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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/16/2026 has been entered.
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.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claim 1: Line 22-39 – it states:
“a surface panel electrically connected to the sensor housing,
wherein the downhole electronic reader transmits the measured fluid contamination data to the surface panel, and
wherein the surface panel is configured to:
store the measured fluid contamination data received over time,
determine a trend of dielectric oil contamination level by comparing the stored fluid contamination data from before and after start and stop cycles of the submersible pump,
predict a remaining life expectancy of the ESP based on the determined trend,
continuously monitor the integrity of the protector in real-time and generate an alert when the determined trend is indicative of impaired protector integrity,
generate a graphical user interface enabling a user to request an adjustment of an operating parameter of the submersible motor when the determined trend is indicative of accelerated protector wear, and
generate a replacement request when the predicted remaining life expectancy is indicative of imminent protector failure.”.
Regarding Claim 11: Line 24-36 – it states:
“surface panel, the surface panel configured to:
store the measured fluid contamination data received over time,
determine a trend of dielectric oil contamination level by comparing the stored fluid contamination data from before and after start and stop cycles of the submersible pump,
predict a remaining life expectancy of the ESP based on the determined trend,
continuously monitor the integrity of the protector in real-time and generate an alert when the determined trend is indicative of impaired protector integrity,
generate a graphical user interface enabling a user to request an adjustment of an operating parameter of the submersible motor when the determined trend is indicative of accelerated protector wear, and
generate a replacement request when the predicted remaining life expectancy is indicative of imminent protector failure.”
With respect to the written description requirement and how the disclosure is evaluated to determine if the statutory requirements of 35 U.S.C. 112(a) / 35 U.S.C. 112 1st paragraph the critical inquiry is:
-- Are the steps and procedures explained in sufficient detail so that a person having ordinary skill in the art would understand how the inventor intended the claimed function to be performed (MPEP §2161.01(I))? AND -- Does the specification explain what hardware and/or software (specifically the steps and procedures) the inventor uses to accomplish the claimed function (MPEP §2161.01(I))? -- For computer implemented functional claim limitations, it has been held that, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. (MPEP §2161.01 I).
In particular, the disclosure does not sufficiently identify a particular algorithm/steps used by the surface panel (i.e. controller) to:
determine a trend of dielectric oil contamination level
predict remaining life expectancy of the ESP based on the determined trend,
determine the integrity of the protector,
determine impaired protector integrity based on the determined trend,
determine accelerated protector wear based on the determined trend, or
determine when the predicted remaining life expectancy is indicative of imminent protector failure as claimed in claim 1 & claim 11 or how these functions are achieved.
The SPEC does not clearly articulate how the various elements of the claim are determined, such that it is clear to a PHOSTIA that applicant had possession of the claimed invention at the time of filing. In general, the SPEC suggests that the various functions are performed (e.g. knowing the dielectric contamination can be used to predict ESP remaining life expectancy) but does not clearly articulate how the inventor intends to perform the function (e.g. how the surface panel determines a trend of dielectric oil contamination level (merely comparing current contamination level with a previous level of contamination is merely a greater than, equal to, or less than operation – and two points do not determine a trend OR predict a remaining life expectancy of the ESP based on the determined trend (there is no explanation of how this is done)). The examiner notes that specifics regarding each of the emphasized portions of the claims will be pointed out below. Accordingly, the SPEC & Figures which make up the disclosure of the instant application, lacks the necessary specific specificity to describe each of the actions performed by the controller which are recited in the independent claims.
The examiner would like to know: is the fluid contamination data determined only by the fluid sensor (recited in Line 17 of claim 1/11)? What steps does the surface panel in the instant application take to determine a trend of dielectric oil contamination level as claimed? What triggers the trend determination?
In the REM filed 03/16/2026 – Applicant stated (Page 8 ¶1) that since the claims now recite that the trend is determined by comparing stored fluid contamination data from before and after start and stop cycles of the submersible pump – it does not matter that the word trend is not used anywhere in the SPEC since the concept and methodology of determining a trend is clearly described. However this is not the case. Furthermore, the examiner notes that two points (e.g. before and after) define a line, a trend requires at least three points in order to demonstrate a pattern/trend. Thus the SPEC does not explain how the claimed trend is determined as claimed.
The examiner would like to know: What steps does the surface panel take to manipulate the determined trend variable to predict a remaining life expectancy of the ESP based on the determined trend?
