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 .
Election/Restrictions
The examiner notes that there appear to be at least five species in the present disclosure (fig 2, fig 3, figs 5 & 6, figs 7 & 8, and 9). While no restriction is made based off the present wording of the claims, Applicant is respectfully advised that future amendments which patentably differentiate the species in the claims may warrant a restriction in the future. The examiner notes that the original presentation of independent claims 1 & 11, and the species they represent, may constitute an election by original presentation per MPEP 821.03
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 "blade [that] has at least one opening extending therethrough adjacent to the hub" of claims 2 & 12 is not shown. Fig 4 shows "[t]he mounting hub 90 may have one or more openings 98 formed therethrough" (¶ 46 of the pre-grant publication, US 2026/0036032), which is the recitation of claim 3, not claim 2. No openings through "blades 92a" are shown.
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 4-10 & 14-23 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.
Claims 4 & 14 recite "the turbine further comprises a plurality of blades" with "each of the blades having a leading end and a trailing end…" However parent claims 1 / 11 already recites "a turbine having… at least one blade… having a leading end and a trailing end". The recitation of claims 4 and 14 are not linked to, nor differentiated from the similar recitation in the parent claims, thus making it unclear if Applicant is attempting to recite a new feature using redundant nomenclature and phrasing or if Applicant is attempting to further define a previously recited element using improper antecedent terminology. The examiner respectfully notes Applicant extensively disclaims any limiting nature of the specification on the claims in ¶s 18 & 62. Claims 5 & 6 depend from claim 4. Claims 15 & 16 depend from claim 14.
Claims 7 & 17 recite "the circumferential inlet" in line 5. This lacks proper antecedent basis thus making it unclear if Applicant is attempting to reference a previously recited element using inconsistent nomenclature (the "opening" in claims 1 / 11??) or if Applicant is attempting to require a new element using improper antecedent terminology. Claims 8-10 depend from claim 7. Claims 18-20 depend from claim 17.
Claim 10 recites "the collector section comprises a tubular member having an upper end… the upper end of the collector section connected to the lower end of the outer tubular member". However parent claim 9 already recites "a collector section having an upper end connected to the lower end of the outer tubular housing". It is therefore if Applicant is attempting to recite a new feature using redundant nomenclature and phrasing or if Applicant is attempting to further define a previously recited element using improper antecedent terminology.
Claim 21 references "the pump assembly" which lacks antecedent basis in parent claim 11, thus making it unclear if Applicant is attempting to reference a previously recited element using inconsistent nomenclature or if Applicant is attempting to require a new element using improper antecedent terminology. The examiner respectfully notes Applicant extensively disclaims any limiting nature of the specification on the claims in ¶s 18 & 62.
Similarly, claim 21 references "the first separator section", which lacks antecedent basis and is held as indefinite as described above for "the pump assembly".
Finally, it is unclear how or if the "pump assembly" of claim 21 differs from the "tubing string positioned in a wellbore" already recited in parent claim 11. Present figure 1 suggests they are the same feature with changing nomenclature in the claims.
Claims 22 & 23 recite "the upper end of the outer tubular is free from the inner tubular member" (presumably directed to present figure 9). However, parent claims 1 & 11 both already recite "the upper end of the inner tubular member [is] connected to the upper end to the outer tubular member so the annulus is fluidically sealed from the tubing string…" which directly contradicts the limitations of claims 22 & 23. This makes it unclear how or if claims 22 & 23 further limits parent claims 1 & 11. The examiner notes that, as similarly discussed in the "Restriction" section above, fig 9 appears to be a species that is non-elected by original presentation per the independent claims.
Given the mutually exclusive / contradictory nature of claims 22 & 23 relative to their parent claims, the prior art rejection below has been applied as best able.
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 1-3 & 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2015/0144328 (Botts). The independent claims will be addressed first so that similar dependent claims may be addressed together.
