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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/12/2026 has been entered.
Response to Amendment
The amendments filed 03/12/2026 with the same dated RCE have been entered. Claims 1-13 remain pending in the application.
Response to Arguments
Applicant’s amendments to the claims have overcome each and every 35 U.S.C. 112(a) rejection and some of the 35 U.S.C. 112(b) rejections previously set forth in the Final Office Action dated 12/12/2025, hereinafter FOA1212. However, while Applicant’s response is considered bona fide, some of the issues remain. See below for further discussion.
Applicant’s arguments regarding the prior art rejections are moot as they pertain to amended claim limitations not present at the time of FOA0822. However, Examiner will nevertheless address one relevant portion for clarity of the record regarding the broadest reasonable interpretation of the claim scope.
Applicant alleges claim 1 has been amended “to include a computer system that calculates the amount of energizing energy based on at least the power density”.
Examiner would like to address the broadest reasonable interpretation of amended claim 1. The claim requires “computing equipment that computes electrical power density in a subterranean formation”, which, under the broadest reasonable interpretation of such a system claim, requires computing equipment capable of computing electrical power density in a subterranean formation. The claim later requires “a factor for the computing equipment determining the amount of electromagnetic energy transmitted by the one or more power sources is the electrical power density”. First, this limitation has 35 U.S.C. 112 issues (see below).
However, forgoing such discussion here, upon plain reading this limitation appears to on require that a factor for the determination of the amount of EM energy transmitted by the power source(s) is the electrical power density, and ostensibly that the computing equipment is to perform the determining of the amount of electromagnetic energy transmitted by the one or more power sources.
Considering the amended claim previously explicitly requires that the computing equipment compute electrical power density and does not previously require that the computing equipment be capable of determining an amount of electromagnetic energy transmitted by the one or more power sources, it is Examiner’s opinion that one of ordinary skill in the art would understand the broadest reasonable interpretation of the final limitation of the claim as not further limiting the structural elements of claim, as the claim pertains to a system, and it would not appear that such requirements would limit the structures required of the system. See 35 U.S.C. 112 section below for further discussion.
Claim Objections
Claim 1 is objected to because of the following informalities:
The indentation of the first few clauses of the claim make it somewhat unclear which elements are constituents of the control unit; In view of Applicant’s disclosure, it would appear the computing equipment, one or more power sources, one or more receivers, and that the computing equipment does not include the one or more power sources, rather that they are a separate constituent of the control unit;
Claim 1 also recites “the one or more power source” after reciting “one or more power sources”; accordingly, “the one or more power source” should read ‘the one or more power sources’.
Appropriate correction is required.
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.
Regarding amended claim 1, the amendments to the claim have overcome the previous 112(a) issues. The following discussion is included for clarity of the record.
Amended claim 1 requires “…computing equipment that computes electrical power density in a subterranean formation…” and “wherein a factor for the computing equipment determining the amount of electromagnetic energy transmitted by the one or more power sources is the electrical power density”, wherein the underlined elements are those added by way of amendment herein.
The specification does not explicitly describe the computing equipment as having the capability to compute electrical power density in a subterranean formation. The computing equipment is only referenced in [0098] in generality as part of the control unit 129, i.e., item 132, and in Fig. 12, also in generality, as item 132. However, such descriptions contain no explicit discussion of computing electrical power density. However, one of ordinary skill in the art would understand ‘computing equipment’ to include one or more processors and/or one or more computers, or the like. Such generic computer structure(s) would inherently be capable of computing electrical power density in a subterranean formation, given appropriate instruction/input/data. Accordingly, the specification is interpreted as inherently providing adequate written description of “…computing equipment that computes electrical power density in a subterranean formation…”, however, Examiner notes that this structure is not particularly limited in the disclosure.
Next, regarding the limitation “wherein a factor for the computing equipment determining the amount of electromagnetic energy transmitted by the one or more power sources is the electrical power density”, similar logic holds.
The specification makes no reference to the computing equipment (or any other particular element of the system) determining the amount of electromagnetic energy transmitted by the one or more power sources, nor would one of ordinary skill in the art understand typical computer equipment to be capable of performing such functionality, absent combination with outside structure. Additionally, a factor in such a determination would not make sense in the context of an apparatus claim (see 112(b) section below).
