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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1, 2026 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 7 and 13 has/have been considered but are moot in view of new ground(s) of rejection necessitated by the amendments.
In regards to claims 1, 7 and 13, the applicant argues that cited prior art does not teach “the remote monitoring and control module is configured to perform a well test of a subterranean formation of a wellbore surrounding the lower completion while suspended within the wellbore without any mechanical or electrical connections extending from a surface of the wellbore to the lower completion”. The applicant argues that the prior art teaches that a cable is need to deploy the wireless module unlike the claimed invention that no mechanical or electrical connections are needed [see applicant’s arguments pg. 13 section 2]. Also, the applicant argues that the claimed invention is not just a simple substitution with a wireless module because the claimed invention recites a particular deployment state that is not taught by the prior art [see applicant’s arguments pg. 13 section 3, pg. 14 L. 1-6].
The examiner respectfully disagrees with the applicant. First of all, as explained below in the rejection of claim 1 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, the argued limitations constitute new matter because the applicant’s specification explicitly recite that a mechanical connection with the surface exists while performing the test [see applicant’s specification fig. 1 elements 125 and 140, fig. 2 element 220, par. 0012 L. 1-6 and L. 11-13, par. 0015 L. 10-21, par. 0019 L. 4-6, par. 0021 L. 3-7, par. 0026 L. 1-6, par. 0028 L. 1-4]. Furthermore, even though the prior art teaches that the wireless module is lowered using a cable, it is clear from the prior art’s teachings that after deployment, the wireless module does not require any electrical or mechanical connection to the surface [see Patel (US-2011/0192596) fig. 5 element 96]. These teachings means that after deployment of the wireless module, while performing the test and during transmission/reception of data to/from the surface, the lower completion does not have any electrical or mechanical connections to the surface. Therefore, the cited prior art teaches the argued limitations. For the reasons provided above, the applicant’s arguments are not persuasive.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim(s) 1-21, 23-24, 27, 29 and 31-33 is/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.
In regards to claim 1, the claim was amended to recite in lines 9-13 “the remote monitoring and control module is configured to perform a well test of a subterranean formation of a wellbore surrounding the lower completion while suspended within the wellbore without any mechanical or electrical connections extending from a surface of the wellbore to the lower completion”. The aforementioned limitation recites that the remote monitored and control module is suspended within the wellbore without any mechanical connections extending from a surface of the wellbore to the lower completion. In contrast, the applicants specification and drawings recite that the lower completion while coupled to the remote monitoring and control module is lowered downhole via a downhole conveyance comprising a drill pipe mechanically connected to the surface, and that the downhole conveyance is removed after the test is performed [see applicant’s specification fig. 1 elements 125 and 140, fig. 2 element 220, par. 0012 L. 1-6 and L. 11-13, par. 0015 L. 10-21, par. 0019 L. 4-6, par. 0021 L. 3-7, par. 0026 L. 1-6, par. 0028 L. 1-4]. The applicant’s specification explicitly recite that the remote monitoring and control module performs a well test while mechanical connections extend from a surface of the wellbore to the lower completion. Therefore, the limitations of lines 9-13 constitute new matter, and the claim fails to comply with the written description requirement.
In regards to claims 2-6 and 23-24, the claims fail to comply with the written description requirement due to their dependency on claim 1.
In regards to claim 7, lines 11-15 of the claim has the same issues described in the rejection of claim 1 above. Therefore, the limitations of lines 11-15 constitute new matter, and the claim fails to comply with the written description requirement.
In regards to claims 8-12, 27 and 29, the claims fail to comply with the written description requirement due to their dependency on claim 7.
In regards to claim 13, lines 12-18 of the claim has the same issues described in the rejection of claim 1 above. Therefore, the limitations of lines 12-18 constitute new matter, and the claim fails to comply with the written description requirement.
In regards to claims 14-21 and 31-33, the claims fail to comply with the written description requirement due to their dependency on claim 13.
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.
Claim(s) 29 is/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 pre-AIA the applicant regards as the invention.
In regards to claim 29, the claim recites in lines 1-3 “wherein the half wet connect lower connection assembly is configured to connect with the lower completion is configured to couple with”. It appears that some limitations are missing from the claim because the second time the phrase “is configured to” is recited, it is unclear which device is performing the function. For this reason, the claim is indefinite. The examiner has interpreted the claim in the following way in order to advance prosecution: “wherein the half wet connect lower connection assembly
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.
Claim(s) 1-2, 4-5, 7-8, 10-11, 13-16, 18-21, 24, 27 and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Patel et al. (US-8,056,619) hereinafter Patel in view of Patel (US-2011/0192596) hereinafter Patel596.
