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 .
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 1-20 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 and 12,
The phrase “the second electrode and the portion of the first bracket are: offset from a conductive surface of the first electrode; and at least partially disposed within an outer perimeter of the conductive surface” on lines 6-10 of Claim1 and the similar phrase on lines 4-7 of Claim 12 are indefinite.
Applicant initially expressly claims that the second electrode and the first bracket are “offset” from a conductive surface of the first electrode, but then claims that these same features are disposed within an outer perimeter of the surface. An object cannot be offset, and thus spaced from a surface and also be within the surface. The surface defines a perimeter, which his the length and width sides of a shape such as a rectangle. Only those objects within the rectangle are within its perimeter. Any object spaced from the rectangle is not reasonably within its perimeter.
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As seen above, the second electrode is completely spaced from the conductive surface, and at no point is ever within a perimeter of the conductive surface. While applicant may intend this phrase to mean that second electrode and bracket portion are within a projection of the conductive surface, this is not claimed. This phrase is therefore indefinite, because in light of the disclosure, a person of ordinary skill in the art would not reasonably recognize the metes and bounds and scope of this claim feature. For the purpose of compact prosecution, the Examiner is interpreting this phrase to mean that any “projection” in any direction of the surface, such that an object near but offset from the surface, would meet the claim feature.
As to Claim 10,
The phrase “the first bracket comprises: first and second curved portions; and the portion, wherein the portion is coupled to the first and second curved portions and disposed between the first and second curved portions” on lines 1-4 is indefinite.
Applicant is claiming “the portion” in the above phrase, but applicant previously recites first curved portions, second curved portions, and an arm portion (Claim 1). Reciting “the portion” can reasonably refer to any one of these previously recited portions, rendering the claim indefinite as it is unclear which portion this phrase is referencing. For the purpose of compact prosecution, the Examiner is interpreting the portion to be the arm portion from Claim 1.
As to Claim 19,
The phrase “a downhole measurement assembly kit, comprising at least one of: a first electrode configured to couple to an inner surface of an arm portion of a tool string; a bracket configured to couple to the inner surface; and a second electrode configured to couple to a portion of the bracket, wherein the second electrode and the portion of the bracket, when coupled to the inner surface, are: offset from a conductive surface of the first electrode; and at least partially disposed within an outer perimeter of the conductive surface” on lines 2 to the end is indefinite.
1) The first issue is that applicant claims that the above kit comprises “at least one of” followed by three features of a first electrode, a bracket, and a second electrode. However, the recitation of “a second electrode configured to couple to a portion of the bracket” makes it unclear whether the bracket is or is not positively recited in the claim. This third option as part of the kit is expressly referring back to another kit element that was not positively recited, as the bracket is not required in the claim. This phrase is therefore indefinite, because it is unclear whether the bracket is or is not required in the claim. For the purpose of compact prosecution, the Examiner is interpreting that the bracket is not required in the claim.
2) Applicant initially expressly claims that the second electrode and the bracket are “offset” from a conductive surface of the first electrode, but then claims that these same features are disposed within an outer perimeter of the surface. An object cannot be offset, and thus spaced from a surface and also be within the surface. The surface defines a perimeter, which is the length and width sides of a shape such as a rectangle. Only those objects within the rectangle are within its perimeter. Any object spaced from the rectangle is not reasonably within its perimeter.
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As seen above, the second electrode is completely spaced from the conductive surface, and at no point is ever within a perimeter of the conductive surface. While applicant may intend this phrase to mean that second electrode and bracket portion are within a projection of the conductive surface, this is not claimed. This phrase is therefore indefinite, because in light of the disclosure, a person of ordinary skill in the art would not reasonably recognize the metes and bounds and scope of this claim feature. For the purpose of compact prosecution, the Examiner is interpreting this phrase to mean that any “projection” in any direction of the surface, such that an object near but offset from the surface, would meet the claim feature.
As to Claims 2-11, 13-18, and 20,
These claims stand rejected for incorporating and reciting the above rejected subject matter of their respective parent claim(s) and therefore stand rejected for the same reasons.
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 1-3 and 11-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guner et al. (Guner) (US 2021/0140301).