Independent claim 1. Botts discloses a downhole separator (title), comprising:
an outer tubular member ("housing member 15" and "gas discharge member 14" together - ¶ 28) having an upper end (upper end of 14 connected to element 13 - fig 4), a lower end (19, fig 4), and a sidewall extending between the upper end and the lower end (all clearly shown in figs 1 & 4), the sidewall having at least one opening extending therethrough adjacent the upper end ("the gas discharge member 14 is configured with one or more openings 22" - ¶ 28), the upper end of the first outer tubular member connectable to a lower end of a tubing string positionable in a wellbore (Intended use; Botts expressly teaches a pump / artificial lift system attached to the top of 12: ¶s 5, 6, and the last three sentences of ¶ 36);
an inner tubular member ("inner tube member 11" 0 ¶ 26) having an upper end, a lower end, and a sidewall extending between the upper end and the lower end (all clearly shown in fig 4), the first inner tubular member positioned in the first outer tubular member (fig 4) to define an annulus between the outer tubular member and the inner tubular member ("an annular zone 25 formed between an interior surface 32 of the housing member 15 and an exterior surface 31 of the inner tube member 11" - ¶ 26), the upper end of the inner tubular member connected to the upper end of the outer tubular member (the upper end of 11 is indirectly connected to the upper end of 15 via elements 12, 13, & 14: fig 4) so the annulus is fluidically sealed from the tubing string (via 12: fig 4) and the inner tubular member is in fluid communication with the tubing string when the inner tubular member is connected to the tubing string (again via 12 through the inner passage through 11: fig 4), the lower end of the inner tubular member being open to define a lower open end (fig 4); and
a turbine ("flighting member 16" and "flighting support member 17" - fig 4 & ¶ 26) having a hub ("flighting support member 17") rotatably connected to the inner tubular member ("The inner tube member 11 may be coupled to… the flighting support member 17 via threaded connections" - ¶ 31. The examiner first notes that the present "turbine" rotating in response to fluid flow therethrough is not expressly required. That said, the examiner also respectfully notes that the turbine rotating in response to fluid flow therethrough would appear to reduce effective centrifugal force imparted onto the fluid by the turbine (Cause: axial fluid flow along a rotating spiral / helix. Effect: Rotation of and increased centrifugal force imparted to the spiral / helix), as compared to a stationary / fixed spiral which the fluid must flow around (Cause: axial flow being deflected radially by a stationary spiral. Effect: rotation and increased centrifugal force on the fluid). Rather, a turbine rotating in response to fluid flow would transfer energy to the turbine from the fluid, to generate turbine rotation, not the other way around) below the at least one opening of the outer tubular member (17 is below openings 22) and at least one blade extending outward from the hub ("flighting member 16") so the at least one blade is positioned in the annulus below the at least one opening of the outer tubular member (16 is below openings 22), the at least one blade having a leading end (upper end of 16) and a trailing end (lower end of 16), the leading end being positioned uphole of the trailing end (fig 4) so the leading end is positioned between the at least one opening of the outer tubular member (23) and the trailing end of the at least one blade (at 17; fig 4).
Independent claim 11 contains all the limitations of claim 1, which are taught by Cobb as described above, respectfully not repeated again here.
Cobb further discloses that the downhole separator (title) comprises: a tubing string (the unshown, but explicitly taught, artificial lift system: ¶ 5) positioned in a wellbore (ibid), the tubing string having an upper end (inherent upper end) and a lower end ("Artificial lift systems often require the attachment of a gas separator at the pump intake" - ¶ 6), the downhole separator of claim 1 being attached to the lower end (¶s 6 & 10, and as cited for claim 1 above).
2 & 12. The downhole separator of claim 1 / 11, wherein the blade has at least one opening extending therethrough adjacent to the hub ("An inner annular space 26 separates the inside edges of the flighting member 16 and the exterior surface 31 of the inner tube member 11" - ¶ 32 - which is adjacent 17: fig 4).
