DETAILED ACTION
This action is filed in response to the amendment filed on 5/07/2026.
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 .
Information Disclosure Statement
Acknowledgement is made of Applicant’s Information Disclosure Statements (IDS) form PTO-1149 filed on 12/28/2023, 4/25/2024, 10/29/2024, 2/24/2025, 7/25/2025, 11/13/2025, and 7/17/2026. These IDS have been considered.
Claim Objections
Claims 2, 24, and 30 are objected to because of the following informalities: Claims 2, 24, and 30 teach “determining whether the measured standpipe pressure exceeds or equals a standpipe pressure threshold therefor.” Examiner notes the word “therefor” at the end of the claims creates confusion as to the bounds of the claim and should be removed to ensure clarity. Appropriate correction is required.
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 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.
Claims 4 and 26 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 claims contain 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 4 and 26, the claims teach “wherein the stationary threshold value for the toolface difference is between 5 and 15 degrees.” Examiner notes this range of “between 5 and 15 degrees” is not disclosed in the specification.
Claim 22 is 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 Claim 22, the second limitation discloses “determining a reference standpipe pressure wherein the reference standpipe pressure is determined with the BHA near but not on bottom.” The term “near” is a relative term which renders the claim indefinite. The term “near” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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 1-7, and 21-33 are rejected under 35 U.S.C. 101. The claimed invention is directed to the abstract concept of performing mental steps without significantly more. Claim 1, and similarly Claims 23 and 29 recite the following abstract concepts in BOLD of:
A control system for determining a mode of drilling, the system comprising:
a computer system comprising a processor, a memory coupled to the processor, and instructions executable by the processor for:
receiving data from a plurality of sensors during drilling of a wellbore;
determining a slide drilling mode of operation responsive to detection of circulation of a drilling mud, a stationary bottom hole assembly (BHA), and an on bottom condition of the BHA, wherein detection of the stationary BHA comprises:
determining a first toolface measurement;
determining a second toolface measurement, wherein the second toolface measurement is subsequent to the first toolface measurement;
determining a difference between the first toolface measurement and the second toolface measurement; and
determining that the BHA is stationary if the difference is less than a stationary threshold value.
Under Step 1 of the eligibility analysis, we determine whether the claims are to a statutory category by 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. The above claims are considered to be in a statutory category as Claim 1 recites a system, Claim 23 recites a method, and Claim 29 recites a non-transitory computer readable medium.
Under Step 2A, Prong One, we consider whether the claim recites a judicial exception (abstract idea). In the above claim, the highlighted portion constitutes an abstract idea because, under a broadest reasonable interpretation, it recites limitations that fall into/recite abstract idea exceptions. Specifically, under the 2019 Revised Patent Subject Matter Eligibility Guidance, it falls into the grouping of subject matter that, when recited as such in a claim limitation, covers performing mathematics or mental steps. The steps of determining a slide drilling mode and determining that the BHA is stationary can be interpreted as a mental process that can be performed in the human mind. The step of determining a first toolface measurement, determining a second toolface measurement, determining the difference between the two measurements can be considered as performing mathematics or a mental process depending on one's interpretation of the limitation.
Next, under Step 2A, Prong Two, we consider whether the claim that recites a judicial exception is integrated into a practical application. In this step, we evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
This judicial exception is not integrated into a practical application because there is no improvement to another technology or technical field; improvements to the functioning of the computer itself; a particular machine; effecting a transformation or reduction of a particular article to a different state or thing. Examiner notes the claimed methods and system are not tied to a particular machine or apparatus and they do not represent an improvement to another technology or technical field. Similarly there are no other meaningful limitations linking the use to a particular technological environment. Finally, there is nothing in the claims that indicates an improvement to the functioning of the computer itself or transform a particular article to a new state.
Under Step 2B, we consider whether the additional elements are sufficient to amount to significantly more than the abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because a computer system comprising a processor, a memory coupled to the processor, and instructions executable by the processor are generic computer elements and not considered significantly more than the abstract idea. As recited in the MPEP, 2106.05(b), merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2359-60, 110 USPQ2d 1976, 1984 (2014). See also OIP Techs. v. Amazon.com, 788 F.3d 1359, 1364, 115 USPQ2d 1090, 1093-94.
Finally, the second limitation teaches receiving data from a plurality of sensors which recites necessary data gathering and does not integrate the abstract idea into a practical application. The limitation amounts to necessary data gathering and outputting. See Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015) (presenting offers and gathering statistics amounted to mere data gathering).