However, the amount of electromagnetic energy transmitted by the one or more power sources would be understood by an ordinarily skilled artisan as being controlled, by some form of power source control means, such that the amount would be known in advance of being transmitted, and would be monitored by some form of sensing arrangement during application (likely as a part of the control means), but such controlling would be performed by typical power source control means, and would not need to be determined taking into account the power density, which would only make sense to use to determine how much EM energy should be transmitted.
Accordingly, it is unclear if perhaps Applicant intended to limit ‘a factor for the computing equipment determining the amount of EM energy to be transmitted by the one or more power sources is the electrical power density’. For purposes of Examination, this interpretation is adopted (however, see 112(b) section for further discussion below).
Taking the limitation as a whole, ‘a factor for the computing equipment determining the amount of electromagnetic energy
112(b) issues notwithstanding, generic computer equipment would be understood by an ordinarily skilled artisan of being capable of factoring in an electrical power density, i.e., via programming/instruction, in determining the amount of electromagnetic energy to be transmitted by one or more power sources, according to the non-elected methods.
However, because the specification contains no description of particular claimed structures/elements of the system having ‘the electrical power density’ being ‘a factor’ to ‘determine an amount of transmitted EM energy’, it must be understood under the broadest reasonable interpretation that ‘computing equipment’ is only limited generic computer equipment, as nothing further (i.e. nothing structural) is specifically supported regarding such computer equipment.
For completeness, Examiner notes:
The disclosure appears to be primarily directed toward determining where to position microsensors to ensure sufficient energy is available to them, not toward determining how much EM energy the power sources transmit, which would be controlled by normal power source control means. Examiner again notes the interpretation adopted above.
In [0009], the specification describes “determining the amount of power necessary to power a plurality of microsensors disposed within a subterranean formation in the presence of a contrast agent”, however, this portion (and other similar portions of the disclosure) refers to a method (which Applicant did not elect), not an apparatus. Though not explicitly disclosed, the computing equipment is sufficient to perform this functionality, i.e., a generic computer could perform this function.
In [0094], the specification states “The amount of power required from the electrical source to power and/or charge the microsensors 107 is determined by the process described earlier in this disclosure.”, however the process described earlier is the same method. Though not explicitly disclosed, the computing equipment is sufficient to perform this functionality, i.e., a generic computer could perform this function.
Furthermore, each description in the specification pertaining to ‘determining the spatial distribution of power density in a subsurface environment’ is directed toward the method, and discusses creating a geo-electric model to calculate the 3D power density distribution (or equivalent data reconstruction/analysis/modeling techniques), which was not elected. Though not explicitly disclosed, the computing equipment is sufficient to perform this functionality, i.e., a generic computer could perform this function.
Finally, regarding “determining an amount of transmitted electromagnetic energy”, the specification refers to this step as also being performed as part of a method, and lacks disclosure of specific claimed elements to perform such a technique. Additionally, this determination is required to factor in ‘the electrical power density’. While the process of generally ‘determining’ an amount of energy to be transmitted (i.e., to the sensors) would be considered to be reasonably disclosed in the specification (such a determination would inherently be performed prior to actually transmitting energy, which the power source explicitly required to be capable of), such ‘determining’ is only described in terms of the method steps (which are not elected, nor presently claimed), and the specification contains no description of particular claimed structures/elements of the system having ‘the electrical power density’ being ‘a factor’ to ‘determine an amount of transmitted EM energy’. Again, though not explicitly disclosed, as discussed above, the computing equipment is sufficient to perform this functionality, i.e., a generic computer could perform this function, which also would not require any additional structure.
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 1-13 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.
Claim 1 is indefinite for the following reasons:
Claim 1 recites “wherein a factor for the computing equipment determining the amount of electromagnetic energy transmitted by the one or more power sources is the electrical power density”.
First, ‘determining the amount of EM energy transmitted by the one or more power sources’ is not previously required by the claim, and as such, it is unclear whether “wherein a factor for the computing equipment determining the amount of EM energy transmitted by the one or more power sources is the electrical power density” actually further limits the claim, as it limits a determination that is, itself, not required by the claim (and cannot be, see method discussion below).
Second, ‘the amount of electromagnetic energy’ lacks antecedent basis, as no particular amount of EM energy is previously required by the claim to be transmitted by the one or more power sources.
Third, it is not clear based on the claim language what element is required to perform/be capable of performing ‘determining the amount of EM energy transmitted by the one or more power sources’. The specification makes no reference to the computing equipment (or any other particular element of the system) determining the amount of electromagnetic energy transmitted by the one or more power sources, nor would one of ordinary skill in the art understand typical computer equipment to be capable of performing such functionality, absent combination with outside structure (i.e., sensors/control means).
