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 Amendment
Applicant’s amendments, filed November 12, 2025, have been fully considered.
Claims 11-12 and 14-16 have been canceled by the Applicant.
The objection to Claim 12, mailed June 12, 2025, is now moot.
The rejection of Claims 1-18 under 35 U.S.C. 112(b), mailed June 12, 2025, has been overcome by the Applicant’s amendments.
The rejection of Claims 11-12 under 35 U.S.C. 112(b), mailed June 12, 2025, is now moot.
The rejection of Claims 14-16 under 35 U.S.C. 112(b), mailed June 12, 2025, is now moot.
The rejection of Claims 19-20 under 35 U.S.C. 112(b), mailed June 12, 2025, has been overcome by the Applicant’s amendments.
Election/Restrictions
Newly added Claims 21-24 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Invention I (Claims 1-10, 13, 17-18, and 24) and Invention III (Claims 21-23) are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the subcombination requires: a well extending from surface into an earthen formation; and surface equipment at the surface. The subcombination has separate utility, such as wellbore operations including steam flooding, treatment of drill cuttings, etc..
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, Claims 21-23 have been withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claims 1-2, 4-6, 8-13, 17, 19, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Donaldson et al. (US 4,366,860).
Claim 1. Donaldson discloses A tool (1 “downhole steam injector”) for generating steam and combustion gases for producing oil (3 “oil-bearing ground”) from an oil well (2 “borehole”) (Abstract; Figs. 1-2; Col. 3, lines 4-15), the tool (1) comprising:
a main body (10 “body”) with a first end including a connection site (22 “inner end”) for receiving a connection of an input line for fuel and water (27 “fuel orifice”; 28 “water orifice”) and an air inlet port (31, 32 “oxidant orifices”) configured to (i) receive air from an atmosphere… (Fig. 1; Col. 3, lines 16-37; Col. 4, lines 28-44 “Water 96 is carried through a conduit in the supply tubular to orifice 28, through water pipe 16, through orifice 15 and into the chamber created by the outer surface of output pipe 60, reducer 50, and middle sleeve 40 and the inner surface 14 of body 10. … Simultaneously, fuel such as crude or refined oil is provided through a conduit in supply tubular to orifice 27 and oxidant such as compressed air or gaseous oxygen is provided through a conduit in supply tubular to orifices 31 and 32.”); and (ii)…
an ignition component (30 “igniting orifice”) arranged within the main body (10) configured to ignite the air and the fuel to generate a flame (97 “flame”) (Fig. 1; Col. 4, lines 44-51 “The fuel flows through passage orifice 29 and intersects the oxidant flow at right angles thereto, forming a mixture which burns without soot when ignited by a glow plug or similar device in igniting orifice 30. The flame 97 generated within inner sleeve 80 heats the water spraying past annular water injector 90 to form steam 98 which is ejected through outlet pipe 60.”);
a combustion chamber (40 “middle sleeve”) for accommodating the flame (97) and extending at a second end of the main body (1) opposite the first end, the combustion chamber (40) defined by a wall (44 “inner surface of middle sleeve 40”) and an outlet (lower end of middle sleeve 40 leading to output pipe 60) configured to allow exit of combusted products from the combustion chamber (Fig. 1; Col. 4, lines 44-51 “The flame 97 generated within inner sleeve 80 heats the water spraying past annular water injector 90 to form steam 98 which is ejected through outlet pipe 60.”; Col. 4, line 67 – Col. 5, line 4 “However, the inner surface of reducer 50 serves as a ramp which guides the water flowing along the lower side of middle sleeve 40 into the middle of the combustion chamber where the flame will quickly convert it into steam”); and
a passageway (80 “inner sleeve”) within the tool (1) from the air inlet port (31, 32) to the combustion chamber (40) to allow flow of air from the air inlet port (31, 32) to the combustion chamber (40) (Figs. 1, 3; “reducer 50 joins middle sleeve 40 to output tube 60 to form an exhaust port for gases generated by the steam injector”).
