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 .
Obviousness Double Patenting rejection
Claims 24-43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of US 12,163,696, or claim 1 of U.S. Patent No. 11,156,386 or claim 1 of US 11,808,488. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Here is a matching table comparing independent claims 24, 35 of this application with independent claims 1, 13, of US 12,163,696.
Claims of US 12,163,696
Claims of this application
1. A method, comprising: determining a geothermal temperature gradient and thermal conductivity in a specified rock volume; for a planned closed-loop wellbore configuration comprising a plurality of at least partially uncased lateral wellbores within the specified rock volume, determining a spacing and orientation of a first lateral wellbore of the plurality of lateral wellbores within the specified rock volume relative to a second lateral wellbore of the plurality of lateral wellbores based on an axial temperature variation of a geothermal heat transfer working fluid flowing within the first lateral wellbore relative to an axial temperature variation of the geothermal heat transfer working fluid flowing in the second lateral wellbore along at least a portion of the lengths of the first and second lateral wellbores; and drilling the plurality of lateral wellbores within the specified rock volume in accordance with the determined spacing and orientation.
24. (New) A geothermal well system comprising: a plurality of at least partially uncased wellbores drilled within a specified rock volume and in fluid communication; and a geothermal working fluid flowing through the plurality of at least partially uncased wellbores, a first wellbore of the plurality of wellbores spaced and oriented relative to a second wellbore of the plurality of lateral wellbores based on at least (a) a geothermal temperature gradient of the specified rock volume and (b) an axial temperature variation of a geothermal heat transfer working fluid flowing within the first wellbore relative to an axial temperature variation of the geothermal heat transfer working fluid flowing in the second wellbore along at least a portion of the lengths of the first and second wellbores.
13. A geothermal well system comprising: an at least partially uncased first lateral wellbore of a plurality of lateral wellbores within a specified rock volume; an at least partially uncased second lateral wellbore of the plurality of lateral wellbores within the specified rock volume; the first and second lateral wellbores spaced and oriented alongside each other with respect to one another based on an axial temperature variation of a geothermal heat transfer working fluid flowing within the first lateral wellbore tapering relative to an axial temperature variation of the geothermal heat transfer working fluid flowing in the second lateral wellbore along at least a portion of the respective lengths of the first lateral wellbore and the second lateral wellbore.
35. (New) A method comprising:
flowing a geothermal working fluid through a first wellbore and a second wellbore drilled in a subterranean volume, the first and second wellbores in fluid communication and spaced and oriented alongside each other with respect to one another based on an axial temperature variation of the geothermal heat transfer working fluid flowing within the first wellbore tapering relative to an axial temperature variation of the geothermal heat transfer working fluid flowing in the second wellbore along at least a portion of the respective lengths of the first wellbore and the second wellbore; and
recovering heat energy from the geothermal working fluid.
Based on the bold italic texts above, the claims in US 12,163,696 recite all the claimed subject matter of the independent claims 24, 35 of this application except for that: 1) claim 1 of US 12,163,696 is a method claim but claim 24 of this application is an apparatus claim; claim 13 of US 12,163,696 is an apparatus claims as compared with method claim 35 of this application. However, according to MPEP 2144.05, II. ROUTINE OPTIMIZATION, A) Optimization Within Prior Art Conditions or Through Routine Experimentation, In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). It would have been obvious to use functions of the elements in the apparatus of claim 1 in US 12,163,696 to form the method steps in claim 24 of this application and/or to form an apparatus in claim 35 from the structures cited in method claim 13 for the purpose of forming and/or operating the geothermal system as claimed.
Dependent claims 25-34, 36-43 of this application are equivalent with dependent claims 2-12, 14-26 of US 12,163,696.
Furthermore, Claim 1 of U.S. Patent No. 11,156,386 or claim 1 of US 11,808,488 recite the method of forming a well including both vertical and horizontal sections, but not the limitation “an axial temperature variation of a geothermal heat transfer working fluid flowing within the first wellbore relative to an axial temperature variation of the geothermal heat transfer working fluid flowing in the second wellbore along at least a portion of the lengths of the first and second wellbores.” in claim 24 and the recitations “ the first and second wellbores in fluid communication and spaced and oriented alongside each other with respect to one another based on an axial temperature variation of the geothermal heat transfer working fluid flowing within the first wellbore tapering relative to an axial temperature variation of the geothermal heat transfer working fluid flowing in the second wellbore along at least a portion of the respective lengths of the first wellbore and the second wellbore; and” in claim 35. However, according to MPEP 2144.05, II. ROUTINE OPTIMIZATION, A) Optimization Within Prior Art Conditions or Through Routine Experimentation, Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); note In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). The concept of changing the temperatures/pressures ratios, operating pressures/temperatures in these claims involves only change of proportions of the materials, or the result of “routine optimization”. Since the claims in US 11,808,488 and US 11,156,386 clearly discloses the same method of forming the wells, it would have been a “routine optimization” for a person having ordinary skill in the art to elect the space between the wells based on the axial temperature variation as claimed for the purpose of achieving equivalent power output based on the specifically set spaces based on axial temperature variation.
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.
Conclusions
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/HOANG M NGUYEN/Primary Examiner, Art Unit 3746
HOANG NGUYEN
PRIMARY EXAMINER
ART UNIT 3746
Hoang Minh Nguyen
2/2/2026
Prosecution Insights