However, the amount of electromagnetic energy transmitted by the one or more power sources would be understood by an ordinarily skilled artisan as being controlled, by some form of power source control means, such that the amount would be known in advance of being transmitted, and would be monitored by some form of sensing arrangement during application (likely as a part of the control means), but such controlling would be performed by typical power source control means, and would not need to be determined taking into account the power density, which would only make sense to use to determine how much EM energy should be transmitted (i.e., presumably in balance with the available EM energy in the subsurface environment for the microsensors to harvest/have harvested for them).
Accordingly, it is unclear if perhaps Applicant intended to limit ‘a factor for the computing equipment determining the amount of EM energy to be transmitted by the one or more power sources is the electrical power density’. For purposes of Examination, this interpretation is adopted.
In either case, the limitations would appear to include method steps, and not be directed to any particular physical structure that limits the system itself, structurally. Accordingly, ‘a factor’ in such a determination would not make sense in the context of an apparatus claim.
In other words, fourth, claim 1 is directed toward a system, however, the ‘determining’ limitation appears to be a method step. See MPEP 2173.05(p).II. Accordingly, it is unclear whether such a limitation actually limits the system.
Taking the limitation as a whole, ‘a factor for the computing equipment determining the amount of electromagnetic energy sources is the electrical power density’ appears to be limiting how the determination of the electromagnetic energy to be transmitted by the one or more power sources is done, i.e., factoring in the electrical power density. However, this does not limit the structure of the system, and appears to be limiting a method step that is not previously required in the claim, and would not be proper in an apparatus claim.
Looking to the disclosure for instruction, such a limitation is also only disclosed in the specification as being a constituent method step of a method (which is not elected), and as such, it is not clear what element should perform/be capable of performing this function.
Because of these issues with the limitation “wherein a factor for the computing equipment determining the amount of electromagnetic energy transmitted by the one or more power sources is the electrical power density”, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as not required by the claim, as being directed toward functionality that does not further limit the system itself, structurally.
Claims that depend on the above rejected claims are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
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 and 3-13 are rejected under 35 U.S.C. 103 as being unpatentable over Sassi (U.S. PGPub. No. US 20190273973 A1) in view of Godager (U.S. PGPub. No. US 20120024050 A1).
Examiner notes that Sassi and Godager are Applicant provided prior art via the IDS dated 01/11/2024.
Regarding claim 1, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Sassi teaches a system (Abstract), comprising:
a control unit ([0060]; [0062]) comprising:
computing equipment that computes electrical power density in a subterranean formation ([0070]);
one or more receivers for receiving information transmitted from the plurality of microsensors, the plurality of microsensors wirelessly connected to the one or more receivers ([0031]; [0036]-[0039]);
wherein the one or more contrast agents and the plurality of microsensors are disposed within the subterranean formation, the plurality of microsensors also disposed with the one or more contrast agents (See Figs. 1 and 2; [0002]; [0016]; [0030]);
a harvester to pick up the electromagnetic energy for the plurality of microsensors ([0015]); and
a battery to store the electromagnetic energy for the plurality of microsensors ([0042]; [0052]).
Sassi does not explicitly teach one or more power sources to transmit electromagnetic energy to energize one or more contrast agents and a plurality of microsensors wirelessly connected to the one or more power source.
However, Sassi discloses powering the plurality of microsensors via in situ power sources through the one or more contrast agents.
Nevertheless, Godager teaches one or more power sources to transmit electromagnetic energy to energize one or more contrast agents and a plurality of microsensors wirelessly connected to the one or more power source (See Figs. 1 and 4, showing a SEU a distance from WSU; Abstract; [0013]-[0014]; [0017]).
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 Sassi to include one or more power sources to transmit electromagnetic energy to energize one or more contrast agents and a plurality of microsensors wirelessly connected to the one or more power source, as taught by Godager.
Doing so would allow one to consistently apply power to the wireless sensors of Sassi by ensuring sufficient power is available in the environment to be harvested, as the self-powered sensors of Sassi rely on harvesting energy that is already present in the environment by harvesting energy in various ways. Combining the teachings of Godager with Sassi provides an improvement as the particular harvesting technique may not always have proper environmental conditions in order to harvest sufficient energy, and the teachings of Godager allow for a potential redundancy or potential replacement.
