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 Objections
Claims 11-14 and 16-20 are objected to because of the following informalities:
Claim 11 Line 20 currently states:
“connecting the fluid sensor the downhole electronic reader using a metal encapsulated cable;”.
Should be changed to state:
--connecting the fluid sensor to the downhole electronic reader using a metal encapsulated cable;--.
Appropriate correction is required.
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) 1, 6-9, 11, and 16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roth US 2021/0010995 in view of Wrighton US 2022/0333608, Gaston US 2005/0052949, CN 102996119, and NO 20130694. Examiners Note: For the purposes of examining the instant application, the examiners submitted English translation of NO 20130694 & CN 102996119, dated 12/16/2025 in the IFW, is referenced hereinafter.
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Annotated Figs 2 & 3 of Roth US 2021/0010995 (Attached Figure A)
Regarding Claims 1 & 11: Roth US 2021/0010995 discloses the limitations: An electric submersible pump system (the ESP pump system is defined by the sum of its parts; regarding the claimed method – MPEP §2112.02 I Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986) – accordingly, since the prior art referenced below would perform the method claimed, the prior art also addresses the language of the method claim as currently written) configured to monitor integrity of a protector (= 204, Fig 2, ¶0034; it is disclosed in ¶0034 that the same protective fluid is shared among the motor 206 the protector 204, and the monitoring sub 108, thus it is understood that the protective fluid 306 which is measured by sensor 312 as described in ¶0037 is the protective fluid located in the protector 204 in ¶0034), the ESP system comprising:
an ESP (the ESP is defined by the sum of its parts) including:
a sensor housing (housing 107 of sub 108, ¶0034, Fig 2) comprising:
a downhole electronic reader (board 311 in sub 108 as described in ¶0037 and shown in Fig 3; board 311 of the monitoring sub 108 receives (i.e. reads) the information from sensor 312, ¶0037);
a submersible motor 206 electrically connected to the sensor housing (since Fig 2 shows the housing of the motor 206 connected to the housing 107 – the two housings are understood to be electrically connected in a broad sense);
a ported adapter (see Annotated Figs 2 & 3 of Roth US 2021/0010995 (Attached Figure A) above; since the identified ported adaptor has shaft 300 passing through an opening in it – it is ported, and since the identified ported adaptor connects (i.e. adapts) the sub 108 to the motor 206 – it is a ported adaptor as claimed) electrically connected to the submersible motor (since Attached Figure A shows the housing of motor 206 connected to the structure of the ported adaptor – the two structures are understood to be electrically connected in a broad sense);
the protector 204 electrically connected to the ported adapter (since Attached Figure A shows the housing of the protector 204 connected to the ported adaptor via the housing of the motor – the two structures are understood to be electrically connected in a broad sense),
an intake 202 fluidly connected to the protector (given the arrangement in Fig 2 where the intake 202 is located above the protector 204, the production fluid moved by the ESP system 200 would have to flow past the protector to reach the intake 202, thus the exterior of the intake 202 and the protector 204 are understood to be fluidly connected in a broad sense); and
a submersible pump 104 fluidly connected to the intake (Fig 2, ¶0034);
wherein the ported adapter includes a fluid sensor (fluid sensor = 312, since ¶0035 states that the sensor 312 can be attached to an inner surface of any component of the ESP assembly 200, since the identified ported adaptor is part of the overall ESP assembly 200, Roth suggests that the fluid sensor 312 being included inside the ported adaptor as claimed) configured to:
measure dielectric oil contamination data (the reference teaches that the protective fluid 306 is a dielectric fluid shared among the motor 206, the protector 204, and the monitoring sub 108, ¶0034-¶0035,¶0013-¶0018, ¶0033, ¶0037; a PHOSITA would understand that the protective dielectric fluid 306 of Roth would be dielectric oil since it is a well-known dielectric fluid used to protect/lubricate motors – see evidence of Wrighton US 2022/0333608 – abstract, thus the data measured by the sensor 312 is dielectric oil contamination data), inside the protector (since ¶0034 states that the protective fluid is shared between the motor, the protector and the monitoring sub, and ¶0035 states that the protective fluid is circulated by fluid moving device 310, it follows that measurement of the protective fluid 306 with sensor 312 in one part of the fluid path (e.g. the part of the fluid path defined by monitoring sub 108) would correspond to the fluid in a different part of the fluid path (e.g. the part of the fluid path defined by the protector or the motor) since it is all the same fluid, and the circulation of the fluid by device 310 would cause the fluid shared among the motor 206, the protector 204, and the monitoring sub 108 to homogenize), from cycle of start and stop of the ESP throughout a run-life of the ESP (since ¶0041-¶0042 discusses continuously measuring the fluid, the fluid sensor would inherently measure the contamination data throughout the life of the ESP as claimed), and transmit the measured dielectric oil contamination data to the downhole electronic reader (¶0037);
an element connecting the fluid sensor to the downhole electronic reader (element = structure which couples the sensor 312 to the board 311);
a surface panel (112, ¶0033, Fig 1) comprising a computer processor (i.e. processor described in ¶0031) electrically connected to the sensor housing (via 114, ¶0031) configured to receive the measured dielectric oil contamination data transmitted from the downhole electronic reader (¶0031,¶0037 – element 112 receives the data from the downhole electric reader 311 via the monitoring sub 108).
