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 § 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 20 and 21 are 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. Specifically, claims 20 and 21 each recite the limitation “fluid,” however, it is unclear if the limitation “fluid” in claims 20 and 21 refers to the previously recited fluid of claim 12, or if the limitation “fluid” in claims 20 and 21 is referring to a fluid in addition to the previously recited fluid of claim 12.
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 Bosch (DE 102016223611 A1 – see attached machine translation).
Regarding claim 1, Bosch discloses a system ([0001]) comprising a thermoelectric generator ([0016],[0026]); a first wellhead upstream of the thermoelectric generator communicating with a subterranean source ([0006]) to extract fluid from the source ([0001] discloses water extracted from the seabed) and to convey a flow of the fluid from the source to the thermoelectric generator ([0016],[0026]); and 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 ([0021], [0025]).
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, Bosch discloses all the claim limitations as set forth above. Bosch further discloses the formation is in fluid communication with the source ([0012],[0021], [0025]).
Regarding claim 3, Bosch discloses all the claim limitations as set forth above. Bosch further discloses a common reservoir serves as the source and as the formation ([0012],[0021],[0025]).
Regarding claim 4, Bosch discloses all the claim limitations as set forth above. Bosch further discloses the fluid circulates in a closed loop ([0012],[0021], [0025]).
Regarding claim 8, Bosch discloses all the claim limitations as set forth above.
With regard to the limitation “arranged such that the fluid flows in a direction from the first wellhead to the second wellhead under convective action driven by a temperature drop across the thermoelectric generator,” the disclosed temperature drop across the thermoelectric generator of Bosch ([0022]) would be expected to result in convective action driving the flow because when the structure recited in the reference is substantially identical to 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, Bosch discloses all the claim limitations as set forth above. Bosch further discloses the fluid flowing from the source is predominately water ([0034]).
Regarding claim 10, Bosch discloses all the claim limitations as set forth above. Bosch further discloses the first wellhead is atop a bore drilled into the source ([0010]).
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 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, Bosch discloses all the claim limitations as set forth above. Bosch further discloses the second wellhead is atop a bore drilled into the formation ([0021],[0025]).
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 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, Bosch discloses a method of generating electric power underwater ([0001]) comprising: extracting fluid from a subterranean source ([0001] discloses water extracted from the seabed); conveying a flow of the fluid from the subterranean source through a first wellhead to a thermoelectric generator ([0016],[0026]); generating electric power in the thermoelectric generator by virtue of a temperature difference between the fluid and ambient temperature ([0016]); 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 ([0021], [0025]).
Regarding claim 13, Bosch discloses all the claim limitations as set forth above. Bosch further discloses returning the fluid to a common reservoir serving as the source and as the formation ([0012],[0021],[0025]).
Regarding claim 15, Bosch discloses all the claim limitations as set forth above. Bosch further discloses circulating the fluid in a closed loop ([0012],[0021], [0025]).
Regarding claim 16, Bosch discloses all the claim limitations as set forth above. Bosch further discloses reheating the fluid in the formation ([0025] discloses the water reintroduced into the (same) reservoir so that it can be used again to build up pressure there).
Regarding claim 19, Bosch discloses all the claim limitations as set forth above.
While Bosch does disclose driving flow from the source through the thermoelectric generator and to the formation ([0012],[0021],[0022],[0025]); Bosch 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 Bosch ([0022]) 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 to 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, Bosch discloses all the claim limitations as set forth above. Bosch discloses extracting fluid from the source through a bore ([0010]) previously drilled for hydrocarbon production ([0010], it is noted that the extraction of fluid necessarily occurs after drilling for the disclosed underwater oil or gas production).
Regarding claim 21, Bosch discloses all the claim limitations as set forth above. Bosch further discloses injecting fluid into the formation through a bore ([0021]) previously drilled into the formation for hydrocarbon production ([0021],[0025], it is noted that the bore through which the disclosed hot water is reintroduced into the oil or gas reservoir to maintain the pressure in the reservoir is necessarily previously drilled; it is further noted that the disclosed maintenance of pressure in the oil or gas reservoir satisfies the limitation “for hydrocarbon production”).
Response to Arguments
Applicant’s arguments with respect to claims 1-4, 8-13, 15-16, and 19-21 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.
Conclusion
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/TAMIR AYAD/Primary Examiner, Art Unit 1726
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