In regards to claim 1, Patel teaches a downhole tool comprising a lower completion [col. 4 L. 65-67]. Also, Patel teaches that the tool comprises a half wet connect lower connection assembly coupled to an uphole end of the lower completion [fig. 29 element 118, col. 5 L. 7-12, col. 7 L. 4-7]. Furthermore, Patel teaches that the tool comprises a remote monitoring and control module [fig. 29 element 1500, col. 24 L. 12-15 and L. 45-57]. Patel further teaches that a half wet connect upper connection assembly coupled to a downhole end of the remote monitoring and control module, the half wet connect upper connection assembly and the half wet connect lower connection assembly coupled together to form a full wet connect assembly [fig. 29 elements 118 and 1504, col. 5 L. 7-12, col. 7 L. 4-7, col. 24 L. 12-15]. Patel also teaches that the remote monitoring and control module is configured to perform a well test of a subterranean formation of a wellbore surrounding the lower completion prior to running an upper completion within the wellbore [col. 24 L. 9-15 and L. 45-57].
Patel further teaches that the well test is performed using control lines extending from a surface of the wellbore to the lower completion [fig. 29 element 1502, col. 24 L. 45-57]. Patel does not teach not using control lines.
On the other hand, Patel596 teaches that the communication with the surface can be performed wirelessly without mechanical or electrical connections extending from a surface of the wellbore [fig. 5, par. 0036 L. 2-10, par. 0040].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use Patel596’s teachings of using wireless communications in the tool taught by Patel because it will permit the downhole device to send and transmit data without control lines.
The combination of Patel and Patel596 teaches that the remote monitoring and control module can perform a well test by receiving instructions from the surface prior to running an upper completion within the wellbore [see Patel col. 24 L. 9-15 and L. 45-57], and that the communications can be wireless communications without mechanical or electrical connections extending from a surface of the wellbore [see Patel596 par. 0036 L. 2-10, par. 0040]. These teachings mean that the remote monitoring and control module is configured to perform a well test of a subterranean formation of a wellbore surrounding the lower completion while suspended within the wellbore without any mechanical or electrical connections extending from a surface of the wellbore to the lower completion and prior to running an upper completion within the wellbore.
In regards to claim 2, the combination of Patel and Patel596, as applied in the rejection of claim 1 above, further teaches that the lower completion includes one or more sliding sleeves (flow control devices), the remote monitoring and control module configured to move at least one of the one or more flow control devices between closed and open positions and perform the well test [see Patel col. 20 L. 64-67, col. 21 L. 13-14, col. 24 L. 45-57].
In regards to claim 4, the combination of Patel and Patel596, as applied in the rejection of claim 1 above, further teaches that the lower completion includes one or more downhole sensors, the remote monitoring and control module configured to interface with the one or more downhole sensors and perform the well test [see Patel col. 24 L. 45-57].
In regards to claim 5, the combination of Patel and Patel596, as applied in the rejection of claim 1 above, further teaches that the lower completion includes sliding sleeves (one or more flow control devices) and one or more downhole sensors, the remote monitoring and control module configured to move at least one of the one or more flow control devices between closed and open positions and interface with the one or more downhole sensors to perform the well test [see Patel col. 20 L. 64-67, col. 21 L. 13-14, col. 24 L. 45-57].
In regards to claim 7, the combination of Patel and Patel596, as shown in the rejection of claim 1 above, teaches the claimed downhole tool. Patel also teaches a wellbore extending through one or more subterranean formations [see Patel fig. 29]. This means that Patel also teaches the claimed system.
In regards to claim 8, the combination of Patel and Patel596, as shown in the rejection of claim 2 above, teaches the claimed limitations.
In regards to claim 10, the combination of Patel and Patel596, as shown in the rejection of claim 4 above, teaches the claimed limitations.
In regards to claim 11, the combination of Patel and Patel596, as shown in the rejection of claim 5 above, teaches the claimed limitations.
In regards to claim 13, the combination of Patel and Patel596, as shown in the rejection of claim 1 above, teaches the claimed downhole tool performing the claimed functions. Therefore, the combination also teaches the claimed method. Furthermore, Patel teaches that the method comprises forming a wellbore through one or more subterranean formations and positioning the downhole tool in the wellbore [see Patel fig. 29]. Also, Patel teaches that the method comprises performing a well test of the subterranean formation using the remote monitoring and control module of the downhole tool [see Patel col. 24 L. 45-57].
