DETAILED ACTION
Acknowledgements
In the reply filed November 11, 2025, the applicant amended claims 1 and 13.
Currently claims 1-18 are under examination.
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 1-18 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. The addition of language describing a DAS cable or TEC line as “pre-installed” in claims 1 and 13 does not appear in the specification.
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 8 and 9 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.
Claim 8 recites the limitation "a pre-installed TEC line" in line 3. It is unclear whether this is the TEC line described in claim 1 or if there is an additional TEC line added by this claim.
Claim 9 recites the limitation "a pre-installed DAS line" in line 2. It is unclear whether this is the DAS cable described in claim 1 or if there is an additional DAS line/cable added by this claim.
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 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, 2, 5-7, 10, and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Deffenbaugh (U.S. Pub. No. 2016/0320769).
Regarding Claim 1, Deffenbaugh discloses a process for obtaining data from a wellbore, where the process comprises:
Dropping or pumping a ball or dart (Deffenbaugh: 200) into the well wherein the dart (Deffenbaugh: 200) is equipped with one or more sensors (Deffenbaugh: 225, 230) to detect restrictions in the tubing, casing or liner (Deffenbaugh: Paragraph [0021]) in the well,
Or to detect geometry of the tubing, casing or liner (Deffenbaugh: Paragraph [0022]) in the well, or to detect leaks in the tubing, casing or liner (Deffenbaugh: Paragraph [0021]);
Storing detected data in the dart (Deffenbaugh: 200)(Deffenbaugh: paragraph [0029])
Processing data in the ball or dart (Deffenbaugh: 200) )(Deffenbaugh: paragraph [0029]); and
Communicating the data from the dart (Deffenbaugh: 200) to the surface by transmitting signals through well fluid (Deffenbaugh: Paragraph [0033]: signal through fluid).
Regarding Claim 2, Deffenbaugh discloses the process according to claim 1, wherein the said one or more sensors (Deffenbaugh: 225, 230) include an acoustic caliper, impulse radar sensor, ultra sound sensor or multi finger caliper (“MFC”) for gathering data about wellbore geometry, e.g. detecting restrictions in the well or tubing (Deffenbaugh: Paragraph [0082]).
Regarding Claim 5, Deffenbaugh discloses the process according to claim 1, wherein the said one or more sensors (Deffenbaugh: 225, 230) include an acoustic sensor (Deffenbaugh: Paragraph [0088]) in the dart (Deffenbaugh: 200)/ball to detect leaks in tubing casing or liner (Deffenbaugh: Paragraph [0022]), or behind tubing, casing or liner (Deffenbaugh: Paragraph [0022]).
Regarding Claim 6, Deffenbaugh discloses the process according to claim 1, wherein the said one or more sensors (Deffenbaugh: 225, 230) include a casing collar locator (“CCL”) for identifying measured depth location in the well by detecting features, e.g. collars, on tubing, casing or liner (Deffenbaugh: Paragraph [0081]).
Regarding Claim 7, Deffenbaugh discloses the process according to claim 1, wherein the said one or more sensors (Deffenbaugh: 225, 230) include a temperature sensor and/or a pressure sensor (Deffenbaugh: Paragraph [0077]).
Regarding Claim 10, Deffenbaugh discloses the process according to claim 1, wherein the dart (Deffenbaugh: 200) is dissolvable or degrades (Deffenbaugh: Paragraph [0066]).
Regarding Claim 13, Deffenbaugh discloses a ball or dart (Deffenbaugh: 200) for dropping or pumping through well tubing, the ball or dart (Deffenbaugh: 200) comprising:
(a) one or more sensors (Deffenbaugh: 225, 230) for detecting a condition of the well as the ball or dart (Deffenbaugh: 200) passes along the tubing;
(b) a data storage facility for storing sensed data (Deffenbaugh: Paragraph [0018]);
(c) a data processing facility for processing data before or after storage (Deffenbaugh: Paragraph [0029]);
(d) a communication facility for transferring data to the surface via well fluids (Deffenbaugh: Paragraph [0033]).
Regarding Claim 14, Deffenbaugh discloses the ball or dart (Deffenbaugh: 200) according to claim 13, wherein the said one or more sensors (Deffenbaugh: 225, 230) are selected from an acoustic caliper, an acoustic sensor, an optical fibre within the dart (Deffenbaugh: 200), a temperature sensor, a pressure sensor, a flow meter, a magnetometer (Deffenbaugh: Paragraph [0077]).
