DETAILED ACTION
This communication is a final office action on the merits and in response to amendments filed on 8/3/2026. All currently pending claims have been considered below. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment & Argument
Applicant's amendments are sufficient to overcome the 102 rejection over US 5,295,537 through the requirement that the connection portion is disposed at about an uppermost portion of the sidewall. New grounds necessitated by amendment follow.
The examiner is respectfully obliged to note that several claims have improper dependency from themselves and are rejected under 112(b) below. For the purposes of examination they are reviewed as though they depended from claim 135.
Regarding the 112(b) rejection of claim 156, Applicant argues against the rejection saying "[t]he structural configuration [of the flow diverter] is explained in the context of its emplacement within the wellbore string passage of a wellbore and also in the context of its co-operation with the wellbore string passage with effectuating separation of the reservoir fluid whose flow is being motivated into the wellbore string passage. The Applicant submits that such [a] recitation of the flow diverter in claim 156 is not offensive to 35 USC 112(b), and that the recited structural configuration is, indeed, patentable."
The examiner does not assert that functional / intended use limitations are improper per se. The examiner did not view claim 156 as indefinite merely because it recites functional limitations, as shown by the interpretation of independent claim 135 (discussed below). Rather, it is unclear how the intended use limitations of claim 156 structurally define the flow diverter.
Applicant remarks that "[c]laim 156 recites a flow diverter with a structural configuration. That structural configuration is explained in the context of its co-operation with the wellbore string passage..." This is, respectfully, exactly the examiner's issue with the recitation. If it is Applicant's position and intent that the wellbore et al. are not required by claim 156 (which is not unreasonable or improper per se), the examiner respectfully asks what the structure / "configuration" requirements are that are not otherwise in the claim? Looking at present figure 14, claim 156 already apparently requires elements 408, 700, 4083, 4086, 500, etc. So what "configuration" of the flow diverter does annulus 426 define???
In other words, the examiner respectfully asks Applicant to plainly describe to the examiner in a non-limiting, narrative / discussion manner, what that "configuration" specifically is. With respect to the present drawings & specification, what structure of the flow diverter is specifically required by the recitations of the wellbore, the zones therein that are explicitly external to the flow diverter ("between the sidewall and the wellbores string" and "above the housing"), the flow directions of fluid, and the densities of the fluid, etc etc?
The examiner compares the present recitation of "...configured for emplacement within..." to claim 135: "a flow diverter emplaced within a wellbore string passage..." Applicant is not claiming a method, nor an emplaced diverter, but recites substantial portions of claim 156 as though the wellbore was a positive requirement of the claim (in contrast to the preamble of claim 135), and/or as though it were a method, but seems to argue that it requires neither. In other words, does infringement occur if the flow diverter is sitting at the surface in a warehouse (which Applicant is attempting to encompass through their preamble)? Does infringement occur if the flow diverter is disposed in an open hole that isn't cased / lined? Again, the examiner is not saying that functional limitations are improper per se, but rather it is unclear how or if these functional limitations further structurally define the flow diverter of claim 156.
Claim Objections
Claims 160 & 164 are objected to because of the following informalities: both claims recite "the flow diverter_is further" in line 3 (note the underscore / underline between "diverter" and "is") as well as "for each of the at lteast" in line 5.
Appropriate correction is required.
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.
Claims 135, 146, 155, 156, 159, 160-167 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Independent claim 135 recites "the second gas-depleted reservoir fluid derivative flow" in the final clause of as-filed page 3 lacks proper antecedent basis, thus making it unclear how or if the "second reservoir fluid derivative" differs from the "gas-depleted reservoir fluid derivative flow". Applicant's amendments conspicuously canceled all previous uses of "gas-depleted".
Claims 146, 155, 159, 160, 161, 162, & 164 depend from claim 135.
There are currently two "claim 156" claims, and the second "claim 156" (at the top of page 7 of the as-filed amendments) depends from itself: "claim 156". The examiner also notes that claim 157 has been canceled.
The first "claim 156", which is an independent claim starting on page 5 of the as-filed amendments, recites "A flow diverting, configured for emplacement within a wellbore string passage..." and recites numerous intended use limitations (worded as a method) that the examiner views as unclear and indefinite. As similarly discussed in the Response section above, the patentability of claim 156 is determined by its structure alone. See the limitations of claim 156 following the "the housing and the pump-supplying fluid conductor are co-operative configured..." clause and before the "for each one of the braces" final clause. Put simply, does infringement occur if the flow diverter is sitting at the surface unused but meets all the recited structure of the flow diverter? Does infringement occur if an identical flow diverter is inserted into a water well?
