DETAILED ACTION
Notice of 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/10/2025 has been entered.
Response to Arguments
Claim Rejections - 35 USC § 112
The Applicant’s arguments regarding the rejection of claims 1 and 11 under 35 USC § 112(b) has been considered but are not persuasive. Furthermore, the amendments to claims 1 and 11 raise further clarity issues which are discussed below.
Regarding the limitation “determining whether the steering actuator is malfunctioning based on the comparison; causing the steering actuator to extend or retract based on the determination”, this limitation raises 112(b) issues for indefiniteness because it remains unclear if the claim positively requires malfunctioning to be determined. This issue is due to the recitation of “whether” and further due to the next step of “causing the steering actuator to extend or retract based on the determination”. The step of “whether” implies two possible states of “malfunctioning” or “not malfunctioning”. As such, the limitation “whether” suggests that “malfunctioning” is conditional. However, the claim requires the next step of causing the actuator to extend or retract “based on the determination”. Is malfunctioning causing the actuator to extend or retract? It is unclear which state “malfunctioning” corresponds to, i.e. extending or retracting. The claim fails to specify which outcome of the “whether” triggers the action because the claim does not discuss the logic for when to extend the actuator versus when to retract the actuators. As such, the limitation “determining whether the steering actuator is malfunctioning based on the comparison” remains unclear and the metes and bounds of claims 1 and 11 are indefinite.
Claim Rejections - 35 USC § 112
The amendments to claims 1 and 11 overcome the prior art rejection. As such, the rejection of claims 1 and 11 has been withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1 and 11, the claims recite the limitation “determining whether the steering actuator is malfunction base on the comparison; causing the steering actuator to extend or retract based on the determination”; however, there is no support in the disclosure which discusses that determining if the steering actuator is malfunctioning or function causes the steering actuator to “extend or retract”. At least paragraphs [0056], [0060], [0104] and [0105] discusses the extension and retraction of the steering actuator; however, its in relation to changing the direction of drilling and the hydraulic actuation mechanism of the steering actuators. As such, there is no support for the limitation “causing the steering actuator to extend or retract based on the determination” recited in claims 1 and 11.
Claims 2-10 and 12-20 are rejected under this statute as the claims depend from claim 1 or 11.
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 1-20 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 1 and 11, the claims recite the limitation “the BHA model considers a position and/or orientation of the plurality of steering actuators” which is indefinite because the term “considers” is subjective and lacks a clear scope in the context of an automated or computer implemented BHA model. It is unclear what specific technical operation is being performed when the BHA model “considers” data, i.e. position and/or orientation of the plurality of steering actuators. The claims do not specify how the data is being used, e.g. the claims do not specify whether the data is being used as an input variable in an equation. Furthermore, the claim fails to provide an objective standard for determining how much consideration of the position and/or orientation of the plurality of steering actuators is required to fall within the scope of the claim. For example, if the BHA model receives the position and/or orientation data but assigns it a weight of zero, has the BHA model “considered” the data? Because the functional relationship between the “position and/or orientation” data and the “BHA model” is undefined, the above limitation is unclear which renders the claims indefinite.
Claims 1 and 11 further recites “determining whether the steering actuator is malfunctioning based on the comparison; causing the steering actuator to extend or retract based on the determination” and it is unclear if the claim positively requires that “malfunctioning” is “determined” because of the recitation of “whether” which implies two possible states of “malfunctioning” or “not malfunctioning”. However, the claim requires the next step of causing the actuator to extend or retract “based on the determination”. Is malfunctioning causing the actuator to extend or retract? It is unclear which state, i.e. “malfunctioning” or “not malfunctioning”, corresponds to extending and retracting. The claim fails to specify which outcome of the “whether” triggers the action because the claim does not discuss the logic for when to extend the actuator versus when to retract the actuators. For the above reasons, the metes and bounds of claims 1 and 11 are unclear.
Claims 2-10 and 12-20 are rejected under this statute as the claims depend from claim 1 or 11.
Allowable Subject Matter
Claims 1-20 are not allowed due to the rejections under 35 USC § 112(a) and 112(b) above. However, no prior art rejections were given to claims 1 and 11.
Regarding claims 1 and 11, the closest prior art is Jogi et al. (U.S. Publication No. 20050150689).
Regarding claim 1, Jogi discloses modeling a bottom-hole assembly (BHA) by forming a BHA model (a mathematical BHA model provide information about the curvature (build rate and walk rate) of the wellbore; pp[0103], [0104]) include measured bending moment on bit (BOB) (pp[0072], [0102]) wherein the BHA model is formed based on an input of a steering assembly force associated with the BHA (The measured bending moment data depends on the deformation of the Bottom Hole Assembly under the influence of gravity, weight on bit, steering forces and other side forces due to wall contacts and dynamic effects; pp[0102]) such that the BHA model considers a position and/or orientation of one or more stabilizers (position and/or orientation of stabilizers 264 is considered; Fig. 3, pp[0051] disposed on the BHA and one or more steering actuators disposed on the BHA (Fig. 3); measured bending moment data depends on the deformation of the BHA (pp[0102]).
Jogi is silent regarding the BHA model including a simulated bending moment on bit; calculating a first BOB data set based on the deformation data; comparing the first calculated BOB data set ti the stimulated BOB data set to form a comparison, wherein the stimulated BOB is representative of an expected BOB for steering actuator; determining whether the steering actuator is malfunctioning based on the comparison; and causing the steering actuator to extend or retract based on the determination.
It would not be obvious to modify the method of Jogi with the above features as it would require a significant redesign to the method of Jogi which may complicate the drilling system of Jogi and prevent it from operating as intended because Jogi seeks to use bending moment measurements and a mathematical BHA model to predict the curvature of a wellbore. Furthermore, no prior art was found, alone or in combination with Jogi, to teach the above features. Therefore, such modifications would be based on impermissible hindsight reasoning.
As such, Jogi does not read on claim 1. Jogi does not read on claim 11 for similar reasons detailed for claim 1 above.
Conclusion
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/LAMIA QUAIM/Examiner, Art Unit 3676