Examiner notes that according to the 35 U.S.C. 112(b) discussion above, the limitation “wherein a factor for the computing equipment determining the amount of electromagnetic energy is interpreted as not further limiting the structure of the system, as best understood in view of the 35 U.S.C. 112(b) issues identified above.
Regarding claim 3, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Sassi in view of Godager teaches the system of claim 1.
Sassi further teaches wherein the plurality of microsensors comprise a measurement module that measures one or more physicochemical parameters ([0015]; [0034]).
Regarding claim 4, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Sassi in view of Godager teaches the system of claim 3.
Sassi further teaches wherein the physicochemical parameter is selected from the group consisting of pressure, temperature, stress/strain and pH ([0034]).
Regarding claim 5, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Sassi in view of Godager teaches the system of claim 1.
Sassi further teaches wherein the plurality of microsensors comprise a power storage module for storing power from the power source ([0042]).
Regarding claim 6, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Sassi in view of Godager teaches the system of claim 1.
Sassi further teaches wherein the microsensors comprise an energy harvesting module for receiving power from the power source ([0015]).
Regarding claim 7, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Sassi in view of Godager teaches the system of claim 1.
Sassi further teaches wherein the plurality of microsensors comprise a transmitter for transmitting information to one or more of the one or more receivers or other autonomous microsensors ([0015]; [0031]; [0036]-[0037]; [0039]-[0040]).
Regarding claim 8, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Sassi in view of Godager teaches the system of claim 1.
Godager further teaches wherein the power source includes a transmitter located within the subterranean formation ([0014]; [0017]).
Regarding claim 9, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Sassi in view of Godager teaches the system of claim 1.
Godager further teaches wherein the power source includes a transmitter located on or near ground surface or in a wellbore (See Fig. 1; Abstract).
Regarding claim 10, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Sassi in view of Godager teaches the system of claim 1.
Godager further teaches wherein the power source operates on DC or pulsed DC ([0017], SEU receives DC power; Examiner notes for completeness that Godager also discloses in [0056] the capability of the WSU to perform complementary functionality: receiving AC and converting to DC).
Regarding claim 11, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Sassi in view of Godager teaches the system of claim 1.
Godager further teaches wherein the power source operates on AC or quasi-static AC ([0017], SEU transmits AC power; Examiner notes for completeness that Godager also discloses in [0056] the capability of the WSU to perform complementary functionality: receiving AC and converting to DC).
Regarding claim 12, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Sassi in view of Godager teaches the system of claim 1.
Sassi further teaches wherein the plurality of microsensors are at least partially disposed within cement deposited in the subterranean formation ([0017]-[0018]).
Regarding claim 13, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Sassi in view of Godager teaches the system of claim 1.
Sassi further teaches wherein the plurality of microsensors each have a spatial dimension less than one centimeter [0030].
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Sassi (U.S. PGPub. No. US 20190273973 A1) in view of Godager (U.S. PGPub. No. US 20120024050 A1) and Bartel (U.S. PGPub. No. US 20160047933 A1).
Examiner notes that Bartel is Applicant provided prior art via the IDS dated 01/11/2024.
Regarding claim 2, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Sassi in view of Godager teaches the system of claim 1.
Sassi further teaches wherein the contrast agent comprises a…proppant ([0004]).
Sassi does not explicitly teach wherein the contrast agent comprises an electromagnetic or electrically conductive proppant (Emphasis added by Examiner).
However, Examiner notes that electromagnetic is not defined in the specification in regards to a proppant. It is Examiner’s opinion that one of ordinary skill in the art would understand ‘electromagnetic’ to mean ‘electromagnetically active’ or ‘affected by electromagnetic radiation’.
Nevertheless, Bartel teaches wherein the contrast agent comprises an electromagnetic or electrically conductive proppant ([0030]-[0031]).
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 Sassi to explicitly include wherein the contrast agent comprises an electromagnetic or electrically conductive proppant, as taught by Bartel.
One of ordinary skill in the art would have been motivated to do so because the sensors in Sassi are disposed in the presence of a proppant, and as taught by Bartel, “Some of the electric current generated by the source 112 can travel from the well casing 108 through the proppant”, which would be more successful if the proppant is “formed from an electrically conductive material”, because this will “significantly enhance the electric conductivity of the first portions 118”, i.e. the part of the fracture with the proppant therein.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER J GASSEN whose telephone number is (571)272-4363. The examiner can normally be reached M-F 9-5.
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/CHRISTOPHER J GASSEN/Examiner, Art Unit 2881
/DAVID E SMITH/Examiner, Art Unit 2881