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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 15, 2026 has been entered.
Response to Amendment
This Action is in response to Applicant’s Reply filed April 15, 2026.
Claims 2, 19, and 22 have been cancelled.
Claims 26 and 27 have been cancelled.
Applicant’s amendments to claims 7, 8, 10, and 18, as well as the cancellation of claim 2, overcome the previously presented 35 USC 112(b) rejection thereof.
Response to Arguments
Applicant’s arguments with respect to claim 23 have been fully considered and are persuasive. The 35 USC 112(b) rejection of claim 23 has been withdrawn.
Applicant's arguments have been fully considered but they are not persuasive.
Applicant has argued that Stegemeier fails to disclose measuring at least one property, condition, and/or characteristic of a well before and during releasing of a tracer.
Stegemeier does disclose measuring at least one property, condition, and/or characteristic of a well during releasing of a tracer [0074], [0083]. While it does not disclose such measurements before releasing a tracer, Trinder was used to teach this feature. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant has argued that sensor 42 of Trinder does not continue to monitor and report on well conditions while the controller is causing pulses of taggant to be released.
While this statement is true, it is first noted that the claims require a “sensor system” and not a single senor. Sensor 42 of Tinder does not continue to monitor and report after the taggant is released but it was not used to teach this feature. Sensor system 108 of Stegemeier is specifically disclosed as detecting and reporting on well conditions after the control system causes the taggant to begin to be released {0074], [0083]. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
It is further noted that sensor 54 of Tinder is used to detect the pulses of taggant released downhole where these pulses are embedded signals indicative of downhole conditions [0036], [0037], [0042], [0054], [0086], [0095]. As such, Tinder does disclose a sensor system, sensors 42 and 54, that continues to monitor and report on well conditions while the controller is causing pulses of taggant to be released.
Applicant argues that Tinder fails to disclose analyzing tracer flow data to determine the downhole configuration or conditions of the well as sensor 54 does not measure anything before the taggant is released.
As with the above arguments, Applicant is arguing the references individually and not as combined. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Trinder is being used to show that it would be obvious to modify a system and method like that of Stegemeier to include monitoring downhole conditions and using that data to control the release of a taggant. Stegemeier discloses using the taggant flow data to determine downhole conditions after the release of the taggant as acknowledged by Applicant. As such, Trinder is not required to teach this feature.
However, Trinder does. Sensor 54 of Tinder is used to detect the pulses of taggant released downhole where these pulses are embedded signals indicative of downhole conditions [0036], [0037], [0042], [0054], [0086], [0095]. As such, Tinder does disclose a sensor system, sensors 42 and 54, that continues to monitor and report on well conditions based on the signals embedded in the released taggant.
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.
Claim(s) 1, 3-5, 7-18, 20, 21, 23, 24, 26, and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stegemeier et al. (US 2003/0056952, Steg) in view of Trinder (US 2021/0396130).
Regarding claims 1 and 17: Steg discloses a system Fig 1 for monitoring a well 20, the system comprising:
at least one well monitoring system 60 comprising:
at least one tracer release system 84;
at least one sensor system 108;
at least one communication system 80 comprising at least one transmitter 100 – [0050], [0073] and at least one receiver 100 – [0050], [0073];
wherein the at least one communication system is configured to transmit information from the at least one sensor system and/or at least one tracer release system [0073], [0074];
wherein the at least one communication system is configured to control the operation of the at least one sensor system and/or at least one tracer release system [0073], [0074];
wherein the at least one sensor system is configured to measure at least one property, condition and/or characteristic of a well during selectively releasing tracer from the ats least one tracer release system [0074], [0083]; and
wherein the at least one property, condition and/or characteristic of a well is selected from the group consisting of pressure [0053], temperature [0053], volume [0053], density [0083], viscosity [0083], salinity [0053], and/or flow rate [0053].
Steg discloses all of the limitations of the above claim(s) except the sensor system also being configured to measure at least one property, condition and/or characteristic of a well before selectively releasing tracer from the ats least one tracer release system.
Trinder discloses a system similar to that of Steg. The system of Trinder includes a sensor system 42/54 that measures properties such as pressure, temperature, etc. before the release of a taggant sensor 42 - [0034], [0085], [0091] as well as during/after the taggant is released sensor 54 – [0086], [0092]. The information from the sensor 42 is used to control the release of the taggant from the taggant release system.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Steg so that the sensor system also measured at least one property, condition and/or characteristic of a well before selectively releasing tracer from the ats least one tracer release system, as taught by Trinder, in order to have been able to facilitate taggant release in accordance to the conditions in the well [0085].
Regarding claim 3: Wherein the at least one well monitoring system is configured to be arranged or installed in the well Fig 1, 3 of Steg, in or on the formation, in the annulus Fig 1, 3 of Steg and/or in or on downhole tubing Fig 1, 3 of Steg.
Regarding claim 4: Wherein the at least one well monitoring system is configured to be arranged or installed on wireline, slickline, coiled tubing 40 of Steg, and/or drill pipe and to be lowered into the well. It is noted that Steg discloses the use of tubing and that, without further defining features recited in the claims, “coiled tubing” is not given special meaning.