Claims 2-7, 21-22, 24-28, and 30-33 further limit the abstract ideas without integrating the abstract concept into a practical application or including additional limitations that can be considered significantly more than the abstract idea:
Claims 2, 6, 21, 22, 24, 27, 30 and 33 further limit the abstract ideas of the independent claims without significantly more by introducing additional abstract ideas of performing mathematics and mental processes of comparing data to a threshold.
Claims 3-5, 7, 25-26, 28, and 31-32 further limit the abstract ideas of the independent claims without significantly more by teaching the precise value of the thresholds used in the mental processes of comparing data.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 23, and 29 are rejected on the ground of non-statutory double patenting.
Claims 1, 23, and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 6 of U.S. Patent No. US10208580 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both claims teach determining a slide drilling mode based on the detection of circulation of a drilling mud, a stationary bottom hole assembly (BHA), and an on bottom condition of the BHA. Furthermore, both claims teach determining if the BHA is stationary by determining a difference between two successive toolface measurements and comparing that difference to a threshold.
Allowable Subject Matter
Claims 1-7, and 21-30 contain allowable subject matter. The following is a statement of reasons for indication of allowable subject matter:
Regarding Claims 1, 23, and 29, Examiner notes the closest prior art to be Hamilton (US20090065258 A1), Moos (US20090065252A1) and Boone (US20090090555A1).
Hamilton teaches a control system for determining a mode of drilling, the system (e.g. see [0019] “The control system can incorporate an algorithm, used to calculate the desired rotary speed of the drill string, which uses the relative position of the rotating drill string assembly to the reference direction, the instantaneous rotary speed of the drill string and the instantaneous applied torque to the drill string”) comprising:
receiving data from a plurality of sensors during drilling of a wellbore (e.g. see [0045] “MWD sensors are employed for determining the tool-face orientation”);
detection of circulation of a drilling mud (e.g. see [0009] “Once the desired borehole inclination is established, a rotating operation commences which uses a combination of simultaneously rotating the mud motor/drill bit and the drill string (which continuously rotates the bent housing) and which favorably results in both a higher rate of penetration (ROP) and a substantially linear path”), a stationary bottom hole assembly (BHA), and an on bottom condition of the BHA (e.g. see [0003] “the borehole is controlled at the surface by lowering the entire drill string in a controlled manner. The lowering of the drill string may be controlled by monitoring the buoyant weight of the drill string at the surface, the torque required to rotate or hold stationary the drill string, the fluid pressure of the drilling fluid or feedback from downhole telemetry,” wherein detection of the stationary BHA comprises:
determining a first toolface measurement; determining a second toolface measurement, wherein the second toolface measurement is subsequent to the first toolface measurement; determining a difference between the first toolface measurement and the second toolface measurement (e.g. see [0059] “after drilling a set incremental distance using the above described velocity profile P.omega. and maintaining steady-state drilling parameters such as hookload and mud pump rpm at constant values, perform a standard wellbore deviation survey to determine the change in azimuth and inclination of the well bore and thereby infer what a first effective tool-face orientation (ETFO) was during the most recent drilling interval. The first EFTO is then compared to second EFTO calculated to affect the desired borehole trajectory and a corrective angular offset or displacement is calculated therebetween so that when that angular offset is applied to the reference direction of the quill 32”).
Hamilton does not explicitly disclose a computer system comprising a processor, a memory coupled to the processor, and instructions executable by the processor. In the same field of endeavor, Moos teaches a computer system comprising a processor, a memory coupled to the processor, and instructions executable by the processor (e.g. see [0023] “Another embodiment of the disclosure is a computer-readable medium accessible to a processor, the computer-readable medium including instructions which enable the processor”).
It would have been obvious to one of ordinary skill in the art to combine the drilling detection system of Hamilton with the computer processor of Moos for the purpose of detecting the slide drilling mode with the advantage of a computerized method to enhance efficiency.
While Hamilton teaches determining the data types referenced above, Hamilton does not disclose using those measurements in order to determine a slide drilling mode of operation. Furthermore, Hamilton does not teach determining that the BHA is stationary if the difference is less than a stationary threshold value.
The subject matter of dependent claims 2-7, 21-22, 24-28, and 30-33 would be allowable based on their dependence on Claims 1, 23, and 29.
Conclusion
Examiner notes while there are no prior art rejections, Examiner is unable to comment on the allowability of the claims until the 35 USC 112(a), 112(b), 101, and double patenting rejections are addressed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NYLA GAVIA whose telephone number is (703)756-1592. The examiner can normally be reached M-F 8:30-5:30pm.
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/NYLA GAVIA/Examiner, Art Unit 2857
/Catherine T. Rastovski/Supervisory Primary Examiner, Art Unit 2857
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