DETAILED ACTION
This communication is a first office action on the merits. All currently pending claims have been considered below. 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
No IDS has been filed in the present case. If applicable, the Examiner respectfully notes Applicant's duty to submit to the Office information which is material to patentability, as per MPEP §609, and the time limits for such a filing set forth under 37 CFR 1.97.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following features must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The "pressure arrangement" of claims 1 & 11 is not clearly identified in the drawings. See also the 112(b) rejections below.
The "flowmeter" and the structure for "monitoring a flow of fluids" in claim 1 are not both shown. The claim recites these as sperate elements. See also the 112(b) rejections below.
The "hydraulic cabling" of claim 5, and the mechanism therein to actuate the "pressure arrangement" is not shown (last sentence of present as-filed ¶ 30).
The "electric cabling" of claim 6, and the mechanism therein for it to apply or restrict the "hydrostatic head of liquid" (last sentence of present as-filed ¶ 30).
The combination of "a valve… at the second ejecting end" and "a restriction arrangement… at the second ejecting end" of claim 8 is not shown.
The "sleeve" that is "positioned at the second ejecting end" is not apparently shown. Figs 7 & 8 show a sleeve that is at the lower end.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 1-7 & 11-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Independent claim 1 recites "a natural flow", "a hydrostatic head of a liquid phase", "a flow of fluids", and "a prevailing liquid column", all recited independently of each other. Without improperly importing limitations / distinctions from the specification where they are not required (MPEP 2111.01, subsection II), it is unclear how or if these liquid / fluid recitations differ from each other. A "hydrostatic head of a liquid phase" is commensurate with "a liquid column", "liquids" are "fluids", although not vice versa, and all of these recitations are recited largely functionally, not structurally. In other words, "a hydrostatic head of a liquid phase" of what fluid in what location? How does the "natural flow" differ from the "flow of fluids" and the "prevailing liquid column"?
Applicant themselves extensively disclaim any limiting nature of the specification on the claims in as-filed ¶s 15, 27, 67, & 88 (¶s 15, 27, 71, & 92 of the pre-grant publication, US 2025/03828540).
The examiner also holds claim 1 to be indefinite because the "flowmeter" recitation has no claimed relationship with the "monitoring a flow of fluids…" limitation, thus making it unclear how or if the "monitoring a flow of fluids" limitation operates in a claim with a "flowmeter", but with no relationship between them. In other words, does the "flowmeter" monitor" the "flow of fluids", and if not, what does?
Finally, the examiner holds claim 1 to be indefinite for the recitation of "pressure arrangement". While not improper per se, this is an unconventional phrase without lexicography in the specification, and Applicant themselves extensively disclaim any limiting nature of the specification on the claims in as-filed ¶s 15, 27, 67, & 88 (¶s 15, 27, 71, & 92 of the pre-grant publication, US 2025/03828540). In light of the specification, it is unclear what structure is encompassed by this recitation. It is not a choke (such as the sleeve in present figure 3), as shown by the following recitations of the claims (and by claim 9), and the specification does not appear to provide any guidance as to what this term actually encompasses, structurally speaking. Elaboration is respectfully requested. Claims 2-7 depend from claim 1.
Claim 5 recites "the pressure arrangement is opened and closed through hydraulic cabling". As similarly discussed for claim 1 above, it is unclear how or if this "hydraulic cabling" and its "open[ing] and clos[ing} of the "pressure arrangement" differ from the "hydrostatic head of a liquid phase" in parent claim 1. There is no claimed relationship / association between these features.
Claim 6 recites "the pressure arrangement is open and closed through electrical cabling". This is held as indefinite because it appears to contradict parent claim 1's requirement of "a hydrostatic head of a liquid phase is sufficient to open and close a pressure avengement" without improperly importing limitations from the specification into the claims.
Independent claim 8 recites both "a valve… at the second ejecting end" and "a restriction arrangement… at the second ejecting end". As similarly discussed in the drawing objections above, it is unclear how or if the "restriction arrangement" differs from the "valve", when the drawings only show a single element at the "second ejecting end". Figure 9 shows an "autonomous variable inflow valve" at the second end, but conspicuously has "an adjustable choke" at the bottom, "first end". This is further illustrated by dependent claims 9 & 10. Claim 9 says "the restriction arrangement is a cap" but the only figures to show this element - fig 3 - has no additional "valve". Similarly, claim 10 says "the restriction arrangement is a moveable sleeve", but the only figures to show this element - figures 7 & 8 - show it at the bottom, and apparently without a "valve" at the upper end.
If Applicant regards the "cap" in fig 3 as being commensurate with a "sleeve", this then begs the question as to how do claims 9 & 10 structurally differ from each other.
Claims 9-10 depend from claim 8.
