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 .
This action is in response to the communication filed 9/8/2026.
No prior art is being applied to Claim 1, because the prior art does not disclose or make obvious wherein the arm portion comprises: a first hole formed through an outer wall of the arm portion; a second hole formed through the outer wall, wherein the second hole is aligned with the first hole along an axial direction of the arm portion; and a measurement system, comprising: a first electrode coupled to an inner surface of the outer wall of the arm portion, wherein the first electrode comprises a conductive surface; a first bracket coupled to the inner surface; and a second electrode coupled to a coupling portion of the first bracket, wherein the second electrode is: disposed radially inward from the conductive surface along a radial direction of the arm portion; and at least partially disposed within a projection of an outer perimeter of the conductive surface, wherein the projected extends along the radial direction” as is currently claimed, in the combination, and as best understood.
No prior art is being applied to Claim 12, because the prior art does not disclose or make obvious wherein the arm portion comprises: a first hole formed through an outer wall of the arm portion; a second hole formed through the outer wall, wherein the second hole is aligned with the first hole along an axial direction of the arm portion; and a measurement system, comprising: a first electrode coupled to an inner surface of the arm portion, wherein the first electrode comprises a conductive surface; a bracket coupled to the inner surface; and a second electrode coupled to a coupling portion of the first bracket, wherein the second electrode, when coupled to the bracket, is: disposed radially inward from the conductive surface along a radial direction of the arm portion; and at least partially disposed within a projection of an outer perimeter of the conductive surface, wherein the projected extends along the radial direction” as is currently claimed, in the combination, and as best understood.
No prior art is being applied to Claim 23, because the prior art does not disclose or make obvious wherein the arm portion comprises: a first hole formed through an outer wall of the arm portion; a second hole formed through the outer wall, wherein the second hole is aligned with the first hole along an axial direction of the arm portion; and a downhole measurement kit, comprising at least one of: a transmitter electrode configured to output a signal into a fluid disposed in the wellbore to measure one or more property of the fluid; or a receiving electrode configured to receive the signal” as is currently claimed, in the combination, and as best understood.
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
However, with regard to the arguments for support for the new claim features of claims 1, 12, and 23, as well as new claims 21-24 on pages 12-13, the Examiner respectfully disagrees.
As to Claims 1, 12, and 23,
Applicant is now claiming the phrase “wherein the first and second holes are at least partially aligned with the first and second electrodes along the axial direction of the arm portion to facilitate flow of a fluid disposed in the wellbore through the first and second holes and through a gap defined by the first and second electrodes” in the last paragraph. However, the original disclosure does not state that the first and second holes are “at least partially aligned with the first and second electrodes along the axial direction of the arm portion” as claimed. Nowhere in the original disclosure is the alignment of the holes and electrodes discussed.
The Examiner acknowledges the figures and that the disclosure states that the first and second electrodes may or may not aligned with each other, but the original disclosure does not reference such alignment to the holes, nor does it reasonably clarify what such a misalignment would include or how it relates to the holes.
Furthermore, the scope of reciting “at least partially aligned” is broader than what was originally disclosed. Even to the extent that the holes were disclosed to be aligned, claiming at least partially aligned includes scope not originally disclosed, as being aligned does not include anything broader. While the electrodes may not be aligned, the new claim scope is broader than what was originally disclosed, because it now includes combinations of various alignments of just the first electrode relative to the holes, just the second electrode relative to the holes, or both the first and second electrodes relative to the holes, and would include any and all orientations of the electrodes relative to the holes. This is because a partial alignment would reasonably include all possible “non-aligned” possibilities. However, such claim scope was not reasonably originally contemplated or disclosed. This phrase therefore introduces new matter.
Additionally, applicant did previously claim a “kit” in Claim 19, but such a kit was interpreted to be merely a collection of parts that can be used together. For example, the definition of a “kit” is “a set of parts to be assembled or worked up” per https://www.merriam-webster.com/dictionary/kit. While other definitions exist, all definitions center around a common concept, which is that a kit is a collection of articles in some fashion that either can be assembled together, like in the case of a model-airplane kit, or are otherwise related for a common purpose, such as a travel or first aid kit. However, in no instance is a kit considered to be a fully built and completed device. For example, nobody would reasonably consider a fully built computer or automobile to be a “kit.”
