DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicants’ Submission, filed 8/20/2025, has been entered. Claims 1-6 and 16-30 are pending with claims 7-15 being previously cancelled and claims 23-30 being currently added.
Claim Rejections - 35 USC § 112
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.
Claims 21, 23 is 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.
Claim 21 recites “a casing” in line 2 and again in line 3. These recitations are indefinite as it is not clear what portion of the casing is being claimed. Further, these recitations make it unclear as to whether the part of the casing that is removed is the portion that has the undesired angle (i.e. and angle which prevents leveling of the tubular). It should be noted that if the claim is clarified such that the casing portion removed is the same casing portion that prevents leveling, such may contain allowable subject matter. However, such cannot be definitively determined until the indefiniteness and clarity are corrected.
Claim 23 recites that “the second inclination being about horizontal comprises the second inclination being approximately ninety degrees”. This recitation is indefinite as there is no positional reference point from which the ninety degrees are measured. The metes and bounds of this claim cannot be ascertained.
Claim 24 suffers from similar deficiencies as claim 23. Although claim 24 recites “from a vertical position” it is not clear where this vertical reference point is. It is suggested that the claim reference either the vertical wellbore or the vertical section of piping from where the tubular extends.
Claim 26 recites that “the second inclination being about horizontal comprises the tubular being approximately perpendicular to a vertical axis”. This recitation is indefinite as it is unclear what/where the vertical axis is. It is suggested that the claim reference either the vertical wellbore or the vertical section of piping from where the tubular extends.
Claim Rejections - 35 USC § 103
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 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 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 of this title, 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.
Claims 1-3, 16-18, 22-26, and 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Cox (US 20110079388) in view of Zbranek et al. (US 20180051533) and in view of Johnson (US 20150345264).
Regarding claim 1: Cox discloses a downhole oil-water separation (DOWS) system configured to be disposed downhole in a well (Fig. 1; abstr.; [0015]). Cox discloses a tubular 48 configured to be placed in the well and to convey reservoir fluid in the DOWS (Fig. 1; [0015]).
Cox does not explicitly disclose a leveler configured to move the tubular from a first inclination to a second inclination. However, Cox discloses a packer 50 which, based on Fig. 1, accomplishes the recited limitation (i.e. move the tubular from a first inclination (before energizing the packer to a second inclination after energizing the packer). Further Cox does not provide any details regarding why the inclination should be changes. Zbranek explains a desire to keep the production casing in the center of the well bore to protect the production casing from wear on the side of the well bore and casing [0007]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have understood the desire/benefit of keeping a production tubular to protect the tubular from wear on the side of the well bore and tubular. As Cox appears to keep a production tubular off the bottom of the wellbore, as the use of centralizers to maintain tubulars away from the wellbore walls are very well known in the art, and as Zbranek explicitly teaches to keep the tubular off the bottom of the well bore, it would have been within routine skill to select a specific tubular positioning configuration from a finite selection of positioning configurations. Such a selection and configuration would have been predictable with a reasonable expectation for success and no unexpected results.
However, Cox, as modified by Zbranek, does not explicitly disclose levelers that can move the tubular from a first inclination to a second inclination. Johnson discloses levelers 66 that can move a tubular from a first inclination to a second inclination (Fig. 1; [0019]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured Cox, as modified by Zbranek, to include levelers that can move the tubular from a first inclination to a second inclination as taught by Johnson. As Cox, Zbranek, and Johnson all appear to teach keeping a tubular off of a wellbore wall, as changing a tubular inclination (centralizers and such) is very well known in the art, and as Johnson explicitly teaches adjusting the tubular inclination with levelers (modules 66), it would have been within routine skill to select a specific leveler configuration from a finite selection of leveling configurations. Such a simple addition/modification and configuration would have been predictable with a reasonable expectation for success and no unexpected results.
Cox, as modified by Zbranek, and Johnson, discloses that the second inclination is about horizontal (Cox – Fig. 1; Zbranek – Fig. 1A).
Regarding claim 2: Cox, as modified by Zbranek, and Johnson, discloses that the leveler further includes an actuator configured to move the tubular from the first inclination to the second inclination (Johnson – Fig. 1; [0019] – the examiner finds that the description of “modules that telescope radially from the wall, such as via internal pressure” includes an actuator).
Regarding claim 3: Cox, as modified by Zbranek, and Johnson, discloses that the leveler further includes a hydraulic pump configured to drive the actuator (Johnson – Fig. 1; [0019] – the examiner finds that the description of “via internal pressure” includes a hydraulic pump to create the pressure).
Regarding claim 16: Cox, as modified by Zbranek, and Johnson, discloses a method comprising positioning a tubular in a downhole oil-water separation (DOWS) system in a well (Cox - Fig. 1; abstr.; [0015]). Cox discloses that the tubular is configured to convey production fluid in the DOWS system (Cox - Fig. 1; abstr.; [0015]). Cox, as modified by Zbranek, and Johnson, discloses improving, using a leveling device, an inclination of the tubular by increasing a levelness of the tubular (see above; Cox – Fig. 1; Zbranek – Fig. 1A; [0007]; Johnson - Fig. 1; [0019]).
