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 .
Response to Arguments
Applicant’s arguments, filed on 03/16/2026, with respect to objection to the title and abstract have been fully considered and are persuasive. The objection to the specification has been withdrawn.
Applicant’s arguments, filed on 03/16/2026, with respect to objection to the drawing has been fully considered and are persuasive. The objection to the drawing has been withdrawn.
Applicant’s arguments, filed on 03/16/2026, with respect to objection to claim 70 has been fully considered and are persuasive. The objection to the claim has been withdrawn.
Applicant's arguments filed on 03/16/2026 with regards to rejection of claims 66-69, 71, and 72 under 35 USC 112 (b) /2nd have been fully considered but they are not persuasive. The amendment to the claims does not provide measurement limitation and / or range workable that would be provide what would be intent of the limitation “frangible”. Therefore, the claims rejection has been maintained.
Applicant's arguments filed on 03/16/2026 with regards to rejection of claims 59, 62, 63, 65, 74, 75, and 77 under 35 USC 112 (f) /6th have been fully considered but they are persuasive. The rejection of the claims has been withdrawn.
Applicant’s arguments, filed on 03/16/2026, with respect to Claims 59-64 and 78 rejected under 35 U.S.C. 10(a) (1) as being anticipated by Musale et al. (US 2016/0185636 A1)have been fully considered and are persuasive. The rejection of the claims has been withdrawn.
Applicant’s arguments, filed on 03/16/2026, with respect to Claims 59-30, 32-66, 69, and 71-78 rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Nommensen (US 2020/0165881 A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made set forth below.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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.
The term frangible" in claims 66-69, 71, and 72 “is a relative term which renders the claim indefinite. The term “fragile “ is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
All the claims dependent of claims 66 and 71 are also rejected.
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 59, 60, 62, 65, 66, 69, and 71-78 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Nommensen (US 2020/0165881 A1) ("Nommensen" herein- cited previously)
Claim 59 and 60
Nommensen discloses a rod guide for use in a well production tubing, the rod guide comprising: [0014-0023]
(a) a wearable material; [0024-0027, 0049-0065] and
(b) a tracer located in a retaining means in the wearable material wherein the
retaining means comprises a receptacle that defines a cavity or void in the wearable material [0033-0037, 0040-0044] and is formed from a material that is less wear resistant than the wearable material. [0043-0044, 0067- 0072, 0154]
Since Nommensen disclose the same material composition of the rod guide comprising a material, a retaining, and a tracer located in the retaining means, it would be a wearable material, retaining means formed from a material that is less wear resistant than the wearable material, and be a fluorophore having an excitation wavelength of 325-425nm.
"Products of identical chemical composition cannot have mutually exclusive properties". A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 62 .
Nommensen discloses the rod guide according to claim 59 wherein the retaining means is adapted to release the fluorophore when a part of said retaining means is breached. [0067, 0154]
Claim 65
Nommensen discloses the rod guide according to claim 59 wherein the retaining means comprises a plurality of receptacles. [0033-0037, 0040-0044, 0126-0130]
Claim 66
Nommensen discloses the rod guide according to claim 59 wherein the receptacle comprises:
(a) a frangible capsule including a detectable material; and .
(b) a housing for the frangible capsule, wherein the housing comprises a second wearable material. [0024-0027, 0044, 0049-0065, 0067-0072, 0154]
Claim 69
Nommensen discloses the rod guide according to claim 66 wherein the frangible capsule comprises at least one end comprising a seal. [0067, 0154]
Claim 71
Nommensen discloses the rod guide according to claim 66 wherein the housing comprises a chamber that is shaped and sized to receive the frangible capsule. [0067, 0154]
Claim 72
Nommensen discloses the rod guide according to claim 71 wherein the chamber comprises a first part for receiving the frangible capsule and a second part that defines an expansion space or void for expediting the release of the detectable material when the frangible capsule is breached. [0067, 0154]
Claim 73
Nommensen discloses the rod guide according to claim 72 wherein the expansion space or void extends parallel to a main longitudinal axis of the first part of the chamber and towards an outer surface of the housing. [0015-0023, 0038-0041] .
