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 .
Detailed Action
Response to Arguments
Applicant's arguments filed 3-11-2026 have been fully considered but they are not persuasive.
The applicant argues that the disclosure enables an interferometric architecture. They refer to the disclosure (Paragraph 52) to show that it teaches a portion of the beam (212) is projected onto the photodetector array as a reference beam. Thus, they conclude the architecture of a reference and measurement beam that share a common origin is disclosed. However, reading that paragraph, it states the reference beam (212) and reflected light beam (216) are made to interfere. Further, the laser is disclosed to produce the beam (212) and the measurement beam (216) is disclosed as being produced as a reflection of light (214) projected on the wall (Paragraph 49) which the projected light (214) is disclosed as being produced by the light sources (208) in the same section. Still further, the applicant is claiming a laser head to emit a laser beam and a light source emitter configured to emit a light beam, and despite the amendments, is still claiming interfering the light beam with the laser beam. As noted previously, those two separate beams cannot be coherent with each other. The laser is called a coherent source only because the light it produces is generally coherent with itself over very long path length differences. Thus, even if the specification is claiming such a combination can be interfered, it is not convincing that this is enabled. The examiner suggests submitting a peer-reviewed journal article which shows the interference of a light produced by a laser with that of a separate source if they wish to continue claiming this subject matter.
The applicant next argues that LCI is a known technique within the art. The examiner agrees LCI is known as well as other associated arts such as Optical Coherence Tomography. The examiner has been examining this art for his entire career with the patent office. At disagreement is not that LCI exists but what the applicant is interpreting as LCI. The examiner contends that interference between a laser light and a broadband source is not possible. At least not to the degree that would produce usable information. Further, applicant’s figure 2C shows an LCI which uses a light source (280) and interferes the return light (293) with a reference light (292). Notably, this would track onto the disclosure about fig. 2A with the emitted light being (214) and the return light being (216). Further, separately disclosed and shown in fig. 2G is a speckle interferometer for measuring displacement with figs. 2D-2F showing the laser beam going out and being reflected to produce a speckle pattern and notably not requiring a reference arm since a speckle pattern is an interference effect that occurs when highly coherent light reflected from a rough surface interferes with itself. Thus, the fact that LCI exists does not prove that interference between a laser and a separate source (broadband aka white light) is possible.
Thus, despite the arguments and amendments, the scope that includes a light source and separate laser source being interfered is still claimed and the disclosure is not enough to overcome this rejection since examiner contends that that is still not possible.
Additionally, as a note on coherence, in order for two separate beams to be coherent they must be both spatially and temporally coherent. This is generally done by splitting the beam (as the applicant shows in their LCI figure) and then sending the reference beam along a path of a known distance and the measurement beam to the sample to be reflected back. These beams are then combined, and from the intensity measurement at the detector the phase difference between the beams can be calculated which then can be used to calculate a distance measurement. That said, two separate sources cannot produce beams that are coherent with each other which would result in usable information because of the nature of light emission and because, generally, the phase the light emits at is essentially random. The only example the examiner is aware of this being done is with two identical laser sources in a phase-locked loop, which is not disclosed in applicant’s specification nor what the applicant is appearing to claim. If the applicant maintains that they’ve invented a new way to interfere unrelated sources of differing types, the specification should in the very least have sufficient disclosure in how this is accomplished as this is not known in the prior art.
As an additional note, the scope has been changed in the claims to either interfering the laser with the light source or interfering the reflected laser beam with a portion of itself. The rejection for enablement only applies to the first case. The second case is entirely possible and the examiner has applied art with that in mind. The second case as the examiner notes doesn’t appear to be disclosed; however, speckle interferometers which use a reference beam are known and the examiner didn’t feel this rose to the need of another enablement rejection. However, this does appear to be new matter despite the applicant’s claims in the arguments and will be rejected as such, as noted below.
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.
Claims 1-24 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding Claims 1 & 13 the applicant has claimed two separate light sources, one a laser of fixed frequency and one of a “light source emitter” (Disclosed as potentially wideband or tunable in the specification) and the applicant has claimed that after reflection from reservoir rock formation the laser and reflected light beam interfere. However, for light to interfere and create an interferogram it must be coherent. As far as examiner understand, it is not possible for two different light sources to be coherent; the only example the examiner knows of is when two lasers of the same frequency are synced up with complex locking circuitry to keep them in coherence with each other. This is different than applicant’s claimed laser light source and light source emitter, and it does appear that it is possible for a broad band source and a laser of a fixed frequency to be coherent with each other. Importantly, it is also disclosed and shown that the light source and the laser are reflecting from different areas of the wellbore. In consideration of a whether this disclosure is enabling for such a feature the examiner has considered the wands factors which are:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
As for each of these factors they will be addressed below.