As to Claims 1 and 12,
Guner discloses A system, comprising: an arm portion of a tool string configured to be lowered into a wellbore (see above figure); and a measurement system (see above figure), comprising: a first electrode (204 or top 130 (e.g. for Claim 2) or 128 (e.g. for Claim 3)) coupled to an inner surface of the arm portion (Figures 2,12); a first bracket coupled to the inner surface (see above figure / note that everything in the above figure is “coupled” to each other); and a second electrode (128 (e.g. for Claim 2) or bottom 130 (e.g. for Claim 3)) coupled to a portion of the first bracket (see above figure and note that everything in the figure is coupled together), wherein the second electrode and the portion of the first bracket are: offset from a conductive surface of the first electrode (see above figure); and at least partially disposed within an outer perimeter of the conductive surface (see above figure / note that the surface can be projected in a direction that includes a portion second electrode and bracket), (Paragraphs [0032],[0037]-[0039],[0070]).
(Note with regard to Claim 12 that while Guner discloses the claim features as explained above, applicant expressly states that the last two claim features on the last two lines of the claim are conditional features that are only required “when coupled to the inner surface.” As such, the prior art is not required to meet these limitations when this condition is not invoked, and therefore meets the prior art when the second electrode and bracket are not coupled to the inner surface, such as prior to assembly.)
As to Claims 2 and 13,
Guner discloses the second electrode is a transmitter electrode configured to output a signal and the first electrode is a receiver electrode configured to detect the signal (Paragraphs [0032],[0033])
As to Claim 3,
Guner discloses the first electrode is a transmitter electrode configured to output a signal and the second electrode is a receiver electrode configured to detect the signal (Paragraphs [0032],[0033]).
As to Claim 11,
Guner discloses a second bracket (top 206), wherein the first bracket is coupled to the inner surface at a first position (Figures 2,12 / note that everything in the figure is coupled to each other), the second bracket is coupled to the inner surface at a second position (Figures 2,12 / note that everything in the figure is coupled to each other), the first and second positions are offset from the first electrode (Figures 2,12 / note the first and second brackets are physically separated and thus at first and second positions that are coupled to the first electrode and physically offset from it), and the second electrode is coupled to the first and second brackets (Figures 2,12 / note that everything in the figure is coupled to each other).
As to Claim 14,
Guner discloses an operating frequency of the first electrode, the second electrode, or a combination thereof is between 20 kilohertz and 10 megahertz (Paragraphs [0062],[0065]).
As to Claim 15,
Guner discloses an insulator film is disposed on a first front face of the first electrode, a housing of the second electrode, or a combination thereof (Paragraph [0042] / an insulating material, which is reasonably a film, insulates and is on the first electrode, and thus on the first front face of the electrode).
As to Claim 16,
Guner discloses the first electrode is electrically coupled to receiver circuitry via a first wire and the second electrode is separately electrically coupled to transmitter circuitry via a second wire (Paragraphs [0033],[0071] / note the circuitry cited must be present in order to transmit and receive signals from the electrodes, and that different wires must be present for each electrode that are distinct from each other, otherwise the transmitted and received signals or different signals to each individual electrode would interfere with each other).
As to Claim 17,
Guner discloses a first length of the first wire, a second length of the second wire, or a combination thereof is greater than 50 centimeters, and the first wire is a shielded wire configured to couple to an amplifier (Paragraph [0071] / note that the wiring must be greater than 50 centimeters to connect to the surface).
As to Claim 18,
Guner discloses a controller (note information handing system and central control unit) having a memory and a processor, wherein the controller is configured to: receive a signal from the first electrode indicative of a capacitance (e.g. formation capacitance), a dielectric permittivity, a conductivity, or a combination thereof of a fluid disposed between the first and second electrodes; and determine an estimated capacitance (mud capacitance) of the fluid based on the received signal (Paragraphs [0027],[0064],[0057],[0062])).
As to Claim 19,
Guner discloses A system, comprising: a downhole measurement assembly kit, comprising at least one of: a first electrode (204 or top 130 or 128) configured to couple to an inner surface of an arm portion of a tool string; a bracket (see above figure / note that everything in the above figure is “coupled” to each other) configured to couple to the inner surface (Figures 2,12) ; and a second electrode (128 or bottom 130) configured to couple to a portion of the bracket, wherein the second electrode and the portion of the bracket, when coupled to the inner surface, are: offset from a conductive surface of the first electrode (see above figure); and at least partially disposed within an outer perimeter of the conductive surface (see above figure / note that the surface can be projected in a direction that includes a portion second electrode and bracket), (Paragraphs [0032],[0037]-[0039],[0070]).
