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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the sensor being part of the downhole device as recited in claim 1 must be shown or the feature(s) canceled from the claim(s). It is noted that Figure 1 shows a sensor located downhole and in a generic downhole device, however there is not a depiction of the sensor in the specific embodiment of Figure 2 and 3 thus no depiction of the relationship of the sensor to the components of the downhole device; where would the sensor go? No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 5-8 and 15-18 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.
Regarding claim 5: There is insufficient antecedent basis for “the eddy current sensor”. As claim 4 positively requires the eddy current sensor, it is suggested that claim 5 should depend from claim 4.
Regarding claim 6: Claim 6 requires that a “flow tube” move to “physically couple or physically decouple the electromagnetic assembly and the magnetic target” however claim 6 provides no correlation between the flow tube and the electromagnetic assembly and/or magnetic target. Is the flow tube of claim 6 the “movable feature” recited in claim 1? Correction and clarification are required.
Regarding claims 7 and 8: These claims are considered indefinite due to their dependence on claim 6.
Regarding claim 15: There is insufficient antecedent basis for “the eddy current sensor”. As claim 14 positively requires the eddy current sensor, it is suggested that claim 15 should depend from claim 14.
Regarding claim 16: Claim 16 requires that a “flow tube” move to “physically couple or physically decouple the electromagnetic assembly and the magnetic target” however claim 16 provides no correlation between the flow tube and the electromagnetic assembly and/or magnetic target. Is the flow tube of claim 16 the “movable feature” recited in claim 11? Correction and clarification are required.
Regarding claims 17 and 18: These claims are considered indefinite due to their dependence on claim 16.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 12,428,932 in view of Blount et al. (US 2017/0058662, Blount).
Regarding claims 1, 11, and 23: Claims 1, 11, and 23 of U.S. Patent No. 12,428,932 discloses all of the features of claims 1, 11, and 23, respectively, of the instant application except for the sensor sensing a change in an AC signal parameter. Claim 1 of U.S. Patent No. 12,428,932 discloses the sensor being configured to sense a change in a DC signal parameter.
Blount discloses a downhole device that uses an electromagnetic field generation unit and discloses that this unit can be operated using AC or DC [0022], [0027]. This is a teaching that AC or DC can be used to operate electromagnets. The resulting signals or magnetic fields would be either AC or DC signals.
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 claims 1, 11, and 23 of U.S. Patent No. 12,428,932 so that the sensor was configured to sense a change in an AC signal parameter instead of a DC signal parameter, as suggested by Blount, since the examiner takes notes the equivalence of AC and DC for their use in the art of using electromagnets in a downhole device and the selection of any of these known equivalents to use in the claims of U.S. Patent No. 12,428,932 would be within the level of ordinary skill in the art.
Regarding claims 2-10 and 12-22: Claims 2-10 and 12-22 of U.S. Patent No. 12,428,932 disclose essentially the same limitations as those in claims 2-10 and 12-22 of the instant application. It is noted that the “current sensor” of claims 2, 3, 12, and 13 of U.S. Patent No. 12,428,932 is considered equivalent to the “eddy current sensor” in claims 4, 5, 14, and 15 of the instant application and the “power sensor” in claims 4, 5, 14, and 15 of U.S. Patent No. 12,428,932 is considered equivalent to the “voltage sensor” in claims 2, 3, 12, and 13 of the instant application.
Claims 1-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of copending Application No. 19/323,837 in view of Blount.
Regarding claims 1, 11, and 23: Claims 1, 11, and 23 of Application No. 19/323,837 discloses all of the features of claims 1, 11, and 23, respectively, of the instant application except for the sensor sensing a change in an AC signal parameter. Claim 1 of Application No. 19/323,837 discloses the sensor being configured to sense a change in a DC signal parameter.
Blount discloses a downhole device that uses an electromagnetic field generation unit and discloses that this unit can be operated using AC or DC [0022], [0027]. This is a teaching that AC or DC can be used to operate electromagnets. The resulting signals or magnetic fields would be either AC or DC signals.
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 claims 1, 11, and 23 of Application No. 19/323,837 so that the sensor was configured to sense a change in an AC signal parameter instead of a DC signal parameter, as suggested by Blount, since the examiner takes notes the equivalence of AC and DC for their use in the art of using electromagnets in a downhole device and the selection of any of these known equivalents to use in the claims of Application No. 19/323,837 would be within the level of ordinary skill in the art.
Regarding claims 2-10 and 12-22: Claims 2-10 and 12-22 of Application No. 19/323,837 disclose essentially the same limitations as those in claims 2-10 and 12-22 of the instant application. It is noted that the “current sensor” of claims 2, 3, 12, and 13 of Application No. 19/323,837 is considered equivalent to the “eddy current sensor” in claims 4, 5, 14, and 15 of the instant application and the “power sensor” in claims 4, 5, 14, and 15 of Application No. 19/323,837 is considered equivalent to the “voltage sensor” in claims 2, 3, 12, and 13 of the instant application.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 1-23 would be allowable if rewritten or amended to overcome the double patenting rejection, set forth in this Office action or a Terminal Disclaimer filed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1: The prior art of record fails to disclose a device that includes an electromagnetic assembly, a magnetic target positioned proximate the electromagnetic assembly, wherein one of the magnetic target or the electromagnetic assembly is coupled with a movable feature of the device, the movable feature configured to move to physically couple or physically decouple the electromagnetic assembly and the magnetic target, and a sensor electrically coupled to the electromagnetic assembly, the sensor configured to sense for a change in an AC signal parameter impart upon the electromagnetic assembly as the electromagnetic assembly and magnetic target physically couple to or physically decouple from one another as recited in the claimed combination.
Regarding claims 2-10: These claims are considered allowable due to their dependence on claim 1.
Regarding claim 11: The prior art of record fails to disclose or suggest a well system that includes a device that includes an electromagnetic assembly, a magnetic target positioned proximate the electromagnetic assembly, wherein one of the magnetic target or the electromagnetic assembly is coupled with a movable feature of the device, the movable feature configured to move to physically couple or physically decouple the electromagnetic assembly and the magnetic target, and a sensor electrically coupled to the electromagnetic assembly, the sensor configured to sense for a change in an AC signal parameter impart upon the electromagnetic assembly as the electromagnetic assembly and magnetic target physically couple to or physically decouple from one another as recited in the claimed combination.
Regarding claims 12-22: These claims are considered allowable due to their dependence on claim 11.
Regarding claim 23: The prior art of record fails to disclose or suggest a method of using a downhole device in a wellbore, the device including an electromagnetic assembly, a magnetic target positioned proximate the electromagnetic assembly, wherein one of the magnetic target or the electromagnetic assembly is coupled with a movable feature of the device, the movable feature configured to move to physically couple or physically decouple the electromagnetic assembly and the magnetic target, and a sensor electrically coupled to the electromagnetic assembly, the sensor configured to sense for a change in an AC signal parameter impart upon the electromagnetic assembly as the electromagnetic assembly and magnetic target physically couple to or physically decouple from one another as recited in the claimed method.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Y Coupe can be reached at (571)270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER H GAY/Primary Examiner, Art Unit 3619
JHG
3/5/2026