Applicant previously merely claimed a collection of components that made up the downhole measurement assembly as part of the kit, such as “a first electrode configured to couple,” “a bracket configured to couple,” “a second electrode configure to couple,” and then recited how the components would related to a conductive source “when” coupled to the inner surface.”
Such a recitation is not a completed device, and applicant does not clearly redefine the term “kit” in the disclosure. Not that merely recited an example is not a clear redefining of the term, and even then, the cited example does not reasonably show any intent to use the “kit” beyond a collection of related parts that can be assembled.
This issue is raised, because applicant is now claiming a downhole measurement assembly “kit” as part of what the arm portion comprises, and thus is reasonably now claiming an already assembled device. Applicant does not reasonably originally disclose the “kit” as part of the arm portion as claimed, does not originally disclose the kit as an assembled device, and it is now unclear how such a “kit” should be interpreted.
The Examiner acknowledges that applicant may not have intended the term “kit” to be given the above noted meaning, and may have meant to equate the term “kit” with “device,” but that the only reasonable meaning for the term kit is the dictionary definition, as the disclosure provides no clear redefinition of such a term.
That stated, none of the cited sections describe a kit as something that is part of the arm portion as claimed, or any clear redefinition of the term “kit” to be one that is an actual completed device. A person of ordinary skill in the art would not reasonably identify the disclosed kit as part of a completed device, nor one that is integrated with or art of the arm portion as now claimed.
As such, Claims 23 and 24 introduce new matter and are indefinite, as it is unclear how the term “kit” should be interpreted.
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 1-5, 8-18, and 21-24 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.
As to Claims 1, 12, and 23,
The phrase “wherein the first and second holes are at least partially aligned with the first and second electrodes along the axial direction of the arm portion to facilitate flow of a fluid disposed in the wellbore through the first and second holes and through a gap defined by the first and second electrodes” in the last paragraph introduces new matter.
The Examiner acknowledges the figures and that the disclosure states that the first and second electrodes may or may not aligned with each other, but the original disclosure does not reference such alignment to the holes, nor does it reasonably clarify what such a misalignment would include or how it relates to the holes.
Furthermore, the scope of reciting “at least partially aligned” is broader than what was originally disclosed. Even to the extent that the holes were disclosed to be aligned, claiming at least partially aligned includes scope not originally disclosed, as being aligned does not include anything broader. While the electrodes may not be aligned, the new claim scope is broader than what was originally disclosed, because it now includes combinations of various alignments of just the first electrode relative to the holes, just the second electrode relative to the holes, or both the first and second electrodes relative to the holes, and would include any and all orientations of the electrodes relative to the holes. This is because a partial alignment would reasonably include all possible “non-aligned” possibilities. However, such claim scope was not reasonably originally contemplated or disclosed. This phrase therefore introduces new matter.
As to Claims 1 and 12,
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The phrase “wherein the second electrode is: disposed radially inward from the conductive surface along a radial direction of the arm portion; and at least partially disposed within a projection of an outer perimeter of the conductive surface, wherein the projected extends along the radial direction, wherein the first and second holes are at least partially aligned with the first and second electrodes along the axial direction of the arm portion to facilitate flow of a fluid disposed in the wellbore through the first and second holes and through a gap defined by the first and second electrodes” on lines 13 to 19 of Claim 1, and the similar phrase on lines 12 to 19 of Claim 12 introduces new matter.
The Examiner acknowledges that Figure 5 discloses one aspect of the relationship between the first electrode and second electrode, but the Examiner respectfully notes that this figure is respectfully inconsistent with Figure 4. Figure 4, a marked-up version provided above, shoes a hole in the arm, the first electrode placed on the inner bottom surface of the hole, and a second electrode connected to a bracket laterally spaced from the first electrode. The lateral spacing is not reasonably towards any inner or outer radius of the arm, and instead merely extends in a direction that is, as best understood, perpendicular to the longitudinal axis 110 of the arm. Figure 5 does not show the hole, and if the first and second electrodes existed as seen in Figure 5, then the hole would need to be placed in the manner shown above to be consistent with Figure 4. While Figure 5, and any other similar figure, shows a relationship between the electrodes, Figure 4 shows a different relationship. Because both figures are intended to show the same feature, with respect to Figure 4, this feature introduces new matter as this figure does not reasonably support the placement and positioning of the electrodes as claimed.