Independent claim 11 recites "through the cross-connection of the production zone and the injection zone; production tubing, such that…" The emphasized portion appears to contain a typo, missing something before "production tubing" but the examiner is unsure of Applicant's intent with this limitation. Similarly, it is unclear how or if the "cross-connection" differs from the "production tubing". These appear to be the same structures in light of the specification.
Claim 11 further recites "a natural flow" and "a hydrostatic head of the liquid phase". As similarly discussed for claim 1 above, it is unclear how or if these differ from each other. Further "the liquid phase" lacks proper antecedent basis and production flow is not inherently liquid.
Finally, the examiner holds claim 11 to be indefinite for the recitation of "pressure arrangement". This is an unconventional phrase without lexicography in the specification, and Applicant themselves extensively disclaim any limiting nature of the specification on the claims in as-filed ¶s 15, 27, 67, & 88 (¶s 15, 27, 71, & 92 of the pre-grant publication, US 2025/03828540). In light of the specification, it is unclear what structure is encompassed by this recitation. It is not a choke (such as the sleeve in present figure 3), as shown by the following recitations of the claims (as well as claim 19), and the specification does not appear to provide any guidance as to what this term actually encompasses, structurally speaking. Elaboration is respectfully requested. Claims 12-20 depend from claim 11.
Claim 12 recites "production tubing". It is unclear how or if this differs from the "production tubing" already recited in parent claim 11.
Claim 13 is held as indefinite because it is unclear how or if the "a flow of fluids" differs from either the "natural flow" or the "hydrostatic head of the liquid phase" already recited in parent claim 11, as similarly discussed for claim 1 above. Claims 14 & 15 depend from claim 13.
Claim 14 recites "a prevailing liquid column" which is held as indefinite because it is unclear how or if this differs from the "natural flow", the "hydrostatic head of the liquid phase", and/or the "a flow of fluids" recited in parent claims 11 & 13. Claim 15 depends from claim 14.
Claim 15 recites "the flow of fluids" which is held to be indefinite as similarly described for claim 14 above. Claim 15 is also a duplicate of parent claim 13.
Claim 17 recites "monitoring the method for controlling…" This is grammatically awkward at best, and fully indefinite at worst, in that it implies some second method of "monitoring" the method of claim 1. The examiner is respectfully unsure how "monitoring the method for control the volume" operates given that the recitation is apparently outside the scope of the method of claim 1 as currently worded.
Claims 19 & 20 recite "the choke is performed through a cap moving [claim 19] / a sliding sleeve [claim 20] on a pipe". It is unclear how or if the" pipe" differs form the "production tubing" already recited in parent claim 11. As, the examiner respectfully asserts that "the choke is performed through…" should read "wherein the choke comprises…" because parent claim 11 uses "choke" as a noun, not as a verb as claims 19 & 20 currently use it.
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.
Claims 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 3,344,805 (Wapner).
Independent claim 8. Wapner discloses a device for varying flow (title) in a wellbore (intended use; MPEP 2111.02, subsection II. Wapner is capable of being used to "vary flow in a wellbore" at the level of generality currently claimed. At the very least, it can be used at the surface, but being used downhole would also a non-structural intended use recitation), comprising:
a pipe ("generally cylindrical hollow casing 16" - col 5:36-40) having a first fluid receiving end ("inlet coupling 21" - fig 2) and a second ejecting end ("outlet coupling 23" - ibid);
a valve ("valve plug 28" with "circular flange 29 which when the plug is closed, rests on top of seat 24" - col 5:51-53) configured to open and close (ibid) positioned at the second ejecting end ("at" is relatively broad and fig 2 shows 28 adjacent 23); and
a restriction arrangement ("piston 33", "closure 37", "counterpressure chamber 38", "compression spring 40", and the associated structure thereof) connected to the valve (fig 2) at the second ejecting end of the pipe ("at" is relatively broad and fig 2 shows these adjacent 23), wherein the arrangement is configured to autonomously control a position of the valve based upon a liquid level height above the second ejecting end (figs 3-6 & col 6:40-50. The height of the column of liquid above the outlet clearly "autonomously controls" the position of the valve: figs 3-6).
9. The device according to claim 8, wherein the restriction arrangement is a cap ("closure 37" is a cap on piston 33: fig 2).
10. The device according to claim 8, wherein the restriction arrangement is a movable sleeve ("piston 33" is a movable sleeve: FIGS 3-6).
Allowable Subject Matter
The examiner notes that no prior art rejections are presented for independent claims 1 & 11. However, given the relatively substantial 112(b) issues identified above, the examiner is respectfully unable to indicate them as allowable at this time until such correcting amendments have been reviewed and considered.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blake Michener whose telephone number is (571)270-5736. The examiner can normally be reached Approximately 9:00am to 6:00pm CT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tara Schimpf can be reached at 571.270.7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLAKE MICHENER/
Primary Examiner, Art Unit 3676