DETAILED ACTION
Claims 1-20 are pending.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/06/2026 has been entered.
Response to Arguments
Applicant's arguments filed 01/06/2026 have been fully considered but they are not persuasive.
Applicant’s representative argues the following:
“Applicant submits that Hoines and Cochran, taken alone or in hypothetical combination, fail to teach or suggest at least the foregoing aspects of independent claim 1. In the Office Action, the Examiner admitted that "Hoines is silent in regard to: terminating the electrical cable at a surface end of the electrical cable with a well penetrator such that the well penetrator seats in the well closure device." Office Action, page 5 (emphasis added). The Examiner relied instead on Cochran for the foregoing claim features, asserting that "Cochran teaches terminating the electrical cable (64) at a surface end thereof with a well penetrator such that the well penetrator (68) seats in the well closure device (24 - paragraphs [0153-0156] and figures 20-24). Id. at pages 5-6 (emphasis in original). Applicant respectfully traverses the foregoing rejection. Hoines discloses an ESP 202 coupled to a line 212. See Hoines, FIG. 2, paragraph [0032]. However, the line 212 does not include a termination in a well penetrator, much less a well penetrator that seats in a well closure device above a Christmas tree. See id. Instead, the line 212 continues in an uphole direction toward the surface. See id. Cochran cannot overcome this deficiency of Hoines. Cochran discloses an electrical cable 64 extending through a telescopic wellhead penetrator 68 to a penetrator connection 74 above (and completely external from) the telescopic wellhead penetrator 68. See Cochran, FIGS. 20-24, paragraphs [0153]-[0158]. In other words, the electrical cable 64 does not terminate within an interior of the telescopic wellhead penetrator 68, much less between first and second axial ends of the telescopic wellhead penetrator 68. See id. For at least these reasons, Applicant submits that Hoines and Cochran do not teach or suggest every element of claim 1, and thus cannot support a prima facie case of obviousness of independent claim 1 and its dependent claims (including claims 2-8).”
Examiner respectfully disagrees. Examiner notes that the electrical line “212” in Hoines intrinsically is terminated or ends at an arbitrary location uphole above surface. To cure the deficiencies of the terminated end being within a “well penetrator” ( as claimed), secondary reference Cochran was introduced under a 35 U.S.C. § 103 rejection, as detailed herein. If Applicant’s representative is stating that the combination of both the references are incompatible due to one teaching away from another (or, something of the like), then detailed arguments need to be presented.
Furthermore, though claim 1 was amended to further recite the specific positioning of the terminated electrical line to the well penetrator, Examiner notes that Cochran teaches the claimed positioning, as it is commensurate to that as disclosed in the instant specification (see details in rejection herein). If there is a critical feature in the claims that have a certain degree of importance, it is advised to include that language in the claim(s) in keeping with the instant specification for purposes of overcoming the most recent prior art rejection.
Examiner notes though a majority of claim 16 is taught by Hoines in view of Cochran (see at least claim 1 rejection herein), there is no prior art rejection presented herein to at least claim 16, as the issues pertaining to 35 U.S.C. § 112 addressed herein are preventing the Examiner from properly understanding the scope of Applicant’s invention due to the lack of definiteness associated with each of the claims. Thereby, Applicant is highly advised to appropriately correct all deficiencies identified in this rejection. The Examiner respectfully reserves the rights to apply prior art rejections in the future based off of a better understanding of the claims pursuant to Applicant’s forthcoming corrections.
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 12-14 and 16-20 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.
