DETAILED ACTION
The amendment filed 1/20/2026 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 .
Response to Arguments
The amendment filed 1/20/2026 has overcome the previously applied drawing objections and rejections under 112.
Applicant's arguments filed 1/20/2026, regarding the applicability of Poluchalla et al. to the instantly amended claims have been fully considered but they are not persuasive. Applicant argues that Poluchalla et al. does not anticipate the instant claims because Poluchalla does not disclose a configuration without intervening lines or separate connecting components. While the examiner acknowledges that Poluchalla et al. do show connecting fluid lines between the valve bank and fluid reservoir and the fluid reservoir and the pump, as best understood by the examiner, these fluid connections would also be necessary in the instant invention. Therefore, even if Poluchalla et al. is not considered to show direct connections as claimed, it is considered obvious that one of ordinary skill would recognize that components may be fluidly connected directly or with fluidly connected with lines. Applicant further argues that Poluchalla et al. does not disclose that the control system is disposed in a single wellbore zone and the wellbore zone is one of a zone between one of a tubing hanger and a safety valve, between the safety valve and a production packer, between the production packer and an interval control valve, or between two interval control valves. The examiner respectfully disagrees as Poluchalla et al. do show that the control system is disposed in a single wellbore, and is between two interval control valves (as in the rejection below).
The nonstatutory double patenting rejection under USP 12,359,532 remains as the claims as amended are still considered to be anticipated by the claims of ‘532.
Applicant has noted that claim 10 was not rejected under prior art. While claim 10 is not rejected under prior art, the claim is not allowable as being rejected under obviousness-type double patenting. With the acceptance of a proper terminal disclaimer to ‘532, claim 10 would be considered as objected to as being dependent upon a rejected base claim, but be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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, 8-9, 11-18 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Poluchalla et al. (US 2018/0283133).
In regard to claim 1, Poluchalla et al. disclose a control system for operating wellbore equipment, the control system comprises: a hydraulic pump (78) disposed in a wellbore, a valve bank (multiple 82/84 as in fig 3) disposed in the wellbore, and a hydraulic fluid reservoir (74); wherein the hydraulic pump is fluidically connected with the valve bank (fig 3); wherein the valve bank is fluidically connected with the hydraulic fluid reservoir (vis 62 and 72, also see paragraph 28); wherein the hydraulic fluid reservoir is fluidically connected with the hydraulic pump (as in fig 3); wherein the control system is configured to flow pressurized hydraulic fluid exiting from the hydraulic pump to the valve bank to be distributed from the valve bank to the wellbore equipment (42 as in fig 3, paragraph 28); wherein the hydraulic pump is directly connected to the valve bank without any intervening lines or separate connecting components (as in fig 3 with 78 as connected to various 82/84, considered direct in that the lines as shown may be considered part of any particular valve or the pump and as best understood such a fluid connection would also be required in the instant invention); wherein the valve bank is directly connected to the fluid reservoir without any intervening lines or separate connecting components (as shown through return 72 where 84; considered direct in that the lines as shown may be considered part of any particular valve or the reservoir and as best understood such a fluid connection would also be required in the instant invention between components); wherein the fluid reservoir is directly connected to the hydraulic pump without any intervening lines or separate connecting components (as in fig 3, as connected with 62 which is considered a direct connection since no other connection besides the fluid connection is present where as best understood in the instant invention such a fluid connection would be also required); wherein the control system is disposed in a single wellbore zone (as in fig 1, 3); wherein the wellbore zone is a zone between one of a tubing hanger and a safety valve, between the safety valve and a production packer, between the production packer and an interval control valve, or between two interval control valves (as between two 46 as in fig 3).
Alternatively, if Poluchalla et al. is not considered to disclose that the valve bank is directly connected to the fluid reservoir without any intervening lines or separate connecting components and the fluid reservoir is not directly connected to the hydraulic pump without any intervening components or separate connecting components, it would have been obvious to one of ordinary skill in the art to connect these components directly in order to make the system as compact as possible for use within the wellbore.
In regard to claim 3, Poluchalla et al. disclose an accumulator (paragraph 35) fluidically connected to the hydraulic pump and the valve bank and the accumulator is configured to store pressurized hydraulic fluid from the hydraulic pump (as known function of accumulator as disclosed).
In regard to claim 6, Poluchalla et al. disclose wherein the hydraulic fluid reservoir is disposed upstream of the hydraulic pump (as necessary for fluid to travel from the reservoir to the pump, as in paragraphs 28-29).
In regard to claim 8, Poluchalla et al. disclose wherein the valve bank is a first valve bank and wherein the control system comprises a second valve bank (as in fig 3 where various combinations of valves 82 may be considered a first and second valve bank including each bank as a single 82).