Regarding Claim 15, Deffenbaugh discloses the ball or dart (Deffenbaugh: 200) according to claim 13, wherein the dart (Deffenbaugh: 200) or ball is dissolvable (Deffenbaugh: Paragraph [0066]).
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 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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Deffenbaugh in view of Niina (U.S. Pub. No. 2014/0284103).
Regarding Claim 3, Deffenbaugh discloses the process according to claim 1, but does not disclose wherein the said one or more sensors (Deffenbaugh: 225, 230) include a flex sensor, e.g. an optical fibre within the dart (Deffenbaugh: 200) oriented along the length of the dart (Deffenbaugh: 200) or arranged in a coil, able to detect bending of the dart (Deffenbaugh: 200) and thus of the well or tubing.
Nina discloses a flex sensor oriented along the length of a dart and able to detect a bending of the dart and therefore tubing (Niina: Paragraph [0032]).
It would have been obvious to one having ordinary skill in the art at the effective filing date of the applicant’s invention to have incorporated the flex sensor of Niina as the sensor of Deffenbaugh with a reasonable expectation of success of measuring the dimensions (deflection) of the conduit into which the dart is placed as disclosed by Niina (Niina: Paragraph [0032]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Deffenbaugh in view of Scherbatskoy (U.S. Pub. No. 4,676,310).
Regarding Claim 4, Deffenbaugh discloses the process according to claim 1, but does not disclose wherein the said one or more sensors (Deffenbaugh: 225, 230) include a gyro that can gather information about the shape of the wellbore.
Scherbatskoy discloses a sensor on a downhole probe comprising a gyro that can gather information about the shape of the wellbore (Scherbatskoy: Column 12: lines 60-66: inclinometer).
It would have been obvious to one having ordinary skill in the art at the effective filing date of the applicant’s invention to have incorporated the well-known in the art gyro (inclinometer) as the sensor of Deffenbaugh with a reasonable expectation of success of measuring the inclination of the wellbore (information about the shape) as disclosed by Scherbatskoy (Scherbatskoy: Column 12: lines 60-66: inclinometer).
Claims 11, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Deffenbaugh in view of Kazanci (U.S. Patent No. 11,933,142)
Regarding Claim 11, Deffenbaugh discloses the process according to claim 1, but does not disclose wherein the dart or ball comprises a first module comprising a data sensor and/or transmitter and a second module having a drift diameter greater than that of the first module, the first and second modules being detachable , and wherein a plurality of second modules having different drift diameters are provided.
Kazanci discloses a dart or ball comprising a first module (Stokely 121) comprising a data sensor and/or transmitter and a second module (having a drift diameter greater than that of the first module, the first and second modules being detachable, and wherein a plurality of second modules having different drift diameters are provided (Kazanci: Column 9 lines 11-34: detachable sections, Column 10: line 47 -Column 11: line 13: varying diameter second modules).
It would have been obvious to one having ordinary skill in the art at the effective filing date of the applicant’s invention to have incorporated the detachable second body arrangement of Kazanci with a reasonable expectation of success in the invention of Deffenbaugh in order to allow the sensor in the dart to be sized properly to fit within the inner wall while simultaneously engaging the sides of the inner wall with the same sensor as disclosed by Kazanci (Kazanci: Column 10: line 47 -Column 11: line 13).
Regarding Claim 16, Deffenbaugh discloses the ball or dart (Deffenbaugh: 200) according to claim 13, but does not disclose wherein the dart or ball comprises a first module comprising a data sensor and/or transmitter and a second module having a drift diameter 18 greater than that of the first module, the first and second modules being detachable, and wherein a plurality of second modules having different drift diameters are provided.
Kazanci discloses a dart or ball comprising a first module (Stokely 121) comprising a data sensor and/or transmitter and a second module (having a drift diameter greater than that of the first module, the first and second modules being detachable, and wherein a plurality of second modules having different drift diameters are provided (Kazanci: Column 9 lines 11-34: detachable sections, Column 10: line 47 -Column 11: line 13: varying diameter second modules).
