DETAILED ACTION
In view of the appeal brief filed on 05/26/2026, PROSECUTION IS HEREBY REOPENED. A new ground of rejection is set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676
Claims 1-7 and 27-49 are pending.
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 .
Response to Arguments
Examiner notes that after further consideration, Applicant’s representative’s argument were found persuasive and therefore the most recent 35 U.S.C. § 112 rejection has been withdrawn.
Applicant’s arguments, filed 05/26/2026, with respect to the rejection(s) of claim(s) 1-7 and 27-49 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made, as detailed herein.
Election/Restrictions
Applicant’s election without traverse of group I (i.e., claims 1-7 and 27-33) in the reply filed on 02/19/2025 is acknowledged.
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 –
Claim(s) 27-28, 33, 40-42, and 44-48 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Donderici et al. (US Publication Number 2020/0190966 A1; hereinafter “Donderici”).
In regard to claim 27, Donderici discloses: A method to perform pulse power drilling of a borehole (116) into a subsurface formation (118 — paragraphs [0026-0034]), the method comprising:
altering drilling the borehole, based on the pulse power drilling, in a direction that is off-center from a center of the borehole, wherein the altering of the drilling of the borehole in the direction that is off-center comprises, articulating at least one element of a drill string (108) having a drill bit (114/115 — paragraphs [0024-0025, 0051, 0060, 0063-0067, 0069, 0071-0072, 0086, 0090]), wherein the at least one element includes a conductive pathway configured to transmit electrical energy between a power source (e.g., “sub-surface cable” or 220) and at least one electrode (208, 210, 212) of an electrode assembly that is part of the drill bit (paragraphs [0022-0024, 0028-0029, 0036, 0043-0048]); and
periodically emitting a pulse of electrical discharge into the subsurface formation from the at least one electrode (paragraphs [0022-0024, 0028-0029, 0043-0048]).
In regard to claim 28, Donderici further discloses: a number of electrodes including the at least one electrode and positioned on an electrode face (as shown in figures 2), and wherein the method comprises selecting a subset (absent specific detail, a “subset” covers anything from some of the elements to all of the elements in a set, in which Donderici teaches) from the number of electrodes positioned on the electrode face of an electrode assembly that is part of the drill bit, and wherein periodically emitting the pulse of electrical discharge comprises periodically emitting the pulse of electrical discharge from the selected subset (paragraphs [0024-0025, 0051, 0060, 0063-0067, 0069, 0071-0072, 0086, 0090]).
In regard to claim 33, Donderici further discloses: wherein the periodically emitting of the pulse of electrical discharge is based on an electrical energy from an electrical source (e.g., “sub-surface cable” or 220) of the drill string (paragraphs [0028, 0036]),
wherein the electrode assembly comprises a ground ring (250) surrounding the at least one electrode and separated into multiple segments, wherein the ground ring is to receive the pulse of electrical discharge after emission into the subsurface formation (paragraphs [0036-0037, 0041] and figures 2), and
wherein articulating the at least one element of the drill string comprises selecting a subset (absent specific detail, a “subset” covers anything from some of the elements to all of the elements in a set, in which Donderici teaches) of the multiple segments of the ground ring that is to receive the pulse of electrical discharge after emission into the subsurface formation (paragraphs [0036-0037, 0041] and figures 2).
In regard to claim 40, Donderici further discloses: wherein said articulating the at least one element of the drill[AltContent: rect]string comprises articulating one or more components comprising the conductive pathway (paragraphs [0022-0024, 0028-0029, 0036, 0043-0048]).
In regard to claim 41, in view of in view of the modification of the preceding claim(s), Donderici further discloses: wherein the conductive pathway is centrally located (Donderici teaches for the pathway to be central with respect to the tubular bodies of the tool, i.e., within the central bore spaces of the tool bodies — paragraphs [0022-0024, 0028-0029, 0036, 0043-0048]) within the bent housing (as taught by Jeffryes).
