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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 21, 2026 has been entered.
Response to Amendment
This Action is in response to Applicant’s Reply of August 21, 2026.
The drawings were received on August 21, 2026. These drawings are accepted and overcome the previously presented objections thereto.
The amendment made to paragraph [0034] of the specification overcome the previously presented objection to the specification for containing new matter.
Applicant’s amendments to claim 8 and 15 overcome the previously presented 35 USC 103 rejection thereof.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant has argued that Jang fails to disclose controlling the descent of the apparatus using the density of the fluid and controlling the ascent based on the volume of gas.
It is first noted that Jang specifically discloses using the buoyancy created by the gas to control ascent of the tool including the volume of the gas chamber or volume of the gas paragraphs 4 and 5 on page 7 of the provided translation.
Jang does not disclose a correlation between the density of the fluid and the rate of descent into the well. However, it is noted that there is a marked difference between the density of the fluid contributing to the weight of the tool and thus the contributing to the rate of descent of the tool, i.e. controlling rate of descent, and a requirement of choosing the density of the fluid so as to achieve a specific rate of descent. The water in the apparatus of Jang contributes to the overall weight or negative buoyancy of the tool and thus will at least aid in the control of the descent.
Applicant argues that Jang fails to disclose using the density of the fluid or volume of gas to control the number of measurements during descent and ascent respectively.
With respect to claim 1, while Jang does not disclose taking measurements at any point other than when anchored at the bottom of the wellbore, MPEP 2112.01 states “When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” As Jang discloses the same structure as that recited in claim 1, it will inherently at least be able to perform the same function. As such, it can be said that Jang anticipates the use of the tool as stated in claim 1.
With respect to claims 8 and 15, while there is no correlation between the taking of measurements per meter and the remainder of either claim, Jang does not disclose the step of controlling the number of measurements per meter upon descent or ascent.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: mechanical assistance in claims 7, 14, and 21.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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.
Regarding claim 1: Claim 1 has been amended to require “controlling the number of measurements per meter” during the descent and ascent. There is no indication as to what measurements are being taken or by what. The recitation of “one or more tool used to measure conditions in a wellbore” has not be linked to the taking of a given number of measurements per meter.
Regarding claims 2-7: These claims are considered indefinite due to their dependence on claim 1.
Regarding claims 8 and 15: Claim 8 has been amended to require “controlling the number of measurements per meter” during the descent and ascent. There is no indication as to what measurements are being taken or by what nor any correlation to the step of “obtaining the conditions measured in said wellbore”. The recitation of “obtaining the conditions measured in said wellbore” is not a positive step of actually taking measurements but rather is merely gathering data already measured.
Regarding claims 9-14 and 16-21: These claims are considered indefinite due to their dependence on claim 8 or 15.
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.
Claim(s) 1-4, 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jang (KR 10,1677484 B1, translation provided) in view of Al Dossary (US 2023/0100331, Al).
Regarding claim 1: Jang discloses an apparatus Fig 1 for use in a wellbore 30, the apparatus comprising:
a cylinder 100/200 comprising a piston 210 separating compressed gas 100 on one side of the piston pg. 3 (“The high pressure vessel 100 compresses and stores carbon dioxide so as to be higher than the reservoir pressure for lifting the carrier 20. The gas may be an inert gas other than carbon dioxide.”) from dense fluid 200 on the other side of the piston pg. 3 (“The piston 210 is a device that can move up and down inside a cylinder 220 in a cylindrical form. In an initial state, the piston 210 is positioned above the cylinder 220. The interior of the cylinder 220 in the initial state is filled with water.), said cylinder having a cylinder head comprising a dump valve 120 in fluid communication with the dense fluid Fig 1,
a timer 110; and
one or more tools 10 – pg. 3 (“The gauge 10 is fixed above the high-pressure vessel 100 for stable temperature and pressure measurements.”) used to measure conditions in a wellbore pressure and temperature,
wherein said apparatus descends in the wellbore until the dump valve opens and said dense fluid is ejected and the compressed gas is expanded, said apparatus ascending in the wellbore when said dense fluid is ejected and the compressed gas is expanded Fig 4, 6, pg. 8 (“The process proceeds to step S600 in which the piston descends. The carbon dioxide in the high-pressure vessel 100 is diffused into the piston assembly 200, and the piston 210 is lowered as shown in FIG. As the piston 210 descends, the water inside the cylinder 220 flows out of the cylinder 220 through the water outlet 240.
As the piston 210 descends, the inside of the cylinder 220 is cooled with carbon dioxide gas in addition to the high-pressure vessel 100. The expanded gas provides buoyancy in accordance with the density difference with water present on the outside, and becomes an energy source that causes the carrier 20 to float on its own.”), wherein said dense fluid controls the rate of descent (As page 8 of the provided translation of Jang makes clear that it is the expulsion of the water, the dense fluid, which allows the expansion of the gas and thus the tool to rise in the wellbore, it stands to reason that it is the inclusion of the water that allows the tool to sink or descend into the wellbore. Thus, the water or dense fluid does control the descent of the tool.) and the volume of gas is controlled to achieve a specific buoyancy paragraphs 4 and 5 on page 7.
