DETAILED ACTION
The present application, with all claims having an effective filing date after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 2-21 are pending. Claim 1 is canceled.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosures of the prior-filed applications, Application No. 13/843,746 and Application PCT/US2014/029992, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. In this regard, independent claim 2 includes the limitation that the first ESD is configured to operate and/or operates at temperatures “at or above 210 degrees C” and this range is not disclosed in either of such prior-filed applications. Accordingly, none of the claims in the present application, i.e., claims 2-21, are entitled to the benefit of the prior application. Since the EFD for this application is the filing date of the first priority application that includes the foregoing limitation, i.e., United States Application No. 14/525,159, having an EFD of 10/25/2013, then this application is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claims 2, 3, 14, 17, and 20 are objected to because of the following informalities:
Claim 2 “configured operate” appears to be a typographical error. The following is suggested and has been assumed by the examiner: “configured to operate”.
Claim 3 “form” appears to be a typographical error. The following is suggested and has been assumed by the examiner: “from”. Additionally, it appears that the claim is intended to depend from claim 2 and that has been assumed by the examiner. Absent an amendment to that effect, the next office action will include a Section 112 rejection as to lack of antecedent basis.
Claim 14 “HTRESD an ultracapacitor” appears to be a typographical error. The following is suggested and has been assumed by the examiner: “HTRESD is an ultracapacitor”. Additionally, it appears that the claim is intended to depend from claim 13 and that has been assumed by the examiner. Absent an amendment to that effect, the next office action will include a Section 112 rejection as to lack of antecedent basis.
Claim 17 “and increase” appears to be a typographical error. The following is suggested and has been assumed by the examiner: “an increase”. Additionally, “or less” appears to be a typographical error. The following is suggested and has been assumed by the examiner: “of less”.
Claim 20 “configured operate” appears to be a typographical error. The following is suggested and has been assumed by the examiner: “configured to operate”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 2 Operating the first ESD at an unlimited temperature is claimed which is an open-ended range that would include an unbounded upper limit temperature. Therefore this claim encompasses temperatures that cannot reasonably be possible in the present invention, in light of the nature of the invention (i.e., the system structure itself would be destroyed at some level of heat within the claimed range), the lack of such an ability in the prior art, the required level of skill being beyond that of one of ordinary skill, and the lack of any known working examples. To make a point through hyperbole the present application does not provide full enablement for operating at 1000 degrees Celsius. The specification does not show that the knowledge of a person of ordinary skill in the art at the time of filing would have been able to achieve such an operating temperature greatly exceeding at or above 210 degrees Celsius without undue experimentation, even though these amounts are encompassed in the claimed range. MPEP 2164.06(a). Claims 3-21 depend from claim 2.
Claim 6 An unlimited energy storage capacity for the first ESD is claimed which is an open-ended range that would include an unbounded upper limit storage capacity Therefore each claim encompasses temperatures that cannot reasonably be possible in the present invention, in light of the nature of the invention (i.e., the system structure itself would be destroyed at some level of heat within the claimed range), the lack of such an ability in the prior art, the required level of skill being beyond that of one of ordinary skill, and the lack of any known working examples. To make a point through hyperbole the present application does not provide full enablement for a storage capacity of one million megajoules. The specification does not show that the knowledge of a person of ordinary skill in the art at the time of filing would have been able to achieve such a storage capacity greatly exceeding one kilojoule without undue experimentation, even though these amounts are encompassed in the claimed range. MPEP 2164.06(a).
Claims 9 and 10 A peak output power of at least 100 watts or one kilowatt, is respectively claimed, both being open-ended ranges that would include an unbounded upper limit peak output power. Therefore each claim encompasses temperatures that cannot reasonably be possible in the present invention, in light of the nature of the invention (i.e., the system structure itself would be destroyed at some level of heat within the claimed range), the lack of such an ability in the prior art, the required level of skill being beyond that of one of ordinary skill, and the lack of any known working examples. To make a point through hyperbole the present application does not provide full enablement for peak output power of one million megawatts. The specification does not show that the knowledge of a person of ordinary skill in the art at the time of filing would have been able to achieve such a peak output power greatly exceeding 100 watts or one kilowatt without undue experimentation, even though these amounts are encompassed in the claimed range. MPEP 2164.06(a).