Regarding claim 17: Cox, as modified by Zbranek, and Johnson, discloses that the leveling device includes an actuator configured to increase the levelness of the tubular by moving the tubular from a nonlevel position to a level position (Cox – Fig. 1; Zbranek – Fig. 1A; Johnson – Fig. 1; [0019] – the examiner finds that the description of “modules that telescope radially from the wall, such as via internal pressure” includes an actuator; Cox and Zbranek disclose levelness and Johnson discloses actuators; it should also be noted that energizing the packers of Cox and Zbranek can be viewed as actuators that level the tubular).
Regarding claim 18: Cox, as modified by Zbranek, and Johnson, discloses that the leveling device further includes a hydraulic pump configured to drive the actuator (Johnson – Fig. 1; [0019] – the examiner finds that the description of “via internal pressure” includes a hydraulic pump to create the pressure).
Regarding claim 22: Cox, as modified by Zbranek, and Johnson, discloses that the leveling device includes a positionable tubular configured to contact a casing (Johnson – Fig. 1).
Regarding claim 23: Cox, as modified by Zbranek, and Johnson, discloses that the second inclination being about horizontal comprises the second inclination being approximately ninety degrees (Cox – Fig. 1; Zbranek – Fig. 1A).
Regarding claim 24: Cox, as modified by Zbranek, and Johnson, discloses that the second inclination being approximately ninety degrees comprises the second inclination being in a range of ninety degrees and ninety-one degrees, inclusive, from a vertical position (Cox – Figs. 1-4; Zbranek – Fig. 1A).
Regarding claim 25: Cox, as modified by Zbranek, and Johnson, discloses that the second inclination being about horizontal comprises the second inclination being within one degree of horizontal (Cox – Figs. 1-4; Zbranek – Fig. 1A).
Regarding claim 26: Cox, as modified by Zbranek, and Johnson, discloses that the second inclination being about horizontal comprises the tubular being approximately perpendicular to a vertical axis (Cox – Figs. 1-4; Zbranek – Fig. 1A).
Regarding claim 28: Cox, as modified by Zbranek, and Johnson, does not explicitly disclose determining that the tubular is not level and that the improving, using the leveling device, the inclination of the tubular is in response to the determining that the tubular is not level. As discussed above (claim 1 rejection), Zbranek discloses that it is desired to maintain levelness and the figures of both Cox and Zbranek illustrate levelness (Cox’s levelness appears to be from energizing the packing). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured Cox, as modified by Zbranek and Johnson, to include means (such as sensors) to determine if the tubular is level or not (i.e. need a determination of being non-level in order to require actuation of levelers). As Cox and Zbranek teach or at least illustrate a level pipe, as Zbranek teaches a desire to level, as Cox, as modified by Zbranek and Johnson, is silent regarding means to determine levelness, and as determining downhole properties is very well known in the art, it would have been within routine skill to select a specific determination means from a finite selection of determination means (such as sensors). Such a simple addition/modification and configuration would have been predictable with a reasonable expectation for success and no unexpected results.
Regarding claim 29: Cox, as modified by Zbranek, and Johnson, does not explicitly disclose that the improving, using the leveling device, the inclination of the tubular by increasing a levelness of the tubular comprises moving the tubular until the tubular is level. Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have understood that to level an article (such as a tubular) the inclination of the tubular is increased (or decreased) until the tubular is level. Such a simple understanding and operation would have been predictable with a reasonable expectation for success and no unexpected results.
Regarding claim 30: Cox, as modified by Zbranek, and Johnson, discloses that the improving, using the leveling device, the inclination of the tubular by increasing a levelness of the tubular comprises moving the tubular from a first inclination that is not horizontal to a second inclination that is within one degree, inclusive, of horizontal (Cox – Figs. 1-4; Zbranek – Fig. 1A).
Claims 4 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Cox (US 20110079388), Zbranek et al. (US 20180051533), and Johnson (US 20150345264), as applied to claims 2 and 17 above and further in view of Patel et al. (US 20190145220).
Cox, Zbranek, and Johnson disclose the invention substantially as claimed and as discussed above.
Regarding claim 4: Cox, as modified by Zbranek, and Johnson, does not explicitly disclose that the actuator includes an electrical motor configured to receive power from a conductor assembly that provides power to an electrical submersible pump (ESP). Patel discloses that an actuator can include an electrical motor configured to receive power from a conductor assembly that provides power to an electrical submersible pump (ESP) ([0069]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured Cox, as modified by Zbranek and Johnson, so that the actuator includes an electrical motor configured to receive power from a conductor assembly that provides power to an electrical submersible pump (ESP) as taught by Patel. As Cox, Zbranek, Johnson, and Patel all teach electric downhole pumps, as Johnson teaches actuators, and powering downhole tools with a common power supply is very well known in the art, and as Patel explicitly teaches that a motor for an actuator can receive power from the same conductor assembly as the downhole pump, it would have been within routine skill to select a specific power configuration from a finite selection of power configurations. Such a simple addition/modification and configuration would have been predictable with a reasonable expectation for success and no unexpected results.