In regard to claim 9, Poluchalla et al. disclose wherein the first valve bank is directly coupled to and fluidically connected to a first wellbore valve (as in fig 3 with an 82 as connected to a respective 42); wherein the second valve bank is directly coupled to and fluidically connected to a second wellbore valve (any other 82 as connected to a respective 42).
In regard to claim 11, Poluchalla et al. disclose a method for operating wellbore equipment with a control system, the method comprises: providing a control system (as in fig 3) comprising: a hydraulic pump (78), a valve bank (multiple 82/84 as in fig 3), and a hydraulic fluid reservoir (74); wherein the hydraulic pump is fluidically connected with the valve bank (as in fig 3); wherein the valve bank is fluidically connected with the hydraulic fluid reservoir (as in fig 3); wherein the hydraulic fluid reservoir is fluidically connected with the hydraulic pump (as in fig 3); wherein the hydraulic pump is directly connected to the valve bank without any intervening lines or separate connecting components (as in fig 3, with 78 as directly connected with various 82; considered direct in that no other connection besides the fluid connection is present where as best understood in the instant invention such a fluid connection would be also required); wherein the valve bank is directly connected to the fluid reservoir without any intervening lines or separate connecting components (as shown through return 72 where 84 is considered directly connected since no other connection besides the fluid connection is present where as best understood in the instant invention such a fluid connection would be also required); wherein the fluid reservoir is directly connected to the hydraulic pump without any intervening lines or separate connecting components (as in fig 3, as connected with 62 which is considered a direct connection since no other connection besides the fluid connection is present where as best understood in the instant invention such a fluid connection would be also required); wherein the control system is disposed in a single wellbore zone (as in fig 1, 3); wherein the wellbore zone is a zone between one of a tubing hanger and a safety valve, between the safety valve and a production packer, between the production packer and an interval control valve, or between two interval control valves (as between two 46 as in fig 3); flowing pressurized hydraulic fluid exiting from the hydraulic pump to the valve bank (paragraphs 28-29); distributing the pressurized hydraulic fluid from the valve bank to the wellbore equipment (paragraph 29).
Alternatively, if Poluchalla et al. is not considered to disclose that the valve bank is directly connected to the fluid reservoir without any intervening lines or separate connecting components and the fluid reservoir is not directly connected to the hydraulic pump without any intervening components or separate connecting components, it would have been obvious to one of ordinary skill in the art to connect these components directly in order to make the system as compact as possible for use within the wellbore.
In regard to claim 12, Poluchalla et al. disclose blocking in the pressure to the wellbore equipment by sealing a valve in the valve bank through which the pressurized hydraulic fluid is distributed to the wellbore equipment (paragraph 28, where control of valves 82 necessarily controls wellbore equipment 84); wherein the blocking in the pressure to the wellbore equipment occurs after the pressurized hydraulic fluid is distributed to the wellbore equipment (as in paragraphs 24 and 35 where normal operation of such a system includes closing a valve and corresponding wellbore equipment after being pressurized to open).
In regard to claim 13, Poluchalla et al. disclose venting hydraulic fluid to the fluid reservoir from the valve bank (paragraph 28, as enabling circulation “back to reservoir”).
In regard to claim 14, Poluchalla et al. disclose comprising distributing pressurized hydraulic fluid to at least two different pieces of wellbore equipment (as in fig 3, where multiple 84 are shown).
In regard to claim 15, Poluchalla et al. disclose a system for operating wellbore equipment with a control system (fig 3), the system comprising: a control system comprising: a hydraulic pump (78), a valve bank (multiple 82), and a hydraulic fluid reservoir (74); wherein the hydraulic pump is fluidically connected with the valve bank (as in fig 3); wherein the valve bank is fluidically connected with the hydraulic fluid reservoir (as in fig 3); wherein the hydraulic fluid reservoir is fluidically connected with the hydraulic pump (as in fig 3); wherein the control system is configured to flow pressurized hydraulic fluid exiting from the hydraulic pump to the valve bank to be distributed from the valve bank to the wellbore equipment (paragraphs 28-29); wherein the hydraulic pump is directly connected to the valve bank without any intervening lines or separate connecting components (as in fig 3, with 78 as directly connected with various 82; considered direct in that no other connection besides the fluid connection is present where as best understood in the instant invention such a fluid connection would be also required); wherein the valve bank is directly connected to the fluid reservoir without any intervening lines or separate connecting components (as shown through return 72 where 84 is considered directly connected since no other connection besides the fluid connection is present where as best understood in the instant invention such a fluid connection would be also required); wherein the fluid reservoir is directly connected to the hydraulic pump without any intervening lines or separate connecting components (as in fig 3, as connected with 62 which is considered a direct connection since no other connection besides the fluid connection is present where as best understood in the instant invention such a fluid connection would be also required); wherein the control system is disposed in a single wellbore zone (as in fig 1, 3); wherein the wellbore zone is a zone between one of a tubing hanger and a safety valve, between the safety valve and a production packer, between the production packer and an interval control valve, or between two interval control valves (as between two 46 as in fig 3); and a wellbore tubing (26 as in fig 2); wherein the control system is deployed on the wellbore tubing (44 as in fig 1, where the embodiment of 44 as in fig 3 would be similarly positioned on a completion).
