DETAILED ACTION
Non Final
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 .
Information Disclosure Statement
Each information disclosure statement (IDS) as submitted on 07/06/2026, 02/12/2026, 02/09/2026, 08/19/2025, 04/23/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 1-29 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.
Claims 1, 11 and 26 each recite “a change in noise”. It is unclear and/or uncertain (i.e. there appears to be a zone of uncertainty) from a reading of the claim as to what is intended by the term/phrase/idea and how such a term/phrase/idea should be interpreted. In other words, while it can be taken under a broad reasonable interpretation that the change is a distortion of some kind without reading limitations from the written description into the claim language itself, it is unclear of the limitation should be read as a change in quality, or power of a signal or emanation, or more generally as a change in amplitude, emanation ratio, dither etc…or more of a feedback that is the primary mode and not secondary mode or such troubling noise that disrupts the primary emanating source? In the interest of compact prosecution, the term/phrase will be given its broadest reasonable interpretation. Appropriate correction is required.
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)(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.
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.
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.
Claim(s) 1, 2, 5-8, 10-12, 15-18, 20-23 and 26-29 is/are rejected (as indefinitely understood) under 35 U.S.C. 102 (a)(1)/(a)(2) as being anticipated by Tubel (US 2002/0066309);
Claim(s) 3, 13 is/are rejected (as indefinitely understood) under 35 U.S.C. 103 as being unpatentable over Tubel as applied to claims 1, 2, 11, 12 (as indefinitely understood) above, and further in view of Lopez (US 10101715);
Claim(s) 4, 14 is/are rejected (as indefinitely understood) under 35 U.S.C. 103 as being unpatentable over Tubel as applied to claims 1, 2, 11, 12 (as indefinitely understood) above, and further in view of Greci (US 11255148);
Claim(s) 9, 19 is/are rejected (as indefinitely understood) under 35 U.S.C. 103 as being unpatentable over Tubel as applied to claims 1 and 11 (as indefinitely understood) above, and further in view of Seren (US 11879328);
Claim(s) 24 and 25 is/are rejected (as indefinitely understood) under 35 U.S.C. 103 as being unpatentable over Tubel as applied to claim 11 (as indefinitely understood) above, and further in view of Tegler (US 2020/0295640);
Tubel discloses in claim 1: A downhole tool (of 914 see figure 13 and abstract), comprising: a flow control device (904) coupleable with a tubing string (at 910 as shown therein), the flow control device configured to allow fluid to pass between an outside diameter (the sleeve device has an outside diameter of 904) of the tubing string and an inside diameter (and 904 sleeve device has an inside diameter as discussed and shown where the fluid flows in and out there through) of the tubing string; and a sensor (via 920 and see ph 0086) positioned proximate the flow control device (along the entire axis thereof), the sensor configured to sense for and send uphole operational data originating from the flow control device, the operational data in a form of a change in noise emanating from the flow control device (as discussed in ph 0087 the sensor can provided feedback from the flow control device based on acoustic noise/sound as the device operates for various purposes as discussed in ph's 0021, 0081-0089.)
Tubel discloses in claim 11: A well system (at 900 figure 13, ph 0085), comprising: a wellbore (902) extending through one or more subterranean formations (per figure 14b and discussion in ph 0087); a tubing string (at 910) located in the wellbore; and a downhole tool (of 914) positioned in the wellbore, the downhole tool including: a flow control device (904) coupled with the tubing string (at 910 as shown therein), the flow control device configured to allow fluid to pass between an outside diameter (the sleeve device has an outside diameter of 904) of the tubing string and an inside diameter (and 904 sleeve device has an inside diameter as discussed and shown where the fluid flows in and out there through) of the tubing string;and a sensor (via 920 and see ph 0086)positioned proximate the flow control device (along the entire axis thereof), the sensor configured to sense for and send uphole operational data originating from the flow control device, the operational data in a form of a change in noise emanating from the flow control device (as discussed in ph 0087 the sensor can provided feedback from the flow control device based on acoustic noise/sound as the device operates for various purposes as discussed in ph's 0021, 0081-0089.)
Tubel discloses in claim 26: [An apparatus that results from…] A method, comprising: positioning a downhole tool (of 914) coupled to a tubing string (910) within a wellbore (902), the downhole tool including: a flow control device (904) coupled with the tubing string, the flow control device configured to allow fluid to pass between an outside diameter (the sleeve device has an outside diameter of 904) of the tubing string and an inside diameter (and 904 sleeve device has an inside diameter as discussed and shown where the fluid flows in and out there through) of the tubing string; and a sensor (via 920 and see ph 0086) positioned proximate the flow control device (along the entire axis thereof); and sensing for and sending uphole operation data originating from the flow control device, the operational data in a form of a change in noise emanating from the flow control device (as discussed in ph 0087 the sensor can provided feedback from the flow control device based on acoustic noise/sound as the device operates for various purposes as discussed in ph's 0021, 0081-0089.)
Tubel discloses in claims 2, 12: wherein the flow control device is an inflow control device (904 is a sliding sleeve, choke, or fluid flow control device that provides inflow/outflow control ph 0085.)
Tubel discloses in claims 3, 13: wherein the inflow control device is a [electrically operated sliding sleeve or flow choke or restrictor] (904 figure 13, ph 0085) based inflow control device; Tubel Fig. 13 does not explicitly disclose: the inflow control device as a fluidic diode; although Lopez teaches: using a fluidic diode inflow control device (Col 3 ln 43-57, provided for the purpose of for example, regulating fluid pressure through the tubing string and controlling fluid there through at a determined rate.)