While intended use limitations are not improper per se, the examiner is unclear how or if the extensive intended use / method limitations structurally limit the flow diverter. The examiner compares the present recitation of "...configured for emplacement within..." to claim 135: "a flow diverter emplaced within a wellbore string passage...".
If it is Applicant's position and intent that the wellbore et al. are not required by claim 156 (which is not unreasonable or improper), the examiner respectfully asks what is the structure required by the intended use limitations that is not otherwise in the claim? In other words, the examiner respectfully asks Applicant to plainly describe (in a non-limiting, narrative manner for the examiner's understanding only) with references to the drawings what disclosed structure / "configuration" of the flow diverter that are not already in the claim, but rather are newly required by the recitations of the wellbore, the zones therein that are explicitly external to the flow diverter ("between the sidewall and the wellbores string" and "above the housing"), the flow directions of fluid, and the densities of the fluid (none of which are components of the flow diverter itself). Looking at present figure 14, claim 156 already apparently requires elements 408, 700, 4083, 4086, 500, etc etc. So what structure of the flow diverter does annulus 426 define when it is recited in claim 156??
The examiner is trying to determine the structural metes and bounds of the claim per 112(b) and respectfully asserts that, by the above logic, the structural configuration of the flow diverter is unclearly defined in these recitations, especially when compared to claim 135 that recites "a flow diverter emplaced within a wellbore string passage..." versus claim 156 "...configured for emplacement within". The examiner respectfully asserts that there is a clear scope difference between these recitations, and what "that difference specifically is" also is unclear in light of the specification.
If Applicant wishes to cover a device sitting in a warehouse at the surface, (versus a method or "emplaced within a wellbore") the examiner respectfully asserts these limitations unclearly define such a device for the above reasons.
Claim 159 recites "A system comprising the flow diverter as claimed in claim 135, wherein the flow diverter is emplaced within a wellbore". However, parent claim 135 already recites "A flow diverter emplaced within a wellbore" in the first line, thus making it unclear how or if claim 159 further limits parent claim 135.
Claims 160 & 164 both recite "at least one separation zone" which is held as indefinite because it is unclear how or if this differs from the "such that the reservoir fluid becomes emplaced uphole relative to the inlet [thereby creating] a downwardly flowing first reservoir fluid derivative [that is] separated rom the upwardly-flowing reservoir fluid by the housing" in parent claim 135. Is the recitation in claim 135 quoted above not a "separation zone"? Perhaps this is a result of the verbosity of the claims' phrasing.
These claims are further held as indefinite because, similar to claim 156 above, they are entirely intended use / method-like steps in an apparatus claim. The "separation zones" are abstract spaces within a chamber, not solid structure per se, and how / where the fluid separates appears to be dependent on (A) the fluid composition, velocity, position in the wellbore, etc etc (none of which are structural requirement of the claim) or (B) dimensions of the flow diverter structure or some un-recited structural feature. If it is "B", what it structurally requires is not clear in light of the specification. To the examiner's interpretation of present figures 3, 5, & 6 with "separation zone space[s] 406A and 406B", no structural change is apparent.
If it is Applicant's position that the changing of the location of the "separation zones" is a result of some different structure the examiner respectfully asks what that change is, specifically (i.e. not a general discussion of "configuration")? In other words, what is specifically structurally required of the flow diverter of claims 160 / 164 that is different from the structure already in parent claim 135 that results in the separation zone location? These "separation zones" are abstract spaces defined by the fluid composition, location in the wellbore, probably many more variables, and perhaps the dimensions of the diverter itself. But only the diverter is required by the claim. Put another way, how is the practitioner to know if a similar device infringes on claims 160 or 164 while it is sitting unused in a warehouse (which Applicant is attempting to encompass through their preamble)?
Put yet another way: while intended use limitations in apparatus claims are not indefinite per se, a claim which contains only intended use limitations can modify the parent claim in one of two ways:
The first interpretation is that the intended use is inherent to structural limitations of the parent claim; i.e. any apparatus which meets the structural limitations of claim 135 inherently meets the functional limitations of claims 160 /164. In such a case those claims do not further limit claim 135, and are thus clearly improper.