Alternatively, if Poluchalla et al. is not considered to disclose that the valve bank is directly connected to the fluid reservoir without any intervening lines or separate connecting components and the fluid reservoir is not directly connected to the hydraulic pump without any intervening components or separate connecting components, it would have been obvious to one of ordinary skill in the art to connect these components directly in order to make the system as compact as possible for use within the wellbore.
In regard to claim 16, Poluchalla et al. disclose wherein the control system is a first control system (as may be defined); wherein the first control system is disposed in a first wellbore zone located between the production packer (46) and the interval control valve (42 as in fig 1 and 3); wherein the system comprises a second control system disposed in a second wellbore zone different from the first wellbore zone (paragraph 26, where “additional control modules 44” enable control over “additional well zones 28”).
In regard to claim 17, Poluchalla et al. disclose wherein the second control system is identical to the first control system (paragraph 26, where as best understood the control systems would be identical as used with identical reference).
In regard to claim 18, Poluchalla et al. disclose wherein the interval control valve is a first interval control valve and the second wellbore zone is disposed between the first interval control valve and a second interval control valve (multiple interval control valves as in fig 1 and 3; and as controlling over “inflow of well fluids at additional well zones” would inherently include the inflow valves, as in paragraph 26).
In regard to claim 21, Poluchalla et al. disclose wherein the hydraulic fluid reservoir is disposed upstream of the hydraulic pump (as necessary for fluid to travel from the reservoir to the pump, as in paragraphs 28-29).
In regard to claim 22, Poluchalla et al. disclose wherein the hydraulic fluid reservoir is disposed upstream of the hydraulic pump (as necessary for fluid to travel from the reservoir to the pump, as in paragraphs 28-29).
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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poluchalla et al. alone.
In regard to claim 4, Poluchalla et al. discloses all the limitations of this claim, as applied to claim 3 above and including wherein a first output line connects the hydraulic pump to the valve bank (as in fig 3). The embodiment of figure 3 does not explicitly include an accumulator between the hydraulic pump and the valve bank connected with hydraulic lines. Poluchalla et al. does disclose that an accumulator may be used with the control module (paragraph 35) depending on the application. Therefore it would have been obvious to one of ordinary skill at the time of effective filing to provide an accumulator between the hydraulic pump and valve bank of the embodiment of figure 3 (and connected by necessary respective hydraulic lines) in order to use the accumulator to store hydraulic energy (as in paragraph 35) which will be used to control the wellbore equipment.
Claim(s) 20 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poluchalla et al. in view of Krueger et al. (US 2004/0112642). Poluchalla et al. disclose all the limitations of this claim, as applied to claims 1 and 15 above, except for a hydraulic fluid replenishment line descending from the surface and fluidically connected to the unpressurized fluid reservoir. Krueger et al. disclose a system wherein a hydraulic fluid replenishment line descends from the surface and is fluidically connected to a fluid reservoir (paragraph 95). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the hydraulic fluid replenishment line, as taught by Krueger et al. with the system of Poluchalla et al. in order to refill the reservoir as needed without withdrawing the entire system.
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, 3-4, 6, and 8-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,359,532 (‘532). Although the claims at issue are not identical, they are not patentably distinct from each other because, for example, instant claim 1 is generic to all that is recited in claim 1 of ‘(‘532). In other words, claim 1 of ‘532 fully encompasses the subject matter of instant claim 1 and therefore anticipates instant claim 1. Since instant claim 1 is anticipated by claim 1 of the patent, it is not patentably distinct. Thus the invention of claim 1 of the patent is in effect a “species” of the “generic” invention of instant 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 instant 1 is anticipated (fully encompassed) by claim 10 of the patent, claim 1 is not patentably distinct from claim 10, regardless of any additional subject matter present in claim 1 of ‘532. Instant claims 2-20 also appear encompassed by claims 1-16 of ‘532.
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 D Andrews whose telephone number is (571)272-6558. The examiner can normally be reached M-F, 7-3.
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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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/D. ANDREWS/Primary Examiner, Art Unit 3672
2/18/2026