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 § 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.
Claims 1, 2, 6, 7, 8, 9, 10, 11, 12, 16, 17, 18, 19 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lunk et al., U.S. 2017/0058616.
Regarding claim 1, Lunk et al. discloses a method for producing fluids from a geothermal reservoir ([0045], lines 1-4) by identifying downhole locations (formation 420; noted are a plurality of formations [0005]), identifying tools (the electrical submersible pump, [0045]) that will be installed at the identified downhole locations having a catalyst-free PCD coatings (layers or coatings 100, see [0053], including thermally stable polycrystalline free of catalyst, [0059]; "PCD layer 100 having residual binder- catalyzing material contained in the diamond structure's interstitial spaces may undergo leaching to remove some, all, or about all, catalyst impurities") and installing the tool (ESP) covered (internally coated as needed to withstand at least temperature parameters) with PCD coatings in the identified downhole locations (420).
Lunk et al. additionally discloses in paragraph 0057 the PCD layer (100) applied using physical vapor deposition, plasma-assisted chemical vapor deposition, or a similar process commensurate with the disclosure wherein the PCD coatings are formed directly on surfaces (polished surfaces [0047]) of the tool (ESP) without a catalyst removal step.
Re: claims 2 and 12, Lunk et al. discloses the downhole locations are identified based on data regarding actual downhole conditions ([0005]; actual severe conditions precluding operation are determined).
Re: claims 6, 16, the reference discloses the tools (or remnants thereof lost during use) that will inherently remain downhole for more than a year.
Re: claims 7, 17, the tool is an electrical submersible pump.
Re: claims 8, 18, the reference discloses applying catalyst-free PCD coatings using thermal spray techniques (the practice of leaching to remove catalyst materials is considered a technique inherently having an associated temperature; moreover, the method of forming the device or coating is not germane to the patentability of the method of using it, and has been given minimal patentable weight.
Re: claims 9, 19, the reference discloses applying catalyst-free PCD coatings using chemical vapor deposition techniques ([0057]; moreover, the method of forming the device or coating is not germane to the patentability of the method of using it, and has been given minimal patentable weight.
Re: claims 10, 20, the reference discloses at least field testing thickness, hardness, and thermal conductivity of the PCD coatings (the parameters are met for suitability of the intended use ([0008]; conventional designs are not well suited to withstand excessive abrasion in pumping systems or to keep the bearing surfaces cool. These shortcomings decrease the longevity of the pump components) substantially as claimed.
Regarding claim 11, Lunk et al. discloses all the claimed limitations including the catalyst free polycrystalline coating (100) in a bearing of a submersible pump capable of withstanding temperatures exceeding 150 degrees C - 302 degrees F ([0059]; 1200 degree C) at a determined production location having an anticipated temperature, the pump inherently capable of being identified for potential installation in an earthen location with conditions above 69 MPa - 10,000 psi that are inherently encountered (evidence provided in Herrera, U.S. 9,995,131; col. 1, lines 36-45). In addition, the selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
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.
Claims 3-5 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Lunk et al., U.S. 2017/0058616 in view of Bowes et al., U.S. 2025/0369341.
Lunk et al. discloses all the claimed limitations including the electrical submersible pump placed at a desired formation depth (formation 420), but does not disclose the electrical submersible pump downhole location being based on well logging data, screening parameters including well depth.
Bowes et al. teaches use of an electrical submersible pump (see [0007], [0112]) having a downhole measuring system to capture pressure and temperature data at multiple levels or depths below the ESP, while still relying on the ESP system to transmit data to the surface.
It would have been obvious to one having ordinary skill in the art at the time of the invention to make use of a well known monitoring system as taught by Bowes et al. to ensure depth placement of an electrical submersible pump and operability of communication gauges ([0009]).
Response to Arguments
Applicant's arguments filed 4 May 2026 have been fully considered but they are not persuasive.
Applicants argue the prior art of Lunk et al. does not disclose the tools covered with catalyst-free PCD coatings formed directly on surfaces of the tools without a catalyst removal step because Lunk discloses PCD layers are formed using binder-catalyzing materials and rendered catalyst-free after a subsequent catalyst-removal (leaching) step.
The prior art discloses in paragraph 0057 the PCD layer (100) applied using physical vapor deposition, plasma-assisted chemical vapor deposition, or a similar process commensurate with the disclosure wherein the PCD coatings are formed directly on surfaces (polished surfaces [0047]) of the tool (ESP) without a catalyst removal step.
Regarding the requested interview, a telephone call was made 11 May 2026 in response but did not result in a conversation with the counsel.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH L THOMPSON whose telephone number is (571)272-7037. The examiner can normally be reached Weekdays; 9:00-5:00, est.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tara Schimpf can be reached at 571-270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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11 May 2026
/KENNETH L THOMPSON/ Primary Examiner, Art Unit 3676
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