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 Amendment
The amendments filed 07/02/2026 have been entered. Claims 1-13 remain pending in the application. Examiner notes that at least one amendment has not been properly indicated in the amended claim set, namely, the removal of the word ‘subterranean’ in claim 1, which has not been indicated (while the removal of ‘a’ has been indicated). Examiner does not believe the issues present inhibit substantive examination, but has identified the issue for clarity of the record.
Response to Arguments
Applicant’s amendments to the claims have overcome each and every objection previously set forth in the Non-Final Office Action dated 04/03/2062, hereinafter NFOA0403. However, Applicant’s amendments to the claims have resulted in additional objectionable issues. See below for further discussion.
Applicant’s amendments to the claims have overcome some, but not all, of the 35 U.S.C. 112(b) rejections previously set forth in NFOA0403. See below for details. Additionally, Applicant’s amendments to the claims have resulted in additional indefiniteness issues. See below for further discussion.
Applicant’s arguments with respect to claim 1 have been considered but are moot because they pertain to amended claim limitations not present at the time of NFOA0403.
Nevertheless, for clarity of the record, Applicant’s arguments that are relevant to the disclosure of Sassi as it pertains to a potential rejection of such limitations are addressed herein.
Applicant argues “Sassi fails to disclose the power sources transmitting E energy through the contrast agents to a plurality of microsensor wirelessly.
The Examiner attempts to use the teaching of Godager to modify the power transmission of Sassi to arrive at the claimed invention.
Applicant submits that the Examiner has misinterpreted Sassi. In particular, Sassi does not use transmitted power to energize the microsensors through the contrast agents but uses the harvesters to power the sensors. Godager does not cure this deficiency.”
Examiner respectfully disagrees.
This argument does not specifically refute the rejection presented in NFOA0403, nor does it specifically distinguish how the previously applied prior art combination could not be applied similarly to the amended claim limitations.
Examiner has not interpreted Sassi as ‘using transmitted power to energize the microsensors through the contrast agents’. NFOA0403 specifically states that Sassi does not explicitly teach such limitations (See p. 15). Examiner subsequently acknowledges in NFOA0403 that Sassi discloses powering a plurality of microsensors via in situ power sources through the one or more contrast agents, i.e., the microsensors harvest energy from their surroundings, their surroundings including the contrast agents (See p. 13-14 of NFOA0403 and [0002], [0015]-[0016], [0030] of Sassi).
Godager teaches one or more power sources to transmit EM energy to energize one or more contrast agents and a plurality of microsensors, the microsensors being wirelessly connected to the one or more power sources (See p. 15 of NFOA and Figs. 1, 4 and [0013]-[0014], [0017] of Godager).
Applicant has not refuted Godager’s teaching of these limitations, nor the combination of Sassi with Godager, and rather, summarily states that Godager does not cure the deficiency regarding the external power source of Sassi. However, Godager does teach such limitations, Applicant has not specifically refuted such teachings, and furthermore, Applicant has not specifically refuted the combination.
Accordingly, this argument is not convincing.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 has been amended to recite “disposed in a formation”, however, the claim maintains the previously presented language “the subterranean formation” later in the claim, which thus lacks antecedent basis; Examiner believes the limitation is definite in context, and should merely be amended to be consistent throughout the claims (i.e., in either form, so long as it is maintained);
Claim 1 has been amended to recite “…that computes electrical power density in formation…”, which lacks an article;
Claim 1 recites “…wherein the one or more contrast agents and the plurality of microsensors are disposed within the subterranean formation…”, however, these limitations are already required in the first two limitations of claim 1 and are thus repeat limitations;
Claims 8 and 12 recites ‘the subterranean formation’, however, as in claim 1, this limitation lacks antecedent basis, but is not indefinite in context; Consistent terminology should be used throughout the claims.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 recites “…computing equipment that computes electrical power density in formation which uses the electrical power density to determine an amount of electromagnetic energy to energize the one or more contrast agents and the one or more power sources wirelessly connected to a plurality of microsensors…”. First, ‘computing equipment that computers electrical power density in formation which uses the electrical power density to determine…’ is unclear because ‘which’ is ambiguous in the limitation as written. Either punctuation or additional recitation of the claim elements being referred to should be used in the place of ‘which’, such that the scope is clear. Additionally, it is unclear what is required by ‘to energize the one or more contrast agents and the one or more power sources’, as the claim does not previously require any structure with the capability to energize the one or more contrast agents, nor specifically configured to do so. The one or more power sources is only required to be wirelessly connected to the plurality of microsensors, the microsensors being disposed in the formation. The claim’s previous limitations required the power sources to be capable of transmitting EM energy to the one or more contrast agents and the microsensors, however, this limitation has been removed by amendment, and no connection or relationship between the contrast agents and the one or more power sources is required by the claim. Accordingly, it is unclear what the computing equipment would be required to be capable of determining (i.e., via computation and/or unelected methods) for this limitation. Further, the claim previously requires “one or more power sources wirelessly connected to a plurality of microsensors disposed in the formation”, and thus, it is unclear what is required by “and the one or more power sources wirelessly connected to a plurality of microsensors.”, as it is not clear whether this requires additional microsensors, or is intended to refer back to the previous microsensors. As such, 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 ‘…computing equipment that computes electrical power density in the [subterranean] formation, the computing equipment configured to use the electrical power density to determine an amount of electromagnetic energy required to energize the one or more power sources wirelessly connected to the plurality of microsensors…’.
Claim 1 recites “the electromagnetic energy” in two places. This limitation lacks antecedent basis. The claim requires one or more power sources wirelessly connected to a plurality of microsensors, but does not require any transmittal of electromagnetic energy or capability thereto. As such, 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 ‘electromagnetic energy’.
As discussed in NFOA0403, 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.” is indefinite for at least some the reasons previously indicated (some have been ameliorated by amendment).
As previously discussed, 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, claim 1 is directed toward a system, however, the ‘determining’ and ‘factor’ limitations appear 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
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, and thus, generic computing equipment would be understood as inherently having such a capability.
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:
one or more contrast agents disposed in a formation (See Figs. 1-2; [0004]; [0016]; [0030]);
(See Figs. 1-2; [0002]; [0016]; [0031]);
a control unit ([0060]; [0062]) comprising:
computing equipment that computes electrical power density in formation which uses the electrical power density to determine an amount of electromagnetic energy to energize the one or more contrast agents and the one or more power sources wirelessly connected to a plurality of microsensors ([0070]; Examiner notes that the BRI of this limitation in a system claim is computing equipment capable of such computations; An ordinarily skilled artisan would understand a generic computer of having such capabilities, given proper programming/software);
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 wirelessly connected to a plurality of microsensors disposed in the formation (Emphasis added by Examiner).
However, Sassi discloses powering the plurality of microsensors via in situ power sources through the one or more contrast agents, i.e., the power is harvested through the contrast agents which are present in the environment.
Nevertheless, Godager teaches one or more power sources wirelessly connected to a plurality of microsensors disposed in the formation (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 wirelessly connected to a plurality of microsensors disposed in the formation, 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
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 CHRISTOPHER J GASSEN whose telephone number is (571)272-4363. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ROBERT H KIM can be reached at (571)272-2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER J GASSEN/Examiner, Art Unit 2881
/DAVID E SMITH/Examiner, Art Unit 2881
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