Claim 74
Nommensen discloses the rod guide according to claim 59 wherein the retaining means is located in a fluid flow enhancer that forms part of the rod guide. [0015-0023]
Claim 75
Nommensen discloses the rod guide according to claim 74 wherein the fluid flow enhancer is a vane. [0015-0023, 0038-0041]
Claim 76
Nommensen discloses the rod guide according to claim 75 wherein the retaining means is located in a first part of the vane that defines spiral shaped path around and along an outer longitudinal surface of the body of the fluid flow enhancer. [0040, 0097, 0131]
Claim 77
Nommensen discloses the rod guide according to claim 76 wherein the retaining means is located in a second part of the vane that defines a straight path along the outer longitudinal surface of the body of the fluid flow enhancer. [0035-0040, 0097]
Claim 78
Nommensen discloses an assembly for use in a well production tubing, the assembly comprising a plurality of rod guides according to claim 59. [0014-0023, 0114-0119] .
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 61 and 70 are rejected under 35 U.S.C. 103 as being unpatentable over Nommensen as applied to claim 59 and 66 above, and further in view of Burns et al. (US 2018/0155597 A1) ("Burns" herein- cited previously).
Claim 61
Nommensen discloses the rod guide according to claim 59. Nommensen however does not explicitly disclose wherein the fluorophore is 1,3,6,8- pyrene tetrasulfonic acid tetrasodium salt (PTSA).
Burns teaches the above limitation. (See paragraphs 0090 → Burns teaches this limitation in that water soluble tracers can be used to track the movement of production fluids containing water. Groups of compounds that are commonly described in the art as dyes, pigments, and colorants can be used. Suitable tracers useful with the present invention include but are not limited to those selected from the group consisting of: Brilliant Acid Yellow 8G (Lissamine Yellow FF, Acid Yellow 7); pyranine, (8-hydroxy- 1,3,6-pyrenetrisulfonic acid, trisodium salt); quinoline; rhodalux; rhodamine WT; safranine O; and any existing ammonium, potassium and sodium salts thereof. Preferred fluorescent tracers include 1,3,6,8-pyrenetetrasulfonic acid, tetrasodium salt and 1,5-naphthalenedisulfonic acid, disodium salt (hydrate).) for the purpose of having a tracer with that does not interfere or interact undesirably with other materials present in the oil well at the levels used. [0084]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Nommensen, with the above limitation, as taught by Burns, in order to have a tracer that does not interfere or interact undesirably with other materials present in the oil well at the levels used.
Claim 70 .
Nommensen discloses the rod guide according to claim 66. Nommensen however does not explicitly disclose wherein the detectable material is a fluorescent material selected from the group consisting of fluorescein, rhodamine, lissamine, coumarin, perylene and chlorophyllin. (Same as claim 61)
Claims 67-68 are rejected under 35 U.S.C. 103 as being unpatentable over Nommensen as applied to claim 59 and 66 above, and further in view of Fischer (US 367883 A1) ("Fischer" herein – cited previously).
Claim 67
Nommensen discloses the rod guide according to claim 66. Nommensen however does not explicitly disclose wherein the frangible capsule is formed from glass.
Fischer teaches the above limitation (See Col. 3 L 72+ Co. 4 L. 1-9 → Fischer teaches this limitation in that the insert comprises a cylindrical frangible plastic or glass envelope 48 which encapsulates a mobile liquid marker 49. The liquid marker may, for example, comprise a radioactive material or a conventional dye which may be visible or fluorescent, or, if desired, the marker liquid may be a radioactive dye. the frangible container 48 comes in contact with the bearing surfaces upon substantial wear of the segment in which it is inserted, the container is broken, and the mobile marker is released.) for the purpose of providing upon substantial wear of the segment in which it is inserted when the container is broken. (Col. 41. 5-9)
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Nommensen, with the above limitation, as taught by Fischer, in order to provide upon substantial wear of the segment in which it is inserted, the container is broken.
Nommensen discloses the rod guide according to claim 66. Nommensen however does not explicitly disclose wherein the frangible capsule is formed from ceramic or acrylic material. (Same as claim 67)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 571-272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SILVANA C RUNYAN/ Primary Examiner, Art Unit 3674 03/26/2026
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