DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 27, 2026 has been entered.
Response to Arguments
Applicant’s arguments, filed April 27, 2026, have been fully considered.
Applicant has argued that “Upchurch, as applied, does not disclose or inherently teach several limitations of independent claims 1, 11, and 22”, most notably the language added to these claims regarding a hydraulic line and hydraulic line connector. Examiner respectfully disagrees, and asserts that Upchurch discloses these elements, as discussed in the rejection below.
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 (107+88), 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) via a hydraulic line (111) and hydraulic line connector coupled to the second opposing end of the gauge housing (the upper threaded end of element 27 can be considered a “hydraulic line connector coupled to the second opposing end of the gauge housing,” where the second end of the housing is the lower end of housing 107. Threaded element 27 connects hydraulic line 33 to hydraulic line 111, and thus is a hydraulic line connector).
With regard to claims 5 and 15, Upchurch teaches that the gauge housing includes a plurality of interconnected gauge housing sections (i.e. at least sections 107 and 88).
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 and 12 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).
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.
Allowable Subject Matter
Claims 3, 4, 13, and 14 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.
Conclusion
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
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