It would have been obvious to one having ordinary skill in the art at the effective filing date of the applicant’s invention to have incorporated the detachable second body arrangement of Kazanci with a reasonable expectation of success in the invention of Deffenbaugh in order to allow the sensor in the dart to be sized properly to fit within the inner wall while simultaneously engaging the sides of the inner wall with the same sensor as disclosed by Kazanci (Kazanci: Column 10: line 47 -Column 11: line 13).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Deffenbaugh in view of van Pol (U.S. Pub. No. 2018/0171783)
Regarding Claim 8, Deffenbaugh discloses the process according to claim 1, but does not disclose wherein the dart or ball docks in a docking station in the well, where data stored in the dart or ball is transferred to the docking station and transmitted up a pre-installed TEC line to the surface.
Van Pol discloses a dart or ball docking in a docking station in the well, where data stored in the dart or ball is transferred to the docking station and transmitted up a pre-installed TEC line to the surface (Van Pol Paragraph [0111]).
It would have been obvious to one having ordinary skill in the art at the effective filing date of the applicant’s invention to have incorporated the dock of van Pol into the invention of Deffenbaugh with a reasonable expectation of success of allowing the sensor data to be gathered after interfacing with the dart (capsule) as disclosed by van Pol (van Pol: Paragraph [0117]).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Deffenbaugh in view of Pawar (U.S. Pub. No. 2021/0277771)
Regarding Claim 9, Deffenbaugh discloses the process according to claim 1, but does not disclose wherein the dart or ball transmits data to a pre-installed DAS line.
Pawar discloses a dart or ball transmitting data to a pre-installed DAS line (Pawar: 16).
It would have been obvious to one having ordinary skill in the art at the time of the invention’s effective filing date to have utilized the pre-installed DAS line of Pawar as the method of transmission in the invention of Deffenbaugh with a reasonable expectation of success of collecting measurements (of the type intended to be collected by the dart of Deffenbaugh) utilizing the dart/ball as disclosed by Pawar (Pawar: Paragraph [0022]).
Claims 12 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Deffenbaugh alone.
Regarding Claim 12, Deffenbaugh discloses the process according to claim 1, wherein a plurality of balls or darts (Deffenbaugh: 200) are provided (nothing in Deffenbaugh prevents additional darts or balls from being used at a later time), each comprising a data sensor and/or transmitter but does not disclose each having a different drift diameter and/or length.
It would however have been an obvious matter of design choice to vary the size of the drift diameter of length among different balls/darts, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level or ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding Claim 17, Deffenbaugh discloses a set comprising a plurality of balls or darts (Deffenbaugh: 200) each according to claim 13, wherein a plurality of balls or darts (Deffenbaugh: 200) are provided (nothing in Deffenbaugh prevents additional darts or balls from being used at a later time), each comprising a data sensor and/or transmitter but does not disclose each having a different drift diameter and/or length.
It would however have been an obvious matter of design choice to vary the size of the drift diameter of length among different balls/darts, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level or ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Claims 18 is rejected under 35 U.S.C. 103 as being unpatentable over Deffenbaugh in view of Woie (U.S. Pub. No. 2011/0277984).
Regarding Claim 18, Deffenbaugh discloses a ball or dart (Deffenbaugh: 200) according to claim 13, but does not disclose said ball or dart (Deffenbaugh: 200) comprising one or more wiper darts (Deffenbaugh: 200) with integrated sensors (Deffenbaugh: 225, 230) to detect flexing of the dart fins said fins composed of rubber, nitrile, polymer, or gel (Deffenbaugh: Paragraph [0112]: activation device for biased probe may comprise a polymer).
Woie discloses a downhole sensor device having fins with integrated sensors, wherein the integrated sensors (Woie: 46) detect flexing of the dart fins said fins composed of rubber, nitrile, polymer, or gel (Deffenbaugh: Paragraph [0112]: activation device for biased probe may comprise a polymer).
It would have been obvious to one having ordinary skill in the art at the time of the invention’s filing to have integrated the fin sensors of Woie in the invention of Deffenbaugh with the predictable result of measuring additional downhole characteristics of the wellbore via measurement of the effect of the shape of the wellbore on the downhole ball/dart.
Response to Arguments
Applicant’s amendments, see reply, filed November 11, 2025, with respect to claims 1-18 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of Deffenbaugh.
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 DOUGLAS S WOOD whose telephone number is (571)270-5954. The examiner can normally be reached Monday through Thursday 8:30 AM - 7:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole A Coy can be reached at (571) - 272 - 5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DOUGLAS S. WOOD
Examiner
Art Unit 3679
/DOUGLAS S WOOD/Examiner, Art Unit 3679
/Nicole Coy/Supervisory Patent Examiner, Art Unit 3672