DETAILED ACTION
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
Applicant's arguments, see Remarks page 5, filed 02/10/2026, with respect to the Rejection of claim(s) 1 under 35 U.S.C. 101 have been fully considered but they are not persuasive.
On page 5 of Remarks, Applicant argues:
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Examiner respectfully disagrees.
The disclosed invention of claim 1 is directed to a judicial exception, specifically an abstract idea of mentally adjusting a height.
Regarding the Step 2A of the Subject Matter Eligibility Analysis, MPEP 2106.04(II) discloses:
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For Step 2A Prong One, we are to determine the claim limitations that recite a judicial exception, wherein we find that the claim 1 limitation “adjust a vertical height of the tong assembly,” can be reasonably interpreted as a human observer viewing a tong assembly and mentally determining/adjusting the height of the tong assembly.
For Step 2A Prong Two, we are to identify and determine whether recited additional elements in claim 1 are able to integrate the judicial exception into a practical application. We find that the limitations: “a tong positioning device,” “tong assembly,” “at least one calibration marker secured to the tong assembly,” and “a camera disposed at a camera position at which the at least one calibration marker is within a field of view of the camera,” are recited additional elements. However, the claim limitations fail to integrate the abstract idea into a practical application. Wherein the generic recitation of the claim limitations pertaining to the additional elements fail to disclose restrictions on how the result is accomplished, or disclose descriptions of the mechanism for accomplishing the result, and thus amount to mere instructions to apply the abstract idea of height adjustment on a generic computer.
Therefore, the rejection of claim 1 under 35 U.S.C. 101 is maintained.
Applicant's arguments, see Remarks pages 5-6, filed 02/10/2026, with respect to the Rejection of claim(s) 1 under 35 U.S.C. 103 have been fully considered but they are not persuasive.
On pages 5-6 of Remarks, Applicant argues:
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Examiner respectfully disagrees.
Paragraph 0044 of Ruehmann discloses “the controller 160 sends commands to the tong controller 162 and the tong handler 116 to align the tong assembly 110 with the tubular joint 108 for a breaking out operation,” in relation to Figures 1D, 1E. Wherein the method discloses a tong controller and tong handler aligning the tong assembly to a tubular joint, but fails to disclose the methods or algorithms used to align the tong assembly. In addition, paragraph 0056 discloses “In operation 270 , a tong assembly is aligned with the tubular string according to the determined location of the tubular joint/stick-up to perform a break out/make up operation. For example, in the tubular handling system 100 , the controller 160 may send the commands to the tong handler 116 to align the tong assembly 110 with the tubular string 101 according to the actual height of the tubular joint 108 , which is determined in operations 210 – 260,” in relation to Figure 2. However, Ruehmann fails to disclose the methods or algorithms used to determine the commands for aligning the tong assembly to the tubular joint/stick-up.
Paragraph 0030-0031 of Ogura discloses “The coordinate system setting unit 21 sets a coordinate system for use in control of the robot 2 based on an image processing result by the image processing unit 11...The coordinate system setting unit 21 obtains a position of the calibration jig J relative to the visual sensor position based on the captured image obtained by capturing, by means of the camera 4 , the image of the calibration jig J and the calibration data,” wherein a calibration marker, which may be attached to a robot as disclosed by 0054 of Ogura, is used as a standardized component for determining and controlling the position of a robot based on a calibration data.
Thus, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to implement the algorithms for calibrating and controlling the movements of a robot taught by Ogura into the system for aligning a tong assembly taught by Ruehmann.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Ogura discloses “a distance between the camera and the calibration jig is uniquely obtained from the characteristics of the calibration jig, which makes it possible to uniquely determine a position of the calibration jig in the three-dimensional space from the two-dimensional image plane,” wherein the usage of a calibration jig for the determining of an object’s position provides a means for uniquely determining the position of the calibration jig and the object it is attached to. Thus, Ogura discloses a motivation of a uniquely determined object position, and thus an accurate object position determination.