Donaldson discloses an air inlet port (31, 32 “oxidant orifices”) that receives oxidant, such as compressed air or gaseous oxygen, provided through a conduit in the supply tubular to orifices 31 and 32 (Fig. 1; Col. 3, lines 16-37; Col. 4, lines 28-44). Donaldson does not expressly disclose an air inlet port configured to (i) receive air from an atmosphere around the main body and (ii) not to receive air from a line. However, Donaldson does illustrate that the oxidant is received from a location on an outer surface of the main body (10) (Fig. 1; Col. 2, lines 27-32). The Examiner finds that the oxidant orifice (31) in Donaldson is the functional equivalent of the port as instantly claimed. It would have been an obvious matter of design choice to introduce the oxidant in Donaldson via a port based on choosing from a finite number of identified, predictable solutions with a reasonable expectation of success. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claim 2. Donaldson discloses The tool of claim 1. Regarding the limitation: further comprising an isolating packer encircling the tool and wherein the air inlet port is positioned between an upper end of the first end and the isolating packer, Donaldson discloses a cylindrical bottom head (70) that provides a water-tight seal between the bottom end of the body (10) and the outer surface; wherein the oxidant orifice (31) is positioned between the upper end of the tool (1) and the seal.
Claim 4. Donaldson discloses The tool of claim 1. Regarding the limitation: further comprising a reducer cone (50 “reducer”) spaced below the outlet of the combustion chamber (lower end of middle sleeve 40 leading to output pipe 60), wherein the reducer cone (50) comprises an open upper end and an open lower end that is narrower than the open upper end and is configured to collect and combine steam and flue gases below the outlet (Figs. 1, 3; Col. 4, lines 7-10 “Reducer 50 is a truncated hollow cylindrical cone having a large end 51 of diameter equal to the diameter of the middle sleeve 40 and a small end 52 of diameter equal to the diameter of outlet tube 60.”).
Claim 5. Donaldson discloses The tool of claim 4. Regarding the limitation: further comprising a resilient seal encircling the open upper end of the reducer cone, Donaldson discloses that the reducer (50) joins middle sleeve (40) to output tube (60) to form an exhaust port for gases generated by the steam injector (Col. 4, lines 10-13). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to join the components in Donaldson with a resilient seal, which is well known in the petrochemical art, in order to form a seal between components designed to withstand variations in pressure, temperature, and downhole conditions while maintaining their sealing integrity.
Claim 6. Donaldson discloses The tool of claim 4, further comprising an outer housing (10 “body) that couples the reducer cone (50) to the tool (1), the outer housing (10) having a solid wall encircling the wall of the combustion chamber (40) (Figs. 1, 3).
Claim 8-10. Donaldson discloses The tool of claim 4. Donaldson does not disclose further comprising support arms that couple the reducer cone to the tool, the support arms each extending beyond the outlet of the combustion chamber (Claim 8); wherein the support arms are connected to each other via a collar encircling and protruding diametrically beyond the main body of the tool (Claim 9); wherein the collar is concentric with the wall of the combustion chamber (Claim 10). Instead, Donaldson discloses an integral structure. However, it would have been obvious to one of ordinary skill in the art at the time, before the effective filing date of the claimed invention, construct a formerly integral structure in various elements, because it has been held that it involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179.
Claim 11. Donaldson discloses The tool of claim 1, further comprising a water extension conduit (16 “water tube”), the water extension conduit (16) extending along an exterior length of the wall (outer surface of body 10) and terminating at an orifice (15 “water orifice”), the orifice (15) configured to eject water (96 “water”) across the outlet (lower end of middle sleeve 40 leading to output pipe 60) of the combustion chamber (40) (Fig. 1).
Claim 12. Donaldson discloses The tool of claim 11, wherein a distal end of the water extension conduit (16) terminates at an inward angel relative to the exterior length of the wall (outer surface of body 10) and towards the outlet (lower end of middle sleeve 40 leading to output pipe 60) of the combustion chamber (40) (See claim objection; Fig. 1).
Claim 13. Donaldson discloses The tool of claim 1, the ignition component (30) comprising at least one of: a spark generator, a heated surface, a pyrophoric liquid delivery system, a hypergolic liquid delivery system, and/or any combination thereof (Fig. 1; Col. 4, lines 44-48 “The fuel flows through passage orifice 29 and intersects the oxidant flow at right angles thereto, forming a mixture which burns without soot when ignited by a glow plug or similar device in igniting orifice 30”).
Claim 17. Donaldson discloses The tool of claim 1, wherein the passageway (80) terminates at an opening in an upper wall of the combustion chamber (40) (Fig. 1).