In regard to claim 42, in view of in view of the modification of the preceding claim(s), Donderici further discloses: wherein the bent housing (as taught by Jeffryes) further includes an insulator encircling the conductive pathway, wherein the insulator electrically isolates the bent housing (as taught by Jeffryes) from the conductive pathway (paragraphs [0038, 0041-0042] — Donderici).
In regard to claim 44, in view of in view of the modification of the preceding claim(s), Donderici further discloses: wherein the conductive pathway extends uphole and downhole of the bent housing (as taught by Jeffryes) and wherein the conductive pathway is at least one of continuous and contiguous through the bent housing (as taught by the modification of Donderici in view of Jeffryes | Examiner notes that the limitation is taught as the “portions” are intrinsically connected to one another to form the modified drilling assembly).
In regard to claim 45, in view of in view of the modification of the preceding claim(s), Donderici further discloses: wherein the conductive pathway uphole of the bent housing (as taught by Jeffryes) is substantially coaxial with a longitudinal axis (i.e., central longitudinal axis) of the drill string and the conductive pathway downhole of the bent housing is substantially coaxial with a longitudinal axis of the at least one element (paragraphs [0022-0024, 0028-0029, 0036, 0043-0048] and figures 2 — Donderici).
In regard to claim 46, in view of in view of the modification of the preceding claim(s), Donderici further discloses: wherein the longitudinal axis of the drill string and the longitudinal axis of the at least one element are off axis relative to each other (as taught by the modification of Donderici in view of Jeffryes).
In regard to claim 47, Donderici further discloses: wherein the conductive pathway comprises an upper electrode connector (i.e., at least arbitrary connector portion within 230) coupled to a lower electrode connector (i.e., at least arbitrary connector portion within 114/115) coupled to a first lower electrode connector (i.e., at least arbitrary connector portion within 114/115 — figures 2).
In regard to claim 48, Donderici further discloses: wherein the upper electrode connector has a first longitudinal axis (i.e., respective central longitudinal axis of the “first upper electrode connector”) and the first lower electrode connector has a second longitudinal axis (i.e., respective central longitudinal axis of the “first lower electrode connector”) and wherein the first longitudinal axis and the second longitudinal axis form a first angle (figures 2).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Donderici et al. (US Publication Number 2020/0190966 A1; hereinafter “Donderici”) in view of Blangé et al. (US Publication Number 2012/0273277 A1; hereinafter “Blangé”).
In regard to claim 30, Donderici disclose claim 27, as introduced herein. Donderici teaches: wherein articulating the at least one element of the drill string comprises adjusting the drill string positioned above the drill bit (at least abstract and paragraph [0024]).
However, Donderici is silent in regard to: wherein articulating the at least one element of the drill string comprises adjusting an adjustable stabilizer of the drill string positioned above the drill bit.
Nonetheless, Blangé teaches a directional drilling assembly (paragraphs [0031-0050]), similar to that of Donderici. Blangé teaches the use of an adjustable stabilizer (40) above the drill bit in the directional drill string assembly (paragraphs [0031-0050] and figure 1).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the directional drill string assembly, as taught by Donderici, to include an adjustable stabilizer, as taught by Blangé, to allow for combining prior art elements according to known methods to yield predictable results of remotely supporting to deviate the drill string slightly and sufficiently to form an inclination angle with the borehole to form a desired curved borehole trajectory (paragraph [0011] — Blangé). See MPEP 2143, section I, subsection A.
Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Donderici et al. (US Publication Number 2020/0190966 A1; hereinafter “Donderici”) in view of Peter et al. (US Publication Number 2018/0016846 A1; hereinafter “Peter”).
In regard to claim 32, Donderici discloses claim 27 above.
However, Donderici is silent in regard to: wherein articulating the at least one element of the drill string comprises rotating an electrode face such that a first part of the electrode face is farther from a ground ring than a second part of the electrode face.
