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 03/31/2026 with regards to claim 4 and 12 rejected under 35 USC 12 (b) /2nd have been fully considered but they are not persuasive.
Applicant’s arguments, filed on 04/12/2026 with respect to the rejection(s) of claims 1, 4-5, 7, 9-10 12, 14, and 15 are rejected under 35 U.S.C. 102(a) (1))
as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Brown (US
5,685,362) 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 Therefore, the rejection has been withdrawn.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.
Claims 4 and 12 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 4 recites " time is greater than one hour. " This is a range with unbounded upper limit, and as such, it is unclear to extent of time Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite.
Claim 12 recites " at least 300 degrees Fahrenheit or 149 degrees Celsius. " This is a range with unbounded upper limit, and as such, it is unclear to extent of temperature Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite.
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 1, 4-7, 9, 12-15, 21, and 22 are rejected under 35 U.S.C. 102(a) (1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over of Sweatman et al. (US 2015/0300327 A1) (“Sweatman” herein).
(Claims contain only selected species)
Claim 1.
Sweatman discloses a subterranean energy storage system, comprising:
a geothermal reservoir with at least one fracture configured to hold a working fluid for a period of time;
at least one wellbore positioned within the geothermal reservoir fluidly coupled to the at least one fracture; [0025-0029, 0060]
at least one pump fluidly coupled to the at least one wellbore, the at least one pump configured to at least one of [0020-0022, 0054, 0056, 0070]
a) inject the working fluid into the at least one fracture of the geothermal reservoir via a tubing in the at least one wellbore [0020-0022, 0054, 0056, 0070] and
b) withdraw the working fluid from the at least one fracture of the geothermal reservoir via the tubing in the at least one wellbore, wherein the working fluid is held in the at least one fracture for the period of time between injection into the at least one fracture via the tubing and withdrawal from the at least one fracture via the tubing; [0020-0022, 0054, 0056, 0070] and
a power system fluidly coupled to the at least one wellbore, the power system configured to convert at least one of b) a fluid dynamic energy of the working fluid into an electrical current; [0020, 0093]
wherein a downhole pressure of the working fluid held in the at least one fracture for the period of time increases during the period of time. [0061-0063]
or a different interpretation of Sweatman
Sweatman discloses a subterranean energy storage system, comprising:
a geothermal reservoir with at least one fracture configured to hold a working fluid for a period of time;
at least one wellbore positioned within the geothermal reservoir fluidly coupled to the at least one fracture; [0025-0029, 0060]
at least one pump fluidly coupled to the at least one wellbore, the at least one pump configured to at least one of [0020-0022, 0054, 0056, 0070]
a) inject the working fluid into the at least one fracture of the geothermal reservoir via a tubing in the at least one wellbore [0020-0022, 0054, 0056, 0070] and
b) withdraw the working fluid from the at least one fracture of the geothermal reservoir via the tubing in the at least one wellbore, wherein the working fluid is held in the at least one fracture for the period of time between injection into the at least one fracture via the tubing and withdrawal from the at least one fracture via the tubing; [0020-0022, 0054, 0056, 0070] and
a power system fluidly coupled to the at least one wellbore, the power system configured to convert at least one of b) a fluid dynamic energy of the working fluid into an electrical current; [0020, 0093]
wherein a downhole pressure of the working fluid held in the at least one fracture for the period of time increases during the period of time. [0061-0063]
Sweatman does not explicitly disclose the terminology as recited within the claimed invention: at least one pump fluidly coupled to the at least one wellbore. However, Sweatman discloses that the injection string 112 and the production string 114 may be combined as a unitary injection/production string that extends from the surface 106 within the wellbore 108. In such an embodiment, the injection and/or production flow control devices 116, 118 may each be configured to both inject and produce working fluid to/from the corresponding production sub-zones 120a-c, depending on whether production or injection operations are being conducted [0054] which serves as one pump fluidly coupled to the at least one wellbore. Therefore, the Examiner interprets this disclosure to read on the claimed invention.
Claim 4.
Sweatman discloses the subterranean energy storage system of claim 1, wherein the period of time is greater than one hour. [0020-0022, 0035-0046]
It is elementary that the mere recitation of a newly discovered function and / or property, possessed by things in the prior art, does not cause a claim drawn to distinguish over the prior art. Additionally, where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be a characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Swinehart, 169 USPQ 226 (CCPA 1971).
