Detailed Action
Status of Claims
Claims 1-21 are currently pending and addressed below.
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 .
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 & 10 of Copending Application No. 18/535,374 in view of Gleitman (US Pub No 20200370375).
Claims 1 & 10 of copending Application No. 18/535,374 disclose a cable, superconducting material, one cryogenic supply channel, one or more cryogenic liquid return channels. Claims 1 & 10 do not disclose the down hole tool is a bottom hole assembly. Gleitman (US Pub No 20200370375) however discloses a downhole tool can include a bottom hole assembly. In view of the teachings of Gleitman (US Pub No 20200370375) it would have been obvious to one having ordinary skill in the art to modify claim 1 & 10 of Copending Application No. 18/535,374 to include the Bottom hole assembly as a downhole tool as taught by Gleitman (US Pub No 20200370375), paragraph [0005] Pulsed power drilling downhole assembly [0024] downhole tools in the teaching (PPD assembly) can be used on offshore platforms, drill ships, semi-submersibles and drilling barges) .
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 2 is rejected for being patentably indistinct from claim 2 of copending Application No. 18/535,374
Claim 15 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of Copending Application No. 18/535,374 in view of Gleitman (US Pub No 20200370375).
Claim 17 of copending Application No. 18/535,374 discloses a cable, superconducting material, one cryogenic supply channel, one or more cryogenic liquid return channels. Claim 17 does not disclose the down hole tool is a bottom hole assembly. Gleitman (US Pub No 20200370375) however discloses a downhole tool can include a bottom hole assembly. In view of the teachings of Gleitman (US Pub No 20200370375) it would have been obvious to one having ordinary skill in the art to modify claim 17 of Copending Application No. 18/535,374 to include the Bottom hole assembly as a downhole tool as taught by Gleitman (US Pub No 20200370375), paragraph [0005] Pulsed power drilling downhole assembly [0024] downhole tools in the teaching (PPD assembly) can be used on offshore platforms, drill ships, semi-submersibles and drilling barges) .
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 16 is rejected for being patentably indistinct from claim 18 of copending Application No. 18/535,374
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 16-18 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.
The metes and bounds of Claim 16 are ambiguous as the claim language states “at least a cryogenic liquid” as antecedent basis was established for a cryogenic liquid in claim 15 it renders the claim language indefinite as to whether if claim 16 is introducing another cryogenic liquid or if the claim language is referring to the cryogenic liquid of claim 15.
Claim 16 is rejected on this basis.
Claims 17-18 are rejected for depending on a rejected claim.
Examiner assumes claim language similar to claim 2 was intended for claim 16 for examination purposes.
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(s) 1-3, 6-8, 10, 12 and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dirksen (US Pub No 20130032400) in view of Parsche (US Pub No 20140131044)
Dirksen discloses in claim 1. A system comprising:
a bottom hole assembly (Dirksen Fig 4; [0032] discloses a bottom hole pulsed drilling assembly);
and a cable (Dirksen Fig 1; 30 [0017] cable providing power to the downhole device) comprising:
a high voltage cable configured to provide at least power to the bottom hole assembly (Dirksen Fig 1; 30 [0017] cable providing power to the downhole device);
one or more liquid supply channels (Dirksen Fig 4; 46 [0032] fluid supply channel) configured to supply at least a cryogenic liquid (Dirksen [0028] liquid nitrogen) to reduce temperature of the high voltage cable (Dirksen Fig 4; 46 [0032] fluid supply channel [0014] precooling the drilling fluid to improve drill bit performance by eliminating heat build up [0028] using liquid nitrogen) during a drilling operation (Dirksen Fig 4; 46 [0032] fluid supply channel [0014] precooling the drilling fluid to improve drill bit performance by eliminating heat build up);
and one or more liquid return channels (Dirksen Fig 4; 48 [0032] fluid return channel).
Dirksen discloses a downhole power cable but does not disclose if the cable would comprise a superconducting material.
However, Parsche discloses a power cable that comprises: a superconducting material (Parsche Fig 2-3; 43, 46 [0038] [0041] disclosing a first and second superconducting material as part of the cable)
As both Dirksen and Parsche both disclose cables for transmitting power to a downhole tool, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to substitute the high voltage cable of Dirksen for the Superconducting cable of Parsche in order to achieve the predictable result of providing power via cable to downhole assembly.
Dirksen et al discloses in claim 2. The system of claim 1, further comprising one or more cryogenic pumps (Dirksen Fig 2; 40 [0028] injector for adding a stream of liquid nitrogen), wherein the one or more cryogenic pumps are disposed in line with the cable and disposed on a coil tubing (Dirksen Fig 2; 40 [0028] injector for adding a stream of liquid nitrogen disposed inline of the downhole tool).
Dirksen et al discloses in claim 3. The system of claim 1, wherein the superconducting material is disposed within a high temperature superconducting (HTS) tape (Parsche [0017] super conductive tape).