(A) The breadth of the claims;
The claims are drawn to a downhole tool system with appropriate structure/steps for such a system. However, in regard to the specific limitation that is being addressed, the applicant merely states the two sources interfere and wellbore characteristics are derived from this interference. This is fairly broad in that no disclosure is provided as to how they’re interfered and how the information is derived.
(B) The nature of the invention;
The nature of invention is one of an optical testing system with multiple sources and modalities for measuring data from the sides of a wellbore.
(C) The state of the prior art;
The prior art for measuring the characteristics of a wellbore is fairly well developed with many different modalities disclosed including those in the optical testing field. However, the examiner was unable to find a single disclosure where separate light sources are interfered, minus the one discussed above in relation to two identical lasers, which is not what is being claimed here.
(D) The level of one of ordinary skill;
The level of one of ordinary skill in the art is of the PhD level of education, but would have generally understood that two separate light sources, as the ones described in the specification, would not be able to interfere with each other, because they are not coherent, and there is no explanation as to how to make them coherent with each other.
(E) The level of predictability in the art;
While normally the function of an interferometer in the art would be highly predictable; in this case with the interference of light from two separate light sources that on face do not appear to be coherent and the extraction of information from any interference that may result is highly unpredictable and would require significant disclosure to enable one to make and/or use this claimed invention.
(F) The amount of direction provided by the inventor;
There does not appear to be any guidance as to how this is accomplished in the specification. The applicant generally discloses interfering the light source with the laser beam (Paragraphs 52, & 56, of the disclosure) but does not explain how this is possible. Further, there is no disclosure as to how the any information is derived from this interference, since even if somehow an interference pattern would result, the phase difference would be between beam paths of unknown distance.
(G) The existence of working examples; and
None were provided.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
There would have to be extensive experimentation in order to make this work, if this is at all possible, since one would have to first invent a way for them to be coherent and then invent a way to derive information from the resulting interferogram.
Thus, given this analysis the examiner finds the claims to not be enabled for the interference of light from a light source emitter and a separate laser. Claims 2-12 & 14-24 are rejected based upon their dependency.
Claims 1-24 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.
The applicant has amended the claims to include interfering the reflected laser light with a portion of the laser beam as a reference beam. However, in the disclosure of the speckle interferometer (Fig. 2G) there does not appear to be a reference arm. Thus, while such a technology is known, it is not what the applicant originally disclosed and is thus new matter.
Claim Objections
Claims 8 & 20 are objected to because of the following informalities:
In Claims 8 & 20 the applicant uses the term BHA without a proper antecedent basis. This should be fixed.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-3, 5, 11, 13-15, 17, & 23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morys et al (PGPub 2012/0250017) (Morys).
Regarding Claims 1 & 13, Morys discloses a downhole tool system, comprising: a bottom hole assembly (BHA), comprising:
a connector configured to couple to a downhole conveyance run into a wellbore from a terranean surface to a reservoir rock formation (Fig. 1, Paragraph 19);
a laser head (109, Fig. 5) configured to emit a laser beam toward the reservoir rock formation (106) at a fixed frequency (Paragraphs 18, & 29). The disclosure states the sample can be the borehole wall and the light can be reflected from it;
at least one light source emitter (100) configured to emit a light beam toward the reservoir rock formation (Paragraphs 18 & 28); and
a sensing assembly comprising at least one optical receiver (108) configured to (1) receive a reflected laser beam from the reservoir rock formation and a reflected light beam from the reservoir rock formation, and (2) interfere a portion of the laser beam as a reference beam with at least one of the reflected laser beam or the reflected light beam to generate an interferogram (Paragraph 29). The disclosed interferogram would be created by a reference beam of the laser reflecting from the fixed mirror (103) and the measurement laser beam reflecting from the movable mirror (104) and then interfering and being measured on the detector (108) after reflection from the wall; and
a controller communicably coupled to the sensing assembly and configured to perform operations comprising determining one or more wellbore characteristics based on the interferogram (Fig. 9, Steps 512-514). From the rate of variation between the mirrors measured by the laser interferogram an appropriate compensation to the measured signal from the broadband source is determined and then from that in last step the parameters of the material are analyzed.
The method of claim 13 is also met by this disclosure.
Regarding Claims 2 & 14, Morys discloses the aforementioned. Further, Morys discloses wherein the light source emitter comprises a wideband light source emitter (100), and the emitted light beam has a wavelength at a visible spectrum, a near infrared (IR) spectrum, a mid IR spectrum, or a long IR spectrum (Paragraph 26).
Regarding Claims 3 & 15, Morys discloses the aforementioned. Further, Morys discloses wherein the wavelength is at 350 - 550 nanometers or 1.5 - 1.55 micrometers (Paragraph 26). The tungsten-halogen incandescent source would meet this.