As to Claim 23,
The phrase “wherein the arm portion comprises: a first hole formed through an outer wall of the arm portion; a second hole formed through the outer wall, wherein the second hole is aligned with the first hole along an axial direction of the arm portion; and a downhole measurement assembly kit, comprising at least one of: a transmitter electrode configured to output a signal into a fluid disposed in the wellbore to measure one or more properties of the fluid; or a receiver electrode configured to receive the signal” on lines 4-12 introduces new matter.
1) As explained in the response to arguments above, the definition of a “kit” is “a set of parts to be assembled or worked up” per https://www.merriam-webster.com/dictionary/kit. While other definitions exist, all definitions center around a common concept, which is that a kit is a collection of articles in some fashion that either can be assembled together, like in the case of a model-airplane kit, or are otherwise related for a common purpose, such as a travel or first aid kit. However, in no instance is a kit considered to be a fully built and completed device. For example, nobody would reasonably consider a fully built computer or automobile to be a “kit.”
Applicant previously merely claimed a collection of components that made up the downhole measurement assembly as part of the kit, such as “a first electrode configured to couple,” “a bracket configured to couple,” “a second electrode configure to couple,” and then recited how the components would related to a conductive source “when” coupled to the inner surface.”
Such a recitation is not a completed device, and applicant does not clearly redefine the term “kit” in the disclosure. Not that merely recited an example is not a clear redefining of the term, and even then, the cited example does not reasonably show any intent to use the “kit” beyond a collection of related parts that can be assembled.
This issue is raised, because applicant is now claiming a downhole measurement assembly “kit” as part of what the arm portion comprises, and thus is reasonably now claiming an already assembled device. Applicant does not reasonably originally disclose the “kit” as part of the arm portion as claimed and does not originally disclose the kit as an assembled device.
A person of ordinary skill in the art would not reasonably identify the disclosed kit as part of a completed device, nor one that is integrated with or art of the arm portion as now claimed. Instead, such a person would have reasonably interpreted the originally disclosed kit to be what a kit is normally considered to be, which again is a collection of either related parts for a common purpose like a first aid kit, or a collection of parts ready to be assembly like in a kit for building a model airplane. This phrase therefore introduces new matter, because a person of ordinary skill in the art would not recognize support in the original disclosure for this claim phrase.
2) The second issue is that applicant is claiming “: a transmitter electrode configured to output a signal into a fluid disposed in the wellbore to measure one or more properties of the fluid,” but where such a feature introduces new matter. Applicant does not originally disclose a transmitter electrode configured to measure one or more properties of the fluid. The transmitter electrode does not have such a capability, in light of the disclosure. Instead, it is the receiver electrode that was originally disclosed to detect any signal. Whether an intended use or functional limitation, reciting that the transmitter electrode is configured to measure or has the intended use to measure one or more properties of the fluid introduces new matter, as the disclosure does not reasonably disclose such a feature.
As to Claims 2-5, 8-11, 13-18, 21, 22, and 24,
These claims stand rejected for incorporating and reciting the above rejected subject matter for their respective parent claim(s) and therefore stand rejected for the same reasons.
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 1-5, 8-18, and 21-24 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.
As to Claims 1, 12, and 23,
The phrase “wherein the first and second holes are at least partially aligned with the first and second electrodes along the axial direction of the arm portion to facilitate flow of a fluid disposed in the wellbore through the first and second holes and through a gap defined by the first and second electrodes” in the last paragraph is indefinite.
1) The Examiner acknowledges the figures and that the disclosure states that the first and second electrodes may or may not aligned with each other, but the original disclosure does not reference such alignment to the holes, nor does it reasonably clarify what such a misalignment would include or how it relates to the holes.
Furthermore, the scope of reciting “at least partially aligned” is broader than what was originally disclosed. Even to the extent that the holes were disclosed to be aligned, claiming at least partially aligned includes scope not originally disclosed, as being aligned does not include anything broader. While the electrodes may not be aligned, the new claim scope is broader than what was originally disclosed, because it now includes combinations of various alignments of just the first electrode relative to the holes, just the second electrode relative to the holes, or both the first and second electrodes relative to the holes, and would include any and all orientations of the electrodes relative to the holes. This is because a partial alignment would reasonably include all possible “non-aligned” possibilities.