If there is any question that the dielectric fluid of Roth US 2021/0010995 is dielectric oil, the prior art of Wrighton US 2022/0333608 which is directed to a downhole pump having an electric motor containing dielectric fluid (abstract), where a condition of the dielectric fluid is sensed by a sensor (¶0054) like Roth US 2021/0010995, is noted.
However, Wrighton US 2022/0333608 discloses the limitations: an electric submersible pump including a pump 118, an electric motor 128, and a seal/protector 114, the electric motor is lubricated and cooled by the dielectric oil (¶0055), the seal is coupled to and disposed between the pump and the electric motor (¶0055).
Hence it would have been obvious, to one of ordinary skill in the art before the effective filing date of the claimed invention, to replace the dielectric fluid of Roth US 2021/0010995 with the dielectric oil taught by Wrighton US 2022/0333608 in order to use a dielectric fluid known to cool and lubricate the electric motor in a downhole environment (¶0055).
Roth US 2021/0010995 is silent regarding the limitations: the surface panel having a memory, and the surface panel configured to store the measured data. The prior art of Gaston US 2005/0052949 which is directed to a controller receiving information from a sensor in a downhole environment like Roth US 2021/0010995, is noted.
However, Gaston US 2005/0052949 does disclose the limitations: a controller (the controller is defined by the sum of its parts and includes processor 203 and memory 204, ¶0026) comprising a computer processor (203, ¶0026) and memory (204, ¶0026), configured to receive and store measured data (i.e. receive and store measured data from sensors 201,202, ¶0023, ¶0026).
Hence it would have been obvious, to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the surface panel (112) of Roth US 2021/0010995 with the memory 204 of Gaston US 2005/0052949 in order to be able to store the detected signals and create records of the signals detected during operation (¶0026). It is noted that in the combination of prior art the surface panel 112 of Roth as modified by Gaston would comprise a processor and memory, and be configured to receive and store the measured dielectric oil contamination data as claimed.
Roth US 2021/0010995 is silent regarding the limitations: the sensor housing comprising: a current-leakage sensor, a discharge-pressure sensor, an intake-pressure sensor, an intake-temperature sensor, a winding-temperature sensor, a motor and pump-vibration sensor, and a downhole electronic reader. The prior art of CN 102996119 which is directed to a downhole detection unit for a downhole submersible pump (Line 14-27) like Roth US 2021/0010995, is noted.
However, CN 102996119 does disclose the limitations: a sensor housing (1, Line 86-97) , the sensor housing comprising: a current-leakage sensor (Line 90-97, Fig 1), a discharge-pressure sensor (Line 90-97, Fig 1), an intake-pressure sensor (Line 90-97, Fig 1), an intake-temperature sensor (Line 90-97, Fig 1), a winding-temperature sensor (Line 90-97, Fig 1 – the motor temperature sensor described would measure the temperature of the windings of the motor as known in the art), a motor and pump-vibration sensor (Line 90-97, Line 117-120, Fig 1 – the vibration sensor detects vibration of the entire device, thus it would detect both vibrations from the motor and pump as claimed), and a downhole electronic reader (i.e. single chip & signal processing circuit, Line 94-104).