Jang does not specifically disclose controlling the number of measurements per meter during descent and ascent based on the density of the fluid and volume of gas respectively, however, Jang discloses an apparatus substantially identical to that of claim 1. As such, said apparatus can be said to at least be capable of performing the same function. “When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” See MPEP 2112.01.
Jang discloses all of the limitations of the above claim(s) except the apparatus including a battery.
Al discloses an apparatus similar to that of Jang. The apparatus includes a balloon that is expanded by the expansion of gas compressed within the apparatus after a given amount of time Abstract. This allows the apparatus, and associated sensor, to ascend in the well Abstract. A timer 106 with a battery 108 is used to control the expansion of the gas [0019].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Jang so that the timer included a battery, as taught by Al, in order to have been able to provide cableless power to the timer. This would have achieved the predictable results of eliminating the possibility of the apparatus becoming tangled in said cable.
Further, there are finite number of choices of how to supply downhole power available to a person of ordinary skill in the art for downhole tools. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under 103” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. __, 82 USPQ2d 1385 (2007)
Regarding claim 2: Wherein said tool is selected from a thermocouple Abstract of Jang, pressure meter Abstract of Jang, flow meter, thermometer Abstract of Jang, ohm meter, resistivity meter, video camera, pH meter, an agitator or vibrator, an acoustic tool, cutter, milling, used for sampling, measurement of fluid properties, verifying casing tubing or cement, measuring reservoir properties, and a combination thereof.
Regarding claim 3: Wherein said apparatus measures total depth, pressure Abstract of Jang, temperature Abstract of Jang, resistivity, pH, ionic concentration, hydrocarbon content, and combinations thereof.
Regarding claim 4: Wherein said apparatus comprises a weight 40 of Jang.
Jang, as modified, discloses all of the limitations of the above claim(s) except the weight being released at the bottom of the descent.
Al further discloses releasing a weight secured to the apparatus after changing the buoyancy of the apparatus [0006].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Jang so that the weight was released at the bottom of the descent, as taught by Al, in order to have further reduced the buoyancy of the apparatus to ensure that the apparatus reached the surface [0006].
Regarding claim 6: Wherein said apparatus is inserted into a wellbore during a well treatment selected from fracturing pg. 2 of Jang (“In order to understand the production characteristics of reservoirs during the development of crude oil and gas, it is very important to measure reservoir pressure changes due to pressure and temperature of the reservoir itself, production and hydraulic fracturing.”), washing, cementing, descaling, acid treatment, surfactant, and tracer injection.
Regarding claim 7: Wherein expansion of the compressed gas causes movement of the piston assisted with a device selected from a spring, solenoid, piston 210 of Jang, motor, or other mechanical assistance.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jang in view of Al as applied to claims 1 and 8 above, and further in view of Whorton et al. (US 2,724,437, Whorton).
Jang, as modified, discloses using the disclosed apparatus to measure reservoir pressure within a well pg. 2 of Jang (“In order to understand the production characteristics of reservoirs during the development of crude oil and gas, it is very important to measure reservoir pressure changes due to pressure and temperature of the reservoir itself, production and hydraulic fracturing.”).
Jang, as modified, fails to disclose using the apparatus during a shut in period.
Whorton discloses that reservoir pressure is usually measured at the bottom of the well during shut-in 2:35-43.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, that the reservoir pressure measured by the apparatus of Jang, as modified, would have been measured during a well shut-in, as taught by Whorton, as this is the common process for measuring reservoir pressure. Measuring reservoir pressure while the wellbore is shut-in would have eliminated all outside pressure influences and thus achieved the predictable results of ensuring an accurate pressure measurement.
Allowable Subject Matter
Claims 8-21 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 8: The prior art of record fails to disclose or suggest a method of measuring conditions in a wellbore that includes using a cylinder with piston that separates compressed gas from a dense fluid, wherein dense fluid controls the rate of descent to there by controlling the number of measurements per meter during the descent and the volume of gas is controlled to achieve specific buoyancy, thereby controlling the number of measurements per meter during the ascent as recited in the claimed method.
Regarding claims 9-14: These claims are considered allowable due to their dependence on claim 8.
Regarding claim 15: The prior art of record fails to disclose or suggest a method of managing a hydrocarbon reservoir that includes using a cylinder with piston that separates compressed gas from a dense fluid, wherein dense fluid controls the rate of descent to there by controlling the number of measurements per meter during the descent and the volume of gas is controlled to achieve specific buoyancy, thereby controlling the number of measurements per meter during the ascent as recited in the claimed method.
Regarding claims 16-21: These claims are considered allowable due to their dependence on claim 16.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER H GAY whose telephone number is (571)272-7029. The examiner can normally be reached Monday through Thursday, 6-3:30 and every other Friday 6-11.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Y Coupe can be reached at (571)270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER H GAY/Primary Examiner, Art Unit 3619
JHG
9/24/2026