Dirksen et al discloses in claim 6. The system of claim 1, wherein the cable further comprises an outer jacket configured to protect the cable (Parsche Fig 3; 52 [0048] protective outer jacket)).
Dirksen et al discloses in claim 7. The system of claim 6, wherein the cable further comprises an insulator (Parsche Fig 3; 51 [0048] insulation layer) separating an inner jacket (Parsche Fig 3; 51 [0048] insulation layer 51 is separate from the outer jacket) from the outer jacket (Parsche Fig 3; 52 [0048] protective outer jacket) configured to insulate the cable (Parsche [0048] inner insulation layer separates further interior of the wire from outer jacket).
Dirksen et al discloses in claim 8. The system of claim 1, wherein the cable further comprises a negative potential (Parsche [0048] dielectric outer jacket 52).
Dirksen et al discloses in claim 10. The system of claim 1, wherein the cryogenic liquid is nitrogen (LN2), liquid (Dirksen Fig 2; 40 [0028] injector for adding a stream of liquid nitrogen disposed inline of the downhole tool)
Dirksen et al discloses in claim 12. The system of claim 1, wherein the power delivered via the cable is 1W - 10MW and a voltage is .01V - 10MV (Parsche [0050] 5-10 MW) and a voltage is .01V - 10MV (Parsche [0032] breakdown voltage for liquid nitrogen 70kV).
Dirksen discloses in claim 15. A method comprising:
disposing a bottom hole assembly (Dirksen Fig 4; [0032] discloses a bottom hole pulsed drilling assembly) into a wellbore (Dirksen Fig 1; 16 wellbore);
and disposing a cable (Dirksen Fig 1; 30 [0017] cable providing power to the downhole device) into the wellbore comprising:
a high voltage cable configured to provide at least power to the bottom hole assembly (Dirksen Fig 1; 30 [0017] cable providing power to the downhole device);
one or more liquid supply channels (Dirksen Fig 4; 46 [0032] fluid supply channel) configured to supply at least a cryogenic liquid (Dirksen [0024] liquid nitrogen) to reduce temperature of the high voltage cable (Dirksen Fig 4; 46 [0032] fluid supply channel [0014] precooling the drilling fluid to improve drill bit performance by eliminating heat build up) during a drilling operation (Dirksen Fig 4; 46 [0032] fluid supply channel [0014] precooling the drilling fluid to improve drill bit performance by eliminating heat build up via [0024] liquid nitrogen);
and one or more liquid return channels (Dirksen Fig 4; 48 [0032] fluid return channel).
Dirksen discloses a downhole power cable but does not disclose if the cable would comprise a superconducting material.
However, Parsche discloses a power cable that comprises: a superconducting material (Parsche Fig 2-3; 43, 46 [0038] [0041] disclosing a first and second superconducting material as part of the cable)
As both Dirksen and Parsche both disclose cables for transmitting power to a downhole tool, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to substitute the high voltage cable of Dirksen for the Superconducting cable of Parsche in order to achieve the predictable result of providing power via cable to downhole assembly.
Dirksen et al discloses in claim 16. The method of claim 15, further comprising pumping at least a cryogenic liquid with one or more cryogenic pumps (Dirksen Fig 2; 40 [0028] injector for adding a stream of liquid nitrogen), wherein the one or more cryogenic pumps are disposed in line with the cable and disposed on a coil tubing (Dirksen Fig 2; 40 [0028] injector for adding a stream of liquid nitrogen disposed inline of the downhole tool).
Claim(s) 4-5 & 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dirksen (US Pub No 20130032400) in view of Parsche (US Pub No 20140131044) as applied to claim 1 & 15 above, and further in view of Mitzuno (US Pub No 20240161953).
In regards to claim 4 Dirksen et al does not disclose an adhesive layer with the super conducting tape. However, Mizuno discloses Superconducting tape with an adhesive layer (Mizuno [0059] & [0061] superconductive tape with adhesive layer) to adhere the super conducting tape to another layer.
It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to have modified Dirksen et al to include adhesive as taught by Mitzuno for the purpose of adhering the super conducting tape to another layer.
Dirksen et al disclose in claim 5. The system of claim 4, wherein the cable further comprises a copper shield wire configured to prevent the fluid from directly contacting the HTS tape. (Parsche Fig 3 42 [0037] material layer may be a copper layer between coolant tube 41 and super conductive layer 43)
Dirksen et al discloses in claim 19. The method of claim 15, wherein the superconducting material is disposed within a high temperature superconducting (HTS) tape (Parsche [0017] super conductive tape)
Parsche does not disclose an adhesive layer with the super conducting tape. However, Mizuno discloses Superconducting tape with an adhesive layer (Mizuno [0059] & [0061] superconductive tape with adhesive layer) to adhere the super conducting tape to another layer.
