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 .
Status of Claims
This action is in reply to the Applicant’s claims, filed on 12/09/2025.
Claim 2 has been amended.
Claims 1-23 are currently pending and have been examined.
Response to Amendment
The amendment filed 12/09/2025 has been entered. Claims 1-23 remain pending in the application.
Applicant’s amendment to claim 2 has overcome the 35 U.S.C 112(b) rejection previously set forth; however, Applicant’s argument regarding the 35 U.S.C 112(b) rejection for claim 11 has been considered, found not persuasive, and the rejection maintained as set forth in the Non-Final Office Action filed 10/01/2025.
Applicant's arguments and amendment to claim 2 has been considered and found not persuasive. The prior art rejections made in Final Office Action dated 10/01/2025 remain and are repeated below with the amended language. Although the amended claims have been further limited, the amended claims still read on the prior art of record, as each newly added limitation is taught by the applied references as explained in the updated claim rejections below.
Applicant’s argument that claim 11 further limits claim 9 has been considered but is not persuasive. Applicant asserts that claim 9 is neutral with respect to the placement of the collection chamber relative to the pumping system. However, under well-established principles of hydraulic flow mechanics, in order for a pumping system draw fluid from the wellbore and into (emphasis added) the collection chamber via an inlet, a suction force is required within the collection chamber. This functional requirement inherently requires the collection chamber to be positioned on the suction side of the pumping system. Accordingly, claim 9 is not neutral as argued, and claim 11 fails to clearly set forth the scope of the claimed invention. Therefore the 35 U.S.C. 112(b) rejection is maintained.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., control a fluid flow path to control the displacement of debris contained within the fluid flow) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant’s argument that Perez does not teach a filter with varying properties along its length to control a fluid flow path, has been considered but is not persuasive. Perez expressively teaches a screen with varying longitudinal changes in the properties of the screen wherein the screen varies the flow properties over the surface of the screen (Fig. 2). This variation causes differential flow characteristics along the length of the screen, thereby controlling how the fluid flows along and through the screen.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the combination of Toge and Perez would have been obvious to a person of ordinary skill in the art at the time of the invention. Both references are directed to controlling debris and fluid flow in a wellbore. Substituting the filter of Toge for the screen of Perez would have represented a predictable use of known elements according to their known functions. As recognized in KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), it is proper to combine known elements according to known methods to yield predictable results, even if the references do not expressly teach the combination. The combination of known fluid handling and debris filtration elements in different downhole tools reflects a predicable use of well-known technology. The result of combining these know elements would have been predictable to one of ordinary skill because each component performs its well-understood 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.
Claim 11 is 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 11 recites the limitation: collecting chamber is positioned on a suction side of the pumping system. It is unclear how the additional limitation is further limiting the scope of the invention. The limitation recited in claim 11 does not further define or restrict the scope of the invention as claim 9 recites: pumping system configured to form a fluid flow from the wellbore and into the collecting chamber. Based upon claim 9, the collecting chamber is inherently positioned on the suction side of the pumping system as fluid flow is formed from the wellbore into the collection chamber through the inlet.
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 1-4, 8-13, 16-18, and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Toge et al. (US11236566) in view of Perez (US20220341296).
Claim 1. Toge discloses: A collecting device (1 collection device, Fig. 1) for collecting debris (91 material, Fig. 1) within a wellbore, the collecting device comprises (abstract): a leading portion (11 leading portion, Fig. 1), an opposite trailing portion (12 end portion, Fig. 1), a wall (4 wall, Fig. 1) connecting the leading portion to the trailing portion (Fig. 1); a collecting chamber (5 collection chamber, Fig. 1) on an inside of the wall, an inlet (23 inlet, Fig. 1) at the leading portion, an outlet (69 outlet, Fig. 1) at the trailing portion, and an elongated filter (7 filter stocking, Fig. 1); the collecting device forms a device longitudinal central axis between the leading portion and the trailing portion (Fig. 1), the elongated filter extends along the device longitudinal central axis and forms a first end portion (12 end portion, Fig. 1) and an opposite second end portion (11 leading portion, Fig. 1), wherein the elongated filter forms a retentate side (91 material is retained withing 7 filter stocking; Col. 8, lines 53-55) and a permeate side (liquid…passes through the 7 filter stocking; Col. 8. Lines 55-58); and the permeate side of the elongated filter is fluidly connected with the outlet (liquid…flows into 6 pump…out to the outside through 69 outlet; Col. 8, lines 59-61), the second end portion is positioned closest to the inlet. Toge does not teach: the elongated filter at the first end portion is formed with a first permeability and the elongated filter at the second end portion is formed with a second permeability.