Claim 5.
Sweatman discloses the subterranean energy storage system of claim 1, wherein the at least one fracture includes a plurality of fractures. [0059-0060, 0066]
Claim 6.
Sweatman discloses the subterranean energy storage system of claim 5, wherein the at least one fracture extends away from the at least one wellbore and downward towards a center of the Earth. [0059-0060, 0066]
Claim 7.
Sweatman discloses the subterranean energy storage system of claim 1, wherein the working fluid is at least one of e) a liquid. [0030-0032]
Claim 9.
Sweatman discloses the subterranean energy storage system of claim 1, wherein the power system is at least one of a) a surface turbine. [0020, 0050]
Claim 12.
Sweatman discloses the subterranean energy storage system of claim 1, wherein a downhole temperature of the geothermal reservoir is at least 300 degrees Fahrenheit or 149 degrees Celsius. [0028]
Claim 13.
Sweatman discloses the subterranean energy storage system of claim 1, wherein the at least one fracture is configured to open when the at least one pump injects the working fluid into the geothermal reservoir and to close when the working fluid is withdrawn from the geothermal reservoir. [0035-0046]
Claim 14.
Sweatman discloses the subterranean energy storage system of claim 1, further comprising a valve configured to hold the working fluid in the at least one fracture when the valve is in a closed position and to allow the working fluid to flow from the at least one fracture to the power system when the valve is in an open position. [0035-0046]
Claim 15.
Sweatman discloses the subterranean energy storage system of claim 14, wherein the working fluid is configured to flow from the at least one fracture to the power system under an influence of a geostatic pressure when the valve is in the open position. [0035-0046]
Claim 21.
Sweatman discloses the subterranean energy storage system of claim 1, wherein the geothermal reservoir is configured to hinder leak-off of the working fluid. [0052]
Claim 22.
Sweatman discloses the subterranean energy storage system of claim 1, wherein the at least one wellbore is a single wellbore. [0020-0022]
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 1, 4-5, 7, 9-10, 12, 14,15, and 22 are rejected under 35 U.S.C. 102(a) (1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Brown (US 5,685,362) ("Brown" herein – cited previously) and in further view of Sweatman et al. (US 2015/0300327 A1) (“Sweatman” herein).
(Claims contain only selected species)
Claim 1
Brown discloses a subterranean energy storage system, comprising:
a geothermal reservoir with at least one fracture configured to hold a working fluid for a period of time; (Col. 3 l. 43-64; Col. 6 I. 40-47)
at least one wellbore positioned within the geothermal reservoir fluidly coupled to the at least one fracture; (Col. 3 l. 43-64; Col. 2 l. 38-53)
at least one pump fluidly coupled to the at least one wellbore, the at least one pump configured to at least one of a) inject the working fluid into the at least one fracture of the geothermal reservoir; (Col. 4 l. 64+ & Col. 5 I. 1-15) and
a power system fluidly coupled to the at least one wellbore, the power system configured to convert at least one of b) a fluid dynamic energy of the working fluid into an electrical current; (Col. 4 l. 64+ & Col. 5 l. 1-15) wherein a downhole pressure of the working fluid held in the at least one fracture for the period of time increases during the period time. (Col. 6 l. 44-47)
Brown however does not explicitly disclose inject the working fluid into the at least one fracture of the geothermal reservoir via a tubing in the at least one wellbore and b) withdraw the working fluid from the at least one fracture of the geothermal reservoir via the tubing in the at least one wellbore.
Sweatman teaches the above limitation (See paragraphs 0020 & 0054 → Sweatman teaches this limitation in that referring to FIG. 1, illustrated is an exemplary geothermal well system 100 used to extract heat from a subterranean formation 102, according to one or more embodiments. A power plant 104 may be arranged at the surface 106 and configured to circulate a working fluid into the subterranean formation 102 and produce a heated working fluid back to the surface 106. The heated working fluid may subsequently be used as a source of thermal energy that the power plant 104 may exploit in the generation of electricity. Accordingly, the power plant 104 may be equipped with suitable heat exchangers, turbines, pumps, and/or condensers used to receive the heated working fluid, extract the thermal energy therefrom, and prepare the reconditioned working fluid for reintroduction into the subterranean formation 102. Referring now to FIG. 2, illustrated is another exemplary geothermal well system 200 used to extract heat from the subterranean formation 102, according to one or more embodiments.) for the purpose of using the heated working fluid as a source of thermal energy that the power plant 104 may exploit in the generation of electricity. [0020]
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 the method of Brown with the above limitation, as taught by Sweatman, in order to use the heated working fluid as a source of thermal energy that the power plant 104 may exploit in the generation of electricity.
