DETAILED ACTION
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
Applicant's arguments filed 30 July 2026 have been fully considered but they are not persuasive.
Applicant argues that the additional elements of claims 1 and 11 integrate the judicial exception into a practical application. Applicant argues that the apparatus of claim 1 is tied to a specific physical environment (production through a well casing) and generates particular physical measurements (flow rate and water/oil ratio) that serve as essential inputs. Examiner respectfully disagrees. These limitations are insignificant extra-solution activities as discussed below. The act of collecting measurements (i.e., flow and WOR) through a casing of a well is incidental to the primary product/process (i.e., analysis to determine water source) that are a nominal or tangential to the claim. The additional element is not significant since it is merely used as a means of data gathering through known methods.
Applicant argues that the physical measurements and multi-source well data, processed through a specific comparison-and scoring methodology solves a technical problem and therefore are not directed to a mathematical concept in the abstract and are instead directed to improved oilfield diagnostics. Examiner respectfully disagrees. The processing/analysis of the data is an abstract idea since it, under the broadest reasonable interpretation, represents a mathematical concept. While the act of measuring is an additional element as discussed below, the analysis is an abstract idea.
Applicant argues that Examiner statement related to the allowable subject matter in the office action mailed 20 May 2026 is a recognition that the combination supplies significantly more than the abstract idea itself. Examiner respectfully disagrees. The statement from the office action is in relation to the claim limitations as they relate to art rejections (i.e., 102 and 103) not as they pertain to subject matter eligibility (i.e., 101) which has a different standard. Under 101 the standard is not whether or not the claim is novel or obvious (i.e., 102 and 103). Instead, the standard is whether the claim recites a judicial exception (Step 2A, Prong One), whether the claim integrates the judicial exception into a practical application (Step 2A, Prong Two), and whether the additional elements amount to significantly more than the exception itself (Step 2B). The claims fail under the 101 standard for the reasons discussed below.
The claim objections, 112(b) rejections and 112(d) rejections are withdrawn due to amendments.
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.
Claims 1-6, 8-16, and 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1 of the Subject Matter Eligibility Test entails considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: Process, machine, manufacture, or composition of matter.
Claims 1-6, 8-16, and 18-20 are directed to a method (process), a system (machine or manufacture), and a non-transitory medium (manufacture), respectively. As such, the claims are directed to statutory categories of invention.
If the claim recites a statutory category of invention, the claim requires further analysis in Step 2A. Step 2A of the Subject Matter Eligibility Test is a two-prong inquiry. In Prong One, examiners evaluate whether the claim recites a judicial exception.
Claims 1 and 11 recites abstract limitations, including: “calculating a derivative in time of the WOR (WOR') over the period of time;” “making a comparison of the WOR or WOR' over time to a particular WOR or WOR' case history from a library of WOR and WOR' case histories that correlate with various types of water sources in a library of potential water sources;” and “weighting and scoring each of the comparison and the additional type of information to suggest a diagnosis of a most likely water source from the library of potential water sources.”
These limitations, as drafted, are a process that, under its broadest reasonable interpretation, represent mathematical relationships, mathematical formulas or equations, and/or mathematical calculations and are therefore mathematical concepts. The mere recitation of a generic computer does not take the claim out of the mathematical concepts grouping. Thus, the claim recites an abstract idea.
If the claim recites a judicial exception in step 2A Prong One, the claim requires further analysis in step 2A Prong Two. In step 2A Prong Two, examiners evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
The claims recites the additional elements of: an apparatus for measuring flow and water/oil ratio (WOR) of a fluid mixture produced through a casing of a well; an analytical tool; accepting the measured flow and the WOR over a period of time; and accepting an additional type of information about the well selected from the group consisting of reservoir properties, completion history, production history, injection history, and interventions history, wherein the additional type of information is correlated positively or negatively with at least one type of a potential water source in the library of potential water sources.
“{A]n apparatus for measuring flow and water/oil ratio (WOR) of a fluid mixture produced through a casing of a well” amounts to insignificant extra-solution activity (i.e., activity incidental to the primary process/product that is merely a nominal or tangential addition to the claim, see MPEP 2106.05(g)).
The functions of the analytical tool is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component.
“[A]ccepting the measured flow and the WOR over a period of time” amounts to insignificant extra-solution activity (i.e., activity incidental to the primary process/product that is merely a nominal or tangential addition to the claim, see MPEP 2106.05(g)).
“[A] an additional type of information about the well selected from the group consisting of reservoir properties, completion history, production history, injection history, and interventions history, wherein the additional type of information is correlated positively or negatively with at least one type of a potential water source in the library of potential water sources” amounts to insignificant extra-solution activity (i.e., activity incidental to the primary process/product that is merely a nominal or tangential addition to the claim, see MPEP 2106.05(g)).