Nonetheless, Peter teaches a downhole drilling system which comprises of a rotary system to control the tilt of the bit to have a part of the face of the bit closer to the bit housing than another part (paragraph [0021]).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the bit, as taught by Donderici, to include for a rotary system, as taught by Peter, to further allow for controlling the direction of the drilling assembly in the wellbore (paragraph [0003] of Peter).
Claim(s) 1-2, 4, 7, 29, 34-35, and 37-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Donderici et al. (US Publication Number 2020/0190966 A1; hereinafter “Donderici”) in view of Jeffryes et al. (US Publication Number 2017/0037722 A1; hereinafter “Jeffryes”).
In regard to claim 1, Donderici discloses: A system to perform directional pulse power drilling (figure 1 and abstract), the system comprising:
a pulse power drill string (108) to be positioned in a borehole (116) formed in a subsurface formation (118 — paragraphs [0026-0034]), the pulse power drill string to directionally drill the borehole at an angle that is offset from a longitudinal axis of the borehole and based on periodic pulses of an electrical discharge into the subsurface formation (paragraphs [0024-0025, 0051, 0060, 0063-0067, 0069, 0071-0072, 0086, 0090]), the pulse power drill string comprising:
an upper body (i.e., comprising 230 which includes the electrical source — as shown in figures 2) having a longitudinal axis that is substantially coaxial with the longitudinal axis of the borehole (figures 2), wherein the upper body comprises, an electrical source (e.g., “sub-surface cable” or 220) to generate an electrical energy (paragraph [0028, 0036]); and
a primary capacitor to store the electrical energy (paragraphs [0028, 0048]);
a lower body (i.e., comprising bit 114 or 115 — as shown in figures 2) at a bottom end of the pulse power drill string, the lower body having a longitudinal axis (i.e., central longitudinal axis of the “lower body”), wherein the lower body comprises an electrode assembly (comprising 114/115) comprising at least one electrode (208, 210, 212) to periodically emit a pulse of electrical discharge into the subsurface formation to drill the borehole (paragraphs [0022-0024, 0028-0029, 0043-0048]); and
a conductive pathway configured to transmit the electrical energy between the primary capacitor and the at least one electrode (paragraphs [0022-0024, 0028-0029, 0043-0048]).
However, Donderici is explicitly silent in regard to positively adjusting the drilling direction based on the sensor data disclosed therein. Furthermore, Donderici is silent in regard to: the lower body having a longitudinal axis that is off axis relative to the longitudinal axis of the upper body, and
a bent housing portion comprising a bent housing joint, the bent housing portion coupling the upper body and the lower body, wherein an orientation of the bent housing is configurable to alter a direction of drilling of the borehole.
Nonetheless, Jeffryes teaches a downhole drilling system which is adjusted according to sensor parameter which allows for desired orientation of the drillstring assembly with respect to at least one of a geophysical field of the earth (abstract, paragraphs [0006-0007, 0023-0040], and figures 1), similar to that of Donderici. Jeffryes teaches for the drilling assembly to comprise of a bent sub (109) which “[...] is controlled through rotation of the drillstring at surface, from one fixed position to another, based solely on downhole measurements” (paragraph [0007]). See also paragraphs [0023-0040].
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the area of the drilling assembly between the upper body (comprising the electrical source) and the lower body (drill bit), as taught by Donderici, to include for a bent housing sub, as taught by Jeffryes, to allow for combining prior art elements according to known methods to yield predictable results of remotely supporting changing an orientation of the drill string (via a bent sub) in the borehole/wellbore, as desired (paragraph [0031] — Jeffryes). See MPEP 2143, section I, subsection A.