Claim 4
Brown discloses the subterranean energy storage system of claim 1, wherein the period of time is greater than one hour. (Col. 6 l. 40-47)
Claim 5
Brown discloses the subterranean energy storage system of claim 1, wherein the at least one fracture includes a plurality of fractures. (Col. 2 l. 38-53)
Claim 7
Brown discloses the subterranean energy storage system of claim 1, wherein working fluid is at least one of e) a liquid. (Col. 3 l. 43-64)
Claim 9
Brown discloses the subterranean energy storage system of claim 1, wherein the power system is at least one of a) a surface turbine. (Col. 3 l. 43-64; Col. 41. 64+ & Col. 5 l. 1-15)
Claim 10
Brown discloses the subterranean energy storage system of claim 1, wherein the at least one pump is configured to inject the working fluid during an off-peak period of power consumption. (Col. 3 I. 23-32, Col. 4 l. 49-50 ) .
Claim 12
Brown discloses the subterranean energy storage system of claim 1, wherein a downhole temperature of the geothermal reservoir is at least 300 degrees Fahrenheit or 149 degrees Celsius. (Col. 7 l. 54+ & Col. 8 l. 1-11)
Claim 14
Brown discloses the subterranean energy storage system of claim 1, further comprising a valve configured to hold the working fluid in the at least one fracture when the valve is in a closed position and to allow the working fluid to flow from the at least one fracture to the power system when the valve is in an open position. (Col. 6 l. 39-50)
Claim 15
Brown discloses the subterranean energy storage system of claim 14, wherein the working fluid is configured to flow from the at least one fracture to the power system under an influence of a geostatic pressure when the valve is in the open position. (Col. 6 I. 39-50)
Claim 22.
Brown discloses the subterranean energy storage system of claim 1. Brown however does not explicitly disclose, wherein the at least one wellbore is a single wellbore. (Same as claim 1)
Claims 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Brown, Sweatman, as applied to claim 1 and in further view of Al-Dosary et al. (US 2017/0183963 A1) (Al-Dosary" herein – cited previously)
Claim 3
Brown discloses the subterranean energy storage system of claim 1. Brown however does not explicitly disclose, wherein a permeability of the geothermal reservoir is between 10 to 10 darcies.
Al-Dosary teaches the above limitation (See paragraphs 0056, 0062, and 0135 → Al-Dosary teaches this limitation in that the permeability of caprock capable of retaining fluids through geologic time may be of the order of about 10.sup.-6 to about 10.sup.-8 D (darcies). As an example, a stimulation treatment may include pumping fluid into a formation via a wellbore at pressure and rate sufficient to cause a fracture to open. Such a fracture may be vertical and include wings that extend away from the wellbore, for example, in opposing directions according to natural stresses within the formation. FIG. 12 shows an example of a scenario 1200 that is illustrated via a graphic of a bore within a formation 1210 and a plot 1220 of temperature data versus a spatial dimension (e.g., depth). As shown, a DTS may be acquired for at least a portion of the bore, which, as shown in the plot 1220, may span over a thousand feet (e.g., over approximately 300 meters). In the plot 1220, a baseline temperature profile characterizes the geothermal effect of the formation while additional temperature profiles 1232, 1234 and 1236 provide information as to injection and warm-back. As indicated, the temperature profiles 1232, 1234 and 1236 include deviations 1242, 1244 and 1246 toward lower temperatures that correspond to regions of the formation that have taken up more injection fluid.) for the purpose of or creating new, artificial fractures, to stimulate existing natural fractures (e.g., reactivate calcite-sealed natural fractures), etc. (see, e.g., the one or more fractures 129 in the geologic environment 120 of FIG. 1). [0060]
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 Brown with the above limitation, as taught by Al-Dosary, in order to create new, artificial fractures, to stimulate existing natural fractures (e.g., reactivate calcite-sealed natural fractures), etc. (see, e.g., the one or more fractures 129 in the geologic environment 120 of FIG. 1). [0060] .