Claim 12 recites: “[...] wherein deploying the pump comprises lowering the pump until the pump engages the downhole control valve or the annular seal at the selected pump setting depth while also causing the seating of the well penetrator in the well closure device when the pump reaches the selected pump setting depth.” Though paragraphs [0014, 0030-0031] introduce support for “deploying the pump comprises lowering the pump until the pump engages the downhole control valve or the annular seal at the selected pump setting depth” and “seating of the well penetrator in the well closure device when the pump reaches the selected pump setting depth”, individually, there is a lack of support for the teachings to be concurrent with one another, or the immediate result after the seating the pump is met. Rather, the instant specification discloses setting/seating the pump in the wellbore at the selected depth (e.g., step 1), then coupling the well penetrator to the surface end of the electrical cable (e.g., step 2), and thereafter seating the well penetrator in the well closure device (e.g., step 3). Similarly, the same issues stands with the limitation of claim 16 reciting: “[...] seating the pump with a packer at the depth while seating a well penetrator in the blowout preventer...” Due to claims 12 and 16 being rejected under 35 U.S.C. § 112(a), the corresponding dependent claims are also rejected.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoines et al. (US Publication Number 2023/0295998 A1; herein “Hoines”) in view of Cochran (US Publication Number 2018/0320454 A1; herein “Cochran”).
In regard to claim 1, Hoines discloses: A method for deploying a pump (comprising 202 system) in a well (210 — abstract and paragraphs [0004, 0010, 0027] and figure 2), comprising:
attaching a well closure device (236) above a surface control valve (at least 224), the surface control valve connected to close a well tubing (214A) extending from a well control valve (at least 216) to a predetermined depth in the well (figure 2 and paragraphs [0027-0034]);
moving an annular seal (i.e., “packer” associated with 202) and downhole control valve (204) to a selected pump setting depth (i.e., arbitrary well depth) in the well tubing (paragraphs [0034, 0053]), the downhole control valve operable to close the well tubing to fluid flow (paragraphs [0027-0030, 0039, 0045-0049]);
deploying the pump at the end of an electrical cable (212) through the well closure device and the well tubing until the pump engages (i.e., functionally engages) the downhole control valve or the annular seal (paragraphs [0034, 0052-0061] and figure 2); and
terminating the electrical cable at a surface end of the electrical cable to define a terminated end (i.e., termination of 212 at arbitrary location above surface 210A — paragraph [0031]), wherein the well closure device disposed above a Christmas tree (228 — see figure 2 and paragraph [0039, 0050-0059]).
However, Hoines is silent In regard to: terminating the electrical cable at a surface end of the electrical cable to define a terminated end within an interior of a well penetrator between first and second axial ends of the well penetrator; and
seating the well penetrator in the well closure device.
Nonetheless, Cochran teaches a wellhead assembly (16) comprising a “well closure device”, e.g., a BOP (24) which has a downhole electrical pump (32) passing therethrough (at least abstract and paragraphs [0144, 0153-0156] and figures 20-24), similar to that of Hoines. Cochran teaches terminating the coiled tubing (18) electrical cable (64) at a surface end of the electrical cable to define a terminated end (i.e., terminated end section of “64” where “74” couples thereto, as shown in figures 17-23) within an interior of a well penetrator (68 | “FIG. 20 shows a telescoping wellhead penetrator 68 disposed over the exposed end of the electrical cable 64 and inserted into the rod lock BOP 24” — paragraph [0153]) between first and second axial ends of the well penetrator (paragraphs [0153-0156] and figures 17-26 | Examiner notes that teachings of the limitation is commensurate to that disclosed in the paragraphs [0030-0031] and figure 3B of the instant specification); and
seating the well penetrator in the well closure device (“FIG. 20 shows a telescoping wellhead penetrator 68 disposed over the exposed end of the electrical cable 64 and inserted into the rod lock BOP 24” — paragraph [0153]).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the wellhead assembly, as taught by Hoines, to include for terminating the electrical cable at a surface end thereof within a well penetrator, such that the well penetrator seats in the well closure device, as taught by Cochran, to allow for telescopically selectively moving (raising or lowering) the electrical downhole cable (paragraph [0153] — Cochran).
In regard to claim 2, Hoines further discloses: wherein the annular seal and the well control valve are deployed on the pump such that the well control valve, the annular seal and the pump are deployed in the well in a single operation (paragraphs [0034, 0048]).