Therefore, the rejection of claim 1 under 35 U.S.C. 103 is maintained.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a tong positioning device” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (mental process of adjusting height) without significantly more.
Claim 1 recite(s):
“…adjust a vertical height of the tong assembly”; Which can be reasonably interpreted as a human observer viewing the tong assembly and mentally deciding the vertical height adjustment needed for the tong assembly.
This judicial exception is not integrated into a practical application because of additional elements:
“…a tong assembly; a tong positioning device”; are generically recited computer elements that do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer and pertain to a generically recited tong assembly and a generically recited tong positioning device.
“…at least one calibration marker secured to the tong assembly; and a camera disposed at a camera position at which the at least one calibration marker is within a field of view of the camera”; are generically recited computer elements that do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer and pertain to a generically recited calibration marker within a generically recited camera’s field of view.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because of additional elements:
“…a tong assembly; a tong positioning device”; are well-understood, routine, and conventional computer elements that do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer and pertain to a well-understood, routine, and conventional tong assembly and a well-understood, routine, and conventional tong positioning device.
“at least one calibration marker secured to the tong assembly; and a camera disposed at a camera position at which the at least one calibration marker is within a field of view of the camera”; are well-understood, routine, and conventional computer elements that do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer and pertain to a well-understood, routine, and conventional camera within a well-understood, routine, and conventional camera’s field of view.
Depending claims 2-6 do not remedy these deficiencies.
Claim 2 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an additional element of a spherical calibration marker secured to the tong assembly of claim 1. The marker is recited generically such that it does not provide any meaningful limitations on performing the abstract idea. This claim is not patent eligible.
Claim 3 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of identifying at least one calibration marker within a first digital image. This is a mental process. This claim is not patent eligible.
Claim 4 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of identifying a pipe feature within a second digital image. This is a mental process. This claim is not patent eligible.
Claim 5 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an additional element of an artificial intelligence unit. The unit is recited generically such that it does not provide any meaningful limitations on performing the abstract idea. This claim is not patent eligible.
Claim 6 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of filtering out colors from the first digital image, except those of a calibration marker. This is a mental process. This claim is not patent eligible.
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.
Claim(s) 1 and 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ruehmann et al. (US 2020/0325764 A1) hereinafter referenced as Ruehmann, in view of Ogura et al. (US 2023/0191612 A1) hereinafter referenced as Ogura.
Regarding claim 1, Ruehmann discloses: A system for use with a subterranean well (Ruehmann: 0002 & 0003), the system comprising: a tong assembly; and a tong positioning device configured to adjust a vertical height of the tong assembly (Ruehmann: 0006-0007: “Embodiments of the present disclosure relate to apparatus and methods for automatically aligning a tong assembly with tubulars to be operated…the method comprises capturing a first two dimensional image of a tubular, capturing a second two dimensional image of the tubular including a reference, identifying a tubular joint or stick-up of the tubular from the first or second two dimensional image, and determining a vertical position of the tubular joint or stick-up of the tubular using the reference.”; Wherein the tong assembly is aligned based on the determined height of the tubular joint.).
Ruehmann does not disclose expressly: at least one calibration marker secured to the tong assembly; and a camera disposed at a camera position at which the at least one calibration marker is within a field of view of the camera.
Ogura discloses: a system for calibrating, and controlling, the movement of a robot based on the on a captured image (Ogura: 0030-0031: “The coordinate system setting unit 21 sets a coordinate system for use in control of the robot 2 based on an image processing result by the image processing unit 11…The coordinate system setting unit 21 obtains a position of the calibration jig J relative to the visual sensor position based on the captured image obtained by capturing, by means of the camera 4, the image of the calibration jig J and the calibration data.”). Wherein, at least one calibration marker is secured to the robot; and a camera disposed at a position at which the at least one calibration marker is within a field of view of the camera (Ogura: Figure 5; 0054: “but in a second embodiment of the present disclosure, a calibration jig J may be provided to a flange 5 of a robot 2 . Also in this case, a camera 4 may be either of a fixed camera and a hand camera.”).
