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 .
DETAILED ACTION
1. The amendment filed 11/06/2025 has been received and considered. Claims 1, 4-10, and 13-22 are presented for examination.
Claim Objections
2. Claims 1, 6, 9, and 15 are objected to because of the following informalities:
As per Claim 1, it recites the limitation “by the one or more processing apparatuses” in the step of 5a.-5e. which would be better as “by the processor”.
As per Claim 6 and 15, they recite the limitation “about -3 percent and about +3 percent” which would be better as “-3 percent and +3 percent” because the term “about” is indefinite which is a relative term.
As per Claim 9, it recites the limitation “the one or more top-ranked natural resource production wells” which would be better as “the one or more top-ranked candidate natural resource production wells”.
Appropriate correction is required.
Specification
3. The amendment filed 11/06/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: “exclusive from a hyperbolic decline rate and a harmonic decline rate”.
Applicant is required to cancel the new matter in the reply to this Office Action.
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.
4. Claims 1 and 10 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. “exclusive from a hyperbolic decline rate and a harmonic decline rate”.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
5. Claims 1, 4-10, and 13-22 are rejected under 35 U.S.C. 101 because the claimed invention recites a judicial exception, is directed to that judicial exception, an abstract idea, as it has not been integrated into practical application and the claims further do not recite significantly more than the judicial exception.
(Step 1) The claims 1, 4-9, and 19-20 are directed to a method and fall within the statutory category of processes while claims 10, 13-18, and 21-22 is directed to an apparatus and falls within the statutory category of machines.
(Step 2A – Prong One) For the sake of identifying the abstract ideas, a copy of the claim is provided below. Abstract ideas are bolded.
Claim 1and 10 recite:
(1) receiving, by a processor via a communication interface from a plurality of well testing assemblies for a corresponding plurality of candidate natural resource product wells, well testing information associated with the plurality of candidate natural resource production wells (insignificant extra-solution activity – data gathering);
(2) identifying, by the processor, a respective skin factor for each of the plurality of candidate natural resource production wells based on the well testing information received from the plurality of well testing assemblies (under its broadest reasonable interpretation, mathematical concept and a mental process that convers performance in the human mind or with the aid of pencil and paper including an observation, evaluation, judgment or opinion, e.g., scientists and engineers have been solving the Arrhenius equation in their minds since it was first proposed in 1889);
(3) modeling, by the processor, an inflow performance relationship and a vertical lift performance for each of the plurality of candidate natural resource production wells based on the identified respective skin factor (under its broadest reasonable interpretation, mathematical concept and a mental process that convers performance in the human mind or with the aid of pencil and paper including an observation, evaluation, judgment or opinion, e.g., scientists and engineers have been solving the Arrhenius equation in their minds since it was first proposed in 1889);
(4) forecasting, by the processor, a post-stimulation production increase for each of the plurality of candidate natural resource production wells based on the modeled inflow performance relationship, the modeled vertical lift performance, and a predetermined skin factor adjustment (under its broadest reasonable interpretation, mathematical concept and a mental process that convers performance in the human mind or with the aid of pencil and paper including an observation, evaluation, judgment or opinion, e.g., scientists and engineers have been solving the Arrhenius equation in their minds since it was first proposed in 1889);
(5) determining, by the processor, an incremental reserve over cost metric for each of the plurality of candidate natural resource production wells based on the forecasted post-stimulation production increase (under its broadest reasonable interpretation, mathematical concept and a mental process that convers performance in the human mind or with the aid of pencil and paper including an observation, evaluation, judgment or opinion, e.g., scientists and engineers have been solving the Arrhenius equation in their minds since it was first proposed in 1889);
(6) ranking, by the processor, the plurality of candidate natural resource production wells according to the determined incremental reserve over cost metric (under its broadest reasonable interpretation a mental process that convers performance in the human mind or with the aid of pencil and paper including an observation, evaluation, judgment or opinion); and
(7) outputting, by the processor via the communication interface to one or more acid stimulation systems for corresponding one or more top- ranked of the plurality of candidate natural resource production wells, one or more control signals adapted to initiate acid stimulation at the one or more acid stimulation systems for the corresponding one or more top-ranked natural resource production wells (insignificant extra-solution activity – data outputting and “apply it"),
wherein the (5) determining comprises:
a. retrieving, by the one or more processing apparatuses, production histories of the plurality of candidate natural resource production wells (insignificant extra-solution activity – data gathering);