Claim 19. Donaldson discloses A method for generating steam from a steam generator tool (1 “downhole steam injector”) (Abstract; Figs. 1-2; Col. 3, lines 4-15), the method comprising:
receiving, via a port (31, 32 “oxidant orifices”) open to an exterior surface (29 “passage orifice”) of the steam generator tool (1) and within a well (2 “borehole”) in which the steam generator tool is installed, air into the steam generator tool (1) from an atmosphere within a well (2) (Fig. 1; Col. 3, lines 16-37; Col. 4, lines 28-44 “oxidant such as compressed air or gaseous oxygen is provided through a conduit in supply tubular to orifices 31 and 32”);
receiving, via a connection of an input line for fuel and water (27 “fuel orifice”; 28 “water orifice”) into the steam generator tool (Fig. 1; Col. 3, lines 16-37; Col. 4, lines 28-44 “Water 96 is carried through a conduit in the supply tubular to orifice 28, through water pipe 16, through orifice 15 and into the chamber created by the outer surface of output pipe 60, reducer 50, and middle sleeve 40 and the inner surface 14 of body 10. … Simultaneously, fuel such as crude or refined oil is provided through a conduit in supply tubular to orifice 27 and oxidant such as compressed air or gaseous oxygen is provided through a conduit in supply tubular to orifices 31 and 32.”);
combusting the air and the fuel within a combustion chamber (40 “middle sleeve”) of the steam generator tool (1) to generate heat (Fig. 1; Col. 4, lines 44-51 “The fuel flows through passage orifice 29 and intersects the oxidant flow at right angles thereto, forming a mixture which burns without soot when ignited by a glow plug or similar device in igniting orifice 30. The flame 97 generated within inner sleeve 80 heats the water spraying past annular water injector 90 to form steam 98 which is ejected through outlet pipe 60.”); and
ejecting the water to be vaporized into steam by the heat generated from the steam generator tool (Fig. 1; Col. 4, lines 44-51 “The flame 97 generated within inner sleeve 80 heats the water spraying past annular water injector 90 to form steam 98 which is ejected through outlet pipe 60.”; Col. 4, line 67 – Col. 5, line 4 “However, the inner surface of reducer 50 serves as a ramp which guides the water flowing along the lower side of middle sleeve 40 into the middle of the combustion chamber where the flame will quickly convert it into steam”).
Claim 24. Donaldson discloses The tool of claim 1. Regarding the limitation wherein the air inlet port is devoid of a connection for an air input line: Donaldson discloses an air inlet port (31, 32 “oxidant orifices”) that receives oxidant, such as compressed air or gaseous oxygen, provided through a conduit in the supply tubular to orifices 31 and 32 (Fig. 1; Col. 3, lines 16-37; Col. 4, lines 28-44). The Examiner finds that the oxidant orifice (31) in Donaldson is the functional equivalent of the port as instantly claimed, and it would have been an obvious matter of design choice to introduce the oxidant in Donaldson via a port based on choosing from a finite number of identified, predictable solutions with a reasonable expectation of success. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claims 3, 7, 14-16, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Donaldson et al. (US 4,366,860) in view of Baird et al. (US 2015/0198025).
Claim 3. Donaldson discloses The tool of claim 1. Donaldson discloses oxidant orifices (31, 32), wherein oxidant such as compressed air or gaseous oxygen is provided (Col. 4, lines 40-44), but Donaldson does not disclose wherein the air inlet port includes a component for screening water or debris from entering the passageway. However, Baird teaches a downhole steam generation system (20) within a well (24) (Abstract; Figs. 1-2, 4-8), the system (20) comprising: a downhole apparatus (90) that receives the air and fuel from the umbilical (88) at an interface (92) where it is transferred into a mixer portion (94) (Figs. 5, 6; [0038]; [0047]; [0050]; [0053] – [0054]); an ignition device (133) and combustor (100) to ignite and burn a fuel-air mixture (Figs. 6-10; [0048]; [0054]). Baird further teaches that the air module (48) may include an air treatment module (60) that receives the intake air and removes/filters undesirable contaminants ([0044]); and the well casing may have slotted openings or screens ([0049]). Therefore, 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 oxidant orifice in Donaldson with a filter or screen, as taught by Baird, in order to receive intake air and remove/filter undesirable contaminants.