Accordingly, in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
If the additional elements do not integrate the exception into a practical application in step 2A Prong Two, then the claim is directed to the recited judicial exception, and requires further analysis under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).
As discussed above, the recited step of measuring flow and water/oil ratio (WOR) of a fluid mixture produced through a casing of a well using an apparatus is considered insignificant extra-solution activity as Kosel (US 2021/0054739 see ¶ [0003]) discloses sensors used for measuring flow rates and water oil fraction is well-known, routine, and conventional in the art.
As discussed above, the additional elements amount to mere instructions to apply the exception (using additional element analytical tool). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Accepting data (i.e., measured flow, WOR, additional type of information) is considered insignificant extra-solution activity as the limitation of “accepting” (i.e., importing or receiving) is considered insignificant extra-solution activities as the limitations amount to selecting a particular data source or type of data to be manipulated and transmitting/receiving the data. As noted in Electric Power Group, selecting information, based on types of information and availability of information for collection, analysis, and display is considered insignificant extra-solution activity (see MPEP 2106.05(g)). Additionally, the Symantec, TLI, OIP Techs. and buySAFE court decisions cited in MPEP 2106.05(d)(II) indicate that mere receiving or transmitting data over a network is a well-understood, routine, conventional function when it is claimed in a merely generic manner (as it is here).
Thus, even when viewed as an ordered combination, nothing in the claims add significantly more (i.e., an inventive concept) to the abstract idea.
Claim 2 recites, “the apparatus for measuring flow and WOR is operatively connected to the analytical tool, whereby the analytical tool can accept the WOR data in real time and operate in real time.” Operatively connecting tools so that they can transmit data is considered insignificant extra-solution activity as the limitation of transmitting/accepting is considered insignificant extra-solution activities as the limitations amount to selecting a particular data source or type of data to be manipulated and transmitting/receiving the data. As noted in Electric Power Group, selecting information, based on types of information and availability of information for collection, analysis, and display is considered insignificant extra-solution activity (see MPEP 2106.05(g)). Additionally, the Symantec, TLI, OIP Techs. and buySAFE court decisions cited in MPEP 2106.05(d)(II) indicate that mere receiving or transmitting data over a network is a well-understood, routine, conventional function when it is claimed in a merely generic manner (as it is here).
Claims 3-6, 8-10, 12-16, and 18-20 further recite:
the analytical tool is additionally capable of removing WOR data that is inconsistent or noisy, whereby the retained data of the WOR and WOR' over the period of time is more likely to be reliable;
removing WOR data that is inconsistent or noisy is based on trend analysis or crosschecking with field data and offset wells;
the analytical tool is additionally capable of presenting a proposed solution for each of the potential water sources in the library of potential water sources;
the additional type of information includes at least two different types of information about the well;
the library of potential water sources includes at least two selected from the group consisting of: casing leak, channeling behind casing, completion near or in a water zone, high permeability streak, injector communication breakthrough, bottom water coning, fracture out of zone;
each of the potential water sources is classified as at least one of the group consisting of: near wellbore related, reservoir related, or stimulation related;
the analytical tool is additionally capable of suggesting a suitable treatment solution from a database of treatment solutions for controlling water production.
the step of measuring flow and WOR is in real time and the method is performed in real time;
a step of removing WOR data that is inconsistent or noisy, whereby the retained data of the WOR and WOR' over the period of time is more likely to be reliable;
removing WOR data that is inconsistent or noisy is based on trend analysis or crosschecking with field data and offset wells;
a step of presenting a proposed solution for each of the potential water sources in the library of potential water sources;
the additional type of information includes at least two different types of information about the well;
the library of potential water sources includes at least two selected from the group consisting of: casing leak, channeling behind casing, completion near or in a water zone, high permeability streak, injector communication breakthrough, bottom water coning, fracture out of zone;
each of the potential water sources is classified as at least one of the group consisting of: near wellbore related, reservoir related, or stimulation related; and
a step of suggesting a suitable treatment solution from a database of treatment solutions for controlling water production
which merely narrows the previously recited abstract idea limitations.
Allowable Subject Matter
Claims 1-6, 8-16, and 18-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and amended to overcome the rejection(s) under 35 U.S.C. 101.
Conclusion
THIS ACTION IS MADE FINAL. 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 KRISTYN A HALL whose telephone number is (571)272-8384. The examiner can normally be reached M-F 9:00-5:00.
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, Nicole Coy can be reached at (571) 272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISTYN A HALL/Primary Examiner, Art Unit 3672