b. determining, by the one or more processing apparatuses, a cumulative production for each of the plurality of candidate natural resource production wells based the retrieved production histories (under its broadest reasonable interpretation, mathematical concept and a mental process that convers performance in the human mind or with the aid of pencil and paper including an observation, evaluation, judgment or opinion, e.g., scientists and engineers have been solving the Arrhenius equation in their minds since it was first proposed in 1889);
c. calculating, by the one or more processing apparatuses, a decline rate based on a relationship between an outcome of the decline rate and the determined cumulative production for each of the plurality of candidate natural resource production wells (under its broadest reasonable interpretation, mathematical concept and a mental process that convers performance in the human mind or with the aid of pencil and paper including an observation, evaluation, judgment or opinion, e.g., scientists and engineers have been solving the Arrhenius equation in their minds since it was first proposed in 1889);
d. applying, by the one or more processing apparatuses, the calculated decline rate to an initial production rate associated with the forecasted post-stimulation production increase for each of the plurality of candidate natural resource production wells (under its broadest reasonable interpretation, mathematical concept and a mental process that convers performance in the human mind or with the aid of pencil and paper including an observation, evaluation, judgment or opinion, e.g., scientists and engineers have been solving the Arrhenius equation in their minds since it was first proposed in 1889); and
e. determining, by the one or more processing apparatuses, the incremental reserve over cost metric based on an estimated stimulation cost and a projected production from the applied decline rate, and wherein the decline rate is an exponential decline rate exclusive from a hyperbolic decline rate and a harmonic decline rate (under its broadest reasonable interpretation, mathematical concept and a mental process that convers performance in the human mind or with the aid of pencil and paper including an observation, evaluation, judgment or opinion, e.g., scientists and engineers have been solving the Arrhenius equation in their minds since it was first proposed in 1889).
Therefore, the limitations, under the broadest reasonable interpretation, have been identified to recite judicial exceptions, an abstract idea.
(Step 2A – Prong Two: integration into practical application) This judicial exception is not integrated into a practical application. In particular, the claims recite the following additional elements of “one or more processing apparatuses” (Claim 1), “communication interface” (Claim 1), “an apparatus adapted to prioritize candidate natural resource production wells for acid stimulation, comprising: (a) a processor; (b) a communication interface to one or more networks; and (c) a non-transitory computer-readable memory operatively connected to the one or more processors and having stored thereon machine-readable instructions” (Claim 10), and “A system comprising: the apparatus according to claim 10” (Claim 18) which is recited at high level generality and recited so generally that they represent more than mere instruction to apply the judicial exception on a computer (see MPEP 2106.05(f)). The limitation can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer (see MPEP 2106.05(d)). Further the additional element of “a plurality of well testing assemblies for a corresponding plurality of candidate natural resource product wells” (Claim 1, 10, and 19-22) and “one or more acid stimulation systems” (Claim 1, 9, 10, and 18) is an insignificant extra-solution activity which is generally linking the use of a judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Further Claims recite the limitation which is an insignificant extra-solution activity because it is a mere nominal or tangential addition to the claim, amounts to mere data gathering (see MPEP 2106.05(g)): “(1) receiving,…, well testing information associated with a plurality of natural resource production wells (insignificant extra-solution activity – data gathering);
retrieving, …, production histories of the plurality of candidate natural resource production wells (insignificant extra-solution activity – data gathering)”.
The claims recite the limitation which insignificant extra-solution activity for the act of outputting itself, is equivalent to “apply it”, and/or generally linking the use of a judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)):
“(7) outputting, by the processor via the communication interface to one or more acid stimulation systems for corresponding one or more top- ranked of the plurality of candidate natural resource production wells, one or more control signals adapted to initiate acid stimulation at the one or more acid stimulation systems for the corresponding one or more top-ranked natural resource production wells (insignificant extra-solution activity – data outputting and “apply it")”. In particular, the limitation “one or more control signals adapted to initiate acid stimulation at the one or more acid stimulation systems for the corresponding one or more top-ranked natural resource production wells” is the idea of a solution or outcome without sufficient detail on how the solution is accomplished in the claim itself (e.g., the claim fails to recite sufficient details regarding “control signals adapted to initiate acid stimulation”) (see 2106.05(f)(1)).