Claim 7. Donaldson in view of Baird teach The tool of claim 6. Donaldson does not disclose further comprising a plurality of nozzles positioned in an annular space between the solid wall and the wall. However, Baird teaches a plurality of nozzle assemblies (160) comprising nozzles (104) (Figs. 6-8, 12-14; [0047]; [0048]). 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 downhole steam injector system in Donaldson with nozzles, as taught by Baird, in order to direct water toward the combustion chamber to generate more steam.
Claim 14. Donaldson discloses The tool of claim 1, further comprising a flow diversion component (29 “orifice”) configured to deliver the fuel (31) and air (27) to the ignition component (30). Donaldson discloses that the fuel flows through passage orifice (29) and intersects the oxidant flow at right angles thereto, forming a mixture which burns without soot when ignited by a glow plug or similar device in igniting orifice (30) (Col. 4, lines 44-51), but Donaldson does not disclose and to house an electrical control line to the ignition component. However, Baird teaches ports (110) that allow data and electrical port transmission lines (117) to enter the system casing (95); wherein the lines may be used for transmitting electrical power, such as to an igniter or heater ([0047]; [0052]; [0054]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention of claimed invention, to modify the downhole steam injector system in Donaldson with electrical port transmission lines, as taught by Baird, in order to transmit electrical power to the igniter.
Claim 15. Donaldson in view of Baird teach The tool of claim 14. Regarding the limitation: further comprising a control component configured to actuate the ignition component, wherein the control component is electrically connected to the ignition component via the electrical control line, Baird teaches that the fuel, liquid water, air, and control signals are transferred to the steam generator and steam is produced within the well and the reservoir; wherein the surface module (44) includes a control module (46) electrically coupled to an air module (48), a water module (50), a fuel module (52), and a production module (54); wherein the control module (46) may also control the distribution of electrical power from the surface to the steam generator ([0038]; [0043] – [0046]). Baird further teaches that the ignition device may be connected to electrical power or data lines (117) ([0054]).
Claim 16. Donaldson in view of Baird teach The tool of claim 15. Regarding the limitation: further comprising one or more sensors located within the ignition component, the combustion chamber, and/or a combination thereof, Baird teaches that the control module (46) may have distributed functionality (comprised of a plurality of individual modules), such as a data acquisition system (56) and a processing system (58) ([0043]); and a monitoring module (86) provides data acquisition and monitoring of the oil reservoir ([0046]). Baird further teaches that other lines may be used for transmitting data that allow the control module (46) to monitor the operation of the downhole apparatus (90).
Claim 18. Donaldson discloses The tool of claim 1. Regarding the limitation: further comprising a screen positioned over the air inlet port, Baird teaches that the air module (48) may include an air treatment module (60) that receives the intake air and removes/filters undesirable contaminants ([0044]); and the well casing may have slotted openings or screens ([0049]).
Claim 20. Donaldson discloses The method of claim 19. Donaldson discloses oxidant orifices (31, 32), wherein oxidant such as compressed air or gaseous oxygen is provided (Col. 4, lines 40-44), but Donaldson does not disclose wherein receiving air includes screening water and debris from the air at an exterior surface of the steam generator tool. However, Baird teaches that the air module (48) may include an air treatment module (60) that receives the intake air and removes/filters undesirable contaminants ([0044]); and the well casing may have slotted openings or screens ([0049]). Therefore, 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 oxidant orifice in Donaldson with a filter or screen, as taught by Baird, in order to receive intake air and remove/filter undesirable contaminants.
Response to Arguments
Applicant's arguments filed November 12, 2025 have been fully considered but they are not persuasive for the reasons explained, below.
The original disclosure discloses an embodiment with optional configurations for the input lines 1 such as those lines for air 17, fuel 18, ignition control/power 19 and water 20 (Figs. 4A – 4C); and an alternate embodiment in which the tool is configured to receive air from the environment through a port 90 on the tool outer surface rather than from a supply through a line (Figs. 4C – 4D). However, the original disclosure illustrates that the port (90) is connected to a conduit (Fig. 4D), substantially similar to the illustration of the oxidant orifice (31) and conduit in Donaldson (See below).
Claimed Invention (Fig. 4D) Donaldson (Fig. 1)
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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 Crystal J. Lee whose telephone number is (571)272-6242. The examiner can normally be reached M-F from 8:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached on (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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/CRYSTAL J LEE/Primary Examiner, Art Unit 3674