It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to have modified Dirksen et al to include adhesive as taught by Mitzuno for the purpose of adhering the super conducting tape to another layer.
Dirksen et al. disclose in claim 20. The method of claim 19, wherein the cable further comprises a copper shield wire configured to prevent the cryogenic liquid from directly contacting the HTS tape. (Parsche Fig 3 42 [0037] material layer may be a copper layer between coolant tube 41 and super conductive layer 43)
Claim(s) 11, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dirksen (US Pub No 20130032400) in view of Parsche (US Pub No 20140131044) as applied to claim 1 & 15 above, and further in view of Gleitman (US Pub No 20200370375).
Dirksen et al disclose in claim 11. The system of claim 1 but are silent as the means of communication downhole to the drill bit.
However, Gleitman discloses: the cable further comprises at least one of a fiber optic or coaxial communication cable (Gleitman [0035] optical fiber line may be enclosed within a slickline, wireline [0089] optical cable can be used as communication in combination with a cable to supply actuation power).
It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to have modified Dirksen et al to include an optical fiber line as taught by Gleitman for the purpose of communication from the surface to the drillbit downhole.
Dirksen et al disclose in claim 13. The system of claim 1, but are silent as specific construction of the pulsed drill bit.
However, Gleitman discloses: the bottom hole assembly further comprises one or more capacitors (Gleitman [0030] downhole assembly contains capacitors)
It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to have modified Dirksen et al to include a capacitor as taught by Gleitman for the purpose of storing charge downhole.
Allowable Subject Matter
Claim 21 allowed.
Claim 21 is indicated as allowable as the best prior art for the claims as written, Dirksen et al. does not teach connecting the negative potential to the positive potential of a power source and connecting a positive potential to a negative potential power source. It could be argued that the capability for the claimed connection is generally known or easily conceived in the art and thus, could just be assembled to disclose the claimed invention. However, the instant invention clearly and specifically recites structural relationships and combinations, which require a greater effort than just cobbling together known structures. The examiner could find no motivation to combine or modify the references which would define a fully functioning apparatus as claimed in the instant application.
Claims 9 & 14 are 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.
Claims 17-18 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.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 14 is indicated as allowable as the best prior art for the claims as written Dirksen et al from above, teaches all the prior limitations of independent claim 1 and dependent claim 13 but Dirksen et al does not teach a boost charger is configured to increase DC power received from the cable at least partially in parallel with a storage of the DC power in the one or more capacitors. Sedano (US Pub No 20220195866) teaches a similar system containing a boost charger, and capacitor however modification to Dirksen et al. to include the limitations of claim 14 would rely on hindsight reasoning to modify to meet the limitations of claim 14 as written. Therefore, the limitations of claim 14 if included with the limitations of claim 1 and 13 as written overcome would be considered allowable subject matter.
Claims 9 & 17-18 are indicated as allowable as the best prior art for the claims as written, Dirksen in view of Parsche from above, teaches all the limitations of the independent claims 1 & 15 and dependent claims 8 & 16. However, Driksen et al does not teach connecting the negative potential to the positive potential of a power source and connecting a positive potential to a negative potential power source. It could be argued that the capability for the claimed connection is generally known or easily conceived in the art and thus, could just be assembled to disclose the claimed invention. However, the instant invention clearly and specifically recites structural relationships and combinations, which require a greater effort than just cobbling together known structures. The examiner could find no motivation to combine or modify the references which would define a fully functioning apparatus as claimed in the instant application.
Response to Arguments
Applicant’s amendments and arguments, filed 08/25/2026, with respect to the rejection(s) of claim(s) 15-20 under 35 USC 112b have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of 35 USC 112b for claims 16-18.
Applicant's arguments filed 08/25/2026 have been fully considered but they are not persuasive.
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., using cryogenic liquid to maintain temperature (Emphasis added)) 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).
Furthermore, Applicants argument that Dirksen does not teach utilizing a cryogenic liquid (Dirksen [0024] liquid nitrogen) to reduce the temperature of a superconducting material is respectfully unpersuasive.
The claim language cites a cryogenic liquid, the specification cites in ¶85 liquid nitrogen, Dirksen also cites in ¶24 liquid nitrogen being used for cooling. Examiners position is that the liquid nitrogen of Dirksen carried in channels is the same cryogenic fluid of the Applicants and therefore, the intended result of supplying liquid nitrogen reduces the temperature of a superconducting material in the same way as Applicants. See MPEP 2173.05(g)
Therefore, for the reasons above, Examiner does not find the amendments and arguments persuasive filed 08/25/2026.
Conclusion
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 Nicholas D Wlodarski whose telephone number is (571)272-3970. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at (571) 272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS D WLODARSKI/Examiner, Art Unit 3672
/Nicole Coy/Supervisory Patent Examiner, Art Unit 3672
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