Regarding claim 19: Cox, as modified by Zbranek, Johnson, and Patel discloses that the actuator includes an electrical motor, that the method further comprises receiving power from a conductor that provides power to an electrical submersible pump of the DOWS system, and operating the electrical motor to drive the actuator to increase the levelness of the tubular (see above; Patel - [0069]).
Claims 6 and 27 is rejected under 35 U.S.C. 103 as being unpatentable over Cox (US 20110079388), Zbranek et al. (US 20180051533), and Johnson (US 20150345264), as applied to claim 1 above and further in view of Brown et al. (US 20210332688).
Cox, Zbranek, and Johnson disclose the invention substantially as claimed and as discussed above.
Regarding claims 6 and 27: Cox, as modified by Zbranek, and Johnson, does not explicitly disclose a fluid separator configured for placement in the tubular and configured to separate the reservoir fluid into production fluid and nonproduction fluid. Brown discloses a fluid separator configured for placement in the tubular and configured to separate the reservoir fluid into production fluid and nonproduction fluid (Fig. 1B; abstr; [0003]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured Cox, as modified by Zbranek and Johnson, to include a fluid separator configured for placement in the tubular and configured to separate the reservoir fluid into production fluid and nonproduction fluid as taught by Brown. As Cox and Brown disclose down hole fluid separators, as fluid separators are very well known in the art, as Cox is silent regarding a separator in the horizontal wee, and a Brown explicitly teaches positioning a separator in a horizontal bore, it would have been within routine skill to select a specific downhole separator positioning configuration from a finite selection of positioning (i.e. in a vertical bore section or a horizontal bore section, or an angled bore section). Such a simple addition/modification would have been predictable with a reasonable expectation for success and no unexpected results.
Allowable Subject Matter
Claims 5 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter.
Downhole oil and water separation systems including various structure associated therewith are very well known in the art of wellbore. Representative art which appears close to the claimed invention includes Cox (US 20110079388), Zbranek et al. (US 20180051533), Johnson (US 20150345264), Patel et al. (US 20190145220), Alexander et al. (US 20230109781), Brown et al. (US 20210332688), Saponja et al. (US 20200123888), Janhyala et al. (US 20210363836), Hope et al. (US 10626682), Lopez et al. (US 11668166), Whiteley et al. (US 5107927), Peate (US 4771830), Schlossere (US 20190203575), Trifol et al. (US 20240076953), and Berntsen et al. (US 20210115771). In general, this art, alone or in combination, discloses various recited features and method steps, including but not limited to a downhole oil and water separation system, a tubular to convey the reservoir fluid, and levelers for moving the tubular from one position to another. However, this art fails to disclose or fairly suggest the specific interaction of sensors, levelers, and controllers to sense and set specific levels. Although it could be argued that as levelers and actuators are well known, one could just combine the different structures in the art to disclose the claimed invention. However, the instant invention clearly and specifically recites structural relationships and combinations, which require a greater effort than just cobbling together known structures. Further, the claimed structures are sufficiently detailed to be distinguishable when configured as claimed. The examiner can find no motivation to combine or modify the references which would define a fully functioning apparatus as claimed in the instant application. The examiner finds that, at the time that the invention was made, it would not have been within routine skill to glean the specifically combined limitations of the instant invention, from the art, without the benefit of hindsight reasoning or extensive experimentation.
Response to Arguments
Applicants’ amendments and arguments, filed 8/20/2025, with respect to the previous rejections of claims 1-4, 6, 16-19, and 21-22 have been fully considered and they are at least partially persuasive. The objections/rejections that have been withdrawn are not repeated herein.
Regarding claim 1, applicants argue that the combination of Cox, Zbranek, and Johnson fails to disclose "a leveler configured to move the tubular from a first inclination to a second inclination, wherein the second inclination is about horizontal." Applicants’ arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. It should be noted that Cox and Zbranek illustrate the tubular being substantially horizontal and Johnson discloses the use of telescoping levelers (66) which would allow leveling.
Applicants’ argument regarding claim 6 is moot as a new reference has been applied.
Regarding claim 16, applicants argue that the combination of Cox, Zbranek, and Johnson fails to disclose a method comprising "improving, using a leveling device, an inclination of the tubular by increasing a levelness of the tubular." Applicants’ arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Regarding the remaining dependent claims, applicants merely argue allowability based on the unpersuasive arguments posited against the independent claims 1 and 16.
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 TARAS P BEMKO whose telephone number is (571)270-1830. The examiner can normally be reached on Monday-Friday 8:00-5:00 (EDT/EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached on 571-272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Taras P Bemko/
Primary Examiner, Art Unit 3672
9/8/2025