DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/26/2026 has been entered.
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 47, 50-59 and 62-70 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 claims contain 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.
The claims recite “determine a curvature of the second wellbore, wherein the curvature is determined based on a ratio of the measured electromagnetic fields obtained at different axial locations. However, the original disclosure, at the time of the invention was filed, would not have taught one skilled in the art how to make and use the full scope of the claimed invention without undue experimentation due to lack of sufficient detail in regard to the usage of inversion algorithm, which is required to calculate the curvatures to begin with, including the absence of any specific working examples, where the inversion algorithm is used to calculate the curvatures using the measured EM fields as well as in modeling magnetic field curves (see Automotive Tech vs BMW, 84 USPQ2d 1108, 501 F3d 1274,” the specification devotes only one short paragraph and on figure to electronic sensors, and information therein does little more than provide overview of electronic sensor without providing details of how it operates…specification must supply novel aspect of the invention.”)
To further explain, we start with the most relevant paragraphs (Paragraphs [0033], [0041]-[0042], reproduced below for convenience) and Fig. 11 in the Appellant’s original disclosure associated with the limitation “wherein the curvature is determined based on a ratio of the measured electromagnetic fields obtained at different axial locations”. First, the Paragraph [0033] is shown below.
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As shown above, the Paragraph [0033] discloses that inversion algorithm can be used to calculate the curvature (using the laws governing EM fields, and either based on deterministic and/or stochastic methods of optimization or directly using a curved model), where the calculated curvatures are then used to produce the quality indicator, which can be the ratio or difference of the calculated and expected curvature. The curve model is constructed using electromagnetic simulations based on various mathematical techniques, such as finite difference, finite element, etc. Importantly, we note here that inversion algorithm is merely described in the Paragraph [0033] as a general term to describe a plurality of general mathematical techniques that “can” be used in the calculation of the claimed curvature, as laws governing EM fields, deterministic and stochastic methods, curve model, electromagnetic simulations are all generic terms, and as there is complete absence of detail as to how to determine the claimed curvature using the inversion algorithm, including lack of specificity as to which particular laws governing EM fields, which particular integral equations are used, how the optimization is being performed using which particular parameters, etc.
Next, the Paragraphs [0041]-[0042] are shown below.
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As shown above, the Paragraph [0041] and the Figure 11 shows the inversion algorithm 1100 that is used to determine parameters (D, θ, Φ, n) and Curvature, but the Paragraph and Figure are merely general statement and general description of the inversion algorithm. The Figure 11 shows the System Model 1110, but there is no further description as to what this model is, how said model is used in the Cost Function 1120 and the Optimization to derive different parameters, including the Distance D and Curvature. Notably, the inversion algorithm does not even describe different equations and calculations that are necessarily required in calculating different parameters.
In Summary, the claim recites determining the curvature based on a ratio of the measured electromagnetic fields obtained at different axial locations. However, the determination of the curvature based on said ratio requires the usage of the inversion algorithm. Examining the original disclosure, the original disclosure however, merely describes the inversion algorithm generically to calculate the claimed curvature in its most basic and general terms, without providing sufficient details as to how the claimed curvature is calculated,. In the following, some of the Wands factors are discussed.
Breadth of the claim. The limitation of determining the curvature based on a ratio of the measured electromagnetic fields requires the usage of inversion algorithm. The original disclosure however merely discloses using various generic mathematical techniques in Paragraphs [0033], [0041] and Figure 11 of the original disclosure, such as using laws of EM, deterministic or stochastic methods of optimization or directly using inversion algorithm, curve model, etc. to calculate the claimed curvature. Since the original disclosure does not provide any sufficient details with regard to any of the mathematical techniques that can be used to calculate the claimed curvatures, and the subsequent calculation of the ratio, the full scope of the invention is not enabled.
State of the prior art. The limitation of determining the curvature using the inversion algorithm is not known in the art. In fact, it is the novel feature of the invention, and the specification must supply the novel aspect, and not the knowledge of one skilled in the art (see Automotive Tech vs BMW, 84 USPQ2d 1108 501 F3d 1274, Id. at 1114 (CAFC, 2007), “ATI argues that despite this limited disclosure, the knowledge of one skilled in the art was sufficient to supply the missing information. We do not agree. In Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (42 USPQ2d 1001) (Fed. Cir. 1997), we stated: “It is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement.” Although the knowledge of one skilled in the art is indeed relevant, the novel aspect of an invention must be enabled in the patent.).
Amount of direction provided by the inventor. As had discussed above, the inventor merely provided the most basic information (or the starting point) to calculating the claimed curvature without sufficient detail, citing general mathematical techniques that “can” be used to calculate the claimed curvature.
Lack of specific example. The original disclosure discloses Figure 11 as one working example. However, as had been discussed above, the said figure is merely an illustration of overall plan, using basic functional blocks to denote generic mathematical techniques, such as optimization, to calculate the claimed curvature.
Furthermore, using inversion algorithm to calculate the curvature is not well-known, and the original disclosure therefore must disclose how the curvature is calculated using the inversion algorithm that is used to produce the ratio (see In re Buschner, 18 USPQ2d 1331, 929 F2d 660, Id., at 1332, “unless the information is well known in the art, the application itself must contain this information.”).
Conclusion
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/HYUN D PARK/Primary Examiner, Art Unit 2857
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