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 .
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.
Claims 1-4, 8-13, 15-16, and 19-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bo (US 2011/0088738).
Regarding claim 1, Bo discloses a system comprising a thermoelectric generator (3 in Figures 1 and 2); a first wellhead upstream of thermoelectric generator (intersection of 6, 10 ,and 11 in Fig. 1), communicating with a subterranean source to convey a flow of fluid from the source to the thermoelectric generator ([0040] L9-12); and a second wellhead downstream of the thermoelectric generator ([0031]; intersection of 10 and pipeline containing 7 communicating with 12 in Fig. 1), communicating with a subterranean formation to convey to the formation substantially any and all of the fluid that flows from the source through the first wellhead (pipeline represented by 6 and containing pump 7 in Fig. 1 in relation to 12).
While Bo does disclose a system for generating electric power underwater ([0005],[0036]), it is noted that the limitation “for generating electric power underwater” is directed to the manner in which the apparatus is intended to be used, and a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Additionally, statements in the preamble reciting the purpose or intended use of the claimed invention which do not result in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art apparatus (or process). See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and cases cited therein, as it has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP § 2111.02, §2112.02 and 2114-2115.
Regarding claim 2, Bo discloses all the claim limitations as set forth above. Bo further discloses the formation is in fluid communication with the source ([0015] discloses the hot medium in the seabed can be the oil or the gas itself).
Regarding claim 3, Bo discloses all the claim limitations as set forth above. Bo further discloses a common reservoir serves as the source and as the formation (12 in relation to 11, 6 and pipeline containing 7 in Fig. 1).
Regarding claim 4, Bo discloses all the claim limitations as set forth above. Bo further discloses the fluid circulates in a closed loop ([0046]).
Regarding claim 8, Bo discloses all the claim limitations as set forth above. Bo further discloses the fluid flows in a direction from the first wellhead to the second wellhead ([0031]).
It is noted that Bo does disclose a temperature drop across the thermoelectric generator ([0025]). With regard to the limitation “under convective action driven by a temperature drop across the thermoelectric generator,” the disclosed temperature drop across the thermoelectric generator of Bo ([0025]) would be expected to result in convective action driving the flow because when the structure recited in the reference is substantially identical of that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Additionally, it is noted that the limitation “under convective action driven by a temperature drop across the thermoelectric generator” is directed to the manner in which the apparatus is intended to be used, and a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claim 9, Bo discloses all the claim limitations as set forth above. Bo further discloses the fluid flowing from the source is predominately water ([0015] L8).
Regarding claim 10, Bo discloses all the claim limitations as set forth above. Bo further discloses the first wellhead is atop a bore ([0031]; 11 under intersection of 10 and 11 in Fig. 1).
With regard to the limitation “previously drilled into the source,” the limitation is directed to the manner in which the apparatus is made, and it is noted that said limitations are not given patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985).
Regarding the limitation “used for hydrocarbon production or exploration,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claim 11, Bo discloses all the claim limitations as set forth above. Bo further discloses the second wellhead is atop a bore ([0031]; pipeline under intersection of 10 and pipeline containing 7 in relation to 12 in Fig. 1).
With regard to the limitation “previously drilled into the formation,” the limitation is directed to the manner in which the apparatus is made, and it is noted that said limitations are not given patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985).
Regarding the limitation “used for hydrocarbon production or exploration,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claim 12, Bo discloses a method of generating electric power underwater ([0005],[0036]) comprising: conveying a flow of fluid from a subterranean source through a first wellhead (intersection of 6, 10 ,and 11 in Fig. 1) to a thermoelectric generator ([0040] L9-12); generating electric power in the thermoelectric generator by virtue of a temperature difference between the fluid and ambient temperature ([0020],[0021],[0040]); and conveying substantially all of the fluid that flows from the source and through the thermoelectric generator to a subterranean formation via a second wellhead ([0031]; intersection of 10 and pipeline represented by 6 and containing pump 7 in Fig. 1 in relation to 12).
Regarding claim 13, Bo discloses all the claim limitations as set forth above. Bo further discloses returning the fluid to a common reservoir serving as the source and as the formation (12 in relation to 11, 6 and pipeline containing 7 in Fig. 1).
Regarding claim 15, Bo discloses all the claim limitations as set forth above. Bo further discloses circulating the fluid in a closed loop ([0040],[0041],[0046]; closed loop containing 6, 7, 11, and 12 in Fig. 1).