Perez discloses a system and methodology for filtering debris wherein the system utilizes a changing permeability along its length. Perez teaches: the elongated filter (12 media, Fig. 2; difference in properties over a longitudinal length of the media 12, [0013, 0018]) at the first end portion is formed with a first permeability (22, Fig. 2) and the elongated filter at the second end portion is formed with a second permeability (26, Fig. 2).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have substituted the filter of Toge for the media of Perez in order to have differing permeability along the length of the media as taught by Perez with a reasonable expectation of success in order to create a filtration system with the ability to filter fluids having different viscosities of densities or both differently as taught by Perez ([0013]).
Claim 2. Toge in view of Perez teach, as best understood: The collecting device according to claim 1, wherein the elongated filter comprises a plurality of intermediate permeability regions between the first end portion and the second end portion (Perez: 24, plurality of intermediate regions between 22 and 26; Fig. 2; see previously rejected claim 1).
Claim 3. Toge in view of Perez teach: The collecting device according to claim 1, wherein the first permeability is larger compared to the second permeability (Perez, Fig. 2; as illustrated, property of 22 is larger than property of 26).
Claim 4. Toge in view of Perez teach: The collecting device according to claim 1, wherein the inlet comprises a duckbill valve (Toge: 83 duckbill valve, Fig. 1).
Claim 8. Toge in view of Perez teach: The collecting device according to claim 1, wherein an annular clean space (Toge: annulus formed between the 7 filter stocking and 4 wall is free of debris, Fig. 1) is formed between the permeate side of the elongated filter and the wall.
Claim 9. Toge in view of Perez teach: The collecting device according to claim 1, wherein the collecting device comprises a pumping system (Toge: 6 pump, Fig. 1) configured to form a fluid flow from the wellbore and into the collecting chamber via the inlet (Fig. 1, flow arrows; pump suction side pulls fluid into the inlet).
Claim 10. Toge and Perez teach: The collecting device according to claim 9, wherein the collecting device comprises a motor (31 motor, Fig. 1) adapted to energise the pumping system.
Claim 11. Toge and Perez teach, as best understood: The collecting device according to claim 9, wherein the collecting chamber is positioned on a suction side of the pumping system (see previously rejected claim 9).
Claim 13. Toge and Perez teach: The collecting device according to claim 9, wherein the collecting chamber is positioned on a discharge side of the pumping system (Toge: 91 material enters…7 stocking filter through…6 pumps pressure side, Fig. 3; Col. 8, lines 4-8).
Claim 14. Toge and Perez teach: The collecting device according to claim 1, wherein the elongated filter is replaceable (Toge: filter is removable and replaceable; Col. 4, lines 64-66).
Claim 15. Toge and Perez teach: The collecting device according to claim 1, wherein collecting device comprises a fluid sensor (Toge: 17 pressure sensor or 18 flow rate sensor; Fig. 1) adapted to measure performance data during use (Toge: Col. 9, lines 4-9).
Claim 16. Toge discloses: A downhole tool string for collecting debris within a wellbore,
the downhole tool string is adapted to connect to a surface equipment (communicated to operator at a surface: Col. 9, lines 8-9) via an elongated flexible member (19 cable, Fig. 1), wherein the downhole tool string comprises: a collecting device comprising: a leading portion, an opposite trailing portion, a wall connecting the leading portion to the trailing portion, a collecting chamber on an inside of the wall, an inlet at the leading portion, an outlet at the trailing portion, and an elongated filter;
the collecting device forms a device longitudinal central axis between the leading portion and the trailing portion; the elongated filter extends along the device longitudinal central axis and forms a first end portion and an opposite second end portion, wherein the second end portion is positioned closest to the inlet; the elongated filter forms a retentate side and a permeate side; and the permeate side of the elongated filter is fluidly connected with the outlet (see previously rejected claim 1). Toge does not disclose: the elongated filter at the first end portion is formed with a first permeability and the elongated filter at the second end portion is formed with a second permeability.
Perez teaches: the elongated filter at the first end portion is formed with a first permeability and the elongated filter at the second end portion is formed with a second permeability (see previously rejected claim 1).
