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, filed January 21, 2026, have been fully considered.
Applicant has argued that the amendments to the Drawings and the Specification overcome the objections set forth in the previous Office Action. Examiner agrees, and has withdrawn those objections.
With regard to the prior art, applicant’s arguments are not persuasive. In the Remarks filed January 21, applicant has set forth numerous reasons why Upchurch does not anticipate the pending claims. However, applicant’s arguments entirely consist of interpreting the claims far more narrowly than justified by the actual claim language.
Applicant argues (Remarks, Page 10) that “the pressure transducers [of Upchurch] 106 are mounted in threaded sockets at the top of a transducer sub, not in a unified cylindrical gauge housing as claimed.” The term “unified cylindrical gauge housing” is not in the claims. Even if it was, it is unknown why Upchurch does not teach a unified cylindrical gauge housing. Applicant does not explain what a “unified” gauge housing is. Nor does applicant explain what the difference is between a “transducer sub” and a “unified cylindrical gauge housing.”
Applicant argues (Remarks, Page 10) that “Upchurch’s multi-port ‘transducer sub’ forms part of a large DST tool string, not a compact stand-alone downhole gauge.” Again, the term “compact stand-alone downhole gauge” is not in the claims. Even if it was, it is unclear why Upchurch would not teach a compact stand-alone downhole gauge. Applicant does not explain the terms “compact” or “stand-alone.”
Applicant argues (Remarks, Page 10) that “the ‘remote zone’ path (port 111) [of Upchurch] is simply below a test valve, not a remote zone in the sense of an external formation pressure communicated by a hydraulic line.” The phrase “external formation pressure communicated by a hydraulic line” is not in the claims. Only the term “remote zone” is in the claim. As examiner stated in the rejection, the claim does not place any limits on what constitutes a “remote zone.” The area below the test valve is remote from sensor 106. Therefore, this area is a “remote zone.”
Applicant argues (Remarks, Page 10) that “applicant’s invention requires a single, compact gauge housing integrating three discrete sensors positioned between the ends of the housing.” However, applicant does not explain the significance of the term “single” or the term “compact.” In any case, neither of these words are in the claims.
Applicant argues (Remarks, Page 10) that the Upchurch transducers “are mounted through wall, not within interior.” However, Upchurch’s drawings clearly show the sensors positioned within a housing. See the annotated Fig. below. Applicant does not explain why Upchurch’s housing does not meet the claim language “gauge housing.” Applicant also does not explain why the sensor being located “through the wall” somehow negates that the sensor is within a housing.
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Applicant argues (Remarks, Page 11) that “Upchurch fails to teach the required gauge housing structure with first and second ends” because “the transducer sub [of Upchurch] does not function as a gauge housing in the sense used in Applicant’s disclosure (a self-contained PDG-type gauge).” Again, the term “self-contained PDG-type gauge” is not recited in the claims. Only the term “gauge housing” is in the claims. Applicant does not explain why Upchurch’s structure does not constitute a “gauge housing.” Examiner maintains that Upchurch teaches a housing with a gauge inside it. It is unclear why the term “gauge housing” means anything more narrow than that.
Applicant argues (Remarks, Page 11) that Upchurch does not teach “pressure and/or temperature sensors” as claimed because “Upchurch’s transducers 106 are pressure-only transducers [and] do not disclose temperature measurement capability.” Examiner respectfully disagrees, as applicant has ignored the word “or” in “and/or.” The phrase “pressure and/or temperature sensor” covers pressure-only sensors, temperature-only sensors, or sensors with combined pressure and temperature measurement capability.
Applicant argues (Remarks, Page 11) that “Upchurch’s transducers 106…do not provide sensor sets on single electronics boards (as used in claims 10/20), and are arranged for DST valve diagnostics, not for long-term reservoir monitoring.” Examiner does not dispute the first point, as the Office Action (at page 9) already asserts that Upchurch fails to teach sensor sets on a single electronics board. Regarding the second point, the phrase “long-term reservoir monitoring” is not in the claims.
Regarding claims 5 and 15, applicant argues (Remarks, Page 11) that “Upchurch’s tool components are different subs entirely, separated by joints, not modular housing sections forming a single gauge housing.” Examiner respectfully disagrees, as the terms “modular housing sections forming a single gauge housing” are not present in the claims. Even if they were, applicant does not explain why Upchurch’s tool components cannot be considered “modular housing sections.”
Regarding claims 9 and 19, applicant argues (Remarks, top of Page 12) that “Upchurch’s ‘fourth sensor’ (backup pressure transducer) is still a pressure sensor. It does not teach or suggest a non-pressure/temperature sensor such as water-cut, phase change, vibration, gyroscope, etc.” Examiner respectfully disagrees, as applicant’s argument does not address the actual claim language. The phrase “non-pressure/temperature sensor such as water-cut, phase change, vibration, gyroscope, etc.” is not in the claims. The claim actually recites “the fourth sensor not configured to measure pressure and/or temperature.” Due to the and/or construction, this claim can be read “the fourth sensor not configured to measure pressure and temperature.” If this option is chosen, Upchurch reads on the claim, because Upchurch’s sensor measures pressure only.
Drawings
The drawings were received on January 21, 2026. These drawings are acceptable.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 5, 9, 11, 15, 19, and 22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Upchurch (US 4,553,428).