The second is that, because intended use limitations limit the claim to prior art which is capable of performing such intended use (regardless of whether or not it is explicitly taught or even desirable), such limitations add some further structural limitation to the parent claim; i.e. the functional limitations of claims 160 / 164 provide some kind of structural limitation to claim 135. But what ever that structural limitation might be, it is nebulous and indefinite because Applicant is defining the apparatus using non-structural intended use limitations. It is therefore impossible to determine what theoretical structural limitation is now required by claims 160 / 164, and is thus improper. In other words, if claims 160 & 164 require something structural not already required by claim 135, it is impossible to determine what that structure is.
In the above discussion, the examiner is trying to determine the structural metes and bounds of the claims per 112(b) and respectfully asserts that, by the above logic, the structural configuration of the flow diverter is unclearly further defined by these apparatus claims in light of the specification.
Claim 163 depends from "claim 163".
Claim 165 depends from "claim 165" and claim 166 depends from claim 165.
Claim 167 depends from "claim 167".
Claim Rejections - 35 USC § 102
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) 135, 146, 159-167 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 2022/0003103 (Xiao). Xiao has a filing date of 6/2/2020, and therefore is available as prior art under 102(a)(2) relative to the earliest effective filing date of 6/24/2020 of the present case.
As discussed in the 112(b) rejections above, numerous claims improperly depend from themselves. For the purposes of examination they are reviewed as though they depended from claim 135.
Independent claim 135. Xiao discloses a flow diverter (fig 2) emplaced within a wellbore string passage (fig 3) of a wellbore string ("liner 220" - ¶ 26) that is lining a wellbore (fig 3), for producing hydrocarbon material ("The reservoir fluid stream enters collector-casing annulus 236 and moves uphole along collector-casing annulus 236, as shown by arrows 244" - ¶ 28) from a subterranean formation ("reservoir 208, which may be a hydrocarbon bearing reservoir" - ¶ 26), comprising:
a housing ("receptacle 104" - ¶ 24 & fig 2) defining a housing space ("chamber 120" - ibid), and including:
a base ("bottom wall 108" - ibid);
a sidewall extending from the base ("sidewall 112" - ibid); and
an inlet ("inlet ports 124" - ibid);
a pump-supplying fluid conductor ("tubing 140" - ¶ 25 & fig 2), extending from the housing space (fig 2), and fluidically coupled to a pump suction of a pump ("artificial lift system 232 may be disposed along wellbore tubular 200. An artificial lift system adds energy to reservoir fluid or leverages the energy of the reservoir fluid to produce the fluid to the surface. A pump is an example of an artificial lift system. The pump may be a positive displacement pump, centrifugal pump, or other type of pump that may be used to add energy to reservoir fluid. The pump may be driven from the surface or from downhole. Artificial lift system 232 is shown as through-tubing deployed. In other implementations, artificial lift system 232 could be installed as a component of wellbore tubular 200" - ¶ 26 & fig 3) for motivating production of the hydrocarbon material from the subterranean formation (ibid); and
a structural support member ("flange 156" - ¶ 25 & fig 2), connected to a connection portion of the sidewall (upper end of the sidewalls: fig 2), and also connected to a connection portion of the pump-supplying fluid conductor (clearly shown in fig 2), such that the housing is supported by the pump-supplying fluid conductor via the structural support member (figs 2 & 3 show that the production / pump tubing is the only feature supporting the separator); wherein:
the housing (104) and the pump-supplying fluid conductor (140) are co-operatively configured (fig 2) such that a housing flow passage ("An imaginary line 146 is shown demarcating collector-tubing annulus 144 from chamber portion 120a below tubing 140" - ¶ 25. Expressly shown and numbered in fig 1, and clearly shown but not numbered in fig 2), disposed within the housing space and between the housing and the pump-supplying fluid conductor, is established (fig 2);
the flow diverter is configured for co-operation with the wellbore string (fig 3) such that while the flow diverter is emplaced within the wellbore string passage in a separation-effective orientation (fig 3):
there is established, within the wellbore string passage, a reservoir fluid-receiving zone (area below the bottom 108, shown by the production fluid flow arrows) and a reservoir fluid-conducting passage disposed between the housing and the wellbore string ("An annulus 236 is formed between receptacle 104 of solids collector 100 and a portion of wellbore 204 including liner 220" - ¶ 27);
the inlet is emplaced in an uphole-facing direction (figs 2 & 3);
