Detailed Action
Status of Claims
This is the first office action on the merits. Claims 1-18 are currently pending and addressed below.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/07/2025 has being considered by the examiner.
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 prime driver must be shown or the feature(s) canceled from the claim(s). 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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Applicant claims the prime driver however, the specification does not disclose the prime driver except in para [0001] of the instant specification. Applicant refers to a thruster exclusively in disclosing the components as claimed however, there is no linking of a prime driver to a thruster in the instant specification. For the purposes of examination however, Examiner assumes that applicants prime driver is referring to the thruster disclosed in the instant specification.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-6, 12-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Prisbell (US Pat No 11781403).
Prisbell discloses in claim 1. A system for moving a well service tool (Prisbell Fig 5a; 104 perforation tool col 8 line 21-22) through a non-flow environment in an underground wellbore, comprising:
a first tool (Prisbell Fig 5a; 508 propulsion unit), comprising:
a housing (Prisbell Fig 5a; 512);
a prime driver (Prisbell Fig 5a; 516) configured to propel the housing in a fluid (Prisbell Cp; 2 line 25-27 & Col 3 line 12-36 impeller is utilized to propel the tool along a wellbore);
a motor (Prisbell Col 7 line 6-7 Fig 5a; 504 power unit comprises motor 510 and battery 506 for the propulsion unit) for powering the prime driver (Prisbell Col 7 line 6-7 motor and battery unit comprise the power unit), the motor disposed within the housing (Prisbell Fig 5a);
and a connection point (Prisbell Fig 5a; 530 collar), disposed on the housing, for connecting the first tool to the well service tool (Prisbell Fig 5a perforation tool is connected to the propulsion unit).
Prisbell discloses in claim 2. The system of claim 1 wherein the prime driver comprises an impeller (Prisbell Fig 5a; 516 impeller) disposed within the housing.
Prisbell discloses in claim 3. The system of claim 2 wherein the housing is defined by: a first plurality of openings disposed on a first side of the impeller (Prisbell Fig 5a; 512); and a second plurality of openings disposed on a second side of the impeller (Prisbell Fig 5a; 532).
Prisbell discloses in claim 4. The system of claim 1 in which the connection point comprises a nose configured to abut the well service tool (Prisbell Fig 5a; 530 forms a nose to mate with 514 and well service tool 104).
Prisbell discloses in claim 5. The system of claim 1 in which the underground wellbore has an uphole direction and a downhole direction, and: the connection point is downhole relative to the well service tool (Prisbell Fig 5a; col 7 line 37-39 the propulsion unit has an uphole and downhole annular collar 530 that can be used for attachment to other well service tools).
Prisbell discloses in claim 6. The system of claim 1 in which the underground wellbore has an uphole direction and a downhole direction, and: the connection point is uphole relative to the well service tool (Prisbell Fig 5a; connection point 530 is uphole of the well servicing tool).
Prisbell discloses in claim 12. A method of using the system of claim 1, comprising: determining that a non-flow environment exists in the wellbore (Prisbell col 1 line 21-33 non flow environment); placing the first tool into the wellbore (Prisbell col 1 line 65 to col 2 line 1 disposing the tool into the well); with the prime driver, moving the first tool through the non-flow environment within the wellbore (Prisbell col 2 line 1-4 operating the prime driver/propulsion unit to a position in the wellbore); connecting the well service tool to the first tool at the connection point (Prisbell Fig 5a; 530 connection of the well service tool and propulsion unit at a connection point); and thereafter, advancing the well service tool with the first tool through the non-flow environment (Prisbell col 2 line 1-4 operating the prime driver/propulsion unit to a position in the wellbore).
Prisbell discloses in claim 13. The method of claim 12 wherein the step of connecting the well service tool to the first tool comprises abutting the well service tool with a nose of the first tool (Prisbell Fig 5a; 530 connection of the well service tool and propulsion unit at a connection point).
Prisbell discloses in claim 14. The method of claim 12 wherein the well service tool is connected to the first tool outside of the wellbore (Prisbell Fig 5a; 530 connection of the well service tool and propulsion unit at a connection point).
Prisbell discloses in claim 15. The method of claim 12 wherein the prime driver comprises an impeller, and the step of moving the first tool through the non-flow environment comprises: rotating the impeller within the housing to displace fluid (Prisbell Col 2 lines 25-27 generating thrust in a fluid medium via impeller); at a plurality of intake openings (Prisbell Fig 5a; 532) formed in the housing, intaking fluid in the non-flow environment; at a plurality of outlet openings (Prisbell Fig 5a; 512) in the housing, expelling fluid.
