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 December 19, 2025.
Applicant’s amendment to claim 1 overcomes the previously presented objection thereto.
Applicant’s amendment to claim 16 overcomes the previously presented 35 USC 112(b) rejection thereto.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that “Ligneul does not in fact teach said opening. Instead, Ligneul's device explicitly requires that, ‘[t]he pane 38 and sensing element 44 are embedded in an insulating body 46 such that the sensing element 44 is thermally insulated’ (see e.g., [0025]), thus there is no opening in Ligneul's housing 54 while in use.”
Figure 2 of Ligneul clearly shows that the housing 54 includes two openings. The fact that these openings are filled with other components is not an indication that they are not openings. There is no language in the claims that require the openings not be filled.
Applicant has argued that “Ligneul's ‘TCD’ sensor is not a perforating gun electrical component but instead provides fluid flow measurements after perforating the wellbore.”
While the sensor of Ligneul is not a perorating gun electrical component, the sensor of Scharf is. The rejection of claims 1, 7, and 13 has been updated accordingly.
Applicant has provided arguments against the rejection of claims 3, 4, 6, 9, 10, 12, 17, 18, and 20 as previously presented.
The rejection of these claims has been updated in view of the new rejection of claims 1, 7, and 13.
Applicant has argued that a “combination addressable switch and orienting sensor" “is not necessarily the same thing as an orienting sensor that ‘includes’ an addressable switch as stated in the Action. Yet the Action goes on to state that ‘Brad’ (sic) ‘includes an orientation switch, wherein the switch can be addressable.’ This makes reference to yet some other switch type, but it isn't clear what comprises an ‘orientation sensing switch’, which may imply a switch that is activated by a particular orientation.”
It is first noted that the term “combination” implies that the switch and sensor are, at least, in the same device if not the same element. As such, the switch of Brad including an orientation detector is considered a combination of a switch and orientation sensor.
Further, while the previous Office Action indicated that Brad taught an orientation switch, Brad also indicates that the orientation device can be a sensor or a switch and that this device is used to detect the orientation of a perforating gun before or during firing [0038].
Applicant has argued that the previous obviousness rejections lacked motivation or rational and thus was considered hindsight.
The previous rejections clearly provided specific motivation from the references themselves as each motivation statement included a citation from the teaching reference. As such, Applicant’s argument is not germane to the rejections as presented.
Applicant has argued that the “Action provides no basis for combining the apparatus of Ligneul which includes a post-perforating fluid flow measuring sensor with the various and sundry switch types of either Scharf and/or Bradley's perforating guns.”
Ligneul discloses that the measuring sensors can be used during or after perforating [0022] thus are not confined to “post-perforating” measurements as indicated by Applicant. Further, Ligneul discloses that the measuring devices an take the form of various types of fluid measurement devices and that multiple types of these sensors can be used simultaneously [0038] thus indicating that more than one type of sensor can be included on the perforating gun. Ligneul also discloses that the measuring devices can be used to provided azimuthal information [0029], [0039] thus showing that orientation information is also important in Ligneul.
Applicant has argued that “Ligneul, Scharf and Bradley are all silent as to the problem the present invention addresses which is to, ‘provide a simple method and form factor to position the switch and orienting sensor in correspondence with the angle of the shaped charges.’ (See present Specification [0010].)”
The test for obvious or the applicability of prior art references is not solely whether or not the references, alone or in combination, recognize or address the same problem addressed by the instant invention. A reference applied under 35 USC 103 must be either in the same field of endeavor or address the same problem. In the previously presented rejections, and those provided below, the references are considered to be in the same field of endeavor.
Applicant has argued that the “motivation is lacking where, as here, the primary reference (Ligneul) teaches a system with a very specific purpose (flow measurement) which is unassociated with the purpose of the present invention; while the secondary references discuss the very conventional and problematic approaches that the present invention intends to solve.”
As indicated above, Ligneul is not required to address the specific purpose of the present invention. Ligneul is considered analogous art in that it discloses the use of measurement devices located within modified shaped charge bodies, similar to that of the instant application. The secondary references have been used to show that it would be obvious for at least one of those measurement devices to be a switch and/or orientation sensor.