Claims 15 and 16 A volumetric power density of at least 50 kilowatts per liter or 100 kilowatts per liter, is respectively claimed, both being open-ended ranges that would include an unbounded upper limit volumetric power density. Therefore each claim encompasses temperatures that cannot reasonably be possible in the present invention, in light of the nature of the invention (i.e., the system structure itself would be destroyed at some level of heat within the claimed range), the lack of such an ability in the prior art, the required level of skill being beyond that of one of ordinary skill, and the lack of any known working examples. To make a point through hyperbole the present application does not provide full enablement for volumetric power density of one million megawatts per liter. The specification does not show that the knowledge of a person of ordinary skill in the art at the time of filing would have been able to achieve such a volumetric power density greatly exceeding 50 kilowatts per liter or 100 kilowatts per liter without undue experimentation, even though these amounts are encompassed in the claimed range. MPEP 2164.06(a). Claim 15 depends from claim 13.
Claim 17 Operating the ultracapacitor at an unlimited temperature is claimed which is an open-ended range that would include an unbounded upper limit temperature. Therefore each claim encompasses temperatures that cannot reasonably be possible in the present invention, in light of the nature of the invention (i.e., the system structure itself would be destroyed at some level of heat within the claimed range), the lack of such an ability in the prior art, the required level of skill being beyond that of one of ordinary skill, and the lack of any known working examples. To make a point through hyperbole the present application does not provide full enablement for operating at 1000 degrees Celsius. The specification does not show that the knowledge of a person of ordinary skill in the art at the time of filing would have been able to achieve such an operating temperature greatly exceeding above 210 degrees Celsius without undue experimentation, even though these amounts are encompassed in the claimed range. MPEP 2164.06(a). Similarly, the recitations “at least 10,000 charge/discharge cycles,” “at least 0.5 volt” ESR “less than about 100 percent,” and capacitance decrease of “less than about 10 percent,” are open-ended ranges that would include either an unbounded upper limit number of cycles or amount of voltage or would include either an infinitesimally small ESR increase or capacitance decrease. Therefore the claim encompasses numbers of cycles, voltage amounts, ESR increases and capacitance decreases that cannot reasonably be possible in the present invention. To make a point through hyperbole the present application does not provide full enablement for a billion cycles, a million megavolts, a 0.00001 percent ESR increase, or a 0.00001 percent capacitance decrease. The specification does not show that the knowledge of a person of ordinary skill in the art at the time of filing would have been able to achieve such claimed extremes without undue experimentation, even though these amounts are encompassed in the claimed range. MPEP 2164.06(a).
Claim 20 Operating the second ESD at an unlimited temperature is claimed which is an open-ended range that would include an unbounded upper limit temperature. Therefore each claim encompasses temperatures that cannot reasonably be possible in the present invention, in light of the nature of the invention (i.e., the system structure itself would be destroyed at some level of heat within the claimed range), the lack of such an ability in the prior art, the required level of skill being beyond that of one of ordinary skill, and the lack of any known working examples. To make a point through hyperbole the present application does not provide full enablement for operating at 1000 degrees Celsius. The specification does not show that the knowledge of a person of ordinary skill in the art at the time of filing would have been able to achieve such an operating temperature greatly exceeding at or above 210 degrees Celsius without undue experimentation, even though these amounts are encompassed in the claimed range. MPEP 2164.06(a).
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 2-21 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 pre-AIA the applicant regards as the invention.
Claims 2 and 20 These claims are vague in that operating the first ESD at an unlimited temperature would include an unbounded upper limit temperature. Additionally, the claims each recite providing power to one or more instruments and then recite providing power to a tool, rendering the claim indefinite in that it is unclear whether the tool is intended to be one of the one or more instruments or to be excluded from the one or more instruments. The following is suggested: “requirement of a first tool of the one or more instruments in the toolstring”. Claims 3-21 depend from claim 2. It should be noted that the Cooley reference uses instruments and tools as interchangeable terms (for example at para. 0100), confirming there is no distinction between a tool and an instrument, which are also not defined distinctively in the specification.
Claim 6 This claim is vague in that an unlimited storage capacity for the first ESD would include an unbounded upper limit storage capacity.