In regards to claim 14, the combination of Patel and Patel596, as applied in the rejection of claim 13 above, further teaches that the remote monitoring and control module is attached to the lower completion before the upper completion is deployed in order to perform the well test [see Patel col. 24 L. 9-15 and L. 45-57]. Also, Patel teaches that the upper completion, when deployed, can be connected to the lower completion [see Patel col. 5 L. 2-7]. These teachings mean that the method includes disconnecting the half wet connect upper connection assembly and attached remote monitoring and control module from the half wet connect lower connection assembly after performing the well test.
In regards to claim 15, the combination of Patel and Patel596, as applied in the rejection of claim 14 above, further teaches that the remote monitoring and control module is attached to the lower completion before the upper completion is deployed in order to perform the well test [see Patel col. 24 L. 9-15 and L. 45-57]. Also, Patel teaches that the upper completion, when deployed, can be connected to the lower completion [see Patel col. 5 L. 2-7]. These teachings mean that the method includes connecting a second half wet connect upper connection assembly having an upper completion coupled thereto with the half wet connect lower connection assembly and the lower completion after disconnecting the half wet connect upper connection assembly and attached remote monitoring and control module from the half wet connect lower connection assembly.
In regards to claim 16, the combination of Patel and Patel596, as shown in the rejection of claim 2 above, teaches the claimed limitations.
In regards to claim 18, the combination of Patel and Patel596, as applied in the rejection of claim 14 above, further teaches that the performing includes performing one or more flow tests on the subterranean formation as the one or more flow control devices move between the closed and open positions [see Patel col. 24 L. 45-57].
In regards to claim 19, the combination of Patel and Patel596, as shown in the rejection of claim 4 above, teaches the claimed limitations.
In regards to claim 20, the combination of Patel and Patel596, as applied in the rejection of claim 14 above, further teaches that the performing includes performing one or more flow tests on the subterranean formation using the one or more downhole sensors [see Patel col. 24 L. 45-57].
In regards to claim 21, the combination of Patel and Patel596, as shown in the rejection of claim 5 above, teaches the claimed limitations.
In regards to claim 24, the combination of Patel and Patel596, as applied in the rejection of claim 1 above, further teaches that the full wet connect assembly provides electrical coupling in the presence of fluids between the lower completion and the remote monitoring and control module [see Patel fig. 29 elements 118 and 1504, col. 5 L. 7-12, col. 7 L. 4-7]. This teaching means that the full wet connect assembly is configured to allow electrical communication between the lower completion and the remote monitoring and control module.
Furthermore, the combination teaches that a full wet connect assembly can also provide hydraulic communication [see Patel596 par. 0034 L. 8-23].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use Patel596’s teachings of using the full wet connect assembly also for hydraulic communication in the tool taught by the combination because it will permit to also communicate hydraulic signals between the lower completion and the remote monitoring and control module
In regards to claim 27, the combination of Patel and Patel596, as applied in the rejection of claim 7 above, further teaches that the system permit real time monitoring and transmission of formation pressure to the surface from the remote monitoring and control module [see Patel col. 4 L. 32-39, col. 24 L. 34-36]. This teaching means that the remote monitoring and control module is configured to transmit formation pressure data to a surface receiver in real time.
In regards to claim 32, the combination of Patel and Patel596, as applied in the rejection of claim 13 above, further teaches that the well test includes measuring formation pressure and temperature [see Patel col. 4 L. 32-39, col. 24 L. 34-36, L. 45-57].
Claim(s) 3, 6, 9, 12 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Patel et al. (US-8,056,619) hereinafter Patel in view of Patel (US-2011/0192596) hereinafter Patel596 as applied to claim(s) 1, 2, 7, 8 and 16 above, and in further view of Patel (US-8,925,631) hereinafter Patel631.
In regards to claim 3, the combination of Patel and Patel596, as applied in the rejection of claim 2 above, further teaches that the lower completion comprises one or more sliding sleeves (flow control devices) [see Patel col. 20 L. 64-67, col. 21 L. 13-14, col. 24 L. 45-57]. However, Patel does not teach that the one or more flow control devices are one or more active flow control devices.
On the other hand, Patel631 teaches that the one or more flow control devices can be active flow control devices [fig. 13 elements 138 and 114, col. 7 L. 28-31, col. 8 L. 57-63].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use Patel631’s teachings of using active flow control devices in the tool taught by the combination because it will permit to better control flow during a well test.
In regards to claim 6, the combination of Patel and Patel596, as applied in the rejection of claim 2 above, further teaches that the lower completion comprises a downhole packer [see Patel col. 7 L. 17-23, col. 11 L. 54-57, col. 24 L. 50-57]. However, Patel does not teach that the lower completion includes an uphole feedthrough packer.
