Detailed Action
Status of Claims
In response to the communication filed 02/03/2026. Claims 1-20 are currently pending and addressed below.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/30/2024 has being considered by the examiner.
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.
Claim 6 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.
The metes and bounds of claim 6 are unclear as the claim language requires measurement of the microbial concentration level, however as claim 6 is dependent from claim 1 and claim 1 does not positively recite having a microbial sensor only requiring “one or more sensors configured to measure a microbial concentration, a hydrogen concentration or both”. The claim language as written is contradictory with the limitations of claim 6 requiring a microbial concentration sensor. Therefore it is unclear how a hydrogen sensor would detect microbial concentration levels if the limitations of claim 1 are read as “one sensor configured to measure a hydrogen concentration”. Examiner suggests language positively reciting a Hydrogen sensor and Microbial sensor such as the language in claims 11 and 17.
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.
Claim(s) 1, 2 & 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harrigan (US Pub No 20110303409), Al’Tammar (US Pub No 2024034418) and Chen (US Pub No 20250198283).
Harrigan discloses in claim 1. A downhole tool for injecting a fluid into a subsurface formation, the downhole tool comprising:
a tool body (Harrigan Fig 3; 410);
one or more tanks (Harrigan [0035] downhole tool would contain a sample chamber for injecting into the formation) disposed within the tool body, the one or more tanks configured to contain (Harrigan [0035] sample chambers contain injection fluid) a fluid;
one or more injection nozzles (Harrigan Fig 3; 414 [0035] probe used to inject fluids into the formation) fluidly connected to the one or more tanks (Harrigan [0026] fluid injection nozzles connected to sample tanks) , the one or more injection nozzles extending from an outer surface of the tool body (Harrigan [0033] the probe is extendable from the tool body);
one or more injection pumps (Harrigan [0058] injection tool comprises pumps) fluidly coupled to the one or more tanks and operable to pump the fluid from the one or more tanks through the one or more injection nozzles (Harrigan [0035] downhole tool would contain a sample chamber for injecting into the formation [0035] probe used to inject fluids into the formation [0058] injection tool comprises pumps to pump fluid from tanks into the formation);
one or more sensors (Harrigan [0041] Logging while drilling tool capable of measuring characteristics)
Harrigan discloses the injection of a fluid for wellbore treatment but is silent as to the various possible injection fluids.
However, Al’Tammar teaches injecting a fluid that includes: a microbial inhibitor (Al’Tammar [0020] injected fluids can include a microbial inhibitor) for controlling microbials.
It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to have modified Harrigan to include Microbial controlling agents in the injection fluid as taught by Al’Tammar for the purpose of controlling microbial activity in the wellbore.
Harrigan in view of Al’Tammar disclose the use of wellbore logging tools but are silent to the specifics of the logging tools.
However, Chen discloses a wellbore logging system with sensors: configured to measure a hydrogen concentration (Chen [0002] [0035] [0079] detecting hydrogen).
Further Chen discloses the logging system comprises: an onboard computer system (Chen [0023] [0024] Instructions sent to the wellbore logging tool to process data, monitor performance, and/or carry out instructions for data collection) disposed within the tool body configured to operate (Chen [0023] [0024] Instructions sent to the wellbore logging tool carry out the processes or methods of the data collection) the one or more injection pumps and the one or more injection nozzles to inject the microbial inhibitor fluid into a subsurface formation in response to measurements from the one or more sensors (Chen [0023] [0024] Instructions sent to the wellbore logging tool carry out the processes or methods of the data collection and operations).
As both Harrigan et al and Chen both disclose a wellbore logging tool, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to substitute the Generic Wellbore logging tool of Harrigan et al for the wellbore logging tool with hydrogen sensors and onboard computer system of Chen to achieve the predictable result of measuring wellbore characteristics.
Harrigan et al disclose in claim 2. The downhole tool of claim 1, wherein the one or more injection nozzles comprise sharp tips to penetrate the subsurface (Harrigton Fig 6; 710 injection tool has penetrated the formation and injected fluid) formation to inject the microbial inhibitor fluid directly into the subsurface formation (Harrigton Fig 6; 710 injection tool has penetrated the formation and injected fluid into the wellbore).
Harrigan et al disclose in claim 7. The downhole tool of claim 1, wherein the one or more injection pumps comprise pressure piston pumps (Harrigan [0031] piston within the sample chamber to inject fluid into the wellbore [0045] pressure applied to piston to force fluid into the injection probe and out into the formation).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harrigan, Al’Tammar and Chen from claims 1 & 10 above and in further view of Hrametz (US Pat No 6301959).
Harrigan et al disclose in claim 3. The downhole tool of claim 1, wherein the one or more injection nozzles are attached to one or more extenders (Harrigan [0033] extendable probe), the one or more extenders operable to move the one or more injection nozzles from a retracted position to an extended position to insert the one or more injection nozzles into the subsurface formation (Harrigan [0033] extendable probe extends the probe into the wellbore wall and is capable of retraction of the probe).