In the REM filed 03/16/2026 – Applicant stated (Page 8 ¶2-Page 9 Line 5) that because ¶0067 states knowing the dielectric contamination can be used to predict ESP remaining life expectancy, the SPEC teaches using the dielectric contamination data to predict remaining life. The examiner disagrees, the passage does not provide any information regarding how the inventor intends to determine remaining life expectancy from either the determined trend (as claimed) or from known dielectric contamination data.
The examiner would like to know:
How does the inventor define the variable for integrity of the protector?
What steps does the surface panel take to continuously monitor the integrity of the protector as claimed?
What predetermined level of the trend does the surface panel use to generate an alert when the determined trend is indicative of impaired protector integrity?
In the REM filed 03/16/2026 – Applicant stated (Page 9 ¶1) that “A system configured to “continuously monitor” a parameter for “integrity” necessarily implies the ability to identify when the integrity is impaired”. This statement indicates that the SPEC lacks the necessary specific specificity required for a PHOSITA to determine that the inventor had possession of the particular claimed feature in question at the time of filing.
Is the determined trend related to the integrity of the protector, and what is the relationship between the determined trend and the integrity of the protector? Since the integrity of the protector, the dielectric contamination level, and the fluid contamination data from inside the protector – are each set forth as different elements in the claim, they must each be different from one another, how are they different from one another?
What predetermined level of the determined trend does the surface panel use to determine accelerated protector wear?
What operating parameter does the request by user adjust for the submersible motor when the determined trend is indicative of accelerated protector wear?
What predetermined level of the predicted remaining life expectancy does the surface panel use to determine imminent protector failure?
In the REM filed 03/16/2026 – Applicant stated (Page 9 ¶3-Page 10 Line 3) that because ¶0040 states that “the surface panel may generate reports and requests based on the data analysis and summaries” and ¶0067 teaches predicting remaining life expectancy, that the SPEC teaches the claimed feature. Applicant further reasons that the context of the request (i.e. from ¶0040) is necessarily defined by the context of the prediction. And reasons that “When the predicted life reaches a threshold indicating imminent failure, the logical subject of a "request" generated by the system would be for replacement. This flows directly from the disclosed predictive function and the disclosed reporting capability.” At Page 9 Line 1-3 of the REM. The examiner disagrees with Applicants assertions, and notes that this kind of circular reasoning indicates that the SPEC lacks the necessary specific specificity required for a PHOSITA to determine that the inventor had possession of the particular claimed feature in question at the time of filing.
Thus, the claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
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.
Claims 1-20 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.
Regarding Claim 1: Line 17-30 states in part: “wherein the ported adapter includes a fluid sensor configured to: measure fluid contamination data, inside the protector, in a well fluid from cycle of start and stop of the ESP throughout run-life, and
…
wherein the surface panel is configured to:
…
determine a trend of dielectric oil contamination level by comparing the stored fluid contamination data from before and after start and stop cycles of the submersible pump,”.
It is unclear the exact limitations the applicant is introducing here, specifically it is unclear if the well fluid inside the protector that is measured by the sensor is dielectric oil, or if it is some other fluid? Furthermore, since the well fluid is claimed separately from dielectric oil, the language of the claim suggests that the well fluid is NOT dielectric oil. Accordingly, if the well fluid inside the protector is NOT dielectric oil, and the fluid contamination data measured by the sensor is communicated and used by the surface panel to determine a trend of dielectric oil contamination level by comparing the stored fluid contamination data from before and after stop cycles of the submersible pump, then it is unclear HOW the surface panel is able to determine the trend of dielectric oil contamination level as claimed – simply by measuring an unknown well fluid with a sensor? Accordingly, the scope of the claim is unclear for the reasons discussed above.
Regarding Claim 1: Line 25-39 states in part: “wherein the surface panel is configured to:
…
continuously monitor the integrity of the protector in real-time and generate an alert when the determined trend is indicative of impaired protector integrity,
generate a graphical user interface enabling a user to request an adjustment of an operating parameter of the submersible motor when the determined trend is indicative of accelerated protector wear, and
generate a replacement request when the predicted remaining life expectancy is indicative of imminent protector failure.”. It is unclear the exact limitations the applicant is introducing here, specifically it is not clear how the integrity of the protector is determined as a discrete value? Or how the surface panel would continuously monitor the integrity of the protector in real-time? Or when the determined trend would be indicative of impaired protector integrity? Or what the inventor considers to be impaired protector integrity? Or when the determined tend is indicative of accelerated protector wear? Or what the inventor considers to be accelerated protector wear? Or when the predicted remaining life expectancy is indicative of imminent protector failure? Or what amount of remaining life expectancy the inventor considers to demonstrate imminent protector failure?