It is also noted that, while it is agreed that Ligneul focuses on fluid flow measurements, Ligneul also discloses that various types of sensors can be used alone or together [0038] and that these sensors can be used to provided azimuthal information [0029], [0039] thus showing that orientation information is also important in Ligneul. Specific motivation has been provided to show that the modification of Ligneul is obvious.
Applicant has argued that “Ligneul not only gives no indication of a need to incorporate an addressable switch and/or orienting sensor into their ‘shaped charge package’ specifically engineered to house and operate only a TCD flow sensor but would require a full re-engineering effort to do so which would ostensibly replace the TCD sensor; thus, making the modified Ligneul apparatus unsuitable for flow measurements, its intended purpose.”
The argument that Ligneul is only engineered to operate a TCD flow sensor is not an accurate representation of the reference. In paragraph [0038], Ligneul specifically indicates that various types of sensors can be used alone or together. It is further taught that these sensors can be used to provided azimuthal information [0029], [0039] thus showing that orientation information is also important in Ligneul. As such, the proposed modification of Ligneul would not require eliminating the flow measurement ability but would instead provide an orientation sensor/switch combination to be used in conjunction with the flow sensors.
Applicant has argued that “Aberdorn's 54 and 56 correspond to a ‘shoulder’ or ‘flanges’ on a shaped charge that interact with a ‘deformable retaining means’ (80 and 82) which appear as slots on the load tube in their figure 6, and thus neither structurally nor functionally describes indentations on an adaptor that snap fit into a load tube as recited in Claim 16.”
The adaptor of Ligneul is described as a modified shaped charge package [0026], [0027], [0029] as indicated in the previous Office Action and repeated below. As such, a teaching of a means for securing a shaped charge into a load tube would be applicable to the adaptor of Ligneul as it is essentially the same structure.
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 14 and 16 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.
Regarding claim 14: There is insufficient antecedent basis for “the lengthwise axis of the adaptor” in line 1 and “the axis of the load tube” in line 2.
Further and with respect to the “axis of the load tube”, the use of the term “axis” without any directional qualifier is considered overly broad as it encompasses an infinite number of axes.
Regarding claim 16: Claim 16, as modified, requires “a cutout”. It is unclear if this is the same cutout recited in claim 13 or a separate cutout. For the purposes of examination, they are being treated as the same feature.
Claim Rejections - 35 USC § 103
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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, 2, 5, 7, 8, 11, 13-15, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ligneul et al. (US 2014/0338439, Ligneul) in view of Scharf (WO 2023/227775).
Regarding claims 1, 7, and 13: Ligneul discloses a downhole perforating gun system 24, the system comprising:
an outer carrier tube 68;
a shaped charge load tube 66 – [0029], not labeled in the figures (see A in the reproduction of Figure 7 below) disposed within the outer carrier tube and having more than one cutout (see B in the reproduction of Figure 7 below);
at least one shaped charge 22 mounted within a first cutout of the load tube fig 7; and
an adaptor 54 mounted within a second cutout of the load tube Fig 7, [0029] – indicates that the measuring devices 20, 21 are located inside the carrier tube, wherein the adaptor comprises an adaptor body Fig 2, 4 having an upper first end at 48 and a lower second end below 52, a receptacle Fig 2, 4 located within the adaptor body having a first (see C in the reproduction of Figure 2 below) and a second (see D in the reproduction of Figure 2 below) opening on the adaptor body, wherein the first opening is disposed on the upper first end of the adaptor body Fig 2 and is configured to receive a perforating gun electrical component measuring devices 20, 21/36 – Fig 2, and the second receptacle opening is configured to provide connectivity to the electrical component via 50, 52 – Fig 2.
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Ligneul discloses all of the limitations of the above claim(s) except the electrical component being associated with the operation of the perforating gun.
The electrical component of Ligneul is a measuring device that is disclosed as being a fluid measurement device that can take several different forms [0038], that can be used together simultaneously [0038], and can take measurements during and after perforating [0022]. It is also disclosed that several measuring devices used together can be used to provide azimuthal information [0039].