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to implement the algorithms for calibrating and controlling the movements of a robot taught by Ogura into the system for aligning a tong assembly taught by Ruehmann. The suggestion/motivation for doing so would have been “a distance between the camera and the calibration jig is uniquely obtained from the characteristics of the calibration jig, which makes it possible to uniquely determine a position of the calibration jig in the three-dimensional space from the two-dimensional image plane, whereby the position of the calibration jig relative to the camera position can be obtained from the position information of the calibration jig in the captured image captured using the calibrated camera.” (Ogura: 0032). Further, one skilled in the art could have combined the elements as described above by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results. Therefore, it would have been obvious to combine Ruehmann with Ogura to obtain the invention as specified in claim 1.
Regarding claim 3, Ruehmann in view of Ogura discloses: The system of claim 1, further comprising an image processor configured to identify the at least one calibration marker in a first digital image taken by the camera (Ogura: 0058: “the coordinate system setting unit 21 in the second embodiment of the present disclosure obtains a position of the calibration jig J relative to a position of the camera 4 based on a captured image obtained by capturing, by means of the camera 4, an image of the calibration jig J provided to the flange 5, obtains a position of the camera 4 relative to a reference position when an image of the calibration jig J is captured based on the calibration data, and obtain, based on the obtained positions of the calibration jig J and the camera 4, a position of the calibration jig J relative to the reference position when an image of the calibration jig J is captured”; Wherein the calibration jig is identified within the captured image.).
Regarding claim 4, Ruehmann in view of Ogura discloses: The system of claim 3, in which the image processor is further configured to identify a pipe feature in a second digital image taken by the camera (Ruehmann: 0007: “the method comprises capturing a first two dimensional image of a tubular, capturing a second two dimensional image of the tubular including a reference, identifying a tubular joint or stick-up of the tubular from the first or second two dimensional image, and determining a vertical position of the tubular joint or stick-up of the tubular using the reference.”; Wherein the tong assembly is aligned based on the determined height of the tubular joint.).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ruehmann in view of Ogura, and further in view of Ding et al. (US 2021/0248781 A1) hereinafter referenced as Ding.
Regarding claim 2, Ruehmann in view of Ogura discloses: The system of claim 1.
Ruehmann in view of Ogura does not disclose expressly: in which the at least one calibration marker comprises a sphere.
Ding discloses: in which the at least one calibration marker comprises a sphere (Ding: 0028: “The system further includes a single fiducial 38 on the articulated arm 32 on or near the end-effector 34 in accordance with certain aspects of the invention. The use of the single fiducial ( at a time) permits the calibration process of certain aspects of the invention to uniquely calibrate the extrinsic parameters of one or more cameras with respect to the articulated arm. The fiducial 38 may be in the form of any of an LED or other small but bright illumination source ( e.g., brighter than ambient illumination), or a reflective (e.g., retroreflective) marker, such as an at least semi-spherical retroreflective sphere. In accordance with other aspects, a plurality of fiducials may be used, with one or more being used at a time.”).
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to incorporate the fiducial sphere taught by Ding onto the tong assembly disclosed by Ruehmann in view of Ogura. The suggestion/motivation for doing so would have been “In either case the LED or the retro-reflective ball is designed such that it is visible from nearly a full half-sphere of directions, i.e., 360 degreesx180 degrees illumination or reflective sphere as shown diagrammatically in FIG. 3. In particular, with the fiducial 38 positioned as shown, illumination is emitted in 360 degrees as shown at 50, and vertically 180 degrees as shown at 52” (Ding: 0031). Further, one skilled in the art could have combined the elements as described above by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results. Therefore, it would have been obvious to combine Ruehmann in view of Ogura with Ding to obtain the invention as specified in claim 2.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ruehmann in view of Ogura, and further in view of Blakely et al. (US 2020/0088873 A1) hereinafter referenced as Blakely.