Regarding claim 5: Wherein the at least one transmitter is a wireless transmitter and/or the at least one receiver is a wireless receiver Steg indicates that “‘wireless’ means the absence of a conventional, insulated wire conductor e.g. extending from a downhole device to the surface. Using the tubing and/or casing as a conductor is considered ‘wireless.’” [0056] of Steg. As such, the transmitter and receiver of Steg would be considered “wireless” as they communicate over the tubing and/or casing [0015], [0069], claim 32.
Regarding claims 7, 10, 18, and 24: Wherein the at least one property, condition and/or characteristic is at least one property, condition and/or characteristic of a well fluid and/or a component of at least one well fluid “at least one additional sensor” – [0083] of Steg.
Regarding claims 8, 10, and 20: Wherein the at least one sensor system is configured to measure at least one property, condition and/or characteristic of a production well Fig 7A-7F, 9A, 9B, 9D-9F, [0089], [0112], [0113], [0116]-[0118], [0198]-[0203] of Steg.
Regarding claim 9: Wherein the at least one tracer release system comprises one or more tracer apparatus configured to be positioned, arranged or installed downstream of one or more influx zones Fig 7A-7F, 9A, 9B, 9D-9F, [0089], [0112], [0113], [0116]-[0118], [0198]-[0203] of Steg.
Regarding claims 11 and 21: Wherein the one or more tracer apparatus configured to be positioned, arranged or installed upstream of one or more injection zones Fig 9C, 9G, [0114], [0119], [0158]-[0160] of Steg.
Regarding claim 12: Wherein the at least one tracer release system is controlled by a surface control unit 64 – [0073] of Steg to selectively release tracer into the well, the control unit being a part of the at least one communication system 64 – [0073] of Steg or a separate control unit.
Regarding claim 13: Wherein the tracer release system is configured to release at least one tracer 82 – [0074] of Steg.
Regarding claim 14: Wherein the system is a modular system the monitoring system is made of multiple modules, [0068] of Steg, and the tubing string can include multiple of the systems, Fig 9A-9J of Steg.
Regarding claim 15: Wherein the at least one monitoring system comprises two or more tracer release systems Fig 9A-9J of Steg.
Regarding claim 16: The system comprising two or more monitoring systems Fig 9A-9J of Steg.
Regarding claim 17: Steg, as modified, discloses a method of monitoring a well, comprising;
providing the above described least one well monitoring system in the well Fig 9A-9J; of Steg
transmitting information from the at least one sensor system and/or at least one tracer release system to surface [0073], [0074] of Steg;
receiving a control signal to control the operation of the at least one sensor system and/or at least one tracer release system [0073], [0074] of Steg; and
measuring the at least one measure at least one property, condition and/or characteristic of a well during selectively releasing tracer from the ats least one tracer release system [0074], [0083] of Steg, [0034], [0085], [0091] of Trinder, wherein the at least one property, condition and/or characteristic of a well is selected from the group consisting of pressure [0053] of Steg, temperature [0053] of Steg, volume [0053] of Steg, density [0083], viscosity [0083] of Steg, salinity [0053] of Steg, and/or flow rate [0053] of Steg.
Regarding claim 23: The method further comprising releasing tracer from the at least one tracer release system in response to a control signal from surface 64 – [0073] of Steg, a control signal from a control unit or a control signal generated in response to a well condition or event.
Regarding claim 26: The method further comprising calculating and/or adjusting wellbore profiles based on tracer information and measured at least one property, condition and/or characteristic of the well [0248] of Steg, [0036], [0037], [0054], [0095] of Trinder.
Regarding claim 27: Wherein the measured at least one property, condition and/or characteristic is used to interpret tracer data from the at least one tracer release system [0036], [0037], [0054], [0095] of Trinder.
Claim(s) 6 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Steg in view of Trinder as applied to claims 1 and 17 above, and further in view of Nyhavn (US 2014/0343908).
Regarding claim 6: Steg, as modified, discloses all of the limitations of the above claim(s) except the system further comprising a sampler device configured for surface or downhole sampling.
Nyhavn discloses a method and system for using tracers released in a wellbore the estimate the volume of influxes into the well by sampling the fluid and tracers at the surface [0012]-[0019].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified the system of Steg to include a sampler device for surface sampling, as taught by Nyhavn, in order to have been able to estimate the volume of influx into the well and control production flow accordingly [0012]-[0019].
Regarding claim 25: Steg, as modified, discloses all of the limitations of the above claim(s) except the method including measuring a concentration of released tracer in at least one well fluid by sampling at one or more sampling times.
Nyhavn discloses a method and system for using tracers released in a wellbore the estimate the volume of influxes into the well by sampling the fluid and tracers at the surface and determining the concentration of the tracers in the fluid [0012]-[0019].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified the method of Steg to include measuring a concentration of released tracer in at least one well fluid by sampling at one or more sampling times, as taught by Nyhavn, in order to have been able to estimate the volume of influx into the well and control production flow accordingly [0012]-[0019].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER H GAY whose telephone number is (571)272-7029. The examiner can normally be reached Monday through Thursday, 6-3:30 and every other Friday 6-11.
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/JENNIFER H GAY/Primary Examiner, Art Unit 3619
JHG
06/16/2026
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