In regard to claim 3, Hoines further discloses: electrically connecting a terminated end of the electrical cable to a surface power and control system (paragraph [0056]).
In regard to claim 4, Hoines in view of Cochran discloses claim 1 above.
However, the modification of Hoines in view of Cochran is silent In regard to: wherein the electrical cable comprises a tubing encapsulated cable.
Nonetheless, Cochran cites: “[...] electrical cable may comprise a tubing encapsulated electrical cable” (paragraphs [0019, 0158]).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to simply substitute the electrical cable, as taught by Hoines, with that of Cochran, as “[...] advantages of using TEC are resistance to damage of the electrical cable by reason of fluid flowing through the coiled tubing when the ESP system is operating” (paragraph [0158] of Cochran).
In regard to claim 5, Hoines further discloses: wherein the pump comprises an electric submersible pump (paragraph [0033]).
In regard to claim 6, Hoines further discloses: wherein the well comprises a bore lining tubular (i.e., “casing”) extending at least between the pump setting depth and a permeable formation, an interior of the bore lining tubular being in fluid communication with the permeable formation (paragraphs [0020-0022, 0028, 0031, 0054]).
In regard to claim 7, Hoines further discloses: wherein the surface control valve forms part of a valve assembly (i.e., of 200) comprising at least a valve spool (206), a swab valve (222) coupled to the valve spool to enable insertion of devices into the well tubing (paragraph [0027, 0035-0038, 0052, 0054] and figure 2) and a flow line valve (i.e., “wing valve” associated with lateral outlet 208) coupled to the valve spool to control fluid flow from the well tubing to a flow line (208) extending from the flow line valve (paragraph [0035]).
In regard to claim 8, in view the modification of the preceding claim, Hoines further discloses: wherein the well closure device comprises a blowout preventor (at least paragraphs [0050, 0052-0053]).
In regard to claim 9, Hoines further discloses: wherein the Christmas tree comprises one or more master valves (i.e., of 208 — paragraphs [0035, 0039]).
In regard to claim 10, Hoines further discloses: wherein the Christmas tree comprises one or more wing valves disposed on one or more branches (208 — paragraphs [0035, 0039]).
In regard to claim 11, Hoines further discloses: wherein the Christmas tree comprises a swab valve (222 — paragraphs [0036, 0038]).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoines et al. (US Publication Number 2023/0295998 A1; herein “Hoines”) in view of Cochran (US Publication Number 2018/0320454 A1; herein “Cochran”) in further view of Head et al. (US Publication Number 2019/0017357 A1; herein “Head”).
In regard to claim 15, Hoines teaches that the “downhole control valve” is set prior to deploying the pump in the tubing (at least paragraphs [0045-0046]).
However, Hoines in view of Cochran is/are silent in regard to: wherein moving the annular seal and downhole control valve to the selected pump setting depth in the well tubing comprises deploying the annular seal and the downhole control valve separately from and prior to deploying the pump.
Nonetheless, Head teaches a similar type of the electrical downhole pumping assembly comprising a motor, to that of Hoines (see at least paragraph [0033] of Hoines), where the pump (50) in Head is coupled to an “annular seal” (2) — see at least paragraphs [0019-0021] of Head. Head teaches that the “annular seal” (2) is positioned in the wellbore along with the production tubing (4) prior to deploying the pump in the wellbore at the selected pump depth (paragraphs [0019-0021] and figures 1-2).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to simply substitute the method/mechanism of coupling/activating the pump and “annular seal” with one another in the wellbore, as taught by Hoines, with the method/mechanism, as taught by Head, to yield the predictable result of providing an alternative downhole pump/packer method/mechanism with the benefit of having retrievable pumping assembly components, when needed, such as, but not limited to, times of failure, without altering the set packer (paragraphs [0003-0004] of Head). See MPEP 2143, section I, subsection B.
Conclusion
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/NEEL GIRISH PATEL/Primary Patent Examiner, Art Unit 3676