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 .
Claim Rejections - 35 USC § 102
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 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.
Claims 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Holzmueller et al. (2010/0163271).
Holzmueller et al. discloses a system (Fig. 1) comprising: a tubing (12) positionable downhole in a wellbore; a tubing encapsulated conductor (15), wherein at least a portion of the tubing encapsulated conductor is positionable downhole in the wellbore, the tubing encapsulated conductor comprising: at least one interior wire (21) positionable to transmit electric power from a power source associated with the wellbore to at least one piece of electrical equipment (14) during a wellbore operation performed with respect to the wellbore, the at least one piece of electrical equipment positionable downhole in the wellbore; a metal sheath (24, [0007], lead) positionable around the at least one interior wire; a ground wire (26, [0008]) positionable external to the metal sheath; and an encapsulation layer (29) positionable to encoat the metal sheath and the ground wire (Fig. 2B) to facilitate one or more electrical couplings between the metal sheath and the ground wire (re-claim 1). Holzmueller et al. also discloses the tubing encapsulated conductor further comprising at least one insulated tubing (23) positionable around the at least one interior wire to provide electrical and mechanical isolation for the at least one interior wire (re-claim 4); the tubing encapsulated conductor further comprising a filling material (22) positionable between the at least one interior wire and the metal sheath (24) to maintain a position of the at least one interior wire within the tubing encapsulated conductor (re-claim 5); and the wellbore operation being a tubing deployment operation (re-claim 6).
Claims 8, 9, and 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gandolfi et al. (2008/0007878).
Gandolfi et al. discloses a tubing encapsulated conductor (40C, Fig. 8) comprising: at least one interior wire (41, 42); a metal sheath (47, [0074]) positionable around the at least one interior wire; a ground wire (44) positionable external to the metal sheath; and an encapsulation layer (48) positionable to encoat the metal sheath and the ground wire to facilitate one or more electrical couplings between the metal sheath and the ground wire. It is noted that since the tubing encapsulated conductor of Gandolfi et al. comprises structure and material as claimed, the at least one interior wire can be positionable to transmit electric power from a power source associated with a wellbore to at least one piece of electrical equipment during a tubing deployment operation performed with respect to the wellbore, the at least one piece of electrical equipment positionable downhole in the wellbore (re-claims 8 and 13).
Gandolfi et al. also discloses the metal sheath and the ground wire being in electrical communication with one another to provide a ground path to the power source (re-claim 9); the encapsulation layer (48) being positionable to maintain the metal sheath in contact with the ground wire at a plurality of locations along the length of the metal sheath (re-claim 11); the tubing encapsulated conductor further comprising at least one insulated tubing (41I, 42I) positionable around the at least one interior wire to provide electrical and mechanical isolation for the at least one interior wire (re-claim 12); and the encapsulation layer being extrudable on the metal sheath and the ground wire to maintain the electrical coupling between the metal sheath and the ground wire (re-claim 14).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Gatu et al. (10665365) in view of Holzmueller et al.
Gatu et al. discloses a tubing encapsulated conductor (Fig. 1b) comprising at least one interior wire (18); a metal sheath (14, col. 7, lines 48-49) positionable around the at least one interior wire; a ground wire (24, col. 7, line 65 to col. 8, line 1, the entire elongated member 24…made from one or more metal wires) positionable external to the metal sheath; and an encapsulation layer (16) positionable to encoat the metal sheath and the ground wire to facilitate one or more electrical couplings between the metal sheath and the ground wire (re-claim 1).
Gatu et al. does not disclose the tubing encapsulated conductor being used in a system comprising a tubing positionable downhole in a wellbore, wherein at least a portion of the tubing encapsulated conductor is positionable downhole in the wellbore, wherein the interior wire is positionable to transmit electric power from a power source associated with the wellbore to at least one piece of electrical equipment during a wellbore operation performed with respect to the wellbore, the at least one piece of electrical equipment positionable downhole in the wellbore (re-claim 1).
Holzmueller et al. discloses a system comprising a tubing (12) positionable downhole in a wellbore; and a conductor (power cable 15), wherein at least a portion of the conductor is positionable downhole in the wellbore, wherein the conductor is positionable to transmit electric power from a power source ([0005]) associated with the wellbore to at least one piece of electrical equipment (14) during a wellbore operation performed with respect to the wellbore, the at least one piece of electrical equipment positionable downhole in the wellbore.
It would have been obvious to one skilled in the art to use the tubing encapsulated conductor of Gatu et al. in the system taught by Holzmueller et al. to provide a power transmission means in the system.