In light of the above, the scope of this claim is indefinite, because it is unclear what applicant intends by reciting that the first and second holes are at least partially aligned with the first and second electrodes along the axial direction of the arm portion. It is unclear to what degree this at least partial aligned does and does not include, causing the metes and bounds to be unclear. A person of ordinary skill in the art would not reasonably recognize what applicant means by reciting that the holes are at least partially aligned with the electrodes as claimed, because such a person would not understand, in light of the disclosure, whether this scope includes the holes being partially aligned with just one electrode, and if so which one, or both electrodes, and such a person would not understand to what degree the at least partial alignment does and does not include. This phrase is therefore indefinite, because of this, and because the metes and bounds are unclear.
2) The second issue is that applicant introduces the above “gap” as part of the intended use of the holes, thus making it unclear whether such a gap is or is not required in the claim. It is unclear if the electrodes must be spaced apart from each other by a gap, or if applicant is merely reciting that the holes would facilitate the flow of a fluid should such a gap exists. There is a difference between positively reciting the gap, and then describing its intended use as it pertains to the flow of fluid, in contrast with introducing it in an intended use phrase which itself is not a positive recitation of that actual use.
The phrase “wherein the arm portion comprises: a first hole formed through an outer wall of the arm portion; a second hole formed through the outer wall, wherein the second hole is aligned with the first hole along an axial direction of the arm portion; and a measurement system, comprising: a first electrode coupled to an inner surface of the outer wall of the arm portion, wherein the first electrode comprises a conductive surface; a first bracket coupled to the inner surface; and a second electrode coupled to a coupling portion of the first bracket, wherein the second electrode is: disposed radially inward from the conductive surface along a radial direction of the arm portion; and at least partially disposed within a projection of an outer perimeter of the conductive surface, wherein the projected extends along the radial direction, wherein the first and second holes are at least partially aligned with the first and second electrodes along the axial direction of the arm portion to facilitate flow of a fluid disposed in the wellbore through the first and second holes and through a gap defined by the first and second electrodes” on lines 4 to the end of Claim 1, and the similar phrase on lines 2 to the end of Claim 12 and lines 3 to the end of Claim 23 is indefinite.
At issue here is that applicant is distinctly reciting the first and second holes from the electrodes, bracket, and features they are coupled to, but where these features are not distinct. The Examiner acknowledges that the holes and electrodes are their own elements, but the issue here is that by claiming both but distinctly reciting these features and the elements the electrodes couple to, it is unclear whether the electrodes are or are not located in the holes, in light of the disclosure.
In Claim 1, for example, applicant goes beyond merely reciting aspects of the invention, as applicant claims that the first electrode is coupled to “an inner surface of the outer of the outer wall of the arm portion.” This feature is completely distinctly recited from either hole, but where, in light of the disclosure, it is not distinct. The above inner surface as claimed is actually an inner surface of one of the holes. As such, this inner surface is a constituent part of a hole, and thus cannot reasonably be recited distinctly from the hole. The inner surface is the bottom surface of the hole. The same issue exists with the inner surface that the bracket is coupled to, and thus also pertains to the second electrode. All elements are positioned relative to each other, and where these elements are all coupled to the inner surface. By reciting this inner surface distinctly from the holes, the claim scope includes this inner surface to be located separately from the holes, but where, in light of the disclosure, it is not separately located. As such, this phrase is indefinite, because the relationship between the holes and the inner surface, and thus, between the holes and the electrodes and bracket are unclear. Claim 12 recites similar language, and thus contains the same issue. Claim 23 does not recite an inner surface; however, because the electrodes are in the claim, they must be located somewhere, and thus whether recited or not, the inner surface must be present in this claim as the electrodes must be attached to a surface. This claim therefore reasonably recites the same issue.
The phrase “wherein the second electrode is: disposed radially inward from the conductive surface along a radial direction of the arm portion; and at least partially disposed within a projection of an outer perimeter of the conductive surface, wherein the projected extends along the radial direction, wherein the first and second holes are at least partially aligned with the first and second electrodes along the axial direction of the arm portion to facilitate flow of a fluid disposed in the wellbore through the first and second holes and through a gap defined by the first and second electrodes” on lines 13 to 19 of Claim 1, and the similar phrase on lines 12 to 19 of Claim 12 is indefinite.
