DETAILED ACTION
Notice of 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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “one or more containers which collect solids fall back.” recited in claim 1 and “container may be made of filter material, contain slits or v grooves which seat rods” recite in claim 2 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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)(5) because they include the following reference character(s) not mentioned in the description:
Reference character “222” shown in Figs. 3 and 4
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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.
Claim Objections
Claims 1 and 8 are objected to because of the following informalities:
Claim 1: The different elements of the claimed invention, such as “a first part of the flow path…” and “a second part of the flow path…” should separate by a comma or semi-colon.
Claim 8 recites “an SRP system” which is improper. The claim must clearly define “SRP” before using abbreviated name of the element to maintain clarity.
Claim 9 recites “an ESP system” which is improper. The claim must clearly define “ESP” before using abbreviated name of the element to maintain clarity.
Appropriate correction is required.
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 2, 3, 6-8, 12, 13, 16 and 17 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 2 recites “container may be made of filter material, contain slits or v grooves which seat rods” which is indefinite. It is unclear what “filter material” entails structurally because this limitation is vague and unclear as to what physical properties an element is requires to be considered “filter material”. As such, it’s unclear what the distinguishing features are between “filter material” and “slits or v grooves which seat rods”. Finally, it’s unclear if the claim requires one of the elements of “filter material”, “slits” or “v grooves which seat rods” OR if the “slits or v grooves which seat rods” are being further defined as “filter material”. Finally, it is unclear what “v grooves” structurally require. Does this mean that the grooves are shaped like the letter “v” or does it require specific elements to “seat rods”? The limitations are written in a very confusing manner, and it is unclear what features are required by the claim. For the above reasons, the metes and bounds of the claim are indefinite.
Claim 3 recites the limitation “the rods”. There is no antecedent basis for this limitation in the claim.
Claim 3 recites “the rods are scored with fine grooves” which is indefinite. The claim fails to adequately define what the physical and/or numerical boundaries are of “fine grooves”, especially as the term “fine” is subjective and does not have a clear definition. As such, a POSITA would not be able to determine whether a particular size of grooves is considered “fine grooves”. As such, the metes and bounds of this claim are indefinite.
Claim 6 recites “the containers may overlap each other terms of sector coverage” which is indefinite because it’s unclear if the claim positively requires “overlap” or not. If the claim does not, it’s unclear what exactly the claim requires structurally and how this claim is further narrowing. Additionally, it’s unclear what “in terms of sector coverage” is supposed to mean. Does this mean that the containers share the same region or are arranged in same flow path? If the containers share the same region, wouldn’t this overlap of region form “each” container into just one container?
Claim 7 recites the limitation “the base”. There is no antecedent basis for this limitation in the claim.
Claim 8 recites the limitation “the pump plunger body”. There is no antecedent basis for this limitation in the claim.
Claim 12 recites the limitation “the device”. There is no antecedent basis for this limitation in the claim.
Claim 13 recites the limitations “the device”, “the tubing” and “the rod shaft”. There is no antecedent basis for these limitations in the claim.
Claim 16 recites “each container comprises a pocket or chamber” which is very confusing because there was no previous recitation of multiple containers. As such, it’s unclear what “each container” is referring to.
Claim 16 recites the limitation “the annular space”, “the device housing” and “storage tube”. There is no antecedent basis for these limitations in the claim.
Claim 17 recites the limitations “the storage tube top”, “cap bottom” and “the chamber beneath”. There is no antecedent basis for these limitations in the claim.
Claim 17 recites the limitation “the storage tube top and cap bottom” which is indefinite. It’s unclear what this limitation even means and what this requires structurally and/or functionally. Does the “storage tube” have both “tube top and cap bottom”, if so, what does “tube top” require structurally? Furthermore, what does “cap bottom” entail? Does this mean that the bottom of the “storage tube” is blocked by a “cap” element? The limitation is very ambiguous as to what is structurally required. Therefore, the metes and bounds of this claim are indefinite.
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 (i.e., changing from AIA to pre-AIA ) 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)(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.
Claim(s) 1-8 and 10-19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Snyder (US Publication No. 20230048753).
Regarding claim 1, Snyder teaches a downhole apparatus (10; Fig. 1) to collect solids fallback, the apparatus comprising a flow path for a fluid (14), a first part of the flow path providing an unobstructed flow (pp[0032]) a second part of the flow path (50) including one or more containers which collect solids fall back (54 and 98; pp[0050],[0051]).
Regarding claim 2, as best understood, Snyder teaches downhole apparatus according to claim 1 wherein the container may be made of filter material, contain slits or v grooves which seat rods (56 is filter section with filter material 104 (screen) which will have slits, Fig.10, pp[0052]).
Regarding claim 3, Snyder teaches a downhole apparatus according to claim 1 wherein the rods are scored with fine grooves allowing the rod to act as a filter (56 is filter section with filter material 104 (screen) which will have fine grooves for filtering sand; pp[0052]).
Regarding claim 4, Snyder teaches a downhole apparatus according to claim 1 wherein the downhole apparatus is configured to be coupled to and in fluid communication with a production tubular (12) such that fluid can flow through downhole apparatus and the production tubular (pp[0032], [0051]-[0053].).
Regarding claim 5, Snyder teaches a downhole apparatus according to claim 1 wherein there is more than one container (54, 56; Fig. 2), each container arranged to collect fall back solids from different sectors of the tube when the tube is considered in cross section (pp[0053]).
Regarding claim 6, Snyder teaches a downhole apparatus according to claim 5 wherein the containers may overlap each other in terms of sector coverage (54 and 56 may overlap; pp[0049], [0053]).