Re-claim 2, Gatu et al. discloses the ground wire (24) comprising a copper wire (col. 8, line 2) but does not disclose the ground wire comprising a 14 gauge to a 20 gauge thickness. Gatu et al., however, discloses the interior wire (18) comprising a 14 gauge thickness (col. 3, line 37-39, cross-sectional area = 2 mm, then the thickness or diameter = 1.5958 mm or = 14 AWG). It would have been obvious to one skilled in the art to provide the ground wire of Gatu et al. with a 14 gauge thickness as already used in Gatu et al. for the interior wire to meet the specific use of the resulting conductor.
Claims 1, 3, 4, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Gandolfi et al. in view of Holzmueller et al.
Gandolfi et al. discloses a tubing encapsulated conductor (Fig. 8) comprising at least one interior wire (41); a metal sheath (47) positionable around the at least one interior wire; a ground wire (44) positionable external to the metal sheath; and an encapsulation layer (48) positionable to encoat the metal sheath and the ground wire to facilitate one or more electrical couplings between the metal sheath and the ground wire (re-claim 1).
Gandolfi et al. does not disclose the tubing encapsulated conductor being used in a system comprising a tubing positionable downhole in a wellbore, wherein at least a portion of the tubing encapsulated conductor is positionable downhole in the wellbore, wherein the interior wire is positionable to transmit electric power from a power source associated with the wellbore to at least one piece of electrical equipment during a wellbore operation performed with respect to the wellbore, the at least one piece of electrical equipment positionable downhole in the wellbore (re-claim 1).
Holzmueller et al. discloses a system comprising a tubing (12) positionable downhole in a wellbore; and a conductor (power cable 15), wherein at least a portion of the conductor is positionable downhole in the wellbore, wherein the conductor is positionable to transmit electric power from a power source ([0005]) associated with the wellbore to at least one piece of electrical equipment (14) during a wellbore operation performed with respect to the wellbore, the at least one piece of electrical equipment positionable downhole in the wellbore.
It would have been obvious to one skilled in the art to use the tubing encapsulated conductor of Gandolfi et al. in the system taught by Holzmueller et al. to provide a power transmission means in the system.
Re-claim 3, Gandolfi et al. discloses that the encapsulation layer is positionable to maintain the metal sheath in contact with the ground wire at a plurality of locations along a length of the metal sheath.
Re-claim 4, Gandolfi et al. discloses that the tubing encapsulated conductor further comprises at least one insulated tubing (41I) positionable around the at least one interior wire to provide electrical and mechanical isolation for the at least one interior wire.
Re-claim 7, Gandolfi et al. discloses that the encapsulation layer is extrudable on the metal sheath and the ground wire to maintain the electrical coupling between the metal sheath and the ground wire.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Gandolfi et al. in view of Nadakal et al. (10796822).
Gandolfi et al. discloses the invention substantially as claimed including the ground wire comprising copper ([0075]). Gandolfi et al. does not disclose the ground wire comprising a 14 gauge to a 20 gauge thickness. Nadakal et al. discloses a tubing encapsulated conductor (10) including a ground (drain) wire (22) comprising a 14 gauge to a 20 gauge thickness (col. 2, lines 47-48, 16 AWG). It would have been obvious to one skilled in the art to modify the ground wire of Gandolfi et al. to be a 14 gauge to a 20 gauge thickness as taught by Nadakal et al. to meet the specific use of the resulting conductor.
Claims 15, 16, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Nesgaard (2020/0115964) in view of Gandolfi et al.
Nesgaard discloses a method comprising electrically coupling an encapsulated conductor (cable 10) between a power source ([0036]) associated with a wellbore and at least one piece of electrical equipment (50) used downhole within the wellbore during a wellbore operation performed with respect to the wellbore; and controlling (control 200) a supply of power to the at least one piece of electrical equipment during the wellbore operation via the encapsulated conductor, wherein current is transmitted from the power source to the at least one piece of electrical equipment via at least one interior wire of the encapsulated conductor (re-claim 15).
Nesgaard does not disclose the encapsulated conductor being a tubing encapsulated conductor comprising at least one interior wire; a metal sheath; and a ground wire positioned between an encapsulation layer and the metal sheath (re-claim 15).
Gandolfi et al. discloses a tubing encapsulated conductor (40C) comprising at least one interior wire (41); a metal sheath (47) ; and a ground wire (44) positioned between an encapsulation layer (48) and the metal sheath, wherein the ground wire is in electrical communication with the metal sheath.
It would have been obvious to one skilled in the art to substitute the encapsulated conductor (10) of Nesgaard with the tubing encapsulated conductor (40C) taught by Gandolfi et al. and transmit current from the power source to the equipment (50) via the interior wire since the tubing encapsulated conductor of Gandolfi et al. has improved electrical properties, shielded wire. It is noted that in the modified method of Nesgaard, the current returns to the power source via the metal sheath of the tubing encapsulated conductor.
Re-claim 16, Nesgaard, as modified, discloses the metal sheath and the ground wire being in electrical communication with one another to provide a ground path to the power source.