(Step 2B - inventive concept) The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, claims recite the additional elements of “one or more processing apparatuses” (Claim 1), “communication interface” (Claim 1), “an apparatus adapted to prioritize candidate natural resource production wells for acid stimulation, comprising: (a) a processor; (b) a communication interface to one or more networks; and (c) a non-transitory computer-readable memory operatively connected to the one or more processors and having stored thereon machine-readable instructions” (Claim 10), and “A system comprising: the apparatus according to claim 10” (Claim 18) which is recited at high level generality and recited so generally that they represent more than mere instruction to apply the judicial exception on a computer (see MPEP 2106.05(f)). The limitation can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer (see MPEP 2106.05(d)). Further the additional element of “a plurality of well testing assemblies for a corresponding plurality of candidate natural resource product wells” (Claim 1, 10, and 19-22) and “one or more acid stimulation systems” (Claim 1, 9, 10, and 18) is an insignificant extra-solution activity which is generally linking the use of a judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Further as discussed above Claims 1 and 10 recite the limitation which is an insignificant extra-solution activity because it is a mere nominal or tangential addition to the claim, amounts to mere data gathering/outputting (see MPEP 2106.05(g)) which is the element that the courts have recognized as well-understood, routine, conventional activity (see MPEP 2106.05(d) II. i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added)); iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93): “(1) receiving,…, well testing information associated with a plurality of natural resource production wells (insignificant extra-solution activity – data gathering);
retrieving, …, production histories of the plurality of candidate natural resource production wells (insignificant extra-solution activity – data gathering)”,
“(7) outputting, by the processor via the communication interface to one or more acid stimulation systems for corresponding one or more top- ranked of the plurality of candidate natural resource production wells, one or more control signals adapted to initiate acid stimulation at the one or more acid stimulation systems for the corresponding one or more top-ranked natural resource production wells (insignificant extra-solution activity – data outputting and “apply it")”.
Further dependent claims 4-9 and 14-22 recite:
(Claim 4 and 13) wherein the outcome of the decline rate is an estimated cumulative production associated with the decline rate (insignificant extra-solution activity).
(Claim 5 and 14) wherein the relationship between the outcome of the decline rate and the determined cumulative production is a best fit between the estimated cumulative production associated with the decline rate and the determined cumulative production (insignificant extra-solution activity– “apply it”).
(Claim 6 and 15) wherein the best fit corresponds to being within an acceptable variance ranging between about −3 percent and about +3 percent (insignificant extra-solution activity– “apply it”).
(Claim 7 and 16) wherein the calculated decline rate is applied to the initial production rate at a projected stimulation time (a mathematical concept and a mental process).
(Claim 8 and 17) wherein the incremental reserve over cost metric incorporates a projected non-stimulated production for each of the plurality of natural resource production wells (insignificant extra-solution activity– “apply it”).
(Claim 9 and 18) further comprising: (8) initiating, by one or more acid stimulation systems, acid stimulation of the one or more top-ranked candidate natural resource production wells based on one or more parameters included in the one or more control signals (insignificant extra-solution activity– data outputting, “field of use” and/or “apply it”).
(Claim 19 and 21) wherein the plurality well testing assemblies comprise assemblies for tests selected from the group consisting of surface flow and pressure testing, surface shut-in testing, downhole shut-in well testing, downhole flow and pressure measurements, buildup testing, flash vaporization PVT (pressure-volume-temperature) well testing, well deviation surveys, reservoir testing, and well logging (insignificant extra-solution activity– data gathering and/or “field of use”).
(Claim 20 and 22) wherein the well testing information comprises raw data from the plurality of well testing assemblies (insignificant extra-solution activity– data gathering and/or “field of use”).
Considering the claim both individually and in combination, there is no element or combination of elements recited contains any “inventive concept” or adds “significantly more” to transform the abstract concept into a patent-eligible application.
Allowable Subject Matter
6. Claim 1, 4-10, and 13-22 are allowed.
7. The following is an examiner’s statement of reasons for allowance:
Claims 1, 4-10, and 13-22 are considered allowable since when reading the claims in light of the specification, none of the references of record alone or in combination disclose or suggest the combination of limitations specified in the independent claims 1 and 10 as whole.