It has been held that: A claim is indefinite if, when read in light of the specification, it fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention. See Nautilus, Inc. v. Biosig Instruments, Inc., U.S., No. 13-369, June 2, 2014.
Therefore since it is not clear how the integrity of the protector is monitored as a discrete value, it is also unclear how the surface panel would continuously monitor the integrity of the protector in real-time.
Thus since it is not clear when the determined trend would be indicative of impaired protector integrity, it is also unclear when the surface panel would generate an alert due to impaired protector integrity.
Additionally, since it is not clear when the determined trend would be indicative of accelerated protector wear, it is also unclear when the surface panel would generate a graphical user interface enabling a user to request an adjustment of an operating parameter of the submersible motor due to accelerated protector wear.
Further since it is not clear when the predicted remaining life expectancy is indicative of imminent protector failure, it is also unclear when the surface panel would generate a replacement request as claimed.
Regarding Claim 11: Line 17-28 states in part: “installing a fluid sensor in the ported adapter; measuring fluid contamination data inside the protector, by the fluid sensor, in a well fluid from cycle of start and stop of the ESP throughout run-life;
…
the surface panel configured to:
…
determine a trend of dielectric oil contamination level by comparing the stored fluid contamination data from before and after start and stop cycles of the submersible pump,”.
It is unclear the exact limitations the applicant is introducing here, specifically it is unclear if the well fluid inside the protector that is measured by the sensor is dielectric oil, or if it is some other fluid? Furthermore, since the well fluid is claimed separately from dielectric oil, the language of the claim suggests that the well fluid is NOT dielectric oil. Accordingly, if the well fluid inside the protector is NOT dielectric oil, and the fluid contamination data measured by the sensor is communicated and used by the surface panel to determine a trend of dielectric oil contamination level by comparing the stored fluid contamination data from before and after stop cycles of the submersible pump, then it is unclear HOW the surface panel is able to determine the trend of dielectric oil contamination level as claimed – simply by measuring an unknown well fluid with a sensor? Accordingly, the scope of the claim is unclear for the reasons discussed above.
Regarding Claim 11: Line 24-36 states in part: “surface panel, the surface panel configured to:
…
continuously monitor the integrity of the protector in real-time and generate an alert when the determined trend is indicative of impaired protector integrity,
generate a graphical user interface enabling a user to request an adjustment of an operating parameter of the submersible motor when the determined trend is indicative of accelerated protector wear, and
generate a replacement request when the predicted remaining life expectancy is indicative of imminent protector failure.”. It is unclear the exact limitations the applicant is introducing here, specifically it is not clear how the integrity of the protector is determined as a discrete value? Or how the surface panel would continuously monitor the integrity of the protector in real-time? Or when the determined trend would be indicative of impaired protector integrity? Or what the inventor considers to be impaired protector integrity? Or when the determined tend is indicative of accelerated protector wear? Or what the inventor considers to be accelerated protector wear? Or when the predicted remaining life expectancy is indicative of imminent protector failure? Or what amount of remaining life expectancy the inventor considers to demonstrate imminent protector failure?
It has been held that: A claim is indefinite if, when read in light of the specification, it fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention. See Nautilus, Inc. v. Biosig Instruments, Inc., U.S., No. 13-369, June 2, 2014.
Therefore since it is not clear how the integrity of the protector is monitored as a discrete value, it is also unclear how the surface panel would continuously monitor the integrity of the protector in real-time.
Thus since it is not clear when the determined trend would be indicative of impaired protector integrity, it is also unclear when the surface panel would generate an alert due to impaired protector integrity.
Additionally, since it is not clear when the determined trend would be indicative of accelerated protector wear, it is also unclear when the surface panel would generate a graphical user interface enabling a user to request an adjustment of an operating parameter of the submersible motor due to accelerated protector wear.
Further since it is not clear when the predicted remaining life expectancy is indicative of imminent protector failure, it is also unclear when the surface panel would generate a replacement request as claimed.
Finally; depending claim(s) inherit deficiencies from the parent claim(s).
Appropriate correction is required.
Claims
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) and under 35 U.S.C. 112(a), set forth in this Office action – without changing the scope of the claims.
Response to Arguments
Applicant's arguments filed 03/16/2026 have been fully considered but they are not persuasive.
Page 8 ¶1: Applicant makes remarks about the SPEC, and reasons why they believe the amend claim language is supported by the SPEC.