Regarding claim 7, Snyder teaches a downhole apparatus according to claim 5 wherein the base of the container (56) comprises a filter (104; Fig. 8, 10, pp[0050]), or a non return valve which unseats to provide open flow during normal pumping operation, and closes when the system ceases operation and the fluid inside the production tubing falls back with gravity.
Regarding claim 8, Snyder teaches a downhole apparatus according to claim 1 wherein the downhole apparatus forms part of an SRP system (SRP system; Fig. 1) and incorporated into the pump plunger body (24; Fig.1, pp[0032]).
Regarding claim 10, Snyder teaches a downhole apparatus according to claim 1 wherein the downhole apparatus is incorporated onto a joint of a rod lift shaft (14; Fig. 1, pp[0037], [0039])
Regarding claim 11, Snyder teaches a downhole apparatus according claim 1 wherein one or more pockets or chambers within the device capture the solids (solids accumulated in the filter section 56 and the collector section 54; pp[0053]).
Regarding claim 12, Snyder teaches a downhole apparatus according to claim 1 wherein the device is attached to the rod shafting (14; Fig. 1, pp[0037], [0039]).
Regarding claim 13, Snyder teaches a downhole apparatus according to claim 1 wherein the device is attached to the tubing (12; Fig. 1, pp[0032]) with the rod shaft cycling inside (14; Fig. 1, pp[0037], [0039]).
Regarding claim 14, Snyder teaches a downhole apparatus according to claim 1 wherein each container comprises a pocket or chamber, the base of the pockets or chambers (100; Fig. 8, pp[0050]) having slits (screen 104 has slits; Fig. 10) on the outer and inner diameter which allow sand to bridge, thus blocking the falling sand to pass; when producing fluid from the wellbore the slits allow fluid to pass assisting the cleanout of captured sand and solids (The solids pass through the chamber 66 of the diverter section 52, through the chamber 86 of the collector section 54, and into the chamber 98 of the filter section 56 where the screen 104 and the closed lower end 94 cause the sand and solids to be contained in the filter section 56; pp[0050],[0052]. The containment/collection of sand will allow sand to bridge.).
Regarding claim 15, Snyder teaches a downhole apparatus according to claim 11 wherein the pocket or chambers are provided with longitudinal or other directional slits (slits on 104; Fig. 10, pp[0050]) which allow sand to bridge blocking the falling sand to pass; when producing fluid from the wellbore the slits allow fluid to pass assisting the cleanout of captured sand and solids (The screen 104 is positioned across the apertures 100 of the tubular portion 90 of the filter section 56 and is sized to prevent the sand and solids from passing through the apertures 100 while allowing fluids to pass through the apertures 100 so fluids may pass to and from the filter section 56; pp[0050]. The containment/collection of sand will allow sand to bridge.).
Regarding claim 16, Snyder teaches a downhole apparatus according to claim 11 wherein each container comprises a pocket or chamber, the pocket or chamber (54) having a cap (52; Fig. 2) to divert the falling sand or solids to the annular space between the device housing and storage tube ( sands and solids are entrained in the flow upwards through the sand collector 50 and out of the apertures 68 of the diverter section 52 and into the tubing string 12. Therefore, the accumulated sands and solids are purged from the sand collector 50 during the production phase; pp[0053]).
Regarding claim 17, as best understood, Snyder teaches a downhole apparatus according to claim 16 wherein a gap is provided between the storage tube top and cap bottom (the collector section 54 may be a solid tubular member having an upper end 80, a lower end 82, and a sidewall 84 defining a chamber 86 extending between the upper end 80 and the lower end 82. The upper end 80 of the collector section 54 is connected to the lower end 62 of the diverter section 52. In one embodiment, the upper end 80 of the collector section 54 is connected to the lower end 62 of the diverter section 52 with a coupling 88; pp[0048]) to allow accumulated sand in a chamber to enter the storage tube inner diameter and fall into the chamber beneath (As the sand and solids continue to accumulate, the sands and solids accumulate in the chamber 86 of the collector section 54; pp[0052]).
Regarding claim 18, Snyder teaches a downhole apparatus according to claim 11 wherein several pockets or chambers with base incorporating a one way valve (When the fluid pressure in the chamber 28 becomes greater than the pressure above the traveling valve 26, the traveling valve 26 opens and fluid passes through the traveling valve 26 where it can be lifted by the plunger 24; pp[0035], Fig. 1).
Regarding claim 19, Snyder further teaches a downhole apparatus according to claim 18 wherein the one way valve is chosen from one of the following;
a ball non return valve (ball check valve; pp[0032], [0033])
a flapper non return valve,
a poppet non return valve,
an expanding rubber slit,
a deforming plastic shelf.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Snyder (US Publication No. 20230048753) in view of in view of Raglin (US Publication No. 20220170358).
Regarding claim 9, Smyder teaches a downhole apparatus according to claim 1.
Snyder discloses that the downhole apparatus forms part of a sucker rod pump or downhole pump assembly (pp[0031]), but fails to specify what other type of “downhole pump assembly” is used, such as an ESP system, which forces the reader to look elsewhere for such teachings.
Raglin, drawn to a sand and solids separator for downhole pumps, discloses wherein the downhole apparatus (50; pp[0022]) forms part of an ESP system (ESP; pp[0021]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Snyder such that the downhole apparatus is formed as part of an ESP system in place of the sucker rod pump, as taught by Raglin, as this would have required simple substitution of one known artificial lift system for another known artificial lift system to yield the same predictable results of separating and moving sand away from the pump in order to increase the life the down-hole assembly and/or decrease maintenance costs (pp[0021]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lamia Quaim whose telephone number is (469)295-9199. The examiner can normally be reached Monday-Friday 10AM - 6PM CST.
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/LAMIA QUAIM/Examiner, Art Unit 3676
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