In regard to claim 2, in view of the modification of the preceding claim(s), Donderici further discloses: wherein the electrode assembly comprises multiple electrodes that includes the at least one electrode, wherein a subset (absent specific detail, a “subset” covers anything from some of the elements to all of the elements in a set, in which Donderici teaches) of the multiple electrodes is selected to periodically emit the pulse of electrical discharge into the subsurface formation to drill the borehole, wherein selection of the subset is such that emission of the pulse of electrical discharge is to adjust a rate of change of direction of the borehole (paragraphs [0024-0025, 0051, 0060, 0063-0067, 0069, 0071-0072, 0086, 0090]). Jeffryes further teaches adjusting a rate of change of direction of the borehole based off sensor data (abstract and paragraphs [paragraphs [0007, 0023-0040]).
In regard to claim 4, Donderici further discloses: wherein the electrode assembly comprises a ground ring (250) encircling the at least one electrode (figures 2), wherein the ground ring is to receive the pulse of the electrical discharge after traversal through the subsurface formation (paragraphs [0036-0038, 0041-0042]).
In regard to claim 7, in view of the modification of the preceding claim(s), Donderici further discloses: wherein the pulse power drill string (as taught Donderici) is to rotate around the longitudinal axis of the upper body (as taught by both Donderici and Jeffryes).
In regard to claim 29, Donderici discloses claim 27. Donderici teaches articulating the at least one element of the drill string comprises changing an orientation of the drill string (at least abstract and paragraph [0024]).
However, Donderici is silent in regard to: wherein articulating the at least one element of the drill string comprises changing an orientation of a bent housing of the drill string.
Nonetheless, Jeffryes teaches a downhole drilling system which is adjusted according to sensor parameter which allows for desired orientation of the drillstring assembly with respect to at least one of a geophysical field of the earth (abstract, paragraphs [0006-0007, 0023-0040], and figures 1), similar to that of Donderici. Jeffryes teaches for the drilling assembly to comprise of a bent sub (109) which “[...] is controlled through rotation of the drillstring at surface, from one fixed position to another, based solely on downhole measurements” (paragraph [0007]). See also paragraphs [0023-0040].
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the area of the drilling assembly between the upper body (comprising the electrical source) and the lower body (drill bit), as taught by Donderici, to include for a bent housing sub, as taught by Jeffryes, to allow for remotely changing an orientation of the bent sub in the borehole/wellbore, as desired (paragraph [0031] — Jeffryes).
In regard to claim 34, in view of in view of the modification of the preceding claim(s), Donderici further discloses: wherein at least a first portion of the conductive pathway is centrally located within the upper body, a second portion of the conductive pathway is centrally located within the bent housing (as taught by Jeffryes) portion, and at least a third portion of the conductive pathway is centrally located within the lower body (Donderici teaches for the pathway to be central with respect to the tubular bodies of the tool, i.e., within the central bore spaces of the tool bodies — paragraphs [0022-0024, 0028-0029, 0036, 0043-0048] | furthermore, Examiner notes that the modification is taught in the parent claim, and that the “portions” can are considered as arbitrary sections of the “conductive pathway”, absent specific detail, which lead through the modified tool from the surface to the bit end).
In regard to claim 35, in view of in view of the modification of the preceding claim(s), Donderici further discloses: wherein a first insulator portion electrically isolates the first portion from the upper body, a second insulator portion electrically isolates the second portion from the bent housing (as taught by Jeffryes) portion, and a third insulator portion electrically isolates the third portion from the lower body (paragraphs [0038, 0041-0042] — Donderici | furthermore, Examiner notes that the modification is taught in the parent claim, and that the “portions” can are considered as arbitrary sections of the tubular body portions which surround/insulate the electrical pathway to a certain degree, absent specific detail, which lead through the modified tool from the surface to the bit end).
In regard to claim 37, in view of in view of the modification of the preceding claim(s), Donderici further discloses: wherein the first portion, second portion, and third portion are at least one of contiguous and continuous (as taught by the modification of Donderici in view of Jeffryes | Examiner notes that the limitation is taught as the “portions” are intrinsically connected to one another to form the modified drilling assembly).
