DETAILED ACTION
The preliminary amendment filed 4/8/2025 has been entered.
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 .
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 swivel (as in claims 15 and 19, and the tension and compression sensor (as in claims 15 and 19) 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.
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 17-21 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 17 recites further limitations of “the propulsion device” which is claimed in the alternative in claim 16, without positively specifying that the propulsion device is part of the claimed invention and therefore this claim is indefinite as it is not clear how it would be interpreted in embodiments without the propulsion device.
Claim 18 recites further limitations of “the orientation device” which is claimed in the alternative in claim 16, without positively specifying that the orientation device is part of the claimed invention and therefore this claim is indefinite as it is not clear how it would be interpreted in embodiments without the orientation device.
Claim 19 was amended on 4/8/2025 to explicitly include the limitations of claim 16, but these limitations were inserted twice within claim 19 and therefore claim 19 is indefinite.
Claim 19 also lacks antecedent basis for “the leading portion”, “the collecting device”, “the device longitudinal central axis”, “the elongated filter”, and “the collecting chamber” and is therefore further indefinite. It appears claim 19 should further include the limitations of claim 15 as providing the limitations of the tool string comprising the collecting device and will be further examined as such.
Claims 20 is indefinite as being dependent on an indefinite claim and recites “using the performance data to determine when efficient collection has ceased”. However, it is not clear what would be considered “efficient collection” and therefore it would also not be clear when such is “ceased” and therefore this claim is further indefinite.
Claim 21 is indefinite as being dependent on an indefinite claim.
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.
Claim(s) 1, 3-6, 8-10, 12-13 and 15 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Head et al. (US 2021/0164310).
In regard to claim 1, Head et al. disclose a collecting device (as in fig 1) for collecting debris within a wellbore, the collecting device comprises: a leading portion (top of 1), a trailing portion (bottom of 1), a wall (1) connecting the leading portion to the trailing portion, a collecting chamber (as within 20-25) on an inside of the wall, an inlet (at 2) at the leading portion, an outlet (at top of 1 as connected to portion with 3) at the trailing portion, and an elongated filter (any of 20-25, paragraph 72), the collecting device forms a device longitudinal central axis (as in fig 1 axis shown central to device) between the leading portion and the trailing portion, the elongated filter extends along the device longitudinal central axis in an offset position from the device longitudinal central axis (as in fig 1 any of 20-25 as shown) and forms a first end portion (as may be defined, e.g. any portion of fig 5) and a second end portion (as may be defined, e.g. any other portion of fig 5, note the end portions are not recited as being at opposite ends of the elongated filter and may be portions of the same end); the second end portion is positioned closest to the inlet (as in fig 1 as may be defined); the elongated filter forms a retentate side (outside of 20-25) and a permeate side (inside of 20-25); and the permeate side of the elongated filter being fluidly connected with the outlet (as in fig 1).
In regard to claim 3, Head et al. disclose wherein the collecting device comprises a support (77, fig 20), the support being adapted to maintain the offset position of the elongated filter (as in fig 20) and/or to adjust the offset position of the elongated filter from the device longitudinal central axis.
In regard to claim 4, Head et al. disclose wherein the elongated filter at the first end portion is formed with a first permeability (fig 5, 13 where permeability may be 0, paragraph 72) and the elongated filter at the second end portion (fig 5, 14, with mesh 15 as within; also note the end portions are not recited as being on opposite ends of the elongate filter) is formed with a second permeability (paragraph 72, with mesh 15 would provide some permeability above 0).
In regard to claim 5, Head et al. disclose wherein the elongated filter is formed with a plurality of permeabilities between the first end portion and the second end portion (with two permeabilities as above addressed in regard to claim 4).
In regard to claim 6, Head discloses wherein the first permeability is larger compared to the second permeability (as may be defined with first permeability that of the 15 and second that of surface of 13, as in paragraph 72).
In regard to claim 8, Head et al. disclose wherein the collecting device comprises a pumping system (as used with, see paragraphs 1-3, also paragraph 31) configured to form a fluid flow from the wellbore and into the collecting chamber via the inlet (as would occur with flow).
In regard to claim 9, Head et al. disclose wherein the collecting device comprises a motor (as in paragraph 31, where ESP and PCP described with motors, see paragraphs 1-2) adapted to energise the pumping system.
