appear to support this subject matter and appears to constitute new matter. Please point to the appropriate support in the original disclosure for these limitation. Applicant’s specification does not appear to use the term “failure” and the only recitation of “degradation” is in paragraph [0023] which does not explicitly disclose isolating in response to the degradation or forming additional zones in response to the isolating.
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.
Claim 21 is 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.
Claim 21 recites “forming, in response to the isolating, one or more additional pressure-isolated subsurface storage zones to extend the compartmentalized subsurface energy storage system”. It is unclear whether how additional pressure-isolated subsurface storage zones are formed to extend the compartmentalized subsurface energy storage system. When applicant’s system isolates a zone, how does a zone form to extend the storage system? Further, it is also unclear how applicant’s claimed system determines “a degradation or a failure of the first subsurface storage zone”.
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) 11, 12, 17, 19, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ramamurthy et al. (US 2022/0178336) in view of Schmidt et al. (US 9481519), hereinafter ‘Schmidt’ and Sweatman et al. (US 9726157), hereinafter ‘Sweatman’.
Regarding claim 11, Ramamurthy discloses:
11. (Currently Amended) A method comprising: forming a compartmentalized subsurface energy storage system including at least a first subsurface storage zone and a second subsurface storage zone (Fig. 6, first storage zone 612, second storage zone 622 are compartmentalized because they are separated),
pressure isolating the first subsurface storage zone from the second subsurface storage zone (first zone 612 is pressure isolated from second zone 622); and
forming a compressible artificial gas cap within at least the first subsurface storage zone (“air” seen in Fig. 6 is the artificial gas cap formed within each subsurface storage zone),
wherein forming the compressible artificial gas cap comprises injecting a volume of gas followed by injecting a volume of liquid into the first subsurface storage zone (Fig. 1, step 110 discloses injecting liquid and gas into first container, which meets the limitation of injecting gas; and step 120 discloses pressurizing the liquid and gas, paragraph [0030] discloses that the pressurizing step in step 120 is accomplished by adding liquid” therefore the liquid is injected after step 110 and pressurized the gas that was injected in step 110),
wherein the injected volume of liquid compresses the injected volume of gas to store recoverable potential energy ([0030] discloses that the pressurizing step in step 120 is accomplished by adding liquid” therefore the liquid is injected after step 110 and pressurized the gas that was injected in step 110.
Ramamurthy does not explicitly disclose wherein at least the first subsurface storage zone includes a first plurality of fractures configured to store fluid, although Ramamurthy discloses that its subsurface storage zone includes “a subterranean cavern, porous rock structure, or unused well structure, or naturally occurring geological structure, or unused infrastructure such as an unused or depleted oil well.
However, Schmidt discloses a subsurface energy generation system similar to Ramamurthy and the present application and therefore constitutes analogous art. Schmidt discloses an energy storage system injecting pressurized fluid into subsurface fractures of a depleted oil well for energy storage (Schmidt, abstract, Col. 3 lines 53-56, Col. 4 lines 21-53).
Since Ramamurthy discloses using depleted oil wells as the subsurface storage zones 612, 622, and since Schmidt discloses that oil wells are known in the art to include hydraulically fractured formations, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the system of Ramamurthy to have used a depleted oil well that includes fractures for subsurface pressurized fluid storage zones as taught by Schmidt.
The combination of Ramamurthy and Schmidt does not explicitly disclose wherein the first subsurface storage zone and the second subsurface storage zone are coupled via a first wellbore extending from an above ground surface.
However, Sweatman discloses a subsurface energy generation system similar to Ramamurthy and the present application and therefore constitutes analogous art. Sweatman discloses a forming a compartmentalized 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 (106), 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 130 which includes the compartmentalized subsurface storage zones 120a, 120b; Col. 6 lines 9-42 discloses injecting fluid into formations zones 120a, 120b; 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);
pressure isolating the first subsurface storage zone from the second subsurface storage zone (zones 120a, 120b are pressure isolated via the flow control devices 116 and 118, see Fig. 1).
It is obvious to combine prior art elements according to known methods to yield predictable results. See MPEP 2143(A). The MPEP states the prior art must: (1) teach each claimed element (a method or apparatus that will be modified), (2) show that one of ordinary skill in the art could have combined the elements by known methods and that the combination doesn’t change the function of the elements, and (3) show that one of ordinary skill would have recognized that applying the known technique to the base device would yield predictable results. See MPEP 2143(A).
In this case, Ramamurthy teaches all elements except wherein the first subsurface storage zone and the second subsurface storage zone are coupled via a first wellbore extending from an above ground surface. Sweatman teaches 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 one of ordinary skill would recognize that this provides the benefit of allowing multiple subsurface storage zones to be accessed by a single wellbore which eliminates the need for multiple separate wellbores thereby reducing system construction costs. When combined into Ramamurthy by replacing the two horizontally separated storage zones with the vertically separated storage zones connected by a single well bore as taught by Sweatman, the single wellbore maintains its function of connecting multiple subsurface storage zones and eliminating the need for multiple separate wellbores thereby reducing system construction costs. One of ordinary skill would expect predictable results because both references pertain to subsurface energy storage systems that function in the same manner in the environment of pressurized fluid systems.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Ramamurthy in view of Sweatman because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art.
