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 .
The 103/double patenting rejections have been withdrawn; the obviousness double patenting rejection has been maintained
Applicant amended his claims to overcome the 103 rejections and the double-patenting rejections. However, the obviousness double patenting rejections have been maintained because the newly added limitations are already cited in the applied reference. Also, another patent, US 11,927,177, submitted with the IDS dated 19 February 2026, is also used to reject the claims under obviousness double patenting as follows.
Obviousness Double Patenting rejections
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,135,148, and/or claim 6 of US 11,927,177. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Note the following matching table.
Claim 1 of this application
Claims 1 and 2 of US 12,135,148
1. (Currently Amended) A method comprising: pumping, via an extraction lateral extending horizontally from an extraction well, heated water from extraction depths of a hot sedimentary aquifer (HSA);extracting, via a power generation unit, heat from the heated water to generate power and transform the heated water into cooled water; and injecting, via an injection lateral extending horizontally from an injection well, the cooled water at injection depths of the HSA, wherein the HSA is identified based on a permeability of the HSA satisfying a threshold permeability range, and wherein the extraction well and the injection well form a well pair.
1. A method comprising: pumping, via an extraction lateral extending horizontally from an extraction well, heated water from extraction depths of a hot sedimentary aquifer (HSA); extracting, via a power generation unit, heat from the heated water to generate power and transform the heated water into cooled water; and injecting, via an injection lateral extending horizontally from an injection well, at least a portion of the cooled water at injection depths of the HSA, wherein the extraction well and the injection well form a well pair; and either: pumping, via a second extraction lateral extending horizontally from a second extraction well, heated water from extraction depths of the HSA for extracting heat via the power generation unit to generate power and transform the heated water into cooled water; or injecting, via a second injection lateral extending horizontally from a second injection well, a portion of the cooled water at injection depths of the HSA.
2. The method of claim 1, wherein the HSA is identified based on a predicted power output for the generated power that satisfies a threshold power generation requirement, or is identified based on a threshold permeability range.
Claims 1 and claim 6 of US 11,927,177 recite:
1. A method comprising: pumping, via an extraction well, heated water from an extraction depth of a hot sedimentary aquifer (HSA); extracting, via a power generation unit, heat from the heated water to generate power and transform the heated water into cooled water; and injecting, via an injection well offset from the extraction well by a first horizontal distance, the cooled water at an injection depth of the HSA, wherein: the HSA is identified based on a permeability of the HSA satisfying a threshold permeability range, a thickness of the HSA is equal to or less than about 100 meters, and a first portion of the extraction well and a second portion of the injection well are disposed within the HSA, wherein the first portion of the extraction well comprises an extraction lateral extending horizontally and the second portion of the injection well comprises an injection lateral extending parallel to and offset from the extraction lateral by a horizontal distance, such that the injection lateral and the extraction lateral are configured to induce a convective recirculation cell within the HSA.
6. The method of claim 1, wherein: the injecting the cooled water comprises injecting the cooled water via an injection element and the injection lateral of the injection well; the injection element comprises an injection pump and a vertical injection component extending between the injection depth and the power generation unit; and the injection lateral is mechanically coupled to the injection element and comprises one or more lateral injection branches that extend from the injection element at the injection depth.
Anticipation:
Based on the matching table above, claim 2 (a combination of claims 1&2) of US 12,135,148 anticipates the claimed subject matter of this application, both newly added limitations “an extraction lateral extending horizontally from an extraction well” and “ an injection lateral extending horizontally from an injection well” are already in claim 1. New claim 2 is rejected by claim 8 for the thickness under 500m. The claims of the patent recite more elements than in this application and therefore the claims of this application should be rejected under obviousness double patenting rejection. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993).
Also, claim 6 (a combination of claims 1&6 listed above) of US 11,927,177 anticipates the claimed subject matter of this application, both newly added limitations “an extraction lateral extending horizontally from an extraction well” and “ an injection lateral extending horizontally from an injection well” are already in claim 1. New claim 2 is rejected by claim 1 for the thickness under 500m (claim 1 recites the thickness less than 100m that meets the range). The claims of the patent recite more elements than in this application and therefore the claims of this application should be rejected under obviousness double patenting rejection. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993).
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Finality
THIS ACTION IS MADE FINAL. 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.
Regarding the applied reference US 11,927,177:
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 19 February 2026 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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.
Conclusions
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/HOANG M NGUYEN/Primary Examiner, Art Unit 3746
HOANG NGUYEN
PRIMARY EXAMINER
ART UNIT 3746
Hoang Minh Nguyen
2/25/2026