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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 25, 2025 has been entered.
Response to Amendment
This Action is in response to Applicant’s Reply of November 25, 2025.
Claims 3, 4, 8-14, 16, 18-21, 25-27, and 30-32 have been cancelled.
Claims 48 and 49 have been added.
Applicant’s amendments to claims 1, 15, and 22 overcome the previously presented 35 USC 103 rejection thereof.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 15, and 22 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.
It is noted that the amendments to claims 1, 15, and 22 to remove the requirement that the downhole tubular be located in a horizontal or inclined portion of the well has changed the scope of the claim and, as such, the rejection thereof has been changed accordingly.
Claim Objections
Applicant is advised that should claim 22 be found allowable, claim 45 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 103
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.
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, 5, 15, 22, 29, 39, 45, and 46 is/are rejected under 35 U.S.C. 103 as being unpatentable over Andreussi et al. (US 2013/0313200, Andre) in view of Olson et al. (US 2003/0111230, Olson).
Regarding claims 1, 15, 22, and 45: Andre discloses a downhole separation system 10 – Fig 3, and method of using said system, the system comprising:
the downhole separation system configured to be positioned downhole in a well Fig 3 formed in a subsurface formation 31,
wherein the downhole separation system is configured to receive a formation fluid [0045] from the subsurface formation and configured to separate via separator 13 the formation fluid into a first fluid primarily oil - [0016] comprised of a production fluid and a second fluid water – [0046] primarily comprised of a nonproduction fluid,
the downhole separation system including at least a first coalescer 14 – [0055] including one or more coalescer plates 22, the first coalescer configured to be positioned within a downhole tubular 30 – Fig 3, wherein the first coalescer is configured to separate out at least a portion of debris 198 and the nonproduction fluid 200 from the second fluid.
Andre discloses all of the limitations of the above claim(s) except for each of the one or more coalescer plates being retrievable from the well.
Olson discloses a downhole pump assembly that includes a pump and separator. Olson further discloses that this assembly can be retrieved from the well [0023].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Andre so that the separation system was retrieved from the well in order to have been able to make any repairs or replace any parts [0023].
The removal of the entire separation system would have resulted in each of the coalescer plates being removed from the well and the downhole tubular in which the system was installed.
Regarding claim 5: Wherein the first coalescer includes one or more coalescer plates 22 of Andre, wherein each of the one or more coalescer plates is oriented with respect to gravity Fig 2 of Andre.
Regarding claims 29 and 39: The method further comprising: positioning the downhole coalescer within the well with respect to gravity Fig 2 of Andre.
Regarding claim 46: The further comprising:
installing, via coiled tubing, at least one of the one or more coalescer plates of the downhole coalescer within the downhole tubular [0019] of Olson; and
retrieving, via the coiled tubing, at least the one or more coalescer plates from the downhole tubular [0019] of Olson.
Claim(s) 2 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Andre in view of Olson as applied to claims 1 and 22 above, and further in view of Cox (US 2011/0079388).
Andre, as modified, discloses a well that comprises a well that passes through multiple formations 31, 32 – Fig 3, wherein the formation fluid is to be received from a first, production formation 31, and wherein the downhole separation system comprises a pump booster pump 40 configured to pump the nonproduction fluid into a second, disposal formation 32 – [0104].
Andre, as modified, fails to disclose that the disposal zone is a second bore of the multi-bore well.
Cox discloses a downhole separator 44 that is located in a multi-bore well Fig 1. The separator receives formation fluid 40 from a first bore 26 and the separated out nonproduction fluid is disposed of in a second, disposal bore 28.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Andre so that the nonproduction fluid was disposed of in a second bore, as taught by Cox, in order to have been able to use the pressure from the injected water to drive formation fluid into the first bore [0013], [0014].
Claim(s) 7, 42, and 43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Andre in view of Olson as applied to claims 1 and 22 above, and further in view of Chachula et al. (US 6,189,613, Chachula).
Regarding claims 7 and 42: Andre, as modified, discloses that the debris separated from the second fluid is pumped into a disposal zone 32. Andre discloses that the production fluid separated from the second fluid exits the coalescer and is pumped uphole through a flow line 17.
Andre fails to disclose that the downhole separation system further comprising:
a solids catcher positioned below the first coalescer, wherein the solids catcher is configured to receive the debris separated via the first coalescer;
a transport device coupled to the solids catcher, wherein the transport device is configured to move the debris; and
a debris storage unit, wherein the debris storage unit is configured to store the debris moved by the transport device.
Chachula discloses a downhole separation system. The system includes a solid separator 14/48 that separates debris from formation fluid, which is then further separated into production fluid and nonproduction fluid. The solids leave the separator via an outlet 68 before moving to a solids storage 54 located belong the separator Fig 2. The system also includes a transport device 90/92 coupled to the solids catcher and used to move the debris 4:38-42. The solids are mixed with residual oil and pumped to the surface for disposal Abstract.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Andre so that the separation system includes a solids catcher, a transport device coupled to the solids catcher, and a debris storage unit, as suggested by Chachula, in order to have ensured that the debris could not invade and plug the disposal zone 1:28-33, 54-65.
