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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 21, 2026 has been entered.
Response to Arguments
Applicant’s arguments, filed January 21, 2026, have been fully considered.
Applicant has argued that the claim objections and rejections under 35 U.S.C. 112 have been overcome by amendment. Examiner agrees, and has withdrawn those objections and rejections.
With regard to the prior art, applicant has argued that the Potter reference does not anticipate the claims.
Firstly, applicant argues that the Office Action “misinterprets” claim 1 through “an interchangeable use of the terms ‘heater’ and ‘elongate tubular body’ throughout the instant Action. However, these terms are not interchangeable. The claimed invention is a heater and the elongate tubular body that houses the heat source is one of the heater’s main component parts.” Examiner respectfully accepts applicant’s description of claim 1, but disagrees that the Office Action “misinterprets” the claims at all. Yes, the elongate tubular body is part of the heater. However, the term “elongate tubular body”—or the amended term “elongate tubular heater body”—is broad. The claim does not place any limit on what can be considered an “elongate tubular heater body.” Thus, the Office Action interprets this claim language in a consistent and broad way.
Additionally, claim 1 (but not claim 19) has been amended from the heater “comprising” an elongate body to the heater “consisting essentially of” an elongate body. It is noted, however, that applicant’s remarks do not address this particular amendment. Because the specification and claims do not provide “a clear indication…of what the basic and novel characteristics actually are, ‘consisting essentially of’ will be construed as equivalent to ‘comprising’” (MPEP 2111.03 Section III.). In any case, the term “elongate tubular heater body” is included within the “consisting essentially of” phraseology, and thus the elongate body can still be interpreted broadly.
Furthermore, applicant argues that while “applicant’s claims capture the possibility that the heater’s reduced friction region(s) may or may not be located on the elongate tubular body that houses the heat source,” “the reduced friction region always forms a part of the heater. In clear contrast, there are no reduced friction regions (i.e., rollers) present on the heater (elements 602, 1603 and 703) disclosed in Potter. All the rollers (1602) are located on the delivery string (802) used to deploy the heater down a hole…Accordingly, Potter does not disclose a downhole heater with a reduced friction region in accordance with any of the variants of the currently amended claims.” Examiner respectfully disagrees. The claims simply do not differentiate between an elongate body that “forms a part of the heater” and one that does not. There is nothing in the claims that precludes the delivery string that is attached to the housing of the heating element in Potter from being considered “an elongate tubular heater body.” The claims are being interpreted according to applicant’s statement that the claims “capture the possibility that the heater’s reduced friction region(s) may or may not be located on the elongate tubular body that houses the heat source.” Applicant cannot have it both ways. The claims cannot capture that the reduced friction region can be separate from the heat source housing, while also requiring the reduced friction region to be located directly on the heat source housing.
With regard to claims 7-9 and 24, applicant has argued against the rejection under 35 U.S.C. 103 based on Potter in view of Eaton. However, applicant’s arguments relate to a previous version of independent claims 1 and 19. Claims 1 and 19 now list each type of friction reduction element in the alternative (see items a, b, c, and d). Potter anticipates claims 1 and 19 under element “a.” Claims 7-9 and 24 further define option “b” of claims 1 and 19, which is not required to be selected. Thus, Potter anticipates claims 7-9 and 24 for the same reasons that it anticipates claims 1 and 19.
Claim Objections
Claim 15 is objected to because of the following informalities: The term “the pre-melted alloy” lacks antecedent basis. Appropriate correction is required.
Claim 16 is objected to because of the following informalities: The term “the pre-melted alloy” lacks antecedent basis. Appropriate correction is required.
Claim 27 is objected to because of the following informalities: The phrase “further comprising one or more rotatable bearings are mounted on a sub” is grammatically incorrect. Examiner suggests deleting the word “are.” 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.
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 17 and 18 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.
Claim 17 recites that the “pre-melted alloy covers said at least one reduced friction region.” This is confusing, because it implies that the alloy, rather than the reduced friction element, is the part that contacts the wellbore wall. Therefore, the reduced friction element would not be able to perform its function of reducing friction.
Appropriate clarification is required.
Claim 18 is confusing as it appears to broaden the scope of claim 17. Claim 17 states that the alloy “covers” the reduced friction region, while claim 18 states that the reduced friction region and the alloy “do not overlap.”
Appropriate clarification is required.
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) 1, 3, 4, 7-9, 12/1, 12/3, 12/4, 12/7-9, 13/1, 13/3, 13/4, 13/7-9, 19, 20, 24, and 26-28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Potter et al. (US 5,771,984, hereinafter Potter).