while flow of reservoir fluid into the reservoir fluid-receiving zone, from the subterranean formation, is being motivated by the pump ("artificial lift system 232 may be disposed along wellbore tubular 200. An artificial lift system adds energy to reservoir fluid or leverages the energy of the reservoir fluid to produce the fluid to the surface. A pump is an example of an artificial lift system. The pump may be a positive displacement pump, centrifugal pump, or other type of pump that may be used to add energy to reservoir fluid. The pump may be driven from the surface or from downhole. Artificial lift system 232 is shown as through-tubing deployed. In other implementations, artificial lift system 232 could be installed as a component of wellbore tubular 200" - ¶ 26 & fig 3):
the flow of reservoir fluid is conducted upwardly from the reservoir fluid-receiving zone, via the reservoir fluid-conducting passage (clearly shown by the flow arrows in fig 3), such that the reservoir fluid becomes emplaced uphole relative to the inlet ("At the top of collector-casing annulus 236 is a first separation region where the reservoir fluid stream separates into a first stream that continues moving uphole along tubing-casing 240, as shown by arrows 248, and a second stream that reverses in direction and enters inlet ports 124 of solids collector 100, as shown by arrows 252" - ¶ 28);
a downwardly flowing first reservoir fluid derivative ("a second stream that reverses in direction and enters inlet ports 124 of solids collector 100, as shown by arrows 252" - ¶ 28), derived from the reservoir fluid (fig 3), flow downwardly into the housing via the inlet (ibid), wherein, upon flowing into the housing via the inlet, the downwardly-flowing first reservoir fluid derivative becomes separated from the upwardly-flowing reservoir fluid by the housing ("a first stream that continues moving uphole along tubing-casing 240, as shown by arrows 248" - ¶ 28 & fig 3);
after the downwardly-flowing first reservoir fluid derivative has become emplaced within the housing, a downwardly-flowing second reservoir fluid derivative, derived from the downwardly-flowing first reservoir fluid derivative, becomes established ("a fourth stream that continues to move downward into chamber portion 120a, as shown by arrows 260" - ¶ 29) and is conducted downwardly within the housing flow passage (fig 3); and
while the downwardly-flowing second reservoir fluid derivative is flowing downwardly within the housing flow passage, the downwardly flowing second reservoir fluid derivative is diverted by the flow diverter ("a third stream that reverses in direction and enters tubing 140, as shown by arrows 256" - ¶ 29 & fig 3) such [that] the second gas-depleted reservoir fluid derivative flow is conducted upwardly by the pump-supplying fluid conductor (" a liquid stream that reverses in direction and enters tubing 140, as shown by arrows 256" - ¶ 34), for supply to the pump for pressurizing by the pump for flow to the surface ("Artificial lift system 232 is operated to pump the liquid stream entering tubing 140 up wellbore tubular 200 to the surface" - ibid); and
the connection portion is disposed at about an uppermost portion of the sidewall (fig 2).
146. The flow diverter as claimed in claim 135; wherein: the structural support member ("flange 156" - ¶ 25 & fig 2) includes a rigid bar (156 is metal as shown by the cross-hatching in fig 2 and supports the separator below it).
159. A system comprising the flow diverter as claimed in claim 135, wherein the flow diverter is emplaced within a wellbore (already required by claim 135 as described above).
160. The flow diverter as claimed in claim 135, wherein:
the flow diverter is further configured for co-operation with the wellbore string (fig 3) such that, while the flow diverter is emplaced within the wellbore string passage (already required by claim 135 as described above) in a separation-effective orientation (fig 3), at least one separation zone is established (the separation of upward flow 248 & downward flow 252 - fig 3) such that, for each one of the at [least] one separation zone, while a separation-effective reservoir fluid, that is respective to the separation zone is emplaced within the separation zone, the separation-effective reservoir fluid, that is respective to the separation zone, is separated (the separation of upward flow 248 & downward flow 252 - fig 3) in response to buoyance forces (Dependent on the composition of the flow, not a structural requirement of the diverter; ¶ 28), into at least a flow of gas-depleted reservoir fluid (ibid), that is respective to the separation zone, and a flow of gas-enriched reservoir fluid (ibid), that is respective to the separation zone, wherein the at least one separation zone includes an external separation zone that is disposed above the inlet (again, all intended use, and not apparently an additional structural limitation of the separator. The flows of 248 & 252 separate above the inlet: fig 3 & ¶ 28) and the separation-effective reservoir fluid is the reservoir fluid (ibid; not a structural limitation of the separator), such that the downwardly-flowing first reservoir fluid derivative is the gas-depleted reservoir fluid (ibid; "second stream" 252; "the second stream that reverses in direction into inlet ports 124 includes the liquid and solid components of the reservoir fluid" - ¶ 28).