Claims 9 and 10 These claims are vague in that peak output power of at least 100 watts or one kilowatt, is respectively claimed, both including an unbounded upper limit peak output power.
Claim 13 The term “high” is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 15 and 16 These claims are vague in that volumetric power density of at least 50 kilowatts per liter or 100 kilowatts per liter, is respectively claimed, both including an unbounded upper limit volumetric power density.
Claim 17 This claim is vague in that an unlimited operating temperature for the ultracapacitor would include an unbounded upper limit operating temperature. Additionally, this claim is vague in that the recitations “at least 10,000 charge/discharge cycles,” “at least 0.5 volt” ESR “less than about 100 percent,” and capacitance decrease of “less than about 10 percent,” are open-ended ranges that would include either an unbounded upper limit number of cycles or amount of voltage or would include either an infinitesimally small ESR increase or capacitance decrease. Additionally, it is unclear whether the ESR is cumulative after the end of 10,000 cycles, or otherwise, and whether the capacitance decrease is cumulative after the end of 10,000 cycles, or otherwise. Additionally, the term ESR is used as an acronym for “equivalent series resistance” while the specification does the same (para. 0217) but also uses the term as an acronym for “effective series resistance”. A statement that “effective” and “equivalent” are used interchangeably for all purposes of the application will overcome this rejection as to this portion.
Claim 20 This claim is vague in that an unlimited operating temperature for the second ESD would include an unbounded upper limit operating temperature. Additionally, the claim each recites providing power from the second ESD to one or more instruments and then recites providing second ESD power to a second tool, rendering the claim indefinite in that it is unclear whether the second tool is intended to be one of the one or more instruments or to be excluded from the one or more instruments. The following is suggested: “requirement of a second tool of the one or more instruments in the toolstring. Additionally, this claim recites providing power to “one or more instruments” and the claim depends from claim 2 which recites providing power to “one or more instruments” rendering the claim indefinite in that it is unclear whether an additional “one or more instruments” is being claimed. If not, the following is suggested: “provide power to the one or more instruments”.
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 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.
Claims 2-4, 18, 19, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cooley et al. (US20120268074) [Cooley].
Claim 2 Cooley discloses a downhole power system 16 [Figs. 1-3; abstract; para. 0047,0048,0050,0056] comprising:
a first energy storage device (ESD) 30 [Figs. 4-9; para.0071], positioned within a toolstring 10,11,12,14 [Figs. 1-3; para. 0050,0052,0056,0057,0100] to provide power to one or more instruments 13,15 [Figs. 1-3,9; para. 0052,0056,0057,0100] within the toolstring;
wherein the first ESD is configured operate at temperatures at or above 210 degrees C. [para. 0009,0062,0140] to:
receive power from a power source 51 [Fig. 9; e.g. a downhole battery, wireline, or downhole generator; para. 0065,0099] at a first power level that is lower than a power requirement of a first tool 13,15 [Figs. 1-3,9; para. 0052,0056,0057,0100; Cooley discloses multiple tools, such that “a first tool” may be a different tool than those included in the above “one or more instruments’] in the toolstring, and
output power to the tool at a second power level that is at or above the requirement of the first tool in the toolstring [when an HTRESD ultracapacitor 30,42 is used in the power system 16 the received power is boosted before output to the consumer tool, thus the ultracapacitor is receiving at a power level less than needed for the consumer tool and outputting at or above the consumer tool requirement; para. 0229; Fig. 5].
Claim 3 Cooley, as discussed with respect to claim 2, discloses that the ESD receives power from the power source through a tool string power bus configured to provide power to one or more tools in the toolstring [the controller 45 charges the ESD 30,42, the controller 45 communicating power, e.g. for that purpose, through various circuits (at least circuits 62 and EMS-91; para. 0197,0200,0129; Figs. 9,19-22), the controller including or utilizing buses (at least 95,97 in Fig. 9 and 70 in Fig. 22) and further discloses the numerous bus configurations and involved circuits (para. 0207-02100, para. 0129,0130,0137) used for controller purposes].
Claim 4 Cooley, as discussed with respect to claim 3, discloses that the first tool comprises at least one selected from the list consisting of: a nuclear magnetic resonance tool, a coring tool, a sonic tool, a neutron density tool, a gamma detector tool, a seismic measurement tool, a telemetry tool, a resistivity tool, and a formation tester [all are listed in para. 0100].