However, Harrigan et al does not disclose if the extendable probe system is operated by hydraulic actuators.
However, Hrametz teaches urging the probe against the wall with: Hydraulic actuators (Hrametz Fig 4; 223a and 223b)
It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to have modified Harrigan et al. to include hydraulic actuators as taught by Hrametz, with a reasonable expectation of success for the purpose of urging a probe against a wellbore wall.
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harrigan et al as applied to claim 1 above, and further in view of Jiang (US Pat No 6939717).
Harrigan et al disclose in claim 4. The downhole tool of claim 1, and the one or more sensors but does not disclose the use of a Clark-type hydrogen sensor.
However, Jiang discloses a downhole sensor comprising: a Clark-type hydrogen sensor (Jiang Fig 4 col 17 line 51-56) comprising an internal reference electrode (Jiang Fig 4; 421) and a sensing anode (Jiang Fig 4; 422).
As both Harrigan et al and Jiang both disclose a hydrogen sensor, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to substitute the hydrogen sensor of Harrigan et al for the Clark type sensor of Jiang as discloses to achieve the predictable result of measuring the concentration of hydrogen.
Harrigan et al. discloses in claim 5. The downhole tool of claim 4, wherein the Clark-type hydrogen sensor is electrically coupled with a picoammeter (Jiang Fig 4; 424 ammeter) to measure an oxidation current.
Allowable Subject Matter
Claims 10 & 17 are indicated as allowable as the best prior art for the claims as written Harrigan (US Pub No 20110303409), Al’Tammar (US Pub No 2024034418) and Chen (US Pub No 20250198283), teaches all the prior limitations of independent claim 1 but Harrigan et al. does not teach multiple onboard computer systems that determine a microbial concentration level and modification of Harrigan to include the limitations of claim 10 & 17 would rely on hindsight reasoning to modify to meet the limitations of claim 10 & 17 as written. Therefore, the limitations of claims 10 & 17 would be considered allowable subject matter.
Claims 11-16 are indicated as allowable
Claims 18-20 are indicated as allowable
Claim 6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd 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:
Claim 6 is indicated as allowable as the best prior art for the claims as written Harrigan (US Pub No 20110303409), Al’Tammar (US Pub No 2024034418) and Chen (US Pub No 20250198283), teaches all the prior limitations of independent claim 1 but Harrigan et al. does not teach multiple onboard computer systems that determine a microbial concentration level and modification of Harrigan to include the limitations of claim 6 would rely on hindsight reasoning to modify to meet the limitations of claim 6 as written. Therefore, the limitations of claim 6 if included with the limitations of claim 1 as written overcome would be considered allowable subject matter.
Claims 8-9 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:
Claim 8 is indicated as allowable as the best prior art for the claims as written Harrigan (US Pub No 20110303409), Al’Tammar (US Pub No 2024034418) and Chen (US Pub No 20250198283), teaches all the prior limitations of independent claim 1 & 10 but Harrigan et al does not teach a computer system configured to determine an amount, a rate, and a frequency to inject the microbial inhibitor fluid into the subsurface formation based on the measurements from the one or more sensors, the microbial concentration exceeds a threshold microbial concentration or determining that the hydrogen concentration falls below a threshold hydrogen concentration, injecting the microbial inhibitor into the subsurface formation and modification of Harrigan et al to include the limitations of claim 8 would rely on hindsight reasoning to modify to meet the limitations of claim 8 as written. Therefore, the limitations of claim 8 if included with the limitations of claim 1 as written overcome would be considered allowable subject matter.
Claim 9 is indicated as allowable as the best prior art for the claims as written Harrigan (US Pub No 20110303409), Al’Tammar (US Pub No 2024034418) and Chen (US Pub No 20250198283), teaches all the prior limitations of independent claim 1 but Harrigan et al does not teach that the sensors extend from the outer surface of the tool body and modification of Harrigan to include the limitations of claim 9 would rely on hindsight reasoning to modify to meet the limitations of claim 9 as written. Therefore, the limitations of claim 9 if included with the limitations of claim 1 as written overcome would be considered allowable subject matter.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments and amendments, filed 02/03/2026, with respect to Claims 10 & 17 have been fully considered and are persuasive. The rejection of claims 10 & 17 has been withdrawn.
Applicant's arguments filed 02/03/2026 with respect to Claim 1 has been fully considered but they are not persuasive.
Examiner respectfully disagrees with the argument regarding Chen as Chen is relied on for teaching that instructions can be sent to operate the system of Harrigan et al when specific sensor thresholds are met. In response to applicant's argument that Harrigan et al in view of Chen does not teach actuation of the pumps in response to measurements from the one or more sensors, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Therefore, Chen as shown in the above rejection is capable of sending executable instructions based on sensor feedback.
Conclusion
THIS ACTION IS MADE FINAL. 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 Nicholas D Wlodarski whose telephone number is (571)272-3970. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at (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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/NICHOLAS D WLODARSKI/Examiner, Art Unit 3672
/Nicole Coy/Supervisory Patent Examiner, Art Unit 3672