3 & 13. The downhole separator of claim 1 / 11, wherein the hub has at least one opening extending therethrough (17 has a passage therethrough: fig 7).
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.
Claims 4, 5, 14, & 15 are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0144328 (Botts) in view of US 2009/0065431 (Bakke).
4 & 14. Botts discloses all the limitations of the parent claim, and further discloses that the blade (16) extends outward from the hub (16 extends outwardly from 17: fig 4) so the blade is positioned in the annulus below the at least one opening of the outer tubular member (16 is below openings 22), the blade having a leading end (upper end of 16) and a trailing end (lower end of 16), the leading end being positioned uphole of the trailing end so the leading end is positioned between the at least one opening of the outer tubular member and the trailing end of the at least one blade (fig 4). Botts only discloses a single blade, not the plurality of blades of present claim 1.
However Bakke discloses an in-line separator for separating fluid phases (abstract) that may be used in vertical orientation (¶ 46) comprising a plurality of blades ("two helical vanes (or coils) 52, 54" - ¶ 37 & fig 6).
Therefore it would have been obvious to PHOSITA at the time of filing to use a plurality of helical blades as taught by Bakke in the separator taught by Botts. This is (A) mere duplication of parts used in their original manner (MPEP 2144.04, subsection VI(B)), and (B) is expressly taught as obvious over a single blade by Bakke (¶s 36 & 37).
5 & 15. The downhole separator of claim 4 / 14, wherein the hub has at least one opening extending therethrough (Botts: 17 has a passage therethrough: fig 7).
Claims 6 & 16 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of US 2015/0144328 (Botts) & US 2009/0065431 (Bakke) in further view of US 2022/0381129 (Ellithorp).
Claims 6 & 16. The combination discloses all the limitations of the parent claims but Botts discloses that the hub (17, fig 4) only has one opening extending therethrough (ibid).
However Ellithorp discloses a downhole separator (title, abstract) with an inner flow tube ("upper section 48" - fig 1 & ¶ 61) having a hub thereon ("lower section 50") with at least one blade on the hub ("The lower section 50 of the inner tubular includes a corresponding helical member 62 formed thereon" - ¶ 67), wherein the hub has a plurality of openings extending therethrough (central passage through and "additional fluid passage 66" - ¶ 70 & fig 3).
Therefore it would have been obvious to PHOSITA at the time of filing to use the additional fluid passage through the hub as taught by Ellithorp on the hub taught by Botts. This is "[t]o assist lighter fluid in entering the bottom end of the inner passage more readily" (¶ 70).
Claims 7-10 & 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0144328 (Botts) in view of US 2014/0158343 (Cobb).
7 & 17. Botts discloses all the limitations of the parent claims but does not expressly disclose those of the present. However Cobb discloses a downhole separator (title), comprising:
an outer tubular member ("tubular outer housing 12" - ¶ 13; can also include elements 34, & 36 in fig 4 as sub-elements of the "outer tubular member housing") having an upper end (attached to 14: figs 2 & 4), a lower end (attached to 16: figs 2 & 4), and a sidewall extending between the upper end and the lower end (ibid), the sidewall having at least one opening extending therethrough adjacent the upper end ("short opening slots 18" - ¶ 13), the upper end of the first outer tubular member connectable to a lower end of a tubing string positionable in a wellbore (intended use; capable of being connected to a tubing string and pump system at 14);