In regard to claim 10, Head et al. disclose wherein the collecting chamber is positioned on a suction side of the pumping system (paragraph 31 as solids prevented from “passing through” pump).
In regard to claim 12, Head et al. disclose wherein the collecting chamber is positioned on a discharge side of the pumping system (paragraph 31 as solid prevented from “settling on” the pump).
In regard to claim 13, Head et al. disclose wherein the elongated filter is replaceable (as in paragraphs 76-77, baskets appear replaceable).
In regard to claim 15, Head et al. disclose a downhole toolstring (as in fig 1) for collecting debris within a wellbore, the downhole toolstring is adapted to connect to a surface equipment via an elongated flexible member (paragraph 73), the downhole toolstring comprises; a collecting device comprising: a leading portion (top of 1), a trailing portion (bottom of 1), a wall (1) connecting the leading portion to the trailing portion, a collecting chamber (as within 20-25) on an inside of the wall, an inlet (at 2) at the leading portion, an outlet (at top of 1 as connected to portion with 3) at the trailing portion, and an elongated filter (any of 20-25, paragraph 72), the collecting device forms a device longitudinal central axis (as in fig 1 axis shown central to device) between the leading portion and the trailing portion, the elongated filter extends along the device longitudinal central axis in an offset position from the device longitudinal central axis (as in fig 1 any of 20-25 as shown) and forms a first end portion (as may be defined, e.g. any portion of fig 5) and a second end portion (as may be defined, e.g. any other portion of fig 5, note the end portions are not recited as being at opposite ends of the elongated filter and may be portions of the same end); the second end portion is positioned closest to the inlet (as in fig 1 as may be defined); the elongated filter forms a retentate side (outside of 20-25) and a permeate side (inside of 20-25); and the permeate side of the elongated filter being fluidly connected with the outlet (as in fig 1).
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) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Head et al. in view of Stephenson et al. (US 2014/0151065).
Head et al. disclose all the limitations of this claim, except for a duckbill valve in the inlet, although Head et al. do disclose a check valve (2) in the inlet. Stephenson et al. disclose that check valves as known in the art may include duckbill valves (paragraph 24). Therefore it would have been obvious to one of ordinary skill in the art to substitute the check valve of Head et al. for a duckbill valve as taught by Stephenson et al. since simple substitution of one known element for another to obtain predictable results is considered obvious to one of ordinary skill.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Head et al. in view of Krug (US 8,844,626).
Head et al. disclose all the limitations of this claim, as applied above, except for wherein the pumping system comprises a jet pump. Krug discloses that downhole systems for pumping fluids may include jet pumps (col. 2, lines 5-10). It would have been obvious to one of ordinary skill to one of ordinary skill in the art before the time of effective filing to substitute the pumping system of Head et al. for a jet pump, as taught by Krug, since simple substitution of one known element for another to obtain predictable results is considered obvious to one of ordinary skill (where pump type disclosed by Head et al. is known alternative as in Krug, col. 2, lines 5-10).
Claim(s) 14, 16-17 and 19-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Head et al. in view of Toge et al. (US 11,236,566).
In regard to claim 14, Head et al. disclose all the limitations of this claim, as applied to claim 1 above, except for wherein the collecting device comprises a fluid sensor adapted to measure performance data during use. Toge et al. disclose a collecting device comprising a fluid sensor (col. 9, lines 4-9) adapted to measure performance data during use. It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the device of Head et al. with a sensor, as taught by Toge et al. in order for an operator to monitor the filling of the collection chamber (col. 9, lines 4-25).
In regard to claim 16, Head et al. disclose all the limitations of this claim, as applied to claim 15 above, except for wherein the downhole toolstring comprises at least one of a swivel providing rotational freedom between the elongated flexible member (99) and the downhole toolstring, a release tool for disconnecting a portion of the downhole toolstring, a tension and compression sensor adapted for measuring forces along the device longitudinal central axis, an orientation device for rotating and orientating the collecting device around the device longitudinal central axis, and a propulsion device for providing a propulsive force. Toge et al. disclose a downhole toolstring comprising a propulsion device for providing a propulsive force (col. 2, lines 36-45). It would have been obvious to one of ordinary skill in the art before the time of effective filing to substitute the motive means of the toolstring of Head et al. with the propulsion device, as taught by Toge et al. since the simple substitution of one known element for another to obtain predictable results is considered obvious to one of ordinary skill.