On the other hand, Patel631 teaches that the lower completion includes an uphole feedthrough packer and a downhole packer [fig. 13 elements 144 (feedthrough packer) and 118 (downhole packer), col. 9 L. 14-20 and L. 28-31].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use Patel631’s teachings of including a feedthrough packer in the tool taught by the combination because it will permit ton install control lines for the electronics that are included in the lower completion.
In regards to claim 9, the combination of Patel, Patel596 and Patel631, as shown in the rejection of claim 3 above, teaches the claimed limitations.
In regards to claim 12, the combination of Patel, Patel596 and Patel631, as shown in the rejection of claim 6 above, teaches the claimed limitations.
In regards to claim 17, the combination of Patel, Patel596 and Patel631, as shown in the rejection of claim 3 above, teaches the claimed limitations.
Claim(s) 23 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Patel et al. (US-8,056,619) hereinafter Patel in view of Patel (US-2011/0192596) hereinafter Patel596 as applied to claim(s) 1 and 13 above, and in further view of Rayssiguier et al. (US-8,750,075).
In regards to claim 23, the combination of Patel and Patel596, as applied in the rejection of claim 1 above, further teaches that the remote monitoring and control module includes wireless transceiver configured to communicate with a surface unit via wireless telemetry [see Patel596 fig. 5, par. 0036 L. 2-10, par. 0040]. However, the combination does not teach that the wireless transceiver is an acoustic transceiver.
On the other hand, Rayssiguier teaches that an acoustic transceiver can be used to transmit data wirelessly from/to a downhole location to/from the surface [col. 1 L. 33-36].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use Rayssiguier’s teachings of using an acoustic transceiver to perform communication between a downhole location and the surface in the tool taught by the combination because acoustic communication will provide reliable wireless communication between the remote monitoring and control module and the surface unit.
In regards to claim 31, the combination of Patel and Patel596, as applied in the rejection of claim 1 above, further teaches that the method comprises transmitting test results from the remote monitoring and control module to a surface receiver using wireless telemetry [see Patel col. 24 L. 34-36 and L. 45-57, see Patel596 par. 0036 L. 2-10, par. 0040]. However, the combination does not teach that the wireless telemetry is acoustic telemetry.
On the other hand, Rayssiguier teaches that an acoustic transceiver can be used to transmit data wirelessly from/to a downhole location to/from the surface [col. 1 L. 33-36].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use Rayssiguier’s teachings of using an acoustic transceiver to perform communication between a downhole location and the surface in the method taught by the combination because acoustic communication will provide reliable wireless communication of the test results between the remote monitoring and control module and the surface unit.
Claim(s) 29 and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Patel et al. (US-8,056,619) hereinafter Patel in view of Patel (US-2011/0192596) hereinafter Patel596 as applied to claim(s) 7 and 15 above, and in further view of Patel (US-9,739,113) hereinafter Patel113.
In regards to claim 29, the combination of Patel and Patel596, as applied in the rejection of claim 7 above, further teaches that the upper completion, when deployed, can be connected to the lower completion via wet connectors [see Patel col. 5 L. 2-12]. This teaching mean that the half wet connect lower connection assembly is configured to couple with a second half wet connect upper connection assembly having an upper completion coupled thereto.
The combination does not teach that the upper completion includes chemical injection equipment.
On the other hand, Patel113 teaches that an upper completion can include chemical injection equipment [col. 5 L. 3-7].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use Patel113’s teachings of including chemical injection equipment in the upper completion in the system taught by the combination because it will reduce costs of installation [see Patel113 L. 7-11].
In regards to claim 33, the combination of Patel and Patel596, as applied in the rejection of claim 15 above, does not teach that the upper completion includes a chemical injection system.
On the other hand, Patel113 teaches that an upper completion can include a chemical injection system [col. 5 L. 3-7].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use Patel113’s teachings of including a chemical injection system in the upper completion in the system taught by the combination because it will reduce costs of installation [see Patel113 L. 7-11].
The combination of Patel, Patel596 and Patel113 teaches that the upper completion includes a chemical injection system [see Patel113 col. 5 L. 3-7]. Also, the combination teaches the upper completion is connected to the lower completion via wet connectors [see Patel col. 5 L. 2-12, col. 24 L. 9-15]. These teachings mean that an upper completion when completion can perform chemical injection functions when the upper completion is connected to the lower completion via the wet connectors. In other words, the method comprises activating a chemical injection system in the upper completion after connecting the second half wet connect upper connection assembly having the upper completion coupled thereto with the half wet connect lower connection assembly.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANKLIN D BALSECA whose telephone number is (571)270-5966. The examiner can normally be reached 6AM-4PM EST M-F.
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/FRANKLIN D BALSECA/Examiner, Art Unit 2688
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