Regarding claim 5, Ruehmann in view of Ogura discloses: The system of claim 3.
Ruehmann in view of Ogura does not disclose expressly: in which the image processor comprises an artificial intelligence unit.
Blakely discloses: in which the image processor comprises an artificial intelligence unit (Blakely: 0022: “an optical camera ("OC") 116 may also be used to obtain an image of the tool joint 104 (and its surroundings including the pipe 102), and convolutional neural networks (CNNs) may be applied to the two-dimensional ("2D") image to extract or recover a 3D reconstruction of the tool joint 104 and the pipe 102, thereby allowing for an at least substantially accurate determination or estimate of its height and/or orientation.”).
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to incorporate the known technique of implementing a CNN for object detection and orientation disclosed by Blakely for the detection of the tong assembly and tubular joint disclosed by Ruehmann in view of Ogura. The suggestion/motivation for doing so would have been “the CNNs may be trained to recognize the pipe 102 (and its part the tool joint 104) from images obtained by the OC 116 by training the CNNs with a variety of pipe and/or tool joint 104 types (e.g., shapes, features, color, etc.), pipe and/or tool joint 104 sizes (e.g., diameters, lengths, etc.), weather conditions ( of the location of the well bore 126), ambient light conditions, etc.”(Blakely: 0022; Wherein the CNNs may be trained to detect a variety of objects across a variety of situations, allowing for flexibility). Further, one skilled in the art could have combined the elements as described above by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results. Therefore, it would have been obvious to combine Ruehmann in view of Ogura with Blakely to obtain the invention as specified in claim 5.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ruehmann in view of Ogura, and further in view of Sampe et al. (A Study on the Effects of Lightning and Marker Color Variation to Marker Detection and Tracking Accuracy in Gait Analysis System) hereinafter referenced as Sampe.
Regarding claim 6, Ruehmann in view of Ogura discloses: The system of claim 3.
Ruehmann in view of Ogura does not disclose expressly: in which the image processor is further configured to filter from the first digital image colors other than a color of the at least one calibration marker.
Sampe discloses: in which the image processor is further configured to filter from a digital image, colors other than a color of at least one calibration marker (Sampe: Section II. A. Experimental setup: “Color filter is the first step for color marker video processing. In this filter, the program starts by converting RGB 9red, green, blue) color to HSI (hue, saturation, intensity). We pick HSI because it is relatively easier to determine a color in HSI than in RGB. We pick certain value to adjust which marker color that we want to be shown. This way is very much easier than to pick sets of value in RGB, for examples: pure blue components are hue (H) = 2400 , saturation(S) = 1, Intensity (I) =1, dark blue components are H = 240°, S = 1, I = 0.40. Every color in video which have different component with the value we pick will be appear to be black. After this process our video will then be converting back to RGB.”).
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to implement the algorithms for color filtering disclosed by Sampe for displaying the colors of the markers disclosed by Ruehmann in view of Ogura. The suggestion/motivation for doing so would have been “From fig 3 we can see a part of this software is color filter. We use this filter for processing data in which object using various type of color marker. We have to use this filter to make sure just one marker visible at a time so error from wrong tracking would not happen” (Sampe: Section III. B. Software performance for marker detection and tracking for various types of markers color; Wherein the color filters prevent errors with respect to marker detection.). Further, one skilled in the art could have combined the elements as described above by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results. Therefore, it would have been obvious to combine Ruehmann in view of Ogura with Sampe to obtain the invention as specified in claim 6.
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 ANTHONY J RODRIGUEZ whose telephone number is (703)756-5821. The examiner can normally be reached Monday-Friday 10am-7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sumati Lefkowitz can be reached at (571) 272-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J RODRIGUEZ/Examiner, Art Unit 2672
/SUMATI LEFKOWITZ/Supervisory Patent Examiner, Art Unit 2672