In regard to claim 17, Toge et al. disclose wherein the propulsion device is at least one of a wireline operated tractor (col. 2, lines 36-45) and a wireline operated stroker.
In regard to claim 19, Head et al. disclose a method for collecting the debris within a wellbore, the method comprises the steps of: providing a downhole toolstring (as in fig 1); displacing the downhole toolstring into the wellbore and to a deviated part of the wellbore such that the leading portion is close to or adjacent the debris to be collected (inherent to wellbore where any inclination may be considered deviated); orienting the collecting device around the device longitudinal central axis such that the elongated filter is positioned on a high side within the collecting device (as in fig 1 any orientation would provide at least one filter, 20-25, as on a high side position); collecting the debris from the wellbore within the collecting chamber (as within 20-25); bringing the collecting device out of the wellbore (paragraph 30); and emptying the collecting device of collected debris outside the wellbore (inherent to collecting unwanted debris). Head et al. do not disclose wherein the downhole toolstring comprises at least one of a swivel providing rotational freedom between the elongated flexible member (99) and the downhole toolstring, a release tool for disconnecting a portion of the downhole toolstring, a tension and compression sensor adapted for measuring forces along the device longitudinal central axis, an orientation device for rotating and orientating the collecting device around the device longitudinal central axis, and a propulsion device for providing a propulsive force. Toge et al. disclose a downhole toolstring comprising a propulsion device for providing a propulsive force (col. 2, lines 36-45). It would have been obvious to one of ordinary skill in the art before the time of effective filing to substitute the motive means of the toolstring of Head et al. with the propulsion device, as taught by Toge et al. since the simple substitution of one known element for another to obtain predictable results is considered obvious to one of ordinary skill.
In regard to claim 20, Head et al. in view of Toge et al., as applied above, disclose all the limitations of this claim except for a fluid sensor and using the fluid sensor as claimed. Toge et al. disclose a method including providing a collecting device comprising a fluid sensor (col. 9, lines 4-9); measuring performance data in the collecting device using the fluid sensor (col. 9, lines 4-25); and using the performance data to determine when efficient collection has ended (col. 9, lines 4-25). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the method of Head et al. with a sensor, as taught by Toge et al. in order for an operator to monitor the filling of the collection chamber (col. 9, lines 4-25).
In regard to claim 21, Head et al. also disclose adapting at least one of the offset positions of the elongated filter and the elongated filter for the debris to be collected (paragraph 78 where sizes and positioned would be adjusted based on debris to be collected). Head et al. do not disclose evaluating a fill-percentage of the collected debris within the collecting chamber or explicitly disclose performing a subsequent collection run. Toge et al. disclose a method including evaluating a fill-percentage of collected debris (col. 9, lines 4-25). It would have been obvious to one of ordinary skill at the time of effective filing to provide the method of Head et al. with the evaluating as taught by Toge et al. in order for an operator to monitor the filling of the collection chamber (col. 9, lines 4-25). Neither Head et al. or Toge et al. appear to explicitly disclose performing a subsequent collection run. However, it would have been obvious to one of ordinary skill in the art before the time of effective filing to perform a subsequent collection run in order to collect more debris from the wellbore.
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, 3-6, 15, 19-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7 and 23 of copending Application No. 19/173,267 (hereinafter ‘267). Although the claims at issue are not identical, they are not patentably distinct from each other because, e.g., instant claim 1 is generic to all that is recited in claim 6 of ‘267. In other words, claim 6 of ‘267 fully encompasses the subject matter of claim 1 and therefore anticipates claim 1. Since claim 1 is anticipated by claim 6 of the ‘267, it is not patentably distinct from claim 6. Thus the invention of claim 6 of ‘267 is in effect a “species” of the “generic” invention of claim 1. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 1 is anticipated (fully encompassed) by claim 6 of ‘267, claim 1 is not patentably distinct from claim 6, regardless of any additional subject matter present in claim 6. Claims 3-6, 15 and 19-21 also appear encompassed by claims 6-7 and 23 of ‘267.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 18 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
Conclusion
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/D. ANDREWS/Primary Examiner, Art Unit 3672 2/4/2026