an inner tubular member (14 & 22 - figs 2 & 4) having an upper end (upper end of 14), a lower end (lower end of 22), and a sidewall extending between the upper end and the lower end (fig 2), the first inner tubular member positioned in the first outer tubular member (ibid) to define an annulus between the outer tubular member and the inner tubular member (30, fig 2. The examiner notes element number 30 is used for a "coupling 30" in fig 4, but annular "chamber 30" in fig 2. Fig 4 still clearly shows an annulus between the inner and outer tubing), the upper end of the inner tubular member connected to the upper end of the outer tubular member (figs 2 & 4) so the annulus is fluidically sealed from the tubing string (best shown in fig 2; intended use) and the inner tubular member is in fluid communication with the tubing string when the inner tubular member is connected to the tubing string (best shown in fig 2, via the inner passage through 22 & 14; also ¶ 14 as quoted directly below), the lower end of the inner tubular member being open to define a lower open end ("Well fluid from the annulus thus enters the separator through the openings 18, pass by the spiral gas separator 20, flow downward past the lower end of the inner tubular 22, enter the lower end 28 of the tubular, and then flow upward through the tubular 22 to the coupling 14, and then to the run-in tubular to the surface" - ¶ 14); and
a turbine (defined by "vanes 20": fig 3) having a hub (portion of 14 that 20 are connected to) connected to the inner tubular member (ibid; figs 3 & 4) below the at least one opening of the outer tubular member (20 are below 18: fig 4) and at least one blade extending outward from the hub ("vanes 20" - ¶ 16) so the at least one blade is positioned in the annulus below the at least one opening of the outer tubular member (fig 4), the at least one blade having a leading end (upper end of 20) and a trailing end (lower end of 20), the leading end being positioned uphole of the trailing end (ibid) so the leading end is positioned between the at least one opening of the outer tubular member (18) and the trailing end of the at least one blade (fig 4); wherein
the inner tubular member (14 & 22) has at least one spiral protrusion ("spiral desander 32" - ¶ 17) extending outwardly from the sidewall (fig 4) to cooperate with an interior side of the outer tubular member (ibid) to form a spiral channel (ibid & ¶ 17), wherein reservoir fluid passes into the annulus formed between the inner tubular member and the outer tubular member via the circumferential inlet ("Well fluid from the annulus thus enters the separator through the openings 18…" - ¶ 14), the reservoir fluid guided downwardly into the spiral channel ("…flow downward past the lower end of the inner tubular 22…" - ¶ 14 & fig 4) so the spiral channel induces a cyclonic flow that causes heavier particles to be forced outwardly and to fall to the lower end of the outer tubular member (" The desander 32 can axially separate sand and other solid particles from the well fluids, and the spiraling action of the desander causes sand to migrate to the wall of the tubular 34…" - ¶ 17. "The tubular 38 provides a storage chamber for sand, so that sand may accumulate within the separator without flowing into the down-hole pump" - ibid), the separated fluid flows into the lower open end of the inner tubular member ("… while well fluids are drawn up through the bottom of the tubular 22" - ¶ 17) so the fluid continues to travel up through the inner tubular member (via the pump: ¶s 15, 19-21).
Therefore it would have been obvious to PHOSITA at the time of filing to use the spiral desander taught by Cobb at the lowest end of the inner tube taught by Botts. Cobb expressly teaches this in combination with a gas separation "vortex flow generator" structure (¶ 21), whereas Botts only teaches a single such element. The tighter, more sealed "desander" specifically taught by Cobb "adjacent to the lower end of the inner tube 22" (¶ 22) provides the additional / redundant effect of helping further separate undesirable sand from the flow before it enters the pump (¶ 1).
8 & 18. The downhole separator of claims 7 / 17, wherein a lower portion of the outer tubular member includes a funnel-shaped bore (Botts, 19, fig 4).
9 & 19. The downhole separator of claims 8 / 18, further comprising a collector section having an upper end connected to the lower end of the outer tubular member (Botts: "The plug member 19 is easily removable from the device 10 and can be removed from the device 10 to empty the accumulated solids from the solids accumulation area 18" - ¶ 35. Cobb: "a lower tubular 38, and plug 16 is provided at the lower end of tubular 38. The tubular 38 provides a storage chamber for sand, so that sand may accumulate within the separator without flowing into the down-hole pump" - ¶ 17).