Scharf discloses a perforating gun similar to that of Ligneul. The gun includes a load tube 104 in which a plurality of shaped charges 102 are mounted. Orientation sensors 1205 are also mounted in the load tube Fig 12, [0045] adjacent to the shaped charges [0045]. The orientation sensors are used to determine the orientation of the shaped charges [0045] and thus would be considered an electrical device of the perforating gun.
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 Ligneul so that the gun system included an electrical device that was associated with the perforating gun, as taught by Scharf, in order to have been able to orient the perforating gun relative to objects already in the well [0046]. This would have achieved the predictable results of ensuring that the perforating gun, and associated shaped charges, were oriented in the direction(s) necessary to achieve optimal perforation of the wellbore.
Regarding claims 2 and 8: Wherein the angular orientation of both the adaptor and a shaped charge are the same when mounted in the load tube [0029], Fig 7 of Ligneul.
Regarding claims 5, 11, and 19: Wherein the electrical component is an orienting sensor [0045] of Scharf.
Regarding claims 7 and 13: Wherein the adaptor body is configured to be mounted within and fixedly engage a cutout of a shaped charge load tube of a perforating gun “held” – [0030] of Ligneul.
Regarding claim 14: Wherein the lengthwise axis of the adaptor and the electrical component is parallel to the axis of the load tube that is perpendicular to the longitudinal axis of the load tube Fig 7 of Ligneul.
Regarding claim 15: Wherein the upper body of the adaptor further comprises a semi-circular curved surface with a radius of curvature that corresponds to the curvature of the shaped charge load tube the measuring device 20, 21 is mounted coplanar with the exterior of the load tube [0027], Fig 4 which is cylindrical as shown in Fig 7 of Ligneul; as such the outer surface of the adapter would need to be semi-circular to be coplanar therewith.
Claim(s) 3, 4, 6, 9, 10, 12, 17, 18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ligneul in view of Scharf as applied to claims 1, 7, and 13 above, and further in view of Bradley et al. (US 2024/0287877, Brad).
Regarding claims 3, 9, and 17: Ligneul, as modified, discloses all of the limitations of the above claim(s) except the electrical component being a switch.
Brad discloses a perforating gun that includes a switch that includes an orientation detector [0033], [0038]; the orientation detector being used to determining the orientation of the perforating guns before or during firing [0038].
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 Ligneul so that the electrical component, modified to be an orientation sensor by Scharf, included a switch, as taught by Brad, in order to have been able to control the detonation of the perforating gun when at the desired orientation [0033].
Regarding claims 4, 10, and 18: Wherein the switch is an addressable switch [0033], [0038] of Brad.
Regarding claims 6, 12, and 20: Ligneul, as modified, discloses all of the limitations of the above claim(s) except the electrical component being a combination of addressable switch and orienting sensor.
Brad discloses a perforating gun that includes an addressable switch that includes an orientation detector [0033], [0038]; the orientation detector being used to determining the orientation of the perforating guns before or during firing [0038]. The switch including an orientation detector is considered a combination of addressable switch and orienting sensor.
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 Ligneul so that the electrical component, modified to be an orientation sensor by Scharf, included a switch, as taught by Brad, in order to have been able to individually control the detonation of individual perforating gun when at the desired orientation [0033], [0038].
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ligneul in view of Scharf as applied to claim 13 above, and further in view of Appledorn et al. (US 4,800,815, Appledorn).
Ligneul, as modified, discloses that the adaptor is held in the load tube but fails to disclose that the body includes indentations configured to snap fit into a cutout of the shaped charge load tube. Ligneul does disclose that the body of the adaptor is a charge package modified to hold measuring devices [0026], [0027], [0029].
Appledorn disclose a perforating gun that includes a load tube 34. The load tube includes cutouts 36 into which shaped charges 38 are inserted and held by forcing retaining means 72, 74, 80, 82 into indentations 54, 56 in the body of the charge Fig 5, 6, 5:23-6:13. This movement would have resulted in the retaining means moving suddenly or snapping into the indentations.
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 Ligneul so that the adaptor body included indentations configured to snap fit into a cutout of the shaped charge load tube, as taught by Appledorn, in order to have used a reliable means for retaining the adaptor that was also economical and easily assembled 1:54-60.
Conclusion
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.
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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
1/12/2026