The combination of Ramamurthy, Schmidt, and Sweatman further renders obvious:
12. (Currently Amended) The method of claim 11, further comprising: generating the first plurality of fractures within the first subsurface storage zone (Schmidt, Col. 4 lines 21-52 disclose the fractures are generated within the oil well);
injecting, via the first wellbore, the volume of gas into the first subsurface storage zone (Ramamurthy’s step 110 that includes injected gas into the subsurface storage zone would be injected through the single wellbore that implemented in light of Sweatman);
injecting, via the first wellbore, the volume of liquid into at least the first subsurface storage zone (Ramamurthy’s step 120 that includes injected gas into the subsurface storage zone would be injected through the single wellbore that implemented in light of Sweatman); wherein the injected volume of liquid compresses the compressible artificial gas cap; and selectively producing at least a portion of the injected volume of liquid through the first wellbore (Ramamurthy, paragraph [0033] discloses producing a portion of the injected liquid to drive a turbine; in light of the single wellbore implementation of Sweatman, the fluid would be produced through the single wellbore, similar to as seen in Sweatman).
17. (Currently Amended) The method of claim 11, further comprising: isolating, via at least a first zonal isolation device, the first subsurface storage zone from the second subsurface storage zone (Sweatman valves 116 and 118 isolate the first zone 120a for the second zone 120b; this same configuration would be used when implemented into the system of Ramamurthy to provide selective production of fluid for energy generation as desired).
19. (Currently Amended) The method of claim 11, further comprising: coupling the second subsurface storage zone to the first wellbore via a second inflow control device, wherein the second inflow control device is configured to actuate between an open position and a closed position;
injecting a second volume of gas followed by a second volume of liquid into the second subsurface storage zone; and selectively producing at least a portion of the second injected volume of liquid from the second subsurface storage zone via the second inflow control device (Sweatman valves 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; Ramamurthy, paragraph [0034] repeated injection and production cycles of fluid using the steps seen in Fig. 1; the fluid would be produced selectively via the implemented valves in the single wellbore of Sweatman when desired).
20. (Currently Amended) The method of claim 11, further comprising: producing, via the first wellbore, the injected volume of liquid from the first subsurface storage zone, wherein a downhole pressure propels the injected volume of liquid towards the surface; receiving, via a turbine at the surface, the injected volume of liquid (Ramamurthy paragraph [0033]); and generating power via a generator coupled to the turbine (Ramamurthy paragraph [0010]).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ramamurthy in view of Schmidt and Sweatman as applied to claim 11 above, and further in view of Heidenreich (US 7281371).
Regarding claim 15, the combination of Ramamurthy, Schmidt, and Sweatman renders obvious the method of claim 11 but does not explicitly 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 an energy storage system similar
to Ramamurthy 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 Ramamurthy which uses caverns.
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 Ramamurthy in view of Schmidt and Sweatman to maximize monetary profit when operating the energy storage system.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ramamurthy, Schmidt, and Sweatman as applied to claim 11 above, and further in view of Schmidt-Boecking et al. (US 9797366), hereinafter ‘Boecking’.
The combination of Ramamurthy, Schmidt, and Sweatman renders obvious the system of claim 11, but does not disclose further comprising: isolating, via a first inflow control device, the first subsurface storage zone from fluid communication with the first wellbore in response to a degradation or a failure of the first subsurface storage zone; and forming, in response to the isolating, one or more additional pressure-isolated subsurface storage zones to extend the compartmentalized subsurface energy storage system.
However, Boecking discloses a pumped storage power plant similar to Ramamurthy and the present application and therefore constitutes analogous art. Boecking discloses compartmentalized pressure storage zones (20) that in the event of a failure or when maintenance is needed, the shutoff valves (26) can disconnect the integral accumulator complexes (20a) from the central pump-turbine unit (Col. 13 lines 32-38, Col. 8 lines 45-67, Col. 9 lines 1-3) and discloses forming additional compartmentalized storage zones with additional accumulators as needed (Col. 9 lines 19-32 discloses that the modularity simplifies an expansion or reduction in the accumulators).
Since applying a known technique to a known device to yield predictable results is an exemplary rationale that supports a conclusion of obviousness, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the system of Ramamurthy in view of Schmidt and Sweatman to have isolated a storage zone from communication with the rest of the fluid system and forming additional compartmentalized energy storage zones as taught by Boecking to yield only the expected result of a closed off section of the fluid circuit as needed for maintenance purposes, and increasing energy storage capacity as needed.
Since removing a storage zone in the event of storage zone failure or maintenance and would result in reduced energy storage capacity of the system of Ramamurthy in view of Schmidt and Sweatman, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have formed in response to the isolating, one or more additional pressure-isolated subsurface storage zones to extend the compartmentalized subsurface energy storage system to make up the lost energy storage capacity to yield only the predictable result of restoring the desired energy storage capacity.
Allowable Subject Matter
Claim 16, 18, 22 are 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 do not appear to disclose nor render obvious the limitations of claims 16, 18 or 22 in combination with their base claim limitations.
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 Dustin T Nguyen whose telephone number is (571)270-0163. The examiner can normally be reached M - F: 8:00am - 4:30pm.
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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.
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/DUSTIN T NGUYEN/Primary Examiner, Art Unit 3745 August 5, 2026
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