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 .
Response to Amendment
This Action is in response to Applicant’s Reply of April 27, 2026.
Applicant’s amendments to claims 1-3, 6-10, 13-17, 20, and 21 overcome the previously presented 35 USC 112(b) rejection thereof.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant has argued that the applied references do not teach controlling descent using the dense fluid.
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.
Applicant has argued that the instant specification, in paragraph [0027], uses water as an example of fluids outside of a dense fluid.
Paragraph [0027] does not specifically preclude the use of water as the dense fluid. The recitation of “to achieve a slower descent the density could be closer to that of water” is not an indication that the dense fluid cannot be water. In fact, the first sentence of paragraph [0027] states “the dense fluid may be any heavier fluid including a brine, super-saturated brine, packer fluid, inert fluid, or any other fluid with a density sufficient to make the overall density of the tool, weights, and components greater than the density of the wellbore fluid” (emphasis added) While there is no specific recitation in Jang of the water being denser than the wellbore fluid, as the tool does sink in the well, the tool with the water must be denser than the fluid surrounding it.
Drawings
The drawings were received on April 27, 2026. These drawings overcome the previous objections however contain the following issues.
The drawings are objected to because Figure 3 contains multiple figures that should be separately labeled per 37 FCR 1.84(u)(1).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “130” has been used to designate a cylinder, a tool carrier, and the bottom of the cylinder. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The amendment filed April 27, 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: in new paragraph [0034], the element previously labeled as “Piston” in the various views of Figure 3 are now referred to as a DAR tool. There is no indication in the originally filed specification that the piston in Figure 3 is a DAR tool and a piston is not inherently a DAR tool.
Applicant is required to cancel the new matter in the reply to this Office Action.
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 § 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, 6-11, 13, and 14 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 claims 1 and 8: Jang discloses an apparatus Fig 1 for use in a wellbore 30, the apparatus comprising:
a cylinder 100/200 with a piston 210 comprising 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.”) and 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 piston having a 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.”), said dense fluid controlling 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.).
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 claims 2 and 9: 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 claims 3 and 10: Wherein said apparatus measures total depth, pressure Abstract of Jang, temperature Abstract of Jang, resistivity, pH, ionic concentration, hydrocarbon content, and combinations thereof.
Regarding claims 4 and 11: 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 claims 6 and 13: 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 claims 7 and 14: 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.
Regarding claim 8: Jang, as modified, discloses a method to measure conditions in a wellbore Abstract of Jang, the method comprising:
placing in the wellbore the above described apparatus Fig 1 of Jang;
allowing the apparatus to descend in said wellbore pg. 7 of Jang (“The process proceeds to step S200 in which the gage and the carrier descend. The carrier 20 including the gauge 10 descends in the tubing 30 toward the bottom as shown in FIG. The carrier 20 and the gauge 10 are naturally lowered due to the weight of the carrier 20 including the weight 400 and the gauge 10.”);
opening the dump valve and ejecting said dense fluid and expanding said compressed gas pg. 8 of Jang (“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.”);
allowing the apparatus to ascend in said wellbore pg. 8 of Jang (“The process proceeds to step S800 in which the gauge and the carrier ascend. The anchor 320 is folded so that the carrier 20 can move and the carrier 20 can be lifted due to the buoyancy in the carrier 20.”);
retrieving said apparatus pg. 8 of Jang (“As a result, The carrier 20 and the gauge 10 attached to the upper portion can be recovered.”); and
obtaining the conditions measured in said wellbore pg. 8 of Jang (“As a result, The carrier 20 and the gauge 10 attached to the upper portion can be recovered.”).
Claim(s) 5 and 12 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.
Claim(s) 15-18, 20, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jang in view of Al and Jervis et al. (US 2020/0340781, Jervis).
Regarding claim 15: Jang discloses a method to measure conditions in a wellbore Abstract, the method comprising:
placing in the wellbore an apparatus Fig 1, the apparatus comprising:
a cylinder 100/200 with a piston 210 comprising a 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.”) and 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 piston having a head comprising a dump valve 120 in fluid communication with the dense fluid Fig 1, said dense fluid controlling 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.),
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;
allowing the apparatus to descend in said wellbore pg. 7 (“The process proceeds to step S200 in which the gage and the carrier descend. The carrier 20 including the gauge 10 descends in the tubing 30 toward the bottom as shown in FIG. The carrier 20 and the gauge 10 are naturally lowered due to the weight of the carrier 20 including the weight 400 and the gauge 10.”);
opening the dump valve and ejecting said dense fluid and expanding said compressed gas 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.”);
allowing the apparatus to ascend in said wellbore pg. 8 (“The process proceeds to step S800 in which the gauge and the carrier ascend. The anchor 320 is folded so that the carrier 20 can move and the carrier 20 can be lifted due to the buoyancy in the carrier 20.”);
retrieving said apparatus pg. 8 (“As a result, The carrier 20 and the gauge 10 attached to the upper portion can be recovered.”); and
obtaining the conditions measured in said wellbore pg. 8 (“As a result, The carrier 20 and the gauge 10 attached to the upper portion can be recovered.”).
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)
Jang, as modified, discloses all of the limitations of the above claim(s) except the method including adjusting one or more parameters of a wellbore.
Jervis discloses using a wellbore deployable apparatus to measure such things as pressure and temperature and use those measurements to adjust operations in the well [0004].
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 method included adjusting one or more parameters of a wellbore, as suggested by Jervis, in response to measured parameters, in order to have been able to optimize wellbore operations [0004].
Regarding claim 16: 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 17: 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 18: 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 20: 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 21: 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) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jang in view of Al and Jervis as applied to claim 15 above, and further in view of 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.
Conclusion
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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
5/13/2026
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