--Arguments not persuasive. In response to Applicants assertion (Page 8 ¶1) that since the claims now recite that the trend is determined by comparing stored fluid contamination data from before and after start and stop cycles of the submersible pump – it does not matter that the word trend is not used anywhere in the SPEC since the concept and methodology of determining a trend is clearly described – the examiner notes that, it has been held that The fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, the inventor was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563-64, 19 USPQ2d at 1117. Accordingly, since the instant application does not explain how the various functions recited in the claims are intended to be performed by the structures disclosed and claimed, the SPEC fails to demonstrate to those skilled in the art that the inventor had possession at the time of filing. Accordingly, Applicants arguments are not persuasive.--.
Page 8 ¶2-Page 9 Line 5: Applicant continues to argue that the SPEC supports the amended claim language.
--Arguments not persuasive. In response to Applicants assertion (Page 8 ¶2-Page 9 Line 5) that because ¶0067 states knowing the dielectric contamination can be used to predict ESP remaining life expectancy, the SPEC teaches using the dielectric contamination data to predict remaining life. The examiner disagrees. Because the instant application does not explain how the dielectric contamination data measured by the sensor IS USED to predict ESP remaining life expectancy, the SPEC fails to demonstrate to those skilled in the art that the inventor had possession at the time of filing. Accordingly, Applicants arguments are not persuasive.--.
Page 9 ¶1: Applicant continues to argue that the SPEC supports the amended claim language.
--Arguments not persuasive. In response to Applicants assertion (Page 9 ¶1) that “A system configured to “continuously monitor” a parameter for “integrity” necessarily implies the ability to identify when the integrity is impaired”. Examiner disagrees. The circular logic employed by Applicant, does not demonstrate the inventor had possession of the claimed invention at the time of filing. Accordingly, the SPEC fails to demonstrate to those skilled in the art that the inventor had possession at the time of filing. Accordingly, Applicants arguments are not persuasive.--.
Page 9 ¶3: Applicant continues to argue that the SPEC supports the amended claim language.
--Arguments not persuasive. In response to Applicants assertion (Page 9 ¶3-Page 10 Line 3) that because ¶0040 states that “the surface panel may generate reports and requests based on the data analysis and summaries” and ¶0067 teaches predicting remaining life expectancy, that the SPEC teaches the claimed feature. Applicant further reasons that the context of the request (i.e. from ¶0040) is necessarily defined by the context of the prediction. And reasons that “When the predicted life reaches a threshold indicating imminent failure, the logical subject of a "request" generated by the system would be for replacement. This flows directly from the disclosed predictive function and the disclosed reporting capability.” Examiner disagrees. The circular logic employed by Applicant, does not demonstrate the inventor had possession of the claimed invention at the time of filing. Accordingly, the SPEC fails to demonstrate to those skilled in the art that the inventor had possession at the time of filing. Accordingly, Applicants arguments are not persuasive.--.
Page 10 ¶2-Page 12 end: Applicant continues to argue that the SPEC supports the amended claim language.
--Examiner disagrees. Many of the points made in these remarks have already been addressed above, and do not convince the examiner that the claims are supported under §112(a).
Furthermore, it is noted that, the Federal Circuit has pointed out that, under United States law, a description that merely renders a claimed invention obvious may not sufficiently describe the invention for the purposes of the written description requirement of 35 U.S.C. 112. (see MPEP §2163 I A).
As it relates to the instant application, the examiner attempted to map the language of the independent claims to the SPEC of the instant application during examination of the claims which were filed on 03/16/2026. However the examiner was unable to match the language of the independent claims up with passages from the SPEC, to demonstrate that the details claimed in the claims filed on 03/16/2026 were supported by the SPEC. Furthermore, when trying to understand when the particular functions which were added by the amendment (i.e. see Lines 32-39 of Claim 1 & Lines 30-36 of Claim 11) the examiner found no explanation of the conditions the inventor intended to be present in the system for these functions to occur. Accordingly, the evidence demonstrates to the examiner, that the currently pending claims are not supported under §112. Accordingly, Applicants arguments are not persuasive.--.
Page 13: Applicant traverses the §112(b) rejections.
Applicants arguments are not persuasive. While the examiner notes that the SPEC does describe the system generating a graphic user interface to allow a user to request adjustment/replacement as argued, there are still several issues present which make the claims indefinite. If applicant is able to demonstrate using particular citations from the SPEC, that the claims are in fact definite, then the rejection will be reconsidered. Since Applicants remarks on Page 13 do not use citations from the SPEC to support their position, the arguments are not convincing.--.
Applicant’s arguments (Page 14 ¶1-Page 22 ¶2) with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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
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