While Amarfio et al. (Optimising Candidate Well Selection for Matrix Stimulation-IPR Approach) teaches a method of prioritizing candidate natural resource production wells for acid stimulation (Title, Abstract “approach to candidate well selection for matrix stimulation using Vogel’s Inflow Performance Relationship (IPR) curve analysis. A non-linear mathematical optimisation model was developed in Microsoft Excel using this analysis.”), comprising: an apparatus adapted to prioritize candidate natural resource production wells for acid stimulation, comprising: (a) a processor; (b) a communication interface to one or more networks; and (c) a non-transitory computer-readable memory operatively connected to the one or more processors and having stored thereon machine-readable instructions (“computer-based” on Pg 5, “the interface of the model” on Pg 6: Inherency considered) to (1) receiving, by a processor via a communication interface (“computer-based” on Pg 5, “the interface of the model” on Pg 6), well testing information associated with a plurality of natural resource production wells (Table 1 “The field data is presented in Table 1. These data served as input data for the acidising design and optimisation model. Figure 3.1 illustrates the interface of the model.”);
(2) identifying, by the processor (“computer-based” on Pg 5), a respective skin factor for each of the plurality of candidate natural resource production wells based on the well testing information received from the plurality of well testing assemblies (“Several criteria are used for the selection of candidate wells for matrix stimulation. As a rule of thumb, all wells suffering from formation damage and with positive skins are automatic candidates for matrix stimulation” on Pg 2; Table 2 “Skin Factor”);
(3) modeling, by the processor (“computer-based” on Pg 5), an inflow performance relationship for each of the plurality of candidate natural resource production wells based on the identified respective skin factor (“a developed mathematical model using the concept of Vogel’s Inflow Performance Relationship (IPR) curve analysis, taking into consideration continuous discounting factor, so as to optimise candidate well selection for matrix stimulation.” on Pg 2; Figure 2.1);
(4) forecasting, by the processor (“computer-based” on Pg 5), a post-stimulation production increase for each of the plurality of candidate natural resource production wells based on the modeled inflow performance relationship and a predetermined skin factor adjustment (“The selection, they stated, is done through the evaluation of the skin factor (s) and of the economic benefits of reducing the associated skin in comparison to the cost of the work. Several criteria are used for the selection of candidate wells for matrix stimulation. As a rule of thumb, all wells suffering from formation damage and with positive skins are automatic candidates for matrix stimulation.” on Pg 2; “In optimising well stimulation processes, the measure of effectiveness is considered as the net incremental post-stimulation production subject to the various limitations imposed by the system.” on Pg 3, Figure 3.3);
(5) determining, by the processor (“computer-based” on Pg 5), an incremental reserve over cost metric for each of the plurality of candidate natural resource production wells based on the forecasted post-stimulation production increase (“Optimisation Model Constraints” on Pg 4-5, “it is assumed that the remaining recoverable reserve is 130 MM barrels and the maximum acidising budget is $1.5 million per well.” on Pg 6 Figure 3.4 “Effect of Price of Oil, P” on Pg 8-9; Table 2 “The ranking, according to these benefits, is also shown in Table 2.” On PG 10-11);
(6) ranking, by the processor (“computer-based” on Pg 5), the plurality of natural resource candidate production wells according to the determined incremental reserve over cost metric (Table 2 “The ranking, according to these benefits, is also shown in Table 2.” On PG 10-11); and outputting, by the processor via the communication interface (“computer-based” on Pg 5, “the interface of the model” on Pg 6), one or more control signals adapted to initiate acid stimulation of one or more top-ranked natural resource production wells (“This model is suitable for all wells diagnosed to be treated either by acidising or hydraulic fracturing… The wells are considered as potential candidates for acidising treatment … These data served as input data for the acidising design and optimisation model.” on Pg 5-6; “the selection of the appropriate wells for a matrix stimulation operation helps in the success of the operation”, “Though several wells were considered for the matrix stimulation operation, Well N3 appears to be the most economical generating the highest post-stimulation benefit, hence the most appropriate choice for the operation”, “The model be used to assess, analyse and quantify the stimulation benefits derivable from a stimulation decision once a well has been diagnosed for matrix acidising operation; f million per well” Pg 11).