(Note that while Guner discloses the claim features as explained above, applicant expressly states that the last two claim features on the last two lines of the claim are conditional features that are only required “when coupled to the inner surface.” The Examiner further notes that nothing beyond the first electrode configured to couple to an inner surface of an arm portion of a tool string is required in the claim, as the claim only requires “at least one of” the first electrode, second electrode, and bracket, and this the second electrode and bracket, along with any associated claim feature, are not required in the claim. As such, the prior art is not required to meet these limitations when this condition is not invoked or when just the first electrode is asserted to be disclosed by the prior art, and therefore meets the prior art when the second electrode and bracket are not coupled to the inner surface, such as prior to assembly.)
As to Claim 20,
Guner discloses the first electrode is a receiver electrode and the second electrode is a transmitter electrode (Paragraph [0037] / note the first electrode as element 204 can be used as a sensor, and the second electrode is not required in the claim).
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.
Claims 4-10 are rejected under 35 U.S.C. 103 as being unpatentable over Guner et al. (Guner) (US 2021/0140301) in view of SMITH et al. (SMITH) (US 2021/0396698).
As to Claim 4,
Guner discloses the first electrode comprises a plate (Figures 2, 6, 12),(Paragraph [0058]), the plate comprises the conductive surface (Figures 2, 6, and 12), and the second electrode comprises: a housing comprising an insulation material (Paragraph [0042] / note insulating material / note the second electrode can be said to also include surrounding insulating material), the second electrode’s conductive material disposed inside the housing (Figures 2, 6, 12), (Paragraph [0042]).
Guner does not disclose the second electrode includes a rod comprising a conductive material, wherein the rod is disposed inside the housing.
SMITH discloses that it is know to use difference shapes for an electrode such as a rod, plate, or other shape, and discloses the second electrode includes a rod comprising a conductive material (Paragraph [0283]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify Guner to include the second electrode includes a rod comprising a conductive material, wherein the rod is disposed inside the housing given the above disclosure and teaching of SMITH in order to advantageously be able to generate electric fields in more then two directions and therefore be able to detect more information about the surrounding environment and fluid than just a rectangular or circular shaped electrode, and in order to use an art recognize equivalent device as evidenced by SMITH in order to make the electrode more compact but still be able to generate the desired electric field or receive the desired electric field in more than one direction (see MPEP 2144.06).
As to Claim 5,
Guner discloses a first longitudinal central axis of the first electrode is parallel with a second longitudinal central axis of the second electrode (Figures 2, 6, 12), and a plane intersecting both the first and second longitudinal central axes is orthogonal to the conductive surface (Figures 2, 6, 12 / note a plane can be drawn that extends perpendicular into the pad that would meet this claim feature).
As to Claim 6,
Guner in view of SMITH does not disclose a ratio between a diameter of the second electrode and a width of the first electrode is between 1:4 and 3:5 (Figures 2,12 / note the diameter of 130 relative to the width direction of 128 when defined in the direction that the array extends is reasonably within this range).
As to Claim 7,
Guner discloses a ratio between a distance spanning from the first electrode to the second electrode and the diameter of the second electrode is between 1:7 and 4:5 (Figures 2, 12 / note that any distance can be selected as the distance so long as it extends from the first to the second electrodes, and thus the prior art meets this claim feature as such a distance meeting the above ratio can be defined).
As to Claim 8,
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Guner in view of Smith discloses the second electrode is coupled to an inner surface of the first bracket, wherein the inner surface faces the conductive surface (Figures 2, 12 or Guner / note again that everything is coupled in the figures, and the bracket has an inner surface where it connects to the pad and faces the conductive surface).
As to Claim 9,
Guner discloses the second electrode comprises an electrical shielding layer at least partially disposed about the rod, wherein the electrical shielding layer is disposed between the rod and the inner surface of the first bracket (Paragraph [0042] / note all elements in the pad/arm are insulated via the insulating material of the pad, and this material is reasonably a layer that is disposed between the electrodes and the bracket), (Figures 2, 6, and 12).
As to Claim 10,
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Guner discloses the first bracket comprises: first and second curved portions; and the portion, wherein the portion is coupled to the first and second curved portions and disposed between the first and second curved portions (Figures 2, 12), (see above figure / note the bracket has two opposing curved portions, one of which is seen above, and the arm portion is between these two curved portions).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 11,913,292 to Donzier et al. and US 2020/0209193 to Swett at al. which are pertinent because both disclose a logging tool having fluid analysis sensors located in an arm of the tool.
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
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