In regard to claim 38, Donderici further discloses: wherein the conductive pathway comprises an upper portion (i.e., arbitrary upper portion, absent specific detail) having a longitudinal axis that is substantially coaxial with the longitudinal axis of the upper body and a lower portion (i.e., arbitrary lower portion, absent specific detail) having a longitudinal axis that is substantially coaxial with the longitudinal axis of the lower body (paragraphs [0022-0024, 0028-0029, 0036, 0043-0048] and figures 2).
In regard to claim 39, Donderici further discloses: wherein the conductive pathway comprises an upper electrode connector (i.e., at least arbitrary connector portion within 230) coupled to a lower electrode connector (i.e., at least arbitrary connector portion within 114/115), wherein the coupling of the upper electrode connector and the lower electrode connector causes the conductive pathway to have an angle approximately equal to that of an angle between the longitudinal axis of the upper body and the longitudinal axis of the lower body (as shown in figures 2).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Donderici et al. (US Publication Number 2020/0190966 A1; hereinafter “Donderici”) in view of Jeffryes et al. (US Publication Number 2017/0037722 A1; hereinafter “Jeffryes”) in further view of Blangé et al. (US Publication Number 2012/0273277 A1; hereinafter “Blangé”).
In regard to claim 3, Donderici discloses: wherein the pulse power drill string comprises to adjust the rate of change of the direction (at least abstract and paragraph [0024]).
However, Donderici is silent in regard to: wherein the pulse power drill string comprises an adjustable stabilizer positioned above the upper body to adjust the rate of change of the direction.
Nonetheless, Blangé teaches a directional drilling assembly (paragraphs [0031-0050]), similar to that of Donderici. Blangé teaches the use of an adjustable stabilizer (40) above the drill bit in the directional drill string assembly (paragraphs [0031-0050] and figure 1).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the directional drill string assembly, as taught by Donderici, to include an adjustable stabilizer, as taught by Blangé, to allow for combining prior art elements according to known methods to yield predictable results of remotely supporting to deviate the drill string slightly and sufficiently to form an inclination angle with the borehole to form a desired curved borehole trajectory (paragraph [0011] — Blangé). See MPEP 2143, section I, subsection A.
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Donderici et al. (US Publication Number 2020/0190966 A1; hereinafter “Donderici”) in view of Jeffryes et al. (US Publication Number 2017/0037722 A1; hereinafter “Jeffryes”) in further view of Moeny (US Publication Number 2019/0040685 A1; hereinafter “Moeny”).
In regard to claim 5, Donderici in view of Jeffryes discloses the preceding claim.
However, Donderici is silent in regard to: wherein the conductive pathway comprises a compression joint located within the electrode assembly.
Nonetheless, Moeny teaches a similar type of electrocrushing drilling assembly (abstract, paragraphs [0024-0039, 0051-0056], and figures 2 & 5), similar to that of Donderici. Moeny teaches that the electrode assembly can include a compression joint comprising spring “524” which interconnects the electrical conductive pathway to the electrode bit face (paragraphs [0024-0039, 0051-0056] and figures 2 & 5).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the electrical conductive pathway of drilling electrode assembly, as taught by Donderici, to include for a compression joint, as taught by Moeny, for having the benefit of maintaining an effective contact distance between the bit and the rock when the electrocrushing drill bit is drilling (paragraph [0056] — Moeny).
In regard to claim 6, in view of the modification of the preceding claim(s), Donderici further discloses: wherein the at least one electrode includes an electrode face (i.e., end face, as shown in figures of Donderici and “516” of Moeny); and wherein the compression joint is to compress in response to the electrode face being in contact with the subsurface formation (paragraphs [0024-0039, 0051-0056] and figures 2 & 5 of Moeny).
Allowable Subject Matter
Claim(s) 31 and 49 is/are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NEEL PATEL whose telephone number is (469)295-9168. The examiner can normally be reached M-F, 9:00AM-5:00PM CST.
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, 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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/NEEL GIRISH PATEL/Primary Patent Examiner, Art Unit 3676
Prosecution Insights