The Examiner acknowledges that Figure 5 discloses one aspect of the relationship between the first electrode and second electrode, but the Examiner respectfully notes that this figure is respectfully inconsistent with Figure 4. Figure 4, a marked-up version provided above, shoes a hole in the arm, the first electrode placed on the inner bottom surface of the hole, and a second electrode connected to a bracket laterally spaced from the first electrode. The lateral spacing is not reasonably towards any inner or outer radius of the arm, and instead merely extends in a direction that is, as best understood, perpendicular to the longitudinal axis 110 of the arm. Figure 5 does not show the hole, and if the first and second electrodes existed as seen in Figure 5, then the hole would need to be placed in the manner shown above to be consistent with Figure 4. While Figure 5, and any other similar figure, shows a relationship between the electrodes, Figure 4 shows a different relationship. Because both figures are intended to show the same feature, but these figures, as best understood, show different positions and orientations of the respective electrodes, hole, and arm.
As such, in light of the above, it is unclear how the above claim feature should be interpreted, because it is unclear how the electrodes, arm, hole, and inner surface as claimed are positioned and oriented with respect to each other.
As to Claim 23,
The phrase “wherein the arm portion comprises: a first hole formed through an outer wall of the arm portion; a second hole formed through the outer wall, wherein the second hole is aligned with the first hole along an axial direction of the arm portion; and a downhole measurement assembly kit, comprising at least one of: a transmitter electrode configured to output a signal into a fluid disposed in the wellbore to measure one or more properties of the fluid; or a receiver electrode configured to receive the signal” on lines 4-12 is indefinite.
As explained in the response to arguments above, the definition of a “kit” is “a set of parts to be assembled or worked up” per https://www.merriam-webster.com/dictionary/kit. While other definitions exist, all definitions center around a common concept, which is that a kit is a collection of articles in some fashion that either can be assembled together, like in the case of a model-airplane kit, or are otherwise related for a common purpose, such as a travel or first aid kit. However, in no instance is a kit considered to be a fully built and completed device. For example, nobody would reasonably consider a fully built computer or automobile to be a “kit.”
Applicant previously merely claimed a collection of components that made up the downhole measurement assembly as part of the kit, such as “a first electrode configured to couple,” “a bracket configured to couple,” “a second electrode configure to couple,” and then recited how the components would related to a conductive source “when” coupled to the inner surface.”
Such a recitation is not a completed device, and applicant does not clearly redefine the term “kit” in the disclosure. Not that merely recited an example is not a clear redefining of the term, and even then, the cited example does not reasonably show any intent to use the “kit” beyond a collection of related parts that can be assembled.
This issue is raised, because applicant is now claiming a downhole measurement assembly “kit” as part of what the arm portion comprises, and thus is reasonably now claiming an already assembled device. Applicant does not reasonably originally disclose the “kit” as part of the arm portion as claimed and does not originally disclose the kit as an assembled device.
A person of ordinary skill in the art would not reasonably identify the disclosed kit as part of a completed device, nor one that is integrated with or art of the arm portion as now claimed. Instead, such a person would have reasonably interpreted the originally disclosed kit to be what a kit is normally considered to be, which again is a collection of either related parts for a common purpose like a first aid kit, or a collection of parts ready to be assembly like in a kit for building a model airplane.
As such, a person of ordinary skill in the art would not reasonably understand what applicant means by a “kit” in light of the disclosure, because no completed device or already assembly device would reasonable be considered to still be a kit. This phrase is therefore indefinite.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “kit” in claim 23 is used by the claim to mean “device,” while the accepted meaning is “a set of parts to be assembled or worked up” per https://www.merriam-webster.com/dictionary/kit. The term is indefinite because the specification does not clearly redefine the term.
For the purpose of compact prosecution, the Examiner is interpreting the term “kit” to be an assembled device that is part of the arm portion.
As to Claims 2-5, 8-11, 13-18, 21, 22, and 24,
These claims stand rejected for incorporating and reciting the above rejected subject matter for their respective parent claim(s) and therefore stand rejected for the same reasons.
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 DAVID M. SCHINDLER whose telephone number is (571)272-2112. The examiner can normally be reached 8am-4:30pm.
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, Lee Rodak can be reached at 571-270-5628. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID M. SCHINDLER
Primary Examiner
Art Unit 2858
/DAVID M SCHINDLER/Primary Examiner, Art Unit 2858
Prosecution Insights