Regarding Claims 5 & 17, Morys discloses the aforementioned. Further, Morys discloses wherein the emitted light beam is tuned to transmit through a wellbore fluid in the wellbore (Paragraph 18). The disclosure states that the sample may be a wellbore fluid (Borehole fluid) and that the light may be transmitted through the sample thus meeting the limitation.
Regarding Claims 11 & 23, Morys discloses the aforementioned. Further, Morys discloses wherein the operation of determining one or more wellbore characteristics based on the interferogram comprises determining one or more wellbore characteristics based on the interferogram using backscattered spectroscopy (Paragraph 42). Morys discloses determining spectral properties of the scattered light which would make this backscattered spectroscopy.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 4, 10, 16, & 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morys in view of Batarseh et al (PGPub 2022/0372822) (Batarseh).
Regarding Claims 4 & 16, Morys discloses the aforementioned but fails to explicitly disclose wherein the laser head is configured to emit the laser beam toward the reservoir rock formation during a laser drilling or perforating operation;
However, Batarseh discloses a laser drilling process using a laser head (106) for spectroscopy purposes (Paragraph 35);
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Morys with wherein the laser head is configured to emit the laser beam toward the reservoir rock formation during a laser drilling or perforating operation because this allows for sample analysis of the borehole wall which can classify rock types that offers such advantages of being able to classify the hydrocarbons potentially present and what may be needed to extract them.
Regarding Claims 10 & 22, Morys discloses the aforementioned but fails to explicitly disclose wherein the reflected light beam comprises spectral reflectance information, and the operations comprise: determining a rock type of the reservoir rock formation based on the spectral reflectance information;
However, Batarseh discloses wherein the reflected light beam comprises spectral reflectance information, and the operations comprise: determining a rock type of the reservoir rock formation based on the spectral reflectance information (Paragraph 26);
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Morys with herein the reflected light beam comprises spectral reflectance information, and the operations comprise: determining a rock type of the reservoir rock formation based on the spectral reflectance information because when one can classify rock types that offers such advantages of being able to classify the hydrocarbons potentially present and what may be needed to extract them.
Claim(s) 12, & 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morys in view of Dolinko et al (Measuring micro-displacements of specular surfaces using speckle interferometry, arXiv:1903.10300v1, 2018,
https://doi.org/10.48550/arXiv.1903.10300) (Dolinko).
Regarding Claims 12 & 24, Morys discloses the aforementioned but fails to explicitly disclose wherein the operation of determining one or more wellbore characteristics based on the interferogram comprises determining a wellbore displacement;
However, Dolinko teaches a technique for using laser speckle with a reference wave to determine displacement (Fig. 1, Sections 2 & 3, Pages 3-5);
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Morys with wherein the operation of determining one or more wellbore characteristics based on the interferogram comprises determining a wellbore displacement because measuring out of plane displacement can allow one to calibrate a spectral response which is sensitive to changes in distance between the sample and the spectrometer. Additionally, measuring in plane displacement can be important for monitoring the position of the sensor along a borehole wall.
Allowable Subject Matter
Claim 6-9, & 18-21 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
As to Claim 6 the prior art of record, taken alone or in combination, fails to disclose or render obvious a plurality of optical fibers configured to emit a plurality of light beams from the single light source; and an optical array configured to radially illuminate the reservoir rock formation with the plurality of light beams, in combination with the rest of the limitations of the claim.
Claim 7 allowable based upon its dependency.
As to Claim 8 the prior art of record, taken alone or in combination, fails to disclose or render obvious wherein the at least one light source emitter comprises an array of light source emitters radially arranged around the BHA and configured to radially illuminate the reservoir rock formation with a plurality of light beams, in combination with the rest of the limitations of the claim.
Claim 9 allowable based upon its dependency.
As to Claim 18 the prior art of record, taken alone or in combination, fails to disclose or render obvious a plurality of optical fibers, and an optical array, and operating the at least one light source emitter to emit the light beam toward the reservoir rock formation comprises: operating the single light source to emit a plurality of light beams, through the plurality of optical fibers, toward the reservoir rock formation; and operating the optical array to radially illuminate the reservoir rock formation with the plurality of light beams, in combination with the rest of the limitations of the claim.
Claim 19 allowable based upon its dependency.
As to Claim 20 the prior art of record, taken alone or in combination, fails to disclose or render obvious wherein the at least one light source emitter comprises an array of light source emitters radially arranged around the BHA, the method comprising: operating the array of light source emitters to radially illuminate the reservoir rock formation with a plurality of light beams, in combination with the rest of the limitations of the claim.
Claim 21 allowable based upon its dependency.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHON COOK whose telephone number is (571)270-1323. The examiner can normally be reached 11am-7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kara Geisel can be reached at 571-272-2416. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHON COOK/Examiner, Art Unit 2877 June 21, 2026
/Kara E. Geisel/Supervisory Patent Examiner, Art Unit 2877
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