Hence it would have been obvious, to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the sensor housing (107,108) and the downhole electronic reader 311 of Roth US 2021/0010995 with the sensor housing 1, and the combination of sensors contained within the sensor housing in the underground detection unit of CN 102996119 in order to provide real-time monitoring of the downhole submersible pump, so as to avoid the occurrence of various problems, and provide convenient maintenance functions (Line 14-27).
Roth US 2021/0010995 is silent regarding the limitations: the element connecting the fluid sensor to the downhole electric reader is a metal encapsulated cable. The prior art of NO 20130694 which is directed to electrically connecting devices in a downhole environment like Roth US 2021/0010995, is noted.
However, NO 20130694 discloses the limitations: electrically connected downhole equipment (i.e. power supply system) including a metal-encapsulated cable that has resistance to downhole liquids and gases (Line 406-407).
Hence it would have been obvious, to one of ordinary skill in the art before the effective filing date of the claimed invention, to replace the element connecting the fluid sensor to the downhole electric reader of Roth US 2021/0010995 with the metal-encapsulated cable of NO 20130694 in order to use an electrical connection that is known to have resistance to downhole liquids and gases (Line 406-407) so as to avoid failure of the electrically connected downhole equipment and costs associated with downtime and/or repair of the downhole equipment (Line 388-399).
Additionally or in the alternate Regarding Claims 1 & 11: Roth US 2021/0010995 as modified by Wrighton US 2022/0333608, Gaston US 2005/0052949, and CN 102996119 discloses the claimed limitations except for: “(the element connecting the fluid sensor to the downhole electric reader is) a metal encapsulated cable”. It would have been an obvious matter of design choice to --design the electrical connection between the fluid sensor and the downhole electric reader to use a metal encapsulated cable--, since no stated problem is solved or unexpected results obtained in having a metal encapsulated cable connecting the fluid sensor to the downhole electric reader versus the design taught by Roth US 2021/0010995 as modified by Wrighton US 2022/0333608, Gaston US 2005/0052949, and CN 102996119. Applicant has not disclosed why it is important/critical that (the element connecting the fluid sensor to the downhole electric reader is) a metal encapsulated cable and has not demonstrated that this feature solves any stated problem or is for any particular purpose. Specifically, ¶0031 of the SPEC indicates that the whole reason for having the metal encapsulated cable is to provide a data connection between the fluid senor and the downhole electric reader inside the sensor housing (e.g. like the element connecting the fluid sensor 312 and the downhole electric reader 311 inside the sensor housing 108 taught by Roth US 2021/0010995). Thus, when the electrical connection between the fluid sensor and the downhole electric reader is designed to use a metal encapsulated cable the element connecting the fluid sensor to the downhole electric reader of Roth US 2021/0010995 as modified by Wrighton US 2022/0333608, Gaston US 2005/0052949, and CN 102996119 will also meet Applicant’s disclosed functional limitation of providing a data connection between the fluid senor and the downhole electric reader inside the sensor housing.
Regarding Claims 6 & 16: Roth US 2021/0010995 discloses: further comprising a power cable (114, ¶0034) that: connects the downhole electronic reader to the surface panel (¶0031, ¶0033-¶0034, ¶0037), and transmits the measured fluid contamination data to the surface panel (¶0033-¶0034, ¶0037).
Regarding Claims 7 & 17: Roth US 2021/0010995 discloses: wherein the fluid sensor is configured to measure levels of dielectric oil contamination inside the protector (¶0034, ¶0037 – since the sensor 312 is located inside the protector, and the well fluid is a dielectric fluid/oil (¶0035) it measures dielectric oil contamination as claimed).