Claim 18 Cooley, as discussed with respect to claim 2, discloses that the first ESD is located adjacent to the first tool in the toolstring [Figs. 1-3, 19,20].
Claim 19 Cooley, as discussed with respect to claim 2, discloses that the power source comprises a downhole generator 51 [Fig. 9; e.g. a downhole battery, wireline, or downhole generator; para. 0065,0099].
Claim 21 Cooley, as discussed with respect to claim 2, discloses a modular signal interface device ("MSID") module for controlling at least one of the power provided to a downhole tool connected to the downhole power system [para. 0197] and the charge-discharge cycles of the first ESD [para. 0197], wherein the MSID is adapted to connect to the power source [Figs. 19-24; e.g. the modular structure for the controller 45 and related circuits 62; para. 0197-0204,0206,0189,0190].
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.
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.
Claims 5-16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Cooley.
Claim 5 Cooley, as modified with respect to claim 3, discloses an ESD having an energy storage capacity in the range of 0.01 joules to 100 megajoules of energy [claim 2] and otherwise discloses all the limitations of claim 5, but does not explicitly disclose an energy storage capacity range of 100 joules to 100 kilojoules of energy.
In a case where the claimed range lies inside the range disclosed by the prior art a prima facie case of obviousness exists. MPEP 2144.05, Section I, citing In re Wertheim, 541 F. 2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Accordingly, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the Cooley ESD for the 100 joules to 100 kilojoules of energy range of claim 5.
Claim 6 Cooley, as modified with respect to claim 5, discloses at Table 2 an ESD having an energy storage capacity of at least one kilojoule [one kilojoule is within the Cooley range of 0.01 joules to 100 megajoules], and otherwise discloses all the limitations of claim 6, but does not explicitly disclose an energy storage capacity range of at least one kilojoule.
In a case where the claimed range overlaps or lies inside the range disclosed by the prior art a prima facie case of obviousness exists. MPEP 2144.05, Section I, citing In re Wertheim, 541 F. 2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Accordingly, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the Cooley ESD for the at least one kilojoule range of claim 6.
Claim 7 Cooley, as modified with respect to claim 5, discloses at Table 2 an ESD having an output power in the range of 2.5 volts to 100 volts and otherwise discloses all the limitations of claim 7, but does not explicitly disclose an output power range of 30 volts to 200 volts.
In a case where the claimed range overlaps or lies inside the range disclosed by the prior art a prima facie case of obviousness exists. MPEP 2144.05, Section I, citing In re Wertheim, 541 F. 2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Accordingly, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the Cooley ESD for the 30 volts to 200 volts range of claim 7.
Claim 8 Cooley, as modified with respect to claim 5, discloses at Table 2 an ESD having an output power in the range of 0.25 watts [100 milliamps x 2.5 volts] to 40 kilowatts [400 amps x 100 volts] and otherwise discloses all the limitations of claim 8, but does not explicitly disclose an output power range of an output power in the range of 50 watts to about 100 kilowatts.
In a case where the claimed range overlaps or lies inside the range disclosed by the prior art a prima facie case of obviousness exists. MPEP 2144.05, Section I, citing In re Wertheim, 541 F. 2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Accordingly, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the Cooley ESD for the 50 watts to about 100 kilowatts range of claim 8.
Claim 9 Cooley, as modified with respect to claim 8, discloses an ESD having a peak output power of at least 100 watts [100 watts is within the Cooley Table 2 range of 0.1 watts to 10 megawatts], and otherwise discloses all the limitations of claim 9, but does not explicitly disclose a peak output power of at least 100 watts.
In a case where the claimed range overlaps or lies inside the range disclosed by the prior art a prima facie case of obviousness exists. MPEP 2144.05, Section I, citing In re Wertheim, 541 F. 2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Accordingly, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the Cooley ESD for the at least 100 watts of claim 9.
Claim 10 Cooley, as modified with respect to claim 8, discloses an ESD having a peak output power of at least one kilowatt [one kilowatt is within the Cooley Table 2 range of 0.1 watts to 10 megawatts], and otherwise discloses all the limitations of claim 10, but does not explicitly disclose a peak output power of at least one kilowatt.