Claim 6
Brown discloses the subterranean energy storage system of claim 5. Brown however does not explicitly disclose, wherein the at least one fracture extends away from the at least one wellbore and downward towards a center of the Earth. (Same as claim 3)
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Sweatman, as applied to claim 1 and in further view of Al-Dosary et al. (US 2017/0183963 A1) (Al-Dosary" herein – cited previously)
Claim 3
Sweatman discloses the subterranean energy storage system of claim 1. Sweatman however does not explicitly disclose, wherein a permeability of the geothermal reservoir is between 10 to 10 darcies.
Al-Dosary teaches the above limitation (See paragraphs 0056, 0062, and 0135 → Al-Dosary teaches this limitation in that the permeability of caprock capable of retaining fluids through geologic time may be of the order of about 10.sup.-6 to about 10.sup.-8 D (darcies). As an example, a stimulation treatment may include pumping fluid into a formation via a wellbore at pressure and rate sufficient to cause a fracture to open. Such a fracture may be vertical and include wings that extend away from the wellbore, for example, in opposing directions according to natural stresses within the formation. FIG. 12 shows an example of a scenario 1200 that is illustrated via a graphic of a bore within a formation 1210 and a plot 1220 of temperature data versus a spatial dimension (e.g., depth). As shown, a DTS may be acquired for at least a portion of the bore, which, as shown in the plot 1220, may span over a thousand feet (e.g., over approximately 300 meters). In the plot 1220, a baseline temperature profile characterizes the geothermal effect of the formation while additional temperature profiles 1232, 1234 and 1236 provide information as to injection and warm-back. As indicated, the temperature profiles 1232, 1234 and 1236 include deviations 1242, 1244 and 1246 toward lower temperatures that correspond to regions of the formation that have taken up more injection fluid.) for the purpose of or creating new, artificial fractures, to stimulate existing natural fractures (e.g., reactivate calcite-sealed natural fractures), etc. (see, e.g., the one or more fractures 129 in the geologic environment 120 of FIG. 1). [0060]
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 Sweatman with the above limitation, as taught by Al-Dosary, in order to create new, artificial fractures, to stimulate existing natural fractures (e.g., reactivate calcite-sealed natural fractures), etc. (see, e.g., the one or more fractures 129 in the geologic environment 120 of FIG. 1). [0060] .
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Sweatman in further view of Brow.
Claim 10
Sweatman discloses the subterranean energy storage system of claim 1. Sweatman however does not explicitly disclose, wherein the at least one pump is configured to inject the working fluid during an off-peak period of power consumption.
Brown teaches the above limitation . ( See Col. 3 I. 23-32 , Col. 4 l. 49-50→ Brown teaches this limitation in that The present invention provides a method for meeting peak power demands in a HDP, power generating plant. Thus, the invention effectuates use of an HDR power generation system for electric load following. This application may also be termed on-demand power peaking. Peaking power from an HDR system will be cheaper to generate than peaking power from other sources, yet can be sold at the same price as peaking power generated by other means, such as a gas turbine. Use of an HDR system in a periodic mode rather than just to provide baseload power will reduce the total cost of operation of an HDR system. The incremental cost of equipment to operate in peaking mode is expected to be modest. Thus, water can be pumped into an HDR reservoir, stored, and withdrawn when it is needed.) for the purpose of reducing the total cost of operation of an HDR system. (Col. 3 l. 31-32)
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 the method of Sweatman, with the above limitation, as taught by Brown, in order to reduce operation cost.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Brow in further view of Sweatman.
Claim 13
Brown discloses the subterranean energy storage system of claim 1, wherein the at least one fracture is configured to open when the at least one pump injects the working fluid into the geothermal reservoir (Col. 21. 40-51). Brown does not explicitly disclose close when the working fluid is withdrawn from the geothermal reservoir.
It is well-known in the art of geothermal/ oil & gas production that once that if there is a holding material such as proppant / working fluid or any material that Is keeping the fracture open is removed and / or withdrawn, the fracture could close because there is nothing keeping the fracture prop open any longer.
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 SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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, 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 05/11/2026
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