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 .
Response to Arguments
Claim Rejections - 35 USC § 112(a)
The Applicant’s arguments regarding the rejection of claims 1 and 11 has been considered but is not persuasive.
Regarding claims 1 and 11, the Applicant alleges that the amendments of “controlling the steering actuator based on the condition” is supported by the disclosure. More specifically, the applicant states that “Applicant hereby amends claim 1 to clarify that the claims are directed to assessing the health or "condition" of the RSS and how such assessment may be applied to drilling operations such as controlling bit side force (e.g., via extending or retracting steering actuators) to thereby control the movement of the steering actuator, as amply described throughout the originally filed specification. See, e.g., Specification, paras. 97-102 and FIG. 14.” And further points to “paragraphs 31, 32, 60, 101, 126 and 127 and FIGS. 23-26” for support for the amendments to the claims.
The Examiner respectfully disagrees with the above argument. The claims recite “determining a condition of the steering actuator based on the comparison” and “controlling the steering actuator based on the condition”. The claim requires that the steering actuators are controlled based on the determined condition; however, the disclosure and the above mentioned paragraphs in the specification do not provide support for this relationship. At least pp [0126] and [0131]-[0138] discusses monitoring the steering pads (steering actuator pp[0062]) to determine whether the pads are “malfunctioning” or “functioning”, i.e. this is the determined “condition” of the steering actuator; however, there is no discussion of controlling the steering pads based on the determined condition of “malfunctioning” or “functioning”. The Applicant argues that the “claims are directed to assessing the health or ‘condition’ of the RSS and how such assessment may be applied to drilling operations such as controlling bit side force (e.g., via extending or retracting steering actuators)”; however, the claims do not recite any language regarding assessing and controlling the application of “bit side force” and further the disclosure does not discuss the “bit side force” being controlled based on the determined condition of the steering actuator. In fact, at least pp[0058]-[0060] mentioned “extending” and “retracting” of the steering actuators; however, the “extending” and “retracting” is done to ” to effectuate a change to the drilling direction 240” (pp[0058]), “extending” and “retracting” is NOT in response to the determined condition of “malfunctioning” or “functioning” of the steering pad. Furthermore, at least pp[0030]-[0032], [0120], [0126], [0130] discusses the steering actuator “force”; however, the disclosure discusses that the “force” of the steering actuator is measured and the measurement is used to “to determine health of one or more steering actuators 246 utilized with RSS 242.” (pp[0120]). The disclosure does not mention any adjustment of the steering actuator “force” based on the determination that the steering actuator is malfunctioning or functioning.
For at least the above reasons, the claims do not have adequate written description for the limitation “controlling the steering actuator based on the condition” and the rejection to claims 1 and 11 will be maintained.
Claim Rejections - 35 USC § 112(b)
Regarding claims 1 and 11, the Applicant’s arguments have been considered but is not persuasive.
The Applicant argues that “a person of ordinary skill in the art, in light of the specification, would understand the language of amended independent claims 1 and 11 to mean that the recited BHA model and/or an output of the recited BHA model is representative of a position and/or orientation of the BHA steering actuators and stabilizers in that it takes into account the variation of the RSS force magnitude and/or orientation (e.g., ‘the BHA model is formed based on an input of a steering assembly force associated with the BHA’). In this manner, the model is receiving input data and, based at least on the input data, enables consideration of a position and/or orientation of steering actuators when evaluating BHA health and functionality.”
The Examiner disagrees with the above argument. A POSITA would not understand the metes and bounds of the limitation “the BHA model enables consideration of a position and/or orientation of one or more stabilizers…” More specifically, the limitation “enables consideration” describes a subjective mental step, rather than a positively recited functional or structural limitation. As such, it’s unclear from this limitation whether or not the claim positively requires “a position and/or orientation of one or more stabilizers”. The Applicant states that “the recited BHA model and/or an output of the recited BHA model is representative of a position and/or orientation of the BHA steering actuators… that it takes into account the variation of the RSS force magnitude and/or orientation” which is a very vague and indefinite explanation of the amended limitations. What does “takes into account” mean? This is equally unclear as “enables consideration”. If an operator looks at a screen that shows the BHA model with the position data of one or more stabilizers, is this “the BHA model enables consideration of a position and/or orientation of one or more stabilizers…”? The Applicant states that the “enables consideration of a position and/or orientation of steering actuators” is used “when evaluating BHA health and functionality.”; however, the claims do not definitively require using “a position and/or orientation of steering actuators” and further the claims do not recite language that suggests that the “health and functionality” of the steer actuators are determined using the “a position and/or orientation of steering actuators”. This amended limitation of “the BHA model enables consideration of a position and/or orientation of one or more stabilizers…” is extremely vague as it relies on intent or an unclear mental step such that POSITA would not be able to determine the metes and bounds of “the BHA model enables consideration of a position and/or orientation of one or more stabilizers…” Additionally, the specification does not even use the phrase “enables consideration”, especially in relationship to the “BHA model’. For the above reasons, the metes and bounds of the claims remain indefinite.
