DETAILED ACTION
Acknowledgements
In the reply filed June 25, 2026, the applicant amended claims 1-3, 9-12, 14-17, 19 and 20.
The applicant cancelled claims 5-8.
The applicant added claims 24 and 25.
Currently claims 1-4, 9-20, 24, and 25 are under examination.
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 1-4, 9-11, 17-20, 24, and 25 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.
Claims 1 and 17 use the limitation “protrudes from an exterior surface of the component” with regards to a diaphragm/piston chamber. The diaphragm/piston chamber as described by the specification does not appear to have a diaphragm or piston protruding from an exterior surface of the subsea component. Rather, the exterior surface itself appears to have an increased diameter portion with a diaphragm/piston chamber contained within.
Claims 2-4, 9-11, 18-20, 24, and 25 are rejected as being dependent on claims 1 or 17.
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 12-16 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.
Claim 12 uses the limitation “conforms to the interior surface” regarding the cylindrical sheet geometry related to the interior surface. It is unclear what the limits of “conforms” are meant to be: e.g. forms roughly the same shape as one another, adhered to one another, or some other form of mechanical cooperation.
Claims 13-16 are rejected as being dependent on claim 12.
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 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 1-4, 9-11, 12-13, 15-16, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Narhi (U.S. Pub. No. 2020/0148936) in view of Yalcin (U.S. Pub. No. 2016/0326351).
Regarding Claim 1, Narhi discloses a method for managing pressure buildup within a component of subsea production equipment (Narhi: 120, 130, 140) using compressible particles (Narhi: 240), the method comprising;
Positioning the compressible particles (Narhi: 240) within a diaphragm chamber (Narhi: 238) that protrudes from an exterior surface of the component of the subsea production equipment (Narhi: 120, 130, 140), wherein the diaphragm chamber (Narhi: 238) comprises a diaphragm (Narhi: filter screen 230 functions as diaphragm) that defines a hermetic seal (Narhi: no fluid transfer between interior of 238 and interior of 220) between a first fluid in a fluid-filled closed volume defined within the component of the subsea production equipment (Narhi: 120, 130, 140) and the compressible particles (Narhi: 240) within the diaphragm (Narhi: art recognized equivalent of 230) chamber (Narhi: 238), wherein the diaphragm (Narhi: art recognized equivalent of 230) is configured to enable pressure communication between the diaphragm (Narhi: art recognized equivalent of 230) chamber (Narhi: 238) and the fluid-filled closed volume (Narhi: between casings 120, 130, 140) such that an increase in fluid pressure within the fluid-filled closed volume (Narhi: between casings 120, 130, 140) is attenuated by reversible volumetric contraction of the compressible particles (Narhi: 240) within the diaphragm (Narhi: art recognized equivalent of 230) chamber (Narhi: 238) that protrudes from the exterior surface of the component of the subsea production equipment (Narhi: 120, 130, 140),
Narhi does not disclose wherein the subsea production equipment (Narhi: 120, 130, 140) comprises a subsea tree deployed within a subsea environment as part of a subsea production system.
Yalcin discloses subsea production equipment (utilizing compressible particles) comprising a subsea tree deployed within a subsea environment as part of a subsea production system (Yalcin: Paragraph [0061]).
It would have been obvious to one having ordinary skill in the art at the time of the invention’s filing to have utilized the tree of Yalcin in the invention of Narhi, as Yalcin teaches that it is old and well known to use a subsea tree within subsea production equipment within a subsea environment. The claims as they are currently written only require that a subsea tree be a part of the subsea production equipment that also includes the component of the subsea equipment around which the compressible particles and diaphragm is placed and does not require that the compressible particles and diaphragm be placed around the subsea tree itself.
Regarding Claim 2, Narhi and Yalcin render obvious the method of claim 1, further comprising at least one of:
Providing each of the compressible particles (Narhi: 240) with a diameter that is in a range between 10 micrometers (pm) and 1300 pm (in dry state) (Narhi: Paragraph [0024]); or
Providing the compressible particles (Narhi: 240) such that the compressible particles (Narhi: 240) contract by 10% to 30% of an initial unpressurized volume of the compressible particles (Narhi: 240) when the fluid pressure within the fluid-filled closed volume (Narhi: between casings 120, 130, 140) is increased from 15 pounds per square inch (psi) to 10,000 psi (Narhi: Paragraphs [0094], [0095]).
Regarding Claim 3, Narhi and Yalcin render obvious the method of claim 1, wherein the subsea production equipment (Narhi: 120, 130, 140) comprises a control system, a manifold, or a pipeline system deployed within the subsea environment as part of the subsea production system (Yalcin: Paragraph [0061]).
Regarding Claim 4, Narhi and Yalcin render obvious the method of claim 1, wherein positioning the compressible particles (Narhi: 240) within the fluid-filled closed volume (Narhi: between casings 120, 130, 140) comprises:
Providing a packing of the compressible particles (Narhi: 240); and
Mechanically, frictionally, or adhesively affixing the packing to an interior surface of the fluid-filled closed volume (Narhi: between casings 120, 130, 140: outer surface of first casing is within interior of fluid filled volume of annulus created with second, wider casing).