Regarding claim 43: Andre, as modified, discloses that the debris separated from the second fluid is pumped into a disposal zone 32. Andre discloses that the production fluid separated from the second fluid exits the coalescer and is pumped uphole through a flow line 17.
Andre, as modified, discloses all of the limitations of the above claim(s) except the method further comprising moving the debris into a production tubular; producing the debris to a surface of the well via the production tubular; and producing the first fluid to the surface.
Chachula discloses a downhole separation system. The system includes a solid separator 14/48 that separates debris from formation fluid, which is then further separated into production fluid and nonproduction fluid. The solids leave the separator via an outlet 68 before moving to a solids storage 54 located belong the separator Fig 2. The system also includes a transport device 90/92 coupled to the solids catcher and used to move the debris 4:38-42. The solids are mixed with residual oil and pumped to the surface through production tubing/line 80 for disposal Abstract.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Andre so that the debris was moved into a production tubular and produced to the surface along with the first fluid, as taught by Chachula, in order to have ensured that the debris could not invade and plug the disposal zone 1:28-33, 54-65.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Andre in view of Olson as applied to claim 22 above, and further in view of Andreussi et al. (US 2013/0292327, Andre).
Andre, as modified, discloses that the coalescer includes one or more coalescer plates 22 of Andre used to coalesce production fluid. Andre, as modified, fails to disclose that each of the one or more coalescer plates includes a top side portion configured for filtering the debris from the second fluid and a corrugated underside configured for coalescing the production fluid from the second fluid, wherein the debris falls from the top side portion of the one or more coalescer plates.
Andre2 discloses a downhole separation system that is substantially similar to that of Andre. Andre2 discloses that the plates of a coalescer 1/105 – Fig 7 include a plurality of plates 8 that include a top side portion configured for filtering the debris from the second fluid and a corrugated underside configured for coalescing the production fluid from the second fluid, wherein the debris falls from the top side portion of the one or more coalescer plates Fig 7, [0015].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Andre so that the plates of the coalescer had a top side portion configured for filtering the debris from the second fluid and a corrugated underside configured for coalescing the production fluid from the second fluid, wherein the debris falls from the top side portion of the one or more coalescer plates, as taught by Andre2, in order to have “contemporaneously cause the separation of the phases and favour the downward flow of the solids possibly present in the mixture to be separated” [0015].
Allowable Subject Matter
The indicated allowability of claims 45 and 46 is withdrawn in view of the newly discovered reference(s) to Olson and the amendment to claim 22 to remove the requirement that that the downhole tubular be located in horizontal or inclined portion of a well. Rejections based on the newly cited reference(s) are given above.
Claims 6, 17, 28, 33-38, 40, 41, 44, and 47-49 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:
Regarding claim 6: The prior art of record fails to disclose or suggest a downhole separation system that includes a coalescer with one or more plates for separating debris and production fluid and a pump, wherein each of the one or more coalescer plates are removable from the well without a removal of the pump as recited in the claimed combination.
Regarding claim 17: The prior art of record fails to disclose or suggest a coalescer with one or more plates for separating debris and fluid, wherein the one or more coalescer plates are substantially flexible to allow passage of a first tool through the downhole tubular as recited in the claimed combination.
Regarding claims 28, 37, and 38: The prior art of record fails to disclose or suggest a downhole separation system that includes a coalescer, wherein an approach angle of the coalescer is set within an inclined portion of the well based, at least in part, on a central axis of the downhole tubular as recited in the claimed combination and method.
Regarding claim 33: The prior art of record fails to disclose or suggest a downhole separation system that disposes of a nonproduction fluid in a second bore of a multi-bore well and debris into a third bore of the multi-bore well as recited in the claimed combination.
Regarding claim 34: The prior art of record fails to disclose or suggest a coalescer with one or more plates for separating debris and fluid and using a processor to adjust an angle of approach of the coalescer as recited in the claimed combination.
Regarding claim 35: Claim 35 is considered allowable due to its dependence on claim 34.
Regarding claims 36 and 40: The prior art of record fails to disclose or suggest a coalescer with one or more plates for separating debris and fluid, wherein each of the one or more coalescer plates are removable from a downhole tubular as recited in the claimed combination.
Regarding claim 41: Claim 41 is considered allowable due to its dependence on claim 17.
Regarding claim 44: The prior art of record fails to disclose or suggest a downhole coalescer with one or more plates for separating debris and fluid and adjusting at least one of a yaw, pitch, or roll of the downhole coalescer as recited in the claimed method.
Regarding claims 47-49: The prior art of record fails to disclose or suggest a downhole separation system that includes a coalescer, wherein the coalescer is positioned within the downhole tubular in a horizontal portion of the well, an inclined portion of the well, or both as recited in the claimed combination and method.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER H GAY whose telephone number is (571)272-7029. The examiner can normally be reached Monday through Thursday, 6-3:30 and every other Friday 6-11.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Y Coupe can be reached at (571)270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER H GAY/Primary Examiner, Art Unit 3619
JHG
12/8/2025