Claim 17. Toge in view of Perez teach: The downhole tool string according to claim 16, wherein the downhole tool string comprises at least one of a swivel providing rotational freedom between the elongated flexible member and the downhole tool string, a release tool for disconnecting a portion of the downhole tool string, 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: wireline tractor, Col. 6, lines 25-28).
Claim 18. Toge in view of Perez teach: The downhole tool string according to claim 17, wherein the propulsion device is at least one of a wireline operated tractor and a wireline operated stroker (see previously rejected claim 17).
Claim 20. Toge discloses: A method for collecting debris within a wellbore, the method comprises the steps of: providing a downhole tool string comprising a collecting device (Fig. 1), the collecting device comprising: a leading portion, an opposite trailing portion, a wall connecting the leading portion to the trailing portion, a collecting chamber on an inside of the wall, an inlet at the leading portion, an outlet at the trailing portion, and an elongated filter; the collecting device forms a device longitudinal central axis between the leading portion and the trailing portion; the elongated filter extends along the device longitudinal central axis and forms a first end portion and an opposite second end portion; the second end portion is positioned closest to the inlet; the elongated filter forms a retentate side and a permeate side; and the permeate side of the elongated filter is fluidly connected with the outlet; displacing the downhole tool string into the wellbore such that the leading portion is near or adjacent the debris to be collected; collecting the debris from the wellbore within the collecting chamber (7 filter stocking is filled up with 91 material; Col. 9, line 57); bringing the collecting device out of the wellbore (collecting device is retrieved to surface; Col. 9, line 57-61); and emptying the collecting device of collected debris outside the wellbore (collecting chamber is emptied of collected 91 material; Col. 10, line 3; see previously rejected claim 1). Toge does not disclose: wherein the elongated filter at the first end portion is formed with a first permeability and the elongated filter at the second end portion is formed with a second permeability.
Perez teaches: wherein the elongated filter at the first end portion is formed with a first permeability and the elongated filter at the second end portion is formed with a second permeability (see previously rejected claim 1).
Claim 21. Toge in view of Perez teach: The method according to claim 20, wherein the method comprises the steps of: providing the collecting device with a fluid sensor; measuring performance data in the collecting device using the fluid sensor (see previously rejected claim 15); and using the performance data to determine when efficient collection has ceased (Toge: 18 sensor detects…diminished or ceased flow…full of material or clogged; Col. 9, lines 4-9).
Claim 22. Toge in view of Perez teach: The method according to claim 20, wherein the method comprises the steps of: evaluating a fill-percentage of the collected debris within the collecting chamber (Toge: filling of 91 material progresses, 17 pressure sensors will report a pressure decrease…progress of filling the 17 filter stocking; Col. 9, lines 20-25); adapting the elongated filter for the debris to be collected (Toge: mesh size of 7 filter stocking is chose according to known or estimated particle size; Col. 6, lines 55-60); and performing a subsequent collection run (Toge: ready for a new trip withing the well; Col. 4, line 66-67).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Toge et al. (US11236566) in view of Perez (US20220341296) and Juhlin et al. (US9890605).
Claim 5. Toge in view of Perez teaches: The collecting device according to claim 1. Toge in view of Perez does not disclose: an annular collecting space is formed between the retentate side of the elongated filter and the wall.
Juhlin discloses an apparatus for downhole separation and removal of particulate matter wherein debris is suctioned into a collection device and retained in an annular area formed between the retentate side and the wall of the collection device. Juhlin teaches: an annular collecting space (5 collection chamber, Fig. 1) is formed between the retentate side (silt part of material is retained in 5 collection chamber, Fig. 1; Col. 4, lines 54-55) of the elongated filter (40 screen, Fig. 1) and the wall (4 wall, Fig. 1).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have substituted the collection device of Toge for the collection device of Juhlin to retain debris in an annular area formed between the retentate side and the wall as taught by Juhlin with a reasonable expectation of success in order to create a filtration system wherein the debris is vacuumed into the bore, collected in the annular collection chamber formed between the retentate side and the wall of the collection device, allow fluid to pass through the filter, and can transport the collected particulate matter to the surface as taught by Juhlin (Fig. 1;Col. 1, lines 14-21; Col. 4, lines 44-61).
Claims 6-7 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Toge et al. (US11236566) in view of Perez (US20220341296), Juhlin et al. (US9890605), and Whiteley et al. (US5107927).