Regarding Claims 8 & 18: Roth US 2021/0010995 as modified by Wrighton US 2022/0333608, Gaston US 2005/0052949, CN 102996119, and NO 20130694 discloses in the above mentioned Figures and Specifications the limitations set forth in claims 1 & 11. Additionally, Roth US 2021/0010995 discloses: the fluid sensor 312 measures the well fluid inside the protector (see explanation above in the rejection of claims 1 & 11). Roth US 2021/0010995 does not disclose the fluid sensor measures electrical conductivity.
However, Wrighton US 2022/0333608 discloses: using a sensor (154, ¶0036-¶0039) to sense a conductivity of dielectric oil (e.g. the well fluid in the device of Roth; Wrighton - ¶0036-¶0039).
Hence it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to make the simple substitution of:
fluid sensor 312 in the electrical submersible pump of Roth US 2021/0010995
with the prior art elements of:
fluid sensor 154 of Wrighton US 2022/0333608
in order to obtain the predictable results of:
measure contamination of the dielectric fluid in a known manner (Wrighton – ¶0041-¶0042) as taught by Wrighton US 2022/0333608.
Since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded no more than the predictable results of measuring contamination of the dielectric fluid in a known manner.
Regarding Claims 9 & 19: Roth US 2021/0010995 as modified by Wrighton US 2022/0333608, Gaston US 2005/0052949, CN 102996119, and NO 20130694 discloses the claimed limitations except for: “wherein the fluid sensor is configured to measure light diffraction of the well fluid inside the protector”. It would have been an obvious matter of design choice to –configure the fluid sensor to measure light diffraction of the well fluid inside the protector--, since no stated problem is solved or unexpected results obtained in having the fluid sensor being configured to measure light diffraction of the well fluid inside the protector versus the design taught by Roth US 2021/0010995 in the combination of prior art. Applicant has not disclosed why it is important/critical that the fluid sensor is configured to measure light diffraction of the well fluid inside the protector and has not demonstrated that this feature solves any stated problem or is for any particular purpose. Specifically, ¶0033 of the SPEC indicates that light diffraction is just one of several different ways that fluid contamination can be detected with a sensor (e.g. like the sensor 312 taught by Roth US 2021/0010995). Thus, when the fluid sensor is configured to measure light diffraction of the well fluid inside the protector the sensor 312 of Roth US 2021/0010995 will also meet Applicant’s disclosed functional limitation of detecting fluid contamination.
Claim(s) 2-4 & 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roth US 2021/0010995 in view of Wrighton US 2022/0333608, Gaston US 2005/0052949, CN 102996119, and NO 20130694 as applied to claims 1 & 11 above, and further in view of Howell US 2013/0240199.
Regarding Claims 2 & 12: Roth US 2021/0010995 as modified by Wrighton US 2022/0333608, Gaston US 2005/0052949, CN 102996119, and NO 20130694 discloses in the above mentioned Figures and Specifications the limitations set forth in claim 1 & 11. Roth US 2021/0010995 does not disclose the limitations: wherein the protector comprises a lower bag protector and an upper bag protector.
However Howell US 2013/0240199 does disclose the limitations: wherein the protector (the protector = the seal section 112, 118a,118b,118c,118d, ¶0015-¶0019) comprises a lower bag protector (bag 128 located in bag section 118d, 0016-¶0018) and an upper bag protector (bag 128 located in bag section 118a, 0016-¶0018, Fig 3).
Hence it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to replace the protector 204 of Roth US 2021/0010995 with the protector (112, 118a,118b,118c,118d) of Howell US 2013/0240199 in order to provide multiple layers of protection (i.e. four bag sections) that prevent the introduction of wellborn contaminants into the submersible motor (¶0016-¶0018, Figs 2-3).
Regarding Claims 3 & 13: Roth US 2021/0010995 as modified by Wrighton US 2022/0333608, Gaston US 2005/0052949, CN 102996119, NO 20130694, & Howell US 2013/0240199 discloses the claimed invention except for "wherein the ported adapter is installed between the lower bag protector and the upper bag protector". It would have been obvious to one having ordinary skill in the art at the time the invention was made to have such a rearrangement of the ported adaptor being installed between the lower bag protector and the upper bag protector as a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence the particular arrangement of the ported adaptor being installed between the lower bag protector and the upper bag protector is significant. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950); In re Kuhle, 526 F. 2d 553, 188 USPQ 7 (CCPA 1975). MPEP 2144.04(VI)(C).
