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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Graves et al. (US 2016/0160640, hereafter Graves) in view of Mason et al. (US 2014/0014334, hereafter Mason) and McClung, III. (US 2012/0178653, hereafter McClung)
With respect to claim 1, Graves teaches a system for a well (102) having a drill string (120), an annulus (148), and a drilling fluid (140), the system comprising: a drilling microchip (118) configured to be pumped into the drill string (120) and up the annulus (148) using the drilling fluid (140) to obtain data about the well; a mud return line (164) hydraulically connected to the annulus (148) of the well; a sensor (122) having a detection range, wherein the sensor is configured to indicate a presence of the drilling microchip (118) in the detection range; and a computer system (184) electronically connected to the microchip detector (122), wherein the sensor is configured to send a signal to the computer system (184) upon indication of the presence of the drilling microchip. (par. 14-20, Fig. 1)
Graves does not teach wherein the microchip contains a magnet and the sensor is a magnetic sensor, or a shale shaker connected to a mud return line, wherein the detector is connected to the shale shaker.
Mason teaches a system for a well having a drill string comprising a magnet (magnet 57) and a magnetic sensor (sensing device 59) having a detection range, wherein the sensor is configured to indicate a presence of the magnet in the detection range. (par. 25-26, Figs. 1-3)
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the structure of Graves to use a magnet on the microchip and a magnetic sensor, as taught by Mason, in order to be able to obtain data about the presence of the microchip in an accurate and predictable manner.
McClung teaches a system for a well having a drill string (DR), an annulus (wellbore 101), and a drilling fluid (DF), the system comprising a shale shaker (SS) connected to a mud return line and detectors (DRT) connected to the shale shaker. (par. 138-140, 146-148, Figs. 7-8)
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the structure of Graves to include a shale shaker and a detector associated with the shale shaker, as taught by McClung, in order to be able to detect the presence of the microchip when it reaches that location.
With respect to claim 11, Graves teaches a method for a well (102) having a drill string (120), an annulus (148), and a drilling fluid (140), the method comprising: pumping a drilling microchip (118) into the drill string (120) and up the annulus (148) of the well using the drilling fluid (140); measuring and storing data about the well using the drilling microchip; pumping the drilling microchip out of the well using a mud return line (164); indicating a presence of the drilling microchip (118) and sending a signal from a sensor (122) to a computer system (184) upon indication of the presence of the drilling microchip. (par. 14-20, Fig. 1)
Graves does not teach the microchip having a magnet, sensing the presence of the microchip in a detection range of a magnetic sensor by having an interaction between the magnetic sensor and the magnet, or a shale shaker, wherein the magnetic sensor is connected to the shale shaker.
Mason teaches a method for a well having a drill string comprising a having a magnet (magnet 57) and a magnetic sensor (sensing device 59) having a detection range, wherein the sensor is configured to indicate a presence of the magnet in the detection range. (par. 25-26, Figs. 1-3)
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the method of Graves to use a magnet on the microchip and a magnetic sensor, as taught by Mason, in order to be able to obtain data about the presence of the microchip in an accurate and predictable manner.
McClung teaches a system for a well having a drill string (DR), an annulus (wellbore 101), and a drilling fluid (DF), the system comprising a shale shaker (SS) connected to a mud return line and detectors (DRT) connected to the shale shaker. (par. 138-140, 146-148, Figs. 7-8)
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the structure of Graves to include a shale shaker and a magnetic detector associated with the shale shaker, as taught by McClung, in order to be able to detect the presence of the microchip when it reaches that location.
With respect to claims 2-4 and 12-14, although Graves, as modified by Mason and McClung, does not explicitly teach the magnetic sensor is mounted on a bracket connected to the shale shaker such that the drilling fluid passes between the bracket and the shale shaker, wherein the magnetic sensor further comprises a single strip sensor mounted to the bracket or a plurality of individual sensors mounted to the bracket, attachment structures such as brackets are well-known and therefore it would have been obvious to one having ordinary skill in the art at the time the invention was filed to mount a single strip sensor or a plurality of individual sensors on a bracket in order to secure the sensors such that the data can be obtained in a consistent manner.