Regarding claim 16, Bo discloses all the claim limitations as set forth above. Bo further discloses reheating the fluid in the formation ([0046]).
Regarding claim 19, Bo discloses all the claim limitations as set forth above.
While Bo does disclose driving flow from the source through the thermoelectric generator and to the formation ([0040]; pump 7 in Fig. 1); Bo does not explicitly disclose driving flow from the source through the thermoelectric generator and to the formation by convective action arising from a temperature drop across the thermoelectric generator.
However, the temperature drop across the thermoelectric generator disclosed by Bo ([0025]) would be expected to result in convective action driving the flow from the source through the thermoelectric generator and to the formation because when the structure recited in the reference is substantially identical of that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 20, Bo discloses all the claim limitations as set forth above. Bo further discloses extracting fluid from the source through a bore ([0040]; drilling well 11) previously drilled into the source for hydrocarbon production ([0041] discloses an oil field; it is noted that the hole in which the pipeline extends into the field must have been previously drilled).
Regarding claim 21, Bo discloses all the claim limitations as set forth above. Bo further discloses injecting fluid into the formation ([0031] discloses the pipeline guided into a first drilling well, through the hot medium in the energy field) through a bore previously drilled into the formation for hydrocarbon production ([0031] discloses an oil field; it is noted that the hole in which the pipeline extends into the field must have been previously drilled).
Response to Arguments
Applicant's arguments filed 02/23/2026 have been fully considered but they are not persuasive. Specifically, Applicant argues that Bo does not disclose or suggest the claimed first and second wellheads. In response to Applicant’s argument, Bo discloses a first wellhead upstream of thermoelectric generator (intersection of 6, 10 ,and 11 in Fig. 1), communicating with a subterranean source to convey a flow of fluid from the source to the thermoelectric generator ([0040] L9-12); and a second wellhead downstream of the thermoelectric generator ([0031]; intersection of 10 and pipeline containing 7 communicating with 12 in Fig. 1), communicating with a subterranean formation to convey to the formation substantially any and all of the fluid that flows from the source through the first wellhead (pipeline represented by 6 and containing pump 7 in Fig. 1 in relation to 12).
Applicant argues that no fluid is extracted from the hot energy field in Fig. 1 of Bo.
In response to Applicant’s argument, the claim limitations do not require fluid to be extracted from the hot energy field. Additionally, the claim limitations do not require fluid to be injected into the hot energy field. The claims simply recite the limitations “communicating” and “from the source” and “to the formation”; which do not require, when given their broadest reasonable interpretation in light of the description of the as-filed specification, fluid to be extracted from the hot energy field or fluid to be injected into the hot energy field. The claims do not require “fluid communication” between the contents of the closed loop pipeline and the source or the formation. Instead, the limitations recited require communicating with the hot energy field, and conveying fluid to and from the source and formation, respectively. The limitations recited do not preclude an interpretation in which fluid in a closed loop is conveyed to the formation and conveyed from the source without the fluid being in “fluid communication” with the source and the formation.
Applicant argues that there is no disclosure of a step of conveying a flow of fluid
from a subterranean source as required by claim 12. In response to Applicant’s argument, as set forth in the office action, lines 9-12 of paragraph [0040] disclose conveying a hot medium from an underground source which satisfies the limitation “conveying a flow of fluid from a subterranean source.”
Applicant argues that Bo provides no teaching to extract fluid from a subterranean source and then to convey that fluid into a subterranean formation as claims 1 and 12 require. In response to Applicant’s argument, Bo discloses conveying a flow of fluid from an underground source as set forth above. With regard to the limitation “a second wellhead downstream of the thermoelectric generator, communicating with a subterranean formation to convey to the formation substantially any and all of the fluid that flows from the source through the first wellhead,” as set forth in the office action, Bo discloses a second wellhead downstream of the thermoelectric generator ([0031]; intersection of 10 and pipeline containing 7 communicating with 12 in Fig. 1), communicating with a subterranean formation to convey to the formation substantially any and all of the fluid that flows from the source through the first wellhead (pipeline represented by 6 and containing pump 7 in Fig. 1 in relation to 12).
It is noted that the limitation “subterranean formation” is satisfied by any formation which is underground, such as the formation depicted under seabed 10 in Fig. 1.
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 TAMIR AYAD whose telephone number is (313) 446-6651. The examiner can normally be reached Monday - Friday, 8:30am - 5pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Barton can be reached at (571) 272-1307. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
/TAMIR AYAD/Primary Examiner, Art Unit 1726
Prosecution Insights