DETAILED ACTION
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5, 7-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Allison (US 20040084186).
Regarding claim 1, Allison discloses a tracer release system for estimating an influx profile for at least one of the well fluids to a producing well (fig 3) comprising; at least one tracer release apparatus for connection to a production tubing, the at least one tracer release apparatus (315) (fig 3) comprising; at least one outlet (opening @ 314, fig 3) (fig 4); at least one tracer chamber (chamber containing 320, fig 3) in fluid communication with the at least one outlet (fig 3); a tracer material (320) located in the at least one tracer chamber (fig 3); and at least one valve (324 @ 314) configured to selectively control the flow of fluid through the at least one outlet ([0024]); wherein the at least one valve is configured to shut in the at least one tracer release apparatus to increase the concentration of tracer molecules in a fluid volume in the tracer chamber ([0024], intended use).
Regarding claim 2, Allison further discloses that the at least one tracer release apparatus comprises at least one inlet (opening @ 316) in fluid communication with the at least one tracer chamber (fig 3, [0026]).
Regarding claim 3, Allison further discloses that the at least one valve is configured to selectively open and close the at least one outlet between a fully open position, a fully closed position, or to an intermediate position between the fully open and fully closed position ([0024)).
Regarding claim 5, Allison further discloses that the tracer material is selected from the group comprising chemical, fluorescent, phosphorescent, magnetic, DNA and radioactive compounds ([0001]).
Regarding claim 7, Allison further discloses that the at least one valve is an electrically operated valve, a differential pressure operated valve or a velocity valve ([0026)).
Regarding claim 8, Allison further discloses that the at least one valve is configured to shut in the at least one tracer release apparatus at a predetermined production flow rate and/or production fluid pressure ([0042)).
Regarding claim 9, Allison further discloses the at least one valve is configured to divert flow into the at least one tracer chamber ([0026]).
Regarding claim 10, Allison further discloses at least one flow restriction device (324 @ 316) configured to control the release rate of the tracer molecules from the tracer chamber of the tracer release apparatus into the production tubing ([0026]).
Regarding claim 11, Allison further discloses that the at least one valve is configured to open or close by modifying the production flow rate in the production tubing ([0025] discloses the use of valve with flow constituent activated).
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.
Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Allison (US 20040084186). as applied to claim 1 above, and further in view of Roessler et al. (US 20200263535).
Regarding claim 4, Allison is silent regarding the fact that the tracer material is configured to release tracer molecules from the tracer material into a fluid in the tracer chamber on contact with a particular well fluid.
Roessler teaches that the tracer material is configured to release tracer molecules from the tracer material into a fluid in the tracer chamber on contact with a particular well fluid ([0042]).
Before the effective filling date, it would have been obvious to one of ordinary skill in the art, having the teachings of Allison and Roessler before him or her, to substitute the tracer material disclosed by Allison with the tracer material of Roessler in order to allow efficient tracer discharge into the wellbore fluid.
Regarding claim 6, Allison is silent regarding the fact that the tracer material comprises a tracer and a carrier.
Roessler teaches that that the tracer material comprises a tracer (434) and a carrier (432) ([0038)).
Before the effective filling date, it would have been obvious to one of ordinary skill in the art, having the teachings of Allison and Roessler before him or her, to modify the apparatus/method disclosed by Allison to include the carrier and tracer as taught by Roessler in order to delay the release of the tracer material.
Claims 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Allison (US 20040084186) and Nyhavn et al. (US 20160201454).
Regarding claims 12-15, 17, 19-20, Allison discloses a method of estimating an influx profile for at least one well fluid to a producing well with at least one influx zone to a production flow (figs 3-4) comprising: arranging at least one tracer release apparatus at one or more known levels of the well (fig 3), wherein each tracer release apparatus comprises: at least one outlet (opening @ 314, fig 3) (fig 4) in fluid communication with the production flow (fig 3); at least one tracer chamber (chamber containing 320, fig 3) in fluid communication with the at least one outlet (fig 3); a distinct tracer material (320) located in each tracer chamber (fig 3); and at least one valve (324 @ 314) configured to selectively control the flow of fluid through the at least one outlet ([0024]), wherein the at least one valve is configured to shut in the at least one tracer release apparatus to increase the concentration of tracer molecules in a fluid volume in the tracer chamber (fig 3, [0024]); opening the at least one valve to release tracer molecules from the tracer chamber into the production flow though the at least one outlet ([0024]);
Allisson is silent regarding sampling of produced fluid and measuring concentration of tracer; and estimating an influx profile for at least one of the well fluids based on the measured tracer concentrations.
Nyhavn teaches sampling of produced fluid and measuring concentration of tracer; and estimating an influx profile for at least one of the well fluids based on the measured tracer concentrations (abstract [0012], [0043], fig 7-11).
Nyhavn further teaches analyzing arrival time of tracer to determine inflow contributions ([0012], [0043]).
Nyhavn further teaches analyzing a rate of decline of the tracer concentration from each tracer location and/or tracer release apparatus location to determine inflow from each influx zone ([0012], [0043]).
Nyhavn further teaches analyzing characteristics of the tracer release, sampling time, and/or cumulative produced volume of the influx volumes from different influx zones ([0012], [0043])
Nyhavn further discloses measuring the tracer concentrations in real time or taking samples for further analysis onsite or offsite ([0012], [0043]).
Before the effective filling date, it would have been obvious to one of ordinary skill in the art, having the teachings of Allison and Nyhavn before him or her, to modify the apparatus/method disclosed by Allison to include sampling of produced fluid and measuring concentration of tracer; and estimating an influx profile for at least one of the well fluids based on the measured tracer concentrations as taught by Nyhavn in order to estimate one or more pressure differences or gradients (abstract).
Regarding claim 16, Allison further discloses controlling the opening and/or closing of the at least one valve by adjusting the flow velocity and/or flow pressure in the production tubing ([0026]).
Regarding claim 18, Allison further discloses restricting flow though the tracer release apparatus to control and/or delay the release of fluid from the tracer release apparatus to the production tubing ([0026]).
Double Patenting
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.
Claims 1-8 and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12264579. Although the claims at issue are not identical, they are not patentably distinct from each other because for example, instant claim 1 is generic to all that is recited in claim 1 of ‘579’. In other words, Claim 1 of ‘579’ fully encompasses instant claim 1 and therefore anticipates this claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANY E AKAKPO whose telephone number is (469)295-9255. The examiner can normally be reached M-F 9am - 5pm.
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/DANY E AKAKPO/Examiner, Art Unit 3672
11/23/2025