Claim 6. Toge in view of Perez and Juhlin teach: The collecting device according to claim 5. Toge in view of Perez and Juhlin does not disclose: wherein the elongated filter is in an offset position from the device longitudinal central axis.
Whiteley discloses an offset positing apparatus for positioning a sand screen substantially within the lower half of a horizonal wellbore and manipulating the apparatus to a predetermined orientation within the wellbore. Therefore, Whiteley teaches: wherein the elongated filter (S screen, Fig. 3-4) is in an offset position from the device longitudinal central axis (S screen is offset as shown in Fig. 3-4).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the collection device of Toge to offset the filter from the longitudinal central axis as taught by Whiteley with a reasonable expectation of success in order to position the filter into an offset position, by utilizing various offsetting support structures, to permit free flow of fluids when the screen is placed into a horizonal wellbore as taught by Whitely (Col. 6, lines 17-21).
Claim 7. Toge in view of Perez, Juhlin, and Whiteley teach: The collecting device according to claim 6. Toge in view of Perez, Juhlin and Whiteley does not disclose: wherein the collecting device comprises a support, the support being adapted to maintain the offset position of the elongated filter and/or to adjust the offset position of the elongated filter from the device longitudinal central axis.
Whiteley further teaches: the collecting device comprises a support, the support being adapted to maintain the offset position of the elongated filter and/or to adjust the offset position of the elongated filter from the device longitudinal central axis (42 roll collars, 48 orienting blades, and V flow vane; Fig. 4).
Claim 23. Toge in view of Perez: The method according to claim 20. Toge does not disclose: wherein the method further comprises the steps of: displacing the downhole tool string to a deviated part of the wellbore; and orientating the collecting device around the device longitudinal central axis such that the elongated filter in an offset position is positioned in a high side position within the collecting device.
Whiteley further teaches: displacing the downhole tool string to a deviated part of the wellbore (12 horizontal well bore, Fig. 3); and orientating the collecting device around the device longitudinal central axis (see previously rejected claim 6).
Regarding the limitation: elongated filter in an offset position is positioned in a high side position within the collecting device, Whitely discloses the claimed invention except for the filter being oriented in a high side position. However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to reverse the orientation of the filter to the high side along the longitudinal axis (reverse of Fig. 3) with a reasonable expectation of success, since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Toge et al. (US11236566) in view of Perez (US20220341296) and Anderson (US3023810).
Claim 12. Toge in view of Perez teach: The collecting device according to claim 9. Toge in view of Perez does not disclose: wherein the pumping system comprises a jet pump.
Anderson discloses an apparatus utilizing a jet pump to create a suction within a well tool to draw debris into the well tool to be collected. Therefore, Anderson teaches: the pumping system comprises a jet pump (38 jet pump, Fig. 1).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the pump of Toge with a jet pump as taught by Anderson with a reasonable expectation of success in order to create a suction within a well tool to draw debris into the well tool to be collected as taught by Anderson (Col. 1, lines 40-43).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Toge et al. (US11236566) in view of Perez (US20220341296) and Hall (U7866384).
Claim 19. Toge and Perez teach: The downhole tool string according to claim 17. Toge does not disclose: wherein the orientation device is configured to be controlled by an operator via the elongated flexible member, or to autonomously orient the collecting device to a predetermined orientation around the device longitudinal central axis.
Hall discloses an apparatus for orienting a tool in the wellbore utilizing a body and rollers. Therefore, Hall teaches: the orientation device is configured to be controlled by an operator via the elongated flexible member, or to autonomously orient the collecting device to a predetermined orientation around the device longitudinal central axis (10 downhole sub, Fig. 1; Col. 1, lines 49-56).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the system of Toge by incorporating the orienting apparatus as taught by Hall with a reasonable expectation of success in order the orient the collection device to a predetermined orientation as taught by Hall (Col. 1, lines 49-56).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Riisem (US20140014357) teaches a system and methodology for filtering sand wherein the inflow area changes along the length of the system. Flores (US20220341296) teaches a filtration media being of single-piece unitary construction and exhibiting varying flow properties over a surface area of the media. Richards (US20070246212) teaches a filter assembly having a restriction to flow which varies in a direction parallel to the longitudinal axis.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Daniel Craig whose telephone number is (571)270-0747. The examiner can normally be reached M-Thurs 7:30 AM to 5:00 PM CST.
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/DANIEL T CRAIG/Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676