With regard to claims 1, 11, and 22, Upchurch teaches a downhole gauge for use in a wellbore (note that claims 12 and 22 are grouped along with claim 1, as all of the independent claims require essentially the same structure and thus are rejected on the same grounds), comprising:
a gauge housing (27+35+41), the gauge housing having a first end (i.e. the upper end) and a second opposing end (i.e. the lower end); and
first, second and third sensors (“a plurality or [sic] pressure transducers 106 which are mounted in angularly spaced threaded bores,” column 7, lines 8-10) located within an interior of the gauge housing between the first end and the second opposing end (Fig. 3D shows the position of the sensors 106 within the housing), wherein the first sensor is a first pressure and/or temperature sensor (all are pressure sensors), the first pressure and/or temperature sensor configured to measure a first pressure and/or temperature in an inside diameter (ID) of tubing (17) that the downhole gauge is coupled (the first pressure sensor 106 is connected to port 112, which is “subjected to the pressure of fluids in the bore 108 of the sub 107 at a location above the test valve 28,” i.e. the pressure within the tubing 17, as the same inner bore 108 runs through the gauge housing), the second sensor is a second pressure and/or temperature sensor, the second pressure and/or temperature sensor configured to measure a second pressure and/or temperature in an annulus surrounding the tubing that the downhole gauge is coupled (the second pressure sensor 106 is connected to port 110, and “the pressures of fluids in the well annulus outside the sub 107 are fed to the port 110,” see column 7, lines 34-36), and the third sensor is a third pressure and/or temperature sensor, the third pressure and/or temperature sensor configured to measure a third pressure and/or temperature of a remote zone (the third sensor 106 is connected to port 111, which is “in communication via the passages 33 and 32 with the pressure below the test valve 28,” see column 7, lines 58-61. The area below test valve 28 is interpreted to be a “remote zone,” as the claim does not place any limitations on what constitutes a remote zone).
With regard to claims 5 and 15, Upchurch teaches that the gauge housing includes a plurality of interconnected gauge housing sections (i.e. sections 27, 35, and 41).
With regard to claims 9 and 19, Upchurch discloses providing a fourth sensor to provide backup measurements (column 3, lines 65-67). This fourth sensor measures pressure only, and thus does not measure pressure and temperature, meeting the claim language due to the “and/or” construction.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 2-4 and 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Upchurch in view of Semple et al. (US 2014/0335712, hereinafter Semple).
With regard to claims 2 and 12, Upchurch discloses a conductor (e.g. 49 in Fig. 3A) coupled to the first end of the gauge housing (proximate numeral 59).
However, Upchurch fails to disclose that the conductor is a tubing encapsulated conductor (TEC) and that it is connected using a TEC connection.
Semple discloses a downhole device that utilizes a tubing encapsulated conductor and tubing encapsulated connections, or terminations.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Upchurch to utilize the TEC and TEC connections disclosed by Semple, as such conductors and connectors are useful in “harsh environments” (Semple, paragraph 0041), and provide “robust pressure seals around the conductors while also providing effective electrical insulators to prevent tracking and electrical shorts (Semple, paragraph 0041).
With regard to claims 3 and 13, Upchurch discloses a second conductor (i.e. conductor 105 proximate element 106 in Fig. 3D) coupled to the second end of the gauge housing (note that the conductor is “coupled to” the second end at least in the sense that all of the elements of the gauge housing are “coupled to” each other as they are mounted on the same housing).
However, Upchurch fails to teach that the second conductor is a tubing encapsulated conductor (TEC) and that it is coupled to the housing with a tubing encapsulated conductor (TEC) connection.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Upchurch such that the second conductor was also a tubing encapsulated conductor (TEC) and connected using a TEC connection as disclosed by Semple, as such conductors and connectors are useful in “harsh environments” (Semple, paragraph 0041), and provide “robust pressure seals around the conductors while also providing effective electrical insulators to prevent tracking and electrical shorts (Semple, paragraph 0041).
With regard to claims 4 and 14, Upchurch, as modified, discloses one or more internal wire passageways extending from the first and second opposing ends of the gauge housing (see at least passageways 71 and 84 in Figs. 3B and 3C, for example), the one or more internal wire passageways configured to couple the first tubing encapsulated conductor (TEC) and the second tubing encapsulated conductor (TEC) (in view of the modification above in claims 2 and 3 which provides tubing encapsulated conductors for all of the conductors in Upchurch’s gauge housing).
Claim(s) 10 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Upchurch in view of Wang et al. (US 2025/0047220, hereinafter Wang).
Note: Wang qualifies as prior art under 35 U.S.C. 102(a)(2) because the filing date of August 6, 2023 is before applicant’s filing date of November 14, 2023. Although applicant claims priority to 63/425,349 with a filing date of November 15, 2022, the ‘349 provisional application does not provide support for the subject matter claimed in claims 10 and 20.
With regard to claims 10 and 20, Upchurch fails to teach that one or more of the first, second and third sensors is a sensor set, each sensor set including communication electronics and sensor electronics on a single board.
Wang discloses a downhole gauge device (Fig. 6) in which downhole sensors (70, 74) are provided as sensor sets along with communications equipment (102) on a single board (72).
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Upchurch by providing the sensors as a set along with communications equipment on a single board, as shown by Wang, in order to provide all the necessary capabilities for sensing and transmitting data in a compact form factor.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Upchurch.
With regard to claim 21, Upchurch fails to disclose a second gauge housing and a second set of sensors within the gauge housing. Upchurch explicitly teaches only one gauge device (20) within the tool string (Fig. 1).
However, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Upchurch by providing an additional gauge housing with an additional set of sensors therein, in order increase the functionality of the tool string by allowing the measurement of additional data from additional downhole zones simultaneously without relocating the tool string, and furthermore, it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT E FULLER whose telephone number is (571)272-6300. The examiner can normally be reached M-F 8:30AM - 5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tara Schimpf can be reached at 571-270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT E FULLER/Primary Examiner, Art Unit 3676