Furthermore, the claims have been amended to recite “controlling the steering actuator based on the condition”. This amendment does not overcome the rejection under 112(b) for indefiniteness because the specification does not provide basis for this limitation, as discussed above. At least pp [0126] and [0131]-[0138] discusses monitoring the steering pads (steering actuator pp[0062]) to determine whether the pads are “malfunctioning” or “functioning”, i.e. this is the determined “condition” of the steering actuator; however, there is no discussion of controlling the steering pads based on the determined condition of “malfunctioning” or “functioning”. Therefore, a POSITA would not know what actions would constitute “controlling the steering actuators based on the condition”.
For the above reasons, the rejection to claims 1 and 11 will be maintained.
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 USPTO’s eligibility analysis 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 1-10 are directed to a method (process) and claims 11-20 are directed to a system (machine or manufacture). 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 2019 Revised Patent Subject Matter Eligibility Guidance is a two prong inquiry. In Prong One, examiners evaluate whether the claim recites a judicial exception.
Claims 1 and 11 recite the abstract limitations (or substantially similar to):
“modeling a bottom-hole assembly (BHA) by forming a BHA model including a simulated bending moment on bit (BOB) data set, wherein the BHA model is formed based on an input of a steering assembly force associated with the BHA such that the BHA model enables consideration of a position and/or orientation of one or more stabilizers disposed on the BHA and one or more steering actuators disposed on the BHA”, “calculating a first BOB data set based on the deformation data”, “comparing the first calculated BOB data set to the simulated BOB data set to form a comparison, wherein the simulated BOB is representative of an expected BOB for the steering actuator”, and “determining a condition of the steering actuator based on the comparison”.
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. More specifically, 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. For example, the step of “modeling a bottom-hole assembly (BHA) by forming a BHA model including a simulated bending moment on bit (BOB) data set, wherein the BHA model is formed based on an input of a steering assembly force associated with the BHA…” is an abstract idea because a human can draw a model of a BHA assembly with a steering element coupled to the BHA using pen and paper. The limitation “based on an input of a steering assembly force associated with the BHA” is very broad because the terms “based” and “associated” do not specify how the model is relying on “a steering assembly force” and how this force affects the BHA model. Furthermore, “calculating a first BOB data set based on the deformation data” is an abstract idea because of ordinary skill can perform the mathematical calculations for BOB using pen and paper or in their mind. The mere recitation of generic computing elements does not take the claim out of the mental process grouping. Thus, the claims recite abstract ideas.
If the claim recites a judicial exception (i.e., an abstract idea enumerated in Section I of
the 2019 Revised Patent Subject Matter Eligibility Guidance, a law of nature, or a natural
phenomenon), the claim requires further analysis in Prong Two. In Prong Two, examiners
evaluate whether the claim recites additional elements that integrate the exception into a
practical application of that exception.
Claim 1 recites the additional elements of “one or more stabilizers disposed on the BHA and one or more steering actuators disposed on the BHA”, “obtaining, via at least one strain gauge disposed in the BHA, deformation data associated with a steering actuator of the one or more steering actuators” and “controlling the steering actuator based on the condition”
Claim 11 recites the additional elements of “at least one strain gauge disposed on the BHA”, “obtain…strain data associated with a steering actuator of the plurality of steering actuators”, “a plurality of steering actuators disposed on the BHA”, “an information handling system”, and “control the steering actuator based on the condition”.
The recitation of (or substantially similar to ) “one or more stabilizers disposed on the BHA and one or more steering actuators disposed on the BHA”, “at least one strain gauge disposed on the BHA”, “obtaining, via at least one strain gauge disposed in the BHA, deformation data associated with a steering actuator of the one or more steering actuators”, controlling the steering actuator based on the condition” and “an information handling system” amount to insignificant extra-solution activity.
Accordingly, in combination, these additional elements do not integrate the abstract ideas into practical applications because they do not impose any meaningful limits on practicing the abstract ideas.
If the additional elements do not integrate the exception into a practical application, 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 limitations of “one or more stabilizers disposed on the BHA and one or more steering actuators disposed on the BHA” merely amount to insignificant extra solution activity in that these features are well-understood, routine and conventional. Mauldin et al. (U.S. Publication No. 20150101865) discloses that BHA can have various conventional apparatus such as one or more stabilizers and rotary steerable system (pp[0035]). As such, the above features do not add significantly more than the judicial exception.