Regarding Claim 9, Narhi and Yalcin render obvious the method of claim 1, wherein the increase in the fluid pressure within the fluid-filled closed volume (Narhi: between casings 120, 130, 140) is caused by at least one of thermal expansion of the first fluid within the fluid-filled closed volume (Narhi: between casings 120, 130, 140) or mechanical straining of the first fluid within the fluid-filled closed volume (Narhi: between casings 120, 130, 140) (Narhi: Paragraph [0175]).
Regarding Claim 11, Narhi and Yalcin render obvious the method of claim 9, further comprising increasing the fluid pressure within the fluid-filled closed volume (Narhi: between casings 120, 130, 140) by producing production fluids from at least one subsea well corresponding to the subsea production equipment (Narhi: 120, 130, 140), wherein heat transfer between the production fluids and the first fluid within the fluid-filled closed volume (Narhi: between casings 120, 130, 140) results in the thermal expansion of the first fluid within the fluid-filled closed volume (Narhi: between casings 120, 130, 140) (Narhi: Paragraph [0078]).
Regarding Claim 12, Narhi discloses a method for managing pressure buildup within a component of subsea production equipment (Narhi: 120, 130, 140) using compressible particles (Narhi: 240), the method comprising:
Providing a packing of the compressible particles (Narhi: 240) by:
encapsulating the compressible particles (Narhi: 240) within an elastomeric coating (Narhi: Paragraph [0123]), wherein the packing comprises a cylindrical sheet geometry with an interior opening;
Affixing the packing to an interior surface (Narhi: between casings 120, 130, 140: outer surface of first casing is within interior of fluid filled volume of annulus created with second, wider casing) of a fluid-filled closed volume (Narhi: between casings 120, 130, 140) that is defined within the component of the subsea production equipment (Narhi: 120, 130, 140) such that the cylindrical sheet geometry (Narhi: cylindrical portion of 236) conforms to the interior surface and a first fluid within the fluid-filled closed volume (Narhi: between casings 120, 130, 140) occupies the interior opening (Narhi: ends of 236 form an opening that is affixed to 220) of the cylindrical sheet geometry (Narhi: cylindrical portion of 236) without directly contacting the interior surface of the fluid-filled closed volume (Narhi: between casings 120, 130, 140: fluid between casings is prevented from touching inner casing by presence of 230);
Deploying the subsea production equipment (Narhi: 120, 130, 140) within a subsea environment as part of a subsea production system;
Increasing a fluid pressure within the fluid-filled closed volume (Narhi: between casings 120, 130, 140) via at least one of thermal expansion or mechanical straining of the first fluid within the fluid-filled closed volume (Narhi: between casings 120, 130, 140); and attenuating the increase in the fluid pressure via reversible volumetric contraction of the compressible particles (Narhi: 240) within the packing.
Narhi does not disclose wherein the subsea production equipment comprises a subsea tree deployed within the subsea environment as part of the subsea production system.
Yalcin discloses subsea production equipment (utilizing compressible particles) comprising a subsea tree deployed within a subsea environment as part of a subsea production system (Yalcin: Paragraph [0061]).
It would have been obvious to one having ordinary skill in the art at the time of the invention’s filing to have utilized the tree of Yalcin in the invention of Narhi, as Yalcin teaches that it is old and well known to use a subsea tree within subsea production equipment within a subsea environment. The claims as they are currently written only require that a subsea tree be a part of the subsea production equipment that also includes the component of the subsea equipment around which the compressible particles and diaphragm is placed and does not require that the compressible particles and diaphragm be placed around the subsea tree itself.
Regarding Claim 13, Narhi and Yalcin render obvious the method of claim 12, wherein the reversible volumetric contraction of the compressible particles (Narhi: 240) is within a range between 10% and 30% of an initial unpressurized volume of the compressible particles (Narhi: 240) when the fluid pressure within the fluid-filled closed volume (Narhi: between casings 120, 130, 140) is in a range between 15 pounds per square inch (psi) and 10,000 psi (Narhi: Paragraphs [0094], [0095]).
Regarding Claim 15, Narhi and Yalcin render obvious the method of claim 12, comprising increasing the fluid pressure within the fluid-filled closed volume (Narhi: between casings 120, 130, 140) via thermal expansion of the first fluid within the fluid- filled closed volume by producing production fluids from at least one subsea well corresponding to the subsea production equipment (Narhi: 120, 130, 140), wherein heat transfer between the production fluids and the first fluid within the fluid-filled closed volume (Narhi: between casings 120, 130, 140) results in the thermal expansion of the first fluid within the fluid-filled closed volume (Narhi: between casings 120, 130, 140) (Narhi: Paragraph [0175]).
Regarding Claim 16, Narhi and Yalcin render obvious the method of claim 12, wherein the subsea production equipment (Narhi: 120, 130, 140) comprises a control system, a manifold, or a pipeline system deployed within the subsea environment as part of the subsea production system (Yalcin: Paragraph [0061]).