Regarding Claims 4 & 14: it is within the general skill level of a worker in the art to design the ported adaptor of Roth US 2021/0010995 as modified Wrighton US 2022/0333608, Gaston US 2005/0052949, CN 102996119, NO 20130694, & Howell US 2013/0240199, to connect the lower bag protector and the upper bag protector through a shaft and coupling as required to meet design constraints, since both the art of Roth (Fig 3, Attached Figure A) and Howell (interconnect module 124, ¶0023) show structure with a central passage in it, that fluidly connects and allows for the passage of a shaft therethrough.
Claim(s) 10 & 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roth US 2021/0010995 in view of Wrighton US 2022/0333608, Gaston US 2005/0052949, CN 102996119, and NO 20130694 as applied to claims 1 & 11 above, and further in view of Sheth US 2014/0099211.
Regarding Claims 10 & 20: Roth US 2021/0010995 as modified by Wrighton US 2022/0333608, Gaston US 2005/0052949, CN 102996119, and NO 20130694 discloses in the above mentioned Figures and Specifications the limitations set forth in claims 1 & 11. Additionally, Roth US 2021/0010995 discloses: the fluid sensor 312 measures the well fluid inside the protector (see explanation above in the rejection of claims 1 & 11). Roth US 2021/0010995 does not disclose the fluid sensor measures refractive index.
However, Sheth US 2014/0099211 discloses: using a sensor (e.g. a suitable fiber optic sensor – ¶0027) to sense refractive index (as described in ¶0026-¶0027 the index of refraction sensed by the sensor varies in response to water contained within the sealed fluid (i.e. oil 40 surrounding the motor) in the well pump).
Hence it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to make the simple substitution of:
fluid sensor 312 in the electrical submersible pump of Roth US 2021/0010995
with the prior art elements of:
the fiberoptic sensor of Sheth US 2014/0099211
in order to obtain the predictable results of:
measure water contamination motor oil in a known manner (Sheth – ¶0026-¶0027) as taught by Sheth US 2014/0099211.
Since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded no more than the predictable results of measuring water contamination of the motor oil in a known manner.
Examiner's Note: The Examiner respectfully requests of the Applicant in preparing responses, to fully consider the entirety of the references as potentially teaching all or part of the claimed invention.
It is noted, REFERENCES ARE RELEVANT AS PRIOR ART FOR ALL THEY CONTAIN. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments (see MPEP § 2123).
Additionally the origin of the drawing is immaterial. For instance, drawings in a design patent can anticipate or make obvious the claimed invention, as can drawings in utility patents. When the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979). (See MPEP § 2125).
The Examiner has cited particular locations in the reference(s) as applied to the claims above for the convenience of the Applicant. Although the specified citations are representative of the teachings of the art and are applied to the specific limitations within the individual claims, typically other passages and figures will apply as well.
Furthermore: with respect to the prior art and the determination of obviousness, it has been held that Prior art is not limited just to the references being applied, but includes the understanding of one of ordinary skill in the art. The "mere existence of differences (i.e. a gap) between the prior art and an invention DOES NOT ESTABLISH the inventions nonobviousness." Dann v. Johnston, 425 U.S. 219, 230, 189 USPQ 257, 261 (1976). Rather, in determining obviousness the proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts. And factors other than the disclosures of the cited prior art may provide a basis for concluding that it would have been obvious to one of ordinary skill in the art to bridge the gap. (See MPEP § 2141).
Response to Arguments
Applicant’s arguments, see Page 7 ¶4-Page 9 ¶1, filed 06/30/2026, with respect to the rejections under §112 have been fully considered and are persuasive. The rejections under §112 of 04/07/2026 have been withdrawn.
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 JOSEPH S HERRMANN whose telephone number is (571)270-3291. The examiner can normally be reached 8:00 AM - 5:00 PM EST.
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/CHARLES G FREAY/Primary Examiner, Art Unit 3746
/JOSEPH S. HERRMANN/ Examiner, Art Unit 3746