The recitation of “at least one strain gauge disposed on the BHA” and “obtaining, via at least one strain gauge disposed in the BHA, deformation data associated with a steering actuator of the one or more steering actuators” amounts to mere data gathering because this step uses sensors to measure data to perform the abstract idea. As such, this additional element does not amount to significantly more than the abstract idea. CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011).
The recitation of “controlling the steering actuator based on the condition” amounts to “apply it” because this step merely includes instructions to implement an abstract idea which is analogous to “A method of assigning hair designs to balance head shape with a final step of using a tool (scissors) to cut the hair”. See In re Brown, 645 Fed. App'x 1014, 1017 (Fed. Cir. 2016) as discussed in MPEP 2106.05(f)(2).
The recitation of “an information handling system” merely amounts to “apply it” because this element contains mere instructions to implement the abstract ideas on a computer, e.g. a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer. Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984.
Thus, even when viewed as an ordered combination, nothing in the claims add
significantly more (i.e. an inventive concept) to the abstract idea and recite mere instructions to implement the abstract ideas on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer. Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984.
Claims 2, 4, 5, 7, 8, 10, 12, 14, 15, 17 and 20 are directed abstract ideas because nothing in the claim element precludes the aforementioned step from practically being performed in the human mind, or by a human using pen and paper. Therefore, similar to claims 1 and 11, these claims do not provide a practical application of the abstract idea, and is not significantly more.
Claims 3, 6, 9, 13, 16 and 19 recite additional elements which merely amount to “apply” because the claims recite steps which are mere instructions to implement the abstract ideas on a computer, e.g. a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer. Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984. Therefore, similar to claims 1 and 11, these claims do not provide a practical application of the abstract idea, and is not significantly more.
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.
Claims 1 and 11 recite (or substantially similar to) “controlling the steering actuator based on the condition”; however, there is no support in disclosure where the “steering actuator” is controlled based on the “condition of the steering actuator”. At least pp [0126] and [0131]-[0138] discusses monitoring the steering pads (steering actuator pp[0062]) to determine whether the pads are “malfunctioning” or “functioning”, i.e. this is the determined “condition” of the steering actuator; however, there is no discussion of controlling the steering pads based on the determined condition of “malfunctioning” or “functioning”. Furthermore, at least pp[0058]-[0060] mention “extending” and “retracting” of the steering actuators; however, the “extending” and “retracting” is done to ” to effectuate a change to the drilling direction 240” (pp[0058]), “extending” and “retracting” is NOT in response to the determined condition of “malfunctioning” or “functioning” of the steering pad. Furthermore, at least pp[0030]-[0032], [0120], [0126], [0130] discusses the steering actuator “force”; however, the disclosure discusses that the “force” of the steering actuator is measured and the measurement is used “to determine health of one or more steering actuators 246 utilized with RSS 242.” (pp[0120]). As such, there is inadequate written description for the limitation of “controlling the steering actuator based on the condition”.
Claims 2-10 and 12-20 are also rejected under this statue as the claims depend from either 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 limitation “the BHA model enables consideration of a position and/or orientation of one or more stabilizers…” is indefinite. More specifically, the limitation “enables consideration” describes a subjective mental step, rather than a positively recited functional or structural limitation. As such, it’s unclear from this limitation whether or not the claim positively requires “a position and/or orientation of one or more stabilizers”. Furthermore, the disclosure does not adequately define what “enables consideration” entails functionally and/or structurally. If an operator views a screen illustrating the BHA model with the stabilizer position on it, is this “enables consideration of a position and/or orientation of one or more stabilizers”? This limitation is extremely vague as it relies on intent or a very unclear mental step such that POSITA would not be able to determine the metes and bounds of “the BHA model enables consideration of a position and/or orientation of one or more stabilizers…” Furthermore, for what/who does the BHA model “enables consideration of a position and/or orientation” ? The specification does not discuss the phrase “enables consideration” and further does not rectify the indefiniteness of this this limitation. For the above reasons, the metes and bounds of the claims are indefinite.
Furthermore, the claims recite (or substantially similar to) “controlling the steering actuator based on the condition” which is indefinite. While the specification discusses determining a condition of the steering actuator, it is entirely silent as to how the actuator is controlled, what parameter(s) of the steering actuator is adjusted, or what control steps are taken based on the determined condition. Because the disclosure does not provide any context or guidance for what constitutes “controlling…based on the condition”, a POSITA would be left to guess the scope of the claimed invention. As such, the boundaries of this limitation is unclear and the metes and bounds of the claims are indefinite.
Claims 2-10 and 12-20 are also rejected under this statue as the claims depend from either 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 a condition of the steering actuator is malfunctioning based on the comparison; and controlling the steering actuator 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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/LAMIA QUAIM/Examiner, Art Unit 3676
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