Regarding Claim 24, Narhi and Yalcin render obvious the method of claim 1, wherein the compressible particles (Narhi: 240) within the diaphragm (Narhi: art recognized equivalent of 230) chamber (Narhi: 238) are suspended within a second fluid within the diaphragm (Narhi: art recognized equivalent of 230) chamber (Narhi: 238) (Narhi: Paragraph [0116]).
Claims 17, 18, 20, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Narhi in view of Yalcin, further in view of Fox (U.S. Pub. No. 2003/0178200).
Regarding Claim 17, Narhi discloses a method for managing pressure buildup within a component of subsea production equipment (Narhi: 120, 130, 140) using compressible particles (Narhi: 240), the method comprising:
Positioning the compressible particles (Narhi: 240) within a diaphragm (Narhi: 230) that protrudes from an exterior surface of the component of the subsea production equipment (Narhi: 120, 130, 140), wherein the piston chamber (Narhi: art recognized equivalent of 230) comprises a piston that defines a barrier between and that enables pressure communication between the compressible particles (Narhi: 240) within the piston chamber and a first fluid within a fluid-filled closed volume (Narhi: between casings 120, 130, 140) defined within the component of the subsea production equipment (Narhi: 120, 130, 140);
Deploying the subsea production equipment (Narhi: 120, 130, 140) within a subsea environment as part of a subsea production system;
Increasing a fluid pressure within the fluid-filled closed volume (Narhi: between casings 120, 130, 140) via at least one of thermal expansion or mechanical straining of the first fluid within the fluid-filled closed volume; and attenuating the increase in the fluid pressure via movement of the piston, from the exterior surface of the component of the subsea production equipment (Narhi: 120, 130, 140) to a position further within the piston chamber, that induces reversible volumetric contraction of the compressible particles (Narhi: 240) within the piston chamber.
Narhi does not disclose wherein the subsea production equipment comprises a subsea tree deployed within the subsea environment as part of the subsea production system.
Narhi also does not disclose a piston containing the compressible particles.
Yalcin discloses subsea production equipment (utilizing compressible particles) comprising a subsea tree deployed within a subsea environment as part of a subsea production system (Yalcin: Paragraph [0061]).
It would have been obvious to one having ordinary skill in the art at the time of the invention’s filing to have utilized the tree of Yalcin in the invention of Narhi, as Yalcin teaches that it is old and well known to use a subsea tree within subsea production equipment within a subsea environment. The claims as they are currently written only require that a subsea tree be a part of the subsea production equipment that also includes the component of the subsea equipment around which the compressible particles and diaphragm is placed and does not require that the compressible particles and diaphragm be placed around the subsea tree itself.
Fox discloses that for the purposes of pressure compensation a device utilizing a piston is an art recognized equivalent of a diaphragm (Fox: Paragraph [0023], [0024]).
It would have further been obvious to one having ordinary skill in the art at the time of the invention’s filing to have utilized a piston such as that within the invention of Fox in place of the diaphragm/filter screen of Yalcin with a reasonable expectation of success of containing the compressible particles in a pressure-compensating manner as required by the invention of Yalcin.
Regarding Claim 18, Narhi, Yalcin, and Fox render obvious the method of claim 17, wherein the reversible volumetric contraction of the compressible particles (Narhi: 240) is within a range between 10% and 30% of an initial unpressurized volume of the compressible particles (Narhi: 240) when the fluid pressure within the fluid-filled closed volume (Narhi: between casings 120, 130, 140) is in a range between 15 pounds per square inch (psi) and 10,000 psi (Narhi: Paragraphs [0094], [0095]).
Regarding Claim 20, Narhi, Yalcin, and Fox render obvious the method of claim 17, comprising increasing the fluid pressure within the fluid-filled closed volume (Narhi: between casings 120, 130, 140) via thermal expansion of the first fluid within the fluid- filled closed volume by producing production fluids from at least one subsea well corresponding to the subsea production equipment (Narhi: 120, 130, 140), wherein heat transfer between the production fluids and the first fluid within the fluid-filled closed volume (Narhi: between casings 120, 130, 140) results in the thermal expansion of the first fluid within the fluid-filled closed volume (Narhi: between casings 120, 130, 140) (Narhi: Paragraph [0078]).
Regarding Claim 25, Narhi, Yalcin, and Fox render obvious the method of claim 17, wherein the compressible particles (Narhi: 240) within the piston chamber are suspended within a second fluid within the piston chamber (Narhi: Paragraph [0116]).
Response to Arguments
Applicant's arguments filed June 25, 2026 have been fully considered and they are persuasive. However, upon further search and consideration, the amended claims are anticipated or rendered obvious by the combination of Narhi and Yalcin as detailed above.
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 DOUGLAS S WOOD whose telephone number is (571)270-5954. The examiner can normally be reached Monday through Thursday 8:30 AM - 7:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole A 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.
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DOUGLAS S. WOOD
Examiner
Art Unit 3672
/DOUGLAS S WOOD/Examiner, Art Unit 3672
/Nicole Coy/ Supervisory Patent Examiner, Art Unit 3672