With regard to claim 1, Potter discloses a retrievable downhole heater tool (see annotated Fig. provided below) consisting essentially of (note that the phrase “consisting essentially of” is being interpreted as “comprising” due to the lack of “a clear indication in the specification or claims of what the basic and novel characteristics actually are,” see MPEP 2111.03, Section III) an elongate tubular heater body (see Fig. below) that houses a heat source and defines an outer surface and a leading end (see Fig. below—note that the term “leading end” is being interpreted in light of the specification to mean “deployed downhole first,” see Page 5, lines 8-9), said tubular body being formed from a material that does not melt during the downhole operation of the heater (as the device would not function properly if it melted during the operation); and
wherein the heater is provided with at least one reduced friction region (see annotated Fig. below) having a lower co-efficient of friction than the material from which the tubular body is formed (note that the “region” that has wheels 1602 has a lower coefficient of friction than the rest of the body—claim 1 does not address the sliding coefficient of friction of the actual material that contacts the wall of the wellbore) and whereby each reduced friction region is configured to retain the lower co-efficient of friction following the downhole operation of the heater (the wheels in element 1602 have a lower coefficient of friction than the rest of the device, and they remain functional during and after the drilling); and wherein said at least one reduced friction region comprises:
a) one or more rotatable bearings (i.e. the “wheeled supporting assemblies” indicated by numeral 1602) projected beyond the outer surface of the elongate tubular heater body (best illustrated in Fig. 16A, which shows the wheels projecting outwardly to engage the borehole), wherein said rotatable bearings are provided on the outer surface of the elongate tubular heater body and/or on a sub attached to a leading end of the elongate tubular heater body (see Fig. below).
Note: Elements b, c, or d are not required and therefore are not discussed.
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With regard to claim 3, Potter discloses one or more rotatable bearings projecting from the outer surface of the elongate tubular heater body (element 1602 comprises rotatable bearings, i.e. “wheels”).
With regard to claim 4, the one or more rotatable bearings (i.e. the wheels of element 1602) are mounted on a sub (i.e. the lower portion of the deployment string) that is attached to the leading end of the elongate tubular heater body (note that the sub is “attached” to all portions of the elongate tubular heater body, given that the sub and the tubular body move together in the wellbore as a unit).
With regard to claims 7-9, the limitations of these claims refer to option “b” of claim 1, which is listed in the alternative and thus not required. Therefore, Potter anticipates claims 7-9 for the same reasons as stated above.
With regard to claims 12/1, 12/3, 12/4, 12/7, 12/8, and 12/9, Potter teaches that the reduced friction region extends over the entire outer surface of the elongate tubular heater body (note that this claim is being interpreted broadly, due to the use of the term “region” in the claim. Although Potter’s wheels are discreet, the “region” in which the wheels operate can be considered the entire inner diameter of the borehole. Upon rotation of the string from the surface, the wheels can occupy any space within a 360-degree area of rotation).
With regard to claims 13/1, 13/3, 13/4, 13/7, 13/8, and 13/9, Potter teaches that the heat source comprises a chemical reaction heat source (“combustion” is considered a chemical reaction).
With regard to claim 19, Potter discloses a method of manufacturing a retrievable downhole heater, said method comprising:
providing an elongate tubular heater body (see annotated Fig. provided above) formed from a material that does not melt during the operation of the heater (as melting of the body would destroy the device and render it unable to drill) and which defines an outer surface and a leading end (see annotated Fig. above, and note also that the term “leading end” is being interpreted as “deployed downhole first” in accordance with applicant’s specification); and
installing a heat source (602) within the elongate tubular heater body and providing at least one reduced friction region (see annotated Fig. above) on the heater;
wherein said reduced friction region has a lower co-efficient of friction than the material from which the elongate tubular heater body is formed (due to the presence of wheels in element 1602) and is configured to retain said lower co-efficient of friction following the downhole operation of the heater (the wheels remain instance during and after drilling); and
wherein said at least one reduced friction region is provided by:
Mounting one or more rotatable bearings (i.e. rollers 1602, see annotated Fig. above) on the outer surface of the elongate tubular heater body and/or on a sub attached to the leading end of the elongate tubular heater body such that said bearings project beyond the outer surface of the elongate tubular heater body (see Fig. 16A, which shows the projection of the bearings).
Note that options a, b, or c are not required and are therefore not discussed.
With regard to claim 20, Potter teaches that the heat source installed within the tubular body of the heater is a chemical reaction heat source (the generation of the flame jet is considered to be a chemical reaction, “at the bottom of the drill string an exothermic combustion proceeding at pressures equal or greater than the hydrostatic existing in the wellbore…[and] expansion of the products of this combustion through a nozzle produces a high density flame jet…”).
With regard to claim 24, this claim refers to option “b” of claim 19, which is listed in the alternative and not required. Thus, Potter anticipates claim 24 for the same reasons as discussed above.
With regard to claim 26, Potter teaches that the reduced friction region extends over the entire outer surface of the elongate tubular heater body (note that this claim is being interpreted broadly, due to the use of the term “region” in the claim. Although Potter’s wheels are discreet, the “region” in which the wheels operate can be considered the entire inner diameter of the borehole. Upon rotation of the string from the surface, the wheels can occupy any space within a 360-degree area of rotation).
With regard to claim 27, Potter teaches that additional rotatable bearings are mounted on a sub that is attached to a trailing end of the elongate tubular body (roller elements 1602 mounted uphole of the of the heater can be considered to be mounted on a sub attached to the trailing end of the elongate tubular heater body—see Fig. below).
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With regard to claim 28, Potter teaches an additional contact surface provided by a low friction component that is mounted on a sub attached to a trailing end of the elongate tubular heater body (see Fig. below—note the breadth of the terms “contact surface” and “low friction component”).
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Allowable Subject Matter
Claims 5, 12/5, 13/5, and 14-16 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.
Claims 17 and 18 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT E FULLER whose telephone number is (571)272-6300. The examiner can normally be reached M-F 8:30AM - 5:30PM.
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/ROBERT E FULLER/ Primary Examiner, Art Unit 3676