Re-claim 18, Nesgaard, as modified, discloses the tubing encapsulated conductor further comprising at least one insulated tubing (41I, see Gandolfi) positionable around the at least one interior wire to provide electrical and mechanical isolation for the at least one interior wire.
Re-claim 20, Nesgaard discloses the wellbore operation being a tubing deployment operation.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Nesgaard in view of Gandolfi et al. as applied to claim 15 above, and further in view of Nadakal et al.
Nesgaard and Gandolfi et al. disclose the invention substantially as claimed including the ground wire comprising copper ([0075] of Gandolfi). Nesgaard and Gandolfi et al. do not disclose the ground wire comprising a 14 gauge to a 20 gauge thickness. Nadakal et al. discloses a tubing encapsulated conductor (10) including a ground (drain) wire (22) comprising a 14 gauge to a 20 gauge thickness (col. 2, lines 47-48, 16 AWG). It would have been obvious to one skilled in the art to a 14 gauge to a 20 gauge thickness wire as taught by Nadakal et al. for the ground wire (of Gandolfi) in the modified method of Nesgaard to meet the specific use of the resulting conductor.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Nesgaard in view of Gandolfi et al. as applied to claim 15 above, and further in view of Holzmueller et al.
Claim 19 additionally recites the tubing encapsulated conductor further comprising a filling material positioned between the at least one interior wire and the metal sheath to maintain a position of the interior wire within the tubing encapsulated conductor. Holzmueller et al. discloses a tubing encapsulated conductor (20) comprising an interior wire (21/21a), a metal sheath (24), and a filling material (adhesive 22) positioned between the interior wire and the metal sheath to maintain a position of the interior wire within the tubing encapsulated conductor. It would have been obvious to one skilled in the art to include the filling material as taught by Holzmueller et al. in the tubing encapsulated conductor (of Gandolfi) in the modified method of Nesgaard to bond the interior wire to the tubing of the conductor.
Response to Arguments
Applicant's arguments filed 09/24/2025 have been fully considered but they are not persuasive.
Regarding the Holzmueller, applicant argues that Holzmueller fails to disclose “an encapsulation layer positionable to encoat the metal sheath and the ground wire to facilitate one or more electrical couplings between the metal sheath and the ground wire,” as recited by independent claim 1. Applicant argues that in Fig. 2 of Holzmueller, the ground wire 26 is not shown in contact with cable 20, and Holzmueller provides no discussion, teaching, suggestion, or motivation for electrically coupling the ground wire 26 to cable 20. Examiner would disagree. Holzmueller in paragraph [0008], discloses that three cables 20 and ground wire 26 are wrapped in the metal armor 29. The fact that layer 24 is the outermost layer of cable 20 and made of lead, and the fact that the three cables 20 and ground wire 26 are wrapped together in armor 29; there is or are electrical coupling(s) between the metal sheath 24 and the ground wire 26.
Applicant argues that one of ordinary skill in the art would recognize that ESP cables and tubing encapsulated conductors are different components. Examiner would disagree. The fact that the ESP cable of Holzmueller comprises structure and material as claimed, it is a “tubing encapsulated conductor.”
Regarding the Gandolfi reference, applicant argues that the drain wire 44 of Gandolfi is not a ground wire, and that wire 44 of Gandolfi has different function. Examiner would disagree. Claim 1 broadly calls for “a ground wire positionable external to the metal sheath; and…electrical coupling between the metal sheath and the ground wire.” Gandolfi, likewise, discloses conductive wire 44 positionable external to metal sheath 47 and being electrically coupled to the metal sheath. Accordingly, conductive wire 44 is a ground wire as claimed. It has been held that “MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE APPARATUS CLAIM FROM THE PRIOR ART.” “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), (MPEP 2114(II).
Regarding the Gatu reference, applicant argues that while Gatu mentions that the elongated member 24 “may comprise at least one metal wire,” (col. 2, lines 3-55); this is insufficient to suggest that the elongated member 24 is a ground wire. Examiner would disagree. Again, Claim 1 broadly calls for “a ground wire positionable external to the metal sheath; and…electrical coupling between the metal sheath and the ground wire.” Gatu, likewise, discloses conductive wire 24 being positionable external to metal sheath 14, extending adjacent to the metal sheath 14 (col. 3, lines 55-56), and being electrically coupled to the metal sheath. Accordingly, conductive wire 24 is a ground wire as claimed. It has been held that “MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE APPARATUS CLAIM FROM THE PRIOR ART.” “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), (MPEP 2114(II).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAU N NGUYEN whose telephone number is (571)272-1980. The examiner can normally be reached M-Th, 7am to 5:30pm.
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/CHAU N NGUYEN/Primary Examiner, Art Unit 2841