With respect to claims 5-7 and 15-17, although Graves, as modified by Mason and McClung, does not explicitly discuss that the magnetic sensor further comprises a digital switching magnetic sensor, an analog magnetic sensor, or a passive magnetic sensor, these are all sensing methods that are known in the art and therefore it would have been obvious to one having ordinary skill in the art at the time the invention was filed to operate the magnetic sensor in an appropriate manner to receive predictable results.
With respect to claims 8-9 and 18-19, although Graves, as modified by Mason and McClung, does not explicitly teach wherein the magnet further comprises an AlNiCo magnet or a Neodymium magnet, Mason (par. 25) teaches the use of a rare earth magnet and therefore it would have been obvious to one having ordinary skill in the art at the time the invention was filed to use either of these types of magnets in order to provide predictable magnetic fields for appropriate sensor results.
With respect to claims 10 and 20, Graves, as modified by Mason and McClung, teaches the magnet further comprises a SmCo magnet. (Mason, par. 25)
Response to Arguments
Applicant's arguments filed March 16, 2026 have been fully considered but they are not persuasive. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Also, applicant is reminded that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In this case, all of the elements of the claimed invention are taught when a reasonable combination of the teachings of the prior art is applied.
For example, the primary reference, Graves, teaches a microchip that moves through a drill string and a sensor that detects the presence of the microchip when it is within range of the sensor.
With respect to the secondary reference to Mason, applicant argues that the examiner asserts that “Mason teaches the microchip containing a magnet and that the sensor is a magnetic sensor”. And that “Mason does not show or suggest a drilling microchip containing a magnet that interacts with a magnetic sensor.” In fact, as applicant argues, Mason teaches an energizing ring with a magnet that senses when the magnet passes through a magnetic field.
In the Non-Final Rejection dated December 30, 2025, the examiner does not assert that Mason teaches a drilling microchip containing a magnet, but rather that Mason teaches a magnetic sensor which is configured to detect the presence of a magnet. The examiner then combined the teachings of Graves and Mason to suggest that, if the magnet were placed on the drilling microchip and the sensor of Graves provided a magnetic field, the microchip of Graves could be detected magnetically, as in the claims. The type of tool and result taught by Mason is not being relied upon for the rejection, but merely the teaching that a magnetic sensor detection of a magnet can be used in a downhole environment.
Applicant’s further arguments regarding McClung similarly do not take into account the combination of the teachings. McClung teaches a shale shaker and a detector connected to the shale shaker. In combination with the teachings of Graves, this suggests that the detectors of Graves may be located on a shale shaker and can detect the presence of the microchip in that location. McClung is not relied upon to teach an exact application of the recited invention, but merely that detectors can be used in a shale shaker. In combination, it would have been obvious to modify Graves to include a shale shaker and locate them there so that the passage of the microchip through the shale shaker could be detected.
With respect to applicant’s arguments regarding the rejection of claims 2 and 12, although the references do not explicitly teach the specific location of the sensor in the shale shaker, a recitation of a particular location is not considered to be sufficient to define the invention over the prior art. It would have been obvious to one having ordinary skill in the art to locate the magnetic sensor in a location where the microchip could be readily detected as it passes through the system. Because the structure of the shale shaker has not been claimed in particular, a broad recitation of a mounting bracket is not sufficient to limit the structure in such a way that it would not be obvious to one having ordinary skill in the art to place the sensor in whatever location is most likely to provide accurate results.
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 Jill E Culler whose telephone number is (571)272-2159. The examiner can normally be reached M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephen Meier can be reached at 571-272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JILL E CULLER/Primary Examiner, Art Unit 2853
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