Early et al. (US 20160312552 A1) teaches the use of a vertical lift performance data ([0113]) for design, modeling, prediction, optimization, performance monitoring and/or ranking wells based on well performance expectations and costs to optimize design decisions and establish safe operating guidelines ([0037], [0117]) which provides life of well performance model features including retrieving production histories of the plurality natural resource production wells ([0123] “FIGS. 18-21 illustrate an embodiment of the performance monitoring phase which includes monitoring one or more individual wells, identifying underperforming wells… a performance index is calculated for each monitored well,”; [0125] “s shown in FIG. 18, a rate deviation calculation is performed based on measured production values 150 and/or production history data 152,”), determining, by the one or more processing apparatuses (Fig. 18-19 & 23), a cumulative production for each of the plurality natural resource production wells based the retrieved production histories ( [0120] “A performance results display 140 provides the user with results such as production data, real time measurement data (flow, temperature, production fluid information, etc.) cumulative production forecasts and economic forecasts (e.g., discounted cash flow).”; [0123] “FIGS. 18-21 illustrate an embodiment of the performance monitoring phase which includes monitoring one or more individual wells, identifying underperforming wells… a performance index is calculated for each monitored well,”; [0125] “s shown in FIG. 18, a rate deviation calculation is performed based on measured production values 150 and/or production history data 152,”), and calculating, by the one or more processing apparatuses (Fig. 18-19 & 23), a decline rate based on a relationship between an outcome of the decline rate and the determined cumulative production for each of the plurality natural resource production wells ([0111] “The rate decline calculation is the deviation of the metered (or measured) rate from the estimated (or calculated) rate.”; [0114] “The production decline calculation is the slope (or gradient) of decline ….by a generally accepted rate such as an allocated rate (i.e., a rate not directed metered but inferred using other measurements)” [0126] “FIG. 19 shows production rates 156 and an expected decline value”),
Rojas et al. (“Stimulation Jobs Evaluation Based On Decline Curve Analysis”) teaches applying, by the one or more processing apparatuses, the calculated decline rate to an initial production rate associated with the forecasted post-stimulation production increase for each of the plurality of natural resource production wells (section “Decline Curve Analysis (DCA)” “to forecast oil rates based on DCA but in this paper, the forecasted oil rates were determined using an in-house software developed in MatlabTM.” On Pg98-99, Figure 2-3) and determining, by the one or more processing apparatuses, the incremental reserve over cost metric based on an estimated stimulation cost and a projected production from the applied decline rate (“Profit contains the cumulative profits. If the treatment cost US$ 150000,…Net Cum. Profit” on Pg 100-102),
Duru et al. (“Evaluating Lift Systems for Oil Wells Using Integrated Production Modeling: A Case Study of A Niger Delta Field”) teaches receiving, by a processor via a communication interface from a plurality of well testing assemblies for a corresponding plurality of candidate natural resource product wells, well testing information modeling an inflow performance relationship and a vertical lift performance for each of the plurality of candidate natural resource production wells and forecasting production increase for each of the plurality of candidate natural resource production wells based on the modeled inflow performance relationship and the modeled vertical lift performance,
none of the prior art of record discloses a method of prioritizing candidate natural resource production wells for acid stimulation including “modeling…an inflow performance relationship and a vertical lift performance for each of the plurality of candidate natural resource production wells based on the identified respective skin factor”, “forecasting… a post-stimulation production increase for each of the plurality of candidate natural resource production wells based on the modeled inflow performance relationship, the modeled vertical lift performance, and a predetermined skin factor adjustment”, determining an incremental reserve over cost based on the forecasted stimulation production increase based on the both inflow performance relationship and a vertical lift performance as disclosed in independent 1 and 10 of the instant application in combination with the remaining elements and features of the claimed invention.
In addition, neither reference uncovered that would have provided a basis of evidence for asserting a motivation, nor one of ordinary skilled in the art at the time the invention was made, knowing the teaching of the prior arts of record would have combined them to arrive at the present invention as recited in the context of independent claims 1 and 10 as a whole. Thus, independent claims 1 and 10 are allowed over the prior art of record.
Response to Arguments
8. Applicant's arguments filed 11/06/2025 have been fully considered but they are not persuasive.
As per 101 rejection: as rejected previously, as rejected previously, a claim whose entire scope can be performed mentally cannot be said to improve computer technology. To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components such as “one or more processing apparatuses” (Claim 1), “communication interface” (Claim 1), “an apparatus adapted to prioritize candidate natural resource production wells for acid stimulation, comprising: (a) a processor; (b) a communication interface to one or more networks; and (c) a non-transitory computer-readable memory operatively connected to the one or more processors and having stored thereon machine-readable instructions” (Claim 10), and “A system comprising: the apparatus according to claim 10” (Claim 18) to perform the method is not sufficient.
Further the applicants have argued that:
The specific ordered combination of steps recited, for example, in claim 1, which is discussed above, limits the invention to a specific way of ranking candidate natural resource production wells by determining an incremental reserve over cost metric based on a specific exponential decline rate and well testing information from respective well testing assemblies.
An improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which proved the business process of market trading but did not improve computers or technology. Thus, 101 rejection maintains.
Conclusion
9. 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.
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUNHEE KIM whose telephone number is (571)272-2164. The examiner can normally be reached Monday-Friday 9am-5pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan Pitaro can be reached at (571)272-4071. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
EUNHEE KIM
Primary Examiner
Art Unit 2188
/EUNHEE KIM/Primary Examiner, Art Unit 2188