10 & 20. Botts discloses that "[t]he plug member 19 is easily removable from the device 10 and can be removed from the device 10 to empty the accumulated solids from the solids accumulation area 18" (¶ 3) but this is shown as open at the bottom in fig 4. However Cobb discloses the collector section ("a lower tubular 38, and plug 16 is provided at the lower end of tubular 38. The tubular 38 provides a storage chamber for sand, so that sand may accumulate within the separator without flowing into the down-hole pump" - ¶ 17 of Cobb) comprises a tubular member (38) having an upper end (connected to 36, fig 4), a closed lower end (closed by 16, fig 4), and a sidewall defining a chamber extending between the upper end and the lower end (fig 4), the upper end of the collector section connected to the lower end of the outer tubular member (ibid).
Therefore it would have been obvious to use the closed lower end taught by Cobb in the combination of Botts & Cobb as-modified above. First, as mentioned above, Cobb suggests that the lower end may be closed (¶ 3) but the figures show it to the open (fig 4). Cobb teaches that it may be either open or closed (¶ 21) thus showing them to be known and therefore obvious variations of each other.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0144328 (Botts) in view of US 2022/0389806 (Snyder).
Claim 21. Botts discloses all the limitations of the parent claim but does not expressly disclose the details of the pump assembly. However Snyder discloses a downhole separator (title; fig 1) attached to a pump assembly ("downhole pump assembly 10" - ¶ 24; claim 8), comprising:
a pump barrel ("pump barrel 20" - ¶s 24 & 25; claim 8) having an upper end (fig 1), a lower end (ibid), and a chamber extending through the pump barrel from the upper end to the lower end (claim 8), the chamber being in fluid communication with the first separator section (ibid);
a standing valve located in the pump barrel to permit one way flow of fluid into the chamber of the pump barrel ("The pump barrel 24 supports the standing valve 22" - ¶ 24; claim 8);
a plunger ("plunger 24"; claim 8) disposed in the chamber of the pump barrel above the standing valve and below the upper end of the pump barrel and adapted for reciprocating movement through at least a portion of the chamber of the pump barrel (claim 8);
a traveling valve located in the plunger to permit one way flow of fluid into the plunger ("traveling valve 26" - ¶ 24 & claim 8); and
a pull rod (claim 8) having one end connected to the plunger and an opposite end connected to a sucker rod string to affect reciprocating movement of the plunger (claim 8).
Therefore it would have been obvious to PHOSITA at the time of filing to use the rod pump system taught by Snyder as the pump taught by Botts. Botts teaches a "sucker rod pumping system" (¶ 5) thus clearly suggesting such a system, but does not disclose it in sufficient details for the claim. Snyder teaches such a system for use with a downhole gas separator (as cited above) and the use of such a system is expressly suggested by Botts (¶ 5).
Claims 22 & 23 are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0144328 (Botts) in view of US 5,295,537 (Trainer).
Claims 6 & 16. In light of the mutually exclusive / contradictory nature of claims 6 & 16 relative to their parent claims, as discussed in the 112(b) rejections above, the rejection is made as best able. Botts discloses all the limitations of the parent claim but does not expressly disclose those of the present.
However Trainer discloses a downhole separator (title) comprising an outer tubular (15, 16, & 16; fig 1) having an upper end (upper edge of 16) and an inner tubular member (11, 13, & 22, fig 1) positioned in the outer tubular member (ibid), wherein the upper end of the outer tubular is free from the inner tubular member (fig 1) so as to define a circumferential inlet between the upper end of the outer tubular member and the inner tubular member (fig 1), the circumferential inlet being in fluid communication with the lower open end of the inner tubular member (shown by the flowlines in fig 1).
Therefore it would have been obvious to PHOSTA at the time of filing to use the raised upper end of the outer tubular, separated from the inner tubular, as taught by Trainer in the system taught by Botts. This provides a 180 degree dictionary change with helps with the initial separation of gas while also pulling the sand down to the collection area (¶ bridging cols 3 & 4).
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