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 .
Claim Rejections - 35 USC § 112
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 10 and 20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 10 and 20, the phrase "may" renders the claims indefinite because it is unclear whether the limitations following the phrase are required as part of the claimed invention. For the purpose of examination, the limitation will be interpreted as not being required since “may” means something might happen (i.e., not required).
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 1-20 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 1-20 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: “obtaining a rock type of a formation to be drilled; obtaining surface drilling parameters for each of a plurality of rate of penetration (ROP) values; obtaining a plurality of bottom hole assembly (BHA) designs; and selecting particular surface drilling parameters based on the predicted rock failure.”
These limitations, as drafted, are a process that, under its broadest reasonable interpretation, cover performance of the limitations in the mind, or by a human using pen and paper, and therefore recite mental processes. Claims recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Regarding claim 1, as there is no recitation of a processing structure (i.e., processor, etc.) nothing in the claim element precludes the aforementioned steps from practically being performed in the human mind, or by a human using pen and paper. Regarding claim 11, other than reciting “on a processor” nothing in the claim element precludes the aforementioned steps from practically being performed in the human mind, or by a human using pen and paper. The mere recitation of a generic computer does not take the claim out of the mental process grouping. Thus, both claim 1 and claim 11 recite an abstract idea.
Claims 1 and 11 recite abstract limitations, including: “determining a rock type specific loading rate model for the rock type; determining impact forces for each of the plurality of BHA designs using a drill string vibrational model and the surface drilling parameters; and predicting rock failure using the impact forces, rock type specific loading rate model, and a finite element model (FEM).”
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. Regarding claim 11, the mere recitation of a generic computer does not take the claim out of the mathematical concepts grouping. Thus, the claims recite 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.
With respect to claim 1, the method steps of the invention lack any recitation of a machine, let alone a recitation which creates a substantial tie so as to impose meaningful limitations on the claims scope. Accordingly, the method steps can be performed entirely manually and contains no additional elements.
Claim 11 recites the additional elements of: A, B, C.
The processor and non-transitory computer-readable memory are recited at a high-level of generality and are merely invoked as tools to perform the abstract idea (i.e., “apply it”).
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).
Claim 1 recites no additional elements that require further analysis as discussed above.
With respect to claim 11, the processor and the non-transitory computer-readable memory are recited at a high level of generality such that they amount to no more than mere instructions to apply the exception. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept (MPEP 2106.05(f)).
Thus, even when viewed as an ordered combination, nothing in the claims add significantly more (i.e., an inventive concept) to the abstract idea.
Claims 2-10 and 12-20 further recite:
the rock-type specific loading rate model is determined empirically from rock samples;
the surface drilling parameters are at least one of the following: an ROP, a weight on bit (WOB), and a revolutions per minute (RPM);
a resonance frequency is determined for each BHA design;
the resonance frequency determines a resonance WOB and resonance RPM;
resonance WOB and the resonance RPM determine a resonance ROP;
the FEM is a poro-elasto-plastic FEM;
the FEM model predicts a mud weight range and a borehole pressure range and prevents borehole failure;
determining the impact forces of the BHA requires modeling a drill string, a drill bit, and downhole tools; and
the FEM may be constructed during drilling which merely narrows the previously recited abstract idea limitations.
Allowable Subject Matter
Claims 1-20 are allowable over the prior art but stand rejected under 101 as discussed above.
Claims 10 and 20 are also rejected under 112(b) as discussed above.
The following is a statement of reasons for the indication of allowable subject matter:
The art of record does not teach or make obvious the combination of the impact forces for each of a plurality of BHA designs determined by a drill string vibration model, the rock type specific loading rate model for a specific rock type, and the FEM in order to predict rock failure to use the predicted rock failure to select surface parameters in combination with the other claim limitations. While the individual limitations are known in the art the combination in the claimed matter is not known or obvious.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bailey (US 2010/0032165) discloses constructing a BHA layout and then modifying results (Fig. 2).
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.
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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
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