In a case where the claimed range overlaps or lies inside the range disclosed by the prior art a prima facie case of obviousness exists. MPEP 2144.05, Section I, citing In re Wertheim, 541 F. 2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Accordingly, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the Cooley ESD for the at least one kilowatt range of claim 10.
Claim 11 Cooley, as modified with respect to claim 8, discloses that the first ESD has an operational temperature range of -40 degrees Celsius to 210 degrees Celsius [para. 0009,0062,0140].
Claim 12 Cooley, as modified with respect to claim 8, discloses that the first ESD has an operational temperature range of -40 degrees Celsius to 250 degrees Celsius [para. 0062,0140].
Claim 13 Cooley, as modified with respect to claim 8, discloses that the first ESD comprises a high temperature rechargeable energy storage device (HTRESD) [the Cooley ESD 30 is an energy storage device that works at high temperatures, the current application indicating that typical high temperature ambient temperatures range from plus 60 degrees Celsius to plus 210 degrees Celsius, this entire range being covered by the Cooley ESD].
Claim 14 Cooley, as modified with respect to claim 13, discloses that the HTRESD is an ultracapacitor [para. 0062-0066].
Claim 15 Cooley, as modified with respect to claim 13, discloses at Table 2 an ESD having a volumetric power density of 0.01 kilowatts/liter [0.0001 kilowatt / 0.01L] to 333.33 kilowatts/liter [10000 kilowatts / 30 liters] and otherwise discloses all the limitations of claim 15, but does not explicitly disclose that the ultracapacitor has a volumetric power density of at least 50 kilowatts/liter.
In a case where the claimed range overlaps or lies inside the range disclosed by the prior art a prima facie case of obviousness exists. MPEP 2144.05, Section I, citing In re Wertheim, 541 F. 2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Accordingly, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the Cooley ultracapacitor for the at least 50 kilowatts/liter range of claim 15.
Claim 16 Cooley, as modified with respect to claim 13, discloses at Table 2 an ESD having a volumetric power density of 0.01 kilowatts/liter [0.0001 kilowatt / 0.01L] to 333.33 kilowatts/liter [10000 kilowatts / 30 liters] and otherwise discloses all the limitations of claim 16, but does not explicitly disclose that the ultracapacitor has a volumetric power density of at least 100 kilowatts/liter.
In a case where the claimed range overlaps or lies inside the range disclosed by the prior art a prima facie case of obviousness exists. MPEP 2144.05, Section I, citing In re Wertheim, 541 F. 2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Accordingly, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have configured the Cooley ultracapacitor for the at least 100 kilowatts/liter range of claim 14.
Claim 20 Cooley, as discussed with respect to claim 2, otherwise discloses all the limitations of claim 20, but does not explicitly disclose a second ESD positioned within a toolstring to provide power to one or more instruments within the toolstring; wherein the second ESD is configured operate at temperatures at or above 210 degrees C. to: receive power from a power source at a first power level that is lower than a power requirement of a second tool in the toolstring, and output power to the tool at a second power level that is at or above the requirement of the second tool in the toolstring. However, Cooley discloses at para. 0239 that “an ESD” would include one or more ESDs, thus the claim 2 ESD includes a plurality. It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have provided an analogous configuration for the Cooley second ESD for use with a second tool, since Cooley already discloses circuits for enabling a myriad of options with regard to various downhole components, functions and “value added” capabilities beyond the mere requirements of a single tool [e.g. 62; Figs.19-22,9; para. 0200-0207]. This would have achieved the predictable result that a second tool having a different actuation/operation power requirement could be simultaneously served by the second ESD while the first tool was being served by the first ESD.
Additionally, it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
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 12 (a dependent including the limitations of claims 2, 3, 5, 8, and 12) is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 (a dependent including the limitations of claims 1, 2, 4, and 7) of U.S. Patent No. 11,697,978. Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations of claim 12 in the present application are present in the combination of issued claims 1, 2, 4, and 7, such that claim 12 in the present application is anticipated by such claim combination.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE STERLING GRAY whose telephone number is (313)446-4820. The examiner can normally be reached 7-4 Eastern - M-F.
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/GEORGE S GRAY/ Primary Examiner, Art Unit 3676
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