161. The flow diverter as claimed in claim 135, wherein: the inlet ("inlet ports 124" - fig 2) is defined at an uppermost edge of the sidewall (ibid).
162. A system comprising the flow diverter as claimed in claim 161, wherein the flow diverter is emplaced within a wellbore (already required by parent claim 135 as described above).
163. The system as claimed in claim 163, wherein: the inlet is defined at an uppermost edge of the sidewall ("inlet ports 124" - fig 2).
164. The flow diverter as claimed in claim 135, wherein:
the flow diverter is further configured for co-operation with the wellbore string (fig 3) such that, while the flow diverter is emplaced within the wellbore string passage (already required by claim 135 as described above) in a separation-effective orientation (fig 3), at least one separation zone is established (downward flow 252 is separated into 256 & 260 inside the housing - fig 3 & ¶ 29) such that, for each one of the at [least] one separation zone, while a separation-effective reservoir fluid, that is respective to the separation zone is emplaced within the separation zone, the separation-effective reservoir fluid, that is respective to the separation zone, is separated (downward flow 252 is separated into 256 & 260 inside the housing - fig 3 & ¶ 29) in response to buoyance forces (Dependent on the composition of the flow, not a structural requirement of the diverter; ¶ 29), into at least a flow of gas-depleted reservoir fluid (ibid), that is respective to the separation zone, and a flow of gas-enriched reservoir fluid (ibid), that is respective to the separation zone, wherein the at least one separation zone includes a housing-defined separation zone (downward flow 252 is separated into 256 & 260 inside the housing - fig 3 & ¶ 29) that is disposed within the housing flow passage and the separation-effective reservoir fluid is the downwardly-flowing first reservoir fluid derivative ("a second stream that reverses in direction and enters inlet ports 124 of solids collector 100, as shown by arrows 252"), such that the gas-depleted reservoir fluid is the downwardly-flowing second reservoir fluid derivative (" The first stream that continues to move uphole along tubing-casing 240 includes the gas component of the reservoir fluid stream, and the second stream that reverses in direction into inlet ports 124 includes the liquid and solid components" - ¶ 28).
165. The flow diverter as claimed in claim 165, wherein: the inlet is defined at an uppermost edge of the sidewall (fig 2).
166. A system comprising the flow diverter as claimed in claim 165, wherein the flow diverter is emplaced within a wellbore (assuming parent claim 165 should depend from claim 135, and not from itself, this limitation is already required by claim 135 as discussed above).
167. The system as claimed in claim 167, wherein: the inlet is defined at an uppermost edge of the sidewall (fig 2).
Allowable Subject Matter
Claim 155 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
No prior art rejections are presented for independent claim 156 because it contains the same limitations as claim 155 in the final clause. However, in light of the above 112 issues viewed in claim 156, the examiner is unable to indicate it allowable at this time.
The following is a statement of reasons for the indication of allowable subject matter: Claim 155 recites "...further comprising: a plurality of gusset braces; wherein:
for each one of the gusset braces, independently, the gusset brace connects a respective portion of the structural support member to a counterpart portion of the pump-supplying fluid conductor".
US 5,295,537 (Trainer), the prior grounds of rejection, teaches "a structural support member connected to a connection portion of the sidewall [of the housing]" with "flange 13" - figs 1 & 2, as discussed in the prior Action mailed 3/3/2026. However it is secured by a singular "pipe collar 15" - ibid & the last full ¶ of col 3, which clearly does not read on the limitations of claim 155.
US 2022/0003103 (Xiao), the grounds of rejection above, teaches "a structural support member" with "flange 156" (fig 2, ¶ 25) "that can be fastened to receptacle 104, e.g., by bolts" (¶ 25, bolts clearly shown but not numbered in fig 2). Mapping the bolts to the "gusset braces" of claim 155, there are a plurality of these bolts shown, and they "independently connect a respective portion of the structural support member (156)" but they connect to a counterpart portion of the housing, not "a counterpart portion of the pump-supplying fluid conductor" (140', fig 2) as claimed.
The other prior art of record identified by the examiner does not teach nor suggest such a modification.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blake Michener whose telephone number is (571)270-5736. The examiner can normally be reached Approximately 9:00am to 6:00pm CT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tara Schimpf can be reached at 571.270.7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLAKE MICHENER/
Primary Examiner, Art Unit 3676
Prosecution Insights