It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to provide Tubel Fig. 13 as taught in Lopez with a fluidic diode inflow control device (for the purpose of for example, regulating fluid pressure through the tubing string and controlling fluid there through at a determined rate.
Tubel discloses in claims 4, 14: wherein the inflow control device is an [electrically operated sliding sleeve] (904 figure 13); Tubel Fig. 13 does not explicitly disclose: an autonomous inflow control device; Greci discloses: using an autonomous inflow control device (for the purpose of flow control in a well bore, Col 10 ln 37-63.)
It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to provide Tubel Fig. 13 as taught in Greci with the use of an autonomous inflow control device (for the purpose of flow control in a well bore as taught in Greci.
Tubel discloses in claims 5, 15: wherein the inflow control device is an electronic inflow control device (the electronic sleeve is an electronically controlled inflow/outflow device 904).
Tubel discloses in claims 6, 16, 27 and 28: wherein the change in noise is a change in acoustic noise, a change in vibration noise, a change in electronic noise, or a change in mechanical noise emanating from the flow control device (per ph 0081-0089).
Tubel discloses in claims 7, 17: wherein the change in noise is a change in fluidic noise emanating from the flow control device (per ph 0081-0089).
Tubel discloses in claims 8, 18: wherein the operational data is a health of the flow control device, type of fluid flowing through the flow control device, composition of fluid flowing through the flow control device, density of fluid flowing through the flow control device, viscosity of fluid flowing through the flow control device, volume of fluid flowing through the flow control device, or flow rate of fluid flowing through the flow control device (the preceding considered an alternative grouping under MPEP 2131 based on the alternative language; and see ph 0081-0089 for the limitations discussed therein.)
Tubel discloses in claims 9, 19: The downhole tool as recited in claim 1, but Tubel does not disclose, although Seren teaches: using a sensor that is an electric cable employing an electronic hydrophone (Col 1 ln 28-44, where electric or fiber optic cables are operable with electronic hydrophones, all for the purpose of top side communication with the tool in the borehole.)
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to provide Tubel as taught in Seren with a sensor that is an electric cable employing an electronic hydrophone as taught in Seren, where electric or fiber optic cables can be operable with electronic hydrophones, all for the purpose of top side communication with the tool in the borehole. Comment: where it is noted that the prior art' s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed. See In re Fulton, 391 F.3d 1195, 73 USPQ2d 1141 (Fed. Cir. 2004); MPEP 2143.01 I.
Tubel discloses in claims 10, 20: wherein the sensor is a distributed acoustic sensor (270 figure 4) cable, or (MPEP 2131) distributed fiber optic sensor (921 is fiber optic) cable.
Tubel discloses in claims 21: The well system as recited in claim 20, further including an upper completion (top portion of 270 through the strata of figure 4 as applied to figure 13) and a lower completion (lower portion of 270 through the strata figure 4) associated with the tubing string, a junction being formed between (packers as shown) the upper completion and the lower completion, and further wherein the distributed acoustic sensor cable (272/274 carried via the…) extends from a surface of the wellbore past the junction and to an annulus between the flow control device and the wellbore (as shown to read the noise.)
Tubel discloses in claims 22: The well system as recited in claim 11, wherein the sensor is a distributed fiber optic sensor (921 is fiber optic cable that distributes the sensors there along) cable.
Tubel discloses in claim 23: The well system as recited in claim 22, further including an upper completion (top portion of 270 through the strata of figure 4 as applied to figure 13) and a lower completion (lower portion of 270 through the strata figure 4) associated with the tubing string (as applied to figure 13), a junction (packers as shown) being formed between the upper completion and the lower completion, and further wherein distributed fiber optic sensor (921 as applied to figure 13 carried via the…) cable extends from a surface of the wellbore past the junction and to an annulus between the flow control device and the wellbore (as shown to read the noises.)
Tubel discloses in claim 24: The well system as recited in claim 11, further including an upper completion (top portion of 270 through the strata of figure 4) and a lower completion (lower portion of 270 through the strata figure 4) associated with the tubing string, a junction (packers as shown) being formed between the upper completion and the lower completion, Tubel does not explicitly disclose, although Tegler teaches: utilizing a downhole power source (42/44 figure 2) positioned downhole of the junction (as necessary) and coupled to the flow control device (tool 30 with sensors 32, ph 0017, for the purpose of providing remote from the top side, a power source for powering the sensor and communication for logging while drilling.)
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to provide Tubel as taught in Tegler with the use of a downhole power source as taught in Tegler and positioned downhole of the junction (as necessary) and coupled to the flow control device or tool with sensors, all for the purpose of providing remote from the top side, a power source for powering the sensor and communication for logging while drilling.
Tubel discloses (as modified for the reasons discussed above) in claim 25: The well system as recited in claim 24, wherein the downhole power source includes a turbine and a generator (42/44), and further including circuitry (sensors and the like) positioned between the downhole power source and the flow control device.
Tubel discloses in claims 29: The method as recited in claim 26, wherein the change in noise is a movement of a movable feature of the flow control device (the tool movement with determination via acoustic directional distance, ph 0087-0089.)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW W JELLETT, whose telephone number is 571-270-7497. The examiner can normally be reached on Monday-Friday (9:30AM-6:00PM EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors can be reached by phone. Ken Rinehart can be reached at (571)-272-4881, or Craig Schneider can be reached at (571) 272-3607. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew W Jellett/Primary Examiner, Art Unit 3753
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