Prisbell discloses in claim 16. The method of claim 12 wherein the first tool comprises a battery (Prisbell Col 7 line 6-7 Fig 5a; 504 power unit comprises motor 510 and battery 506 for the propulsion unit) to power the motor; the method further comprising: operating the prime driver until the battery is fully discharged (Prisbell Col 7 line 6-7 Fig 5a; 504 power unit comprises motor 510 and battery 506 for the propulsion unit can be operated until the battery is drained. Examiners note: Prior art is capable of being operated until battery is fully discharged and as the limitation does not further limit the method by including a further step or rationale by the applicant for operation until the battery is fully drained any device with a battery is capable of being operated until the battery is drained).
Prisbell discloses in claim 17. The method of claim 12 wherein the well service tool is advanced to a blockage within the wellbore (Prisbell col 2 line 1-4 operating the prime driver/propulsion unit with perforation tool to a position in the wellbore to be perforated).
Prisbell discloses in claim 18. The method of claim 17 further comprising removing the blockage with the well service tool (Prisbell col 2 line 1-4 operating the prime driver/propulsion unit with perforation tool to a position in the wellbore to be perforated col 1 line 28-29 creating openings in the blockage).
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.
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.
Claim(s) 7-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Prisbell (US Pat No 11781403).
Prisbell discloses in claim 7. The system of claim 1 in which the prime driver is characterized as a first prime driver (Prisbell Fig 5a; 508 uphole driver). Prisbell strongly suggests a plurality of drivers/propulsion units in the invention (Prisbell col 7 line 37-39) but in the exemplary embodiment of Fig 5a only a single driver/propulsion unit is disclosed.
However, Prisbell teaches an embodiment: wherein the first tool further comprises: a second prime driver (Prisbell Fig 4; 418, 420, 422 plurality of prime drivers) configured to propel the housing (Prisbell col 4 line 65-67 propulsion units capable of enough thrust to move the service tool downhole).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the amount of prime drivers of Prisbell to include multiple prime drivers to propel multiple well service tools since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the combination would result in the predictable result of being able to generate the thrust needed to move multiple well servicing tools (Prisbell col 4 line 65-67 propulsion units capable of enough thrust to move the service tool downhole).
Examiner note: The limitation appears to be merely a duplication of parts as shown in the instant application Fig 3 with two thruster structures labeled 300. See MPEP 2144.04(VI) B. Duplication of Parts: In reHarza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) Although the embodiment (Fig 5a) of Prisbell does not disclose a plurality of prime drivers, the courts have held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.
Prisbell discloses in claim 8. The system of claim 7 wherein: the first prime driver comprises a first impeller (Prisbell Fig 4; 418 first impeller col 5 line 1-4); and the second prime driver comprises a second impeller (Prisbell Fig 4; 420 second impeller col 5 line 1-4).
Prisbell discloses in claim 9. The system of claim 8 in which the first impeller rotates in a clockwise direction and the second impeller rotates in a counterclockwise direction (Prisbell Col 5 line 43-49 impellers are independently configured to operate, such as counter rotate to reduce twisting in the system and therefore one would rotate clock wise and the second would rotate counterclockwise).
Prisbell discloses in claim 10. The system of claim 7 in which the first tool further comprises a second motor, the second motor drives the second prime driver (Prisbell Col 5 line 1-4 each propulsion unit has its own battery unit and to variable speed motors col 6 line 24-27).
Prisbell discloses in claim 11. The system of claim 7 wherein each of the first prime driver and the second prime driver are contained within the housing (Prisbell Col 4 line 10 each impeller is housed in a protective housing), and wherein the housing is defined by a plurality of intake openings (Prisbell Fig 5a; 512) disposed in the housing on a first side of each of the first prime driver and the second prime driver, and a plurality of outlet openings (Prisbell Fig 5a; 532) disposed in the housing on a second side of each of the first prime driver and the second prime driver.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas D Wlodarski whose telephone number is (571)272-3970. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm.
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, Nicole Coy can be reached at (571) 272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NICHOLAS D WLODARSKI/ Examiner, Art Unit 3672
/Nicole Coy/Supervisory Patent Examiner, Art Unit 3672