FINAL OFFICE ACTION
This Final office action addresses U.S. Application No. 18/510,313, which is a broadening reissue application of U.S. Application No. 15/789,706 (hereinafter the “706 Application"), entitled AUTOMATIC STEERING INSTRUCTIONS FOR DIRECTIONAL MOTOR DRILLING, which issued as U.S. Patent No. 11,174,718 (hereinafter the “718 Patent").
The status of the claims is as follows:
Claims 1-21 are pending.
Claims 1-21 are rejected.
TABLE OF CONTENTS
I. STATUS OF CLAIMS 3
II. PRIORITY 3
III. OBJECTION TO CLAIM AMENDMENTS 4
IV. REJECTIONS – 35 U.S.C. §251 4
A. Rejection Based on Original Patent Requirement 5
V. REISSUE OATH/DECLARATION 9
VI. ADDITIONAL REJECTIONS – 35 U.S.C. §251 10
A. Rejection Based on Defective Declaration 10
VII. CLAIM REJECTIONS – 35 U.S.C. §112(a) 10
VIII. CLAIM INTERPRETATION 14
A. Lexicographic Definitions 14
B. Claim Interpretation Under 35 U.S.C. §112(6th ¶) 15
C. Special Interpretations 20
D. Conclusion of Claim Interpretation 21
IX. CLAIM REJECTIONS – 35 U.S.C. §112(b) 21
IX.A. Indefiniteness Rejections of Claims 1-5 – Invocation Under 35 U.S.C. §112(f) 21
IX.B. Indefiniteness Rejections of Claims 6-21 – Independent of 35 U.S.C. §112(f) 22
X. ALLOWABLE SUBJECT MATTER 23
XI. EXAMINERS’ RESPONSES TO APPLICANT’S ARGUMENTS 25
XII. PRIOR OR CONCURRENT PROCEEDINGS 38
XIII. INFORMATION MATERIAL TO PATENTABILITY 38
XIV. CONCLUSION 38
I. STATUS OF CLAIMS
Applicant filed an amendment on January 9, 2026 (hereinafter the “Jan 2026 Amendment”) in response to the non-final Office action mailed September 12, 2025 (hereinafter the “Jan 2026 Amendment”). In the Jan 2026 Amendment, patent claims 1, 6 and 8 were amended, claims 2-5 and 7 were unchanged and new claims 9-21 were added. Therefore, claims 1-21 are pending and will be examined herein.
Along with the Jan 2026 Amendment, Applicant also filed a new reissue declaration (hereinafter the “Jan 2026 Reissue Declaration”).
II. PRIORITY
Examiners acknowledge the Applicant’s claim that present application is a reissue application of the 706 Application, filed October 20, 2017. Therefore, Examiners find the earliest possible filing date for the claims is the date of the 706 Application.
III. OBJECTION TO CLAIM AMENDMENTS
37 C.F.R. §1.173 Reissue specification, drawings, and amendments (in part)
(b) Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows:
…
(d) Changes shown by markings. Any changes relative to the patent being reissued that are made to the specification, including the claims but excluding "Large Tables" (§ 1.58(c) ), a "Computer Program Listing Appendix" (§ 1.96(c) ), a "Sequence Listing" (§ 1.821(c) ), and a "Sequence Listing XML" (§ 1.831(a) ) upon filing or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined.
…
(g) Amendments made relative to the patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing of the reissue application.
The amendments to the claims in the Jan 2026 Amendment are objected to because the amendments are improper under the rules. Specifically, since claims 9-21 are new with respect to the 718 Patent, these claims should be fully underlined, i.e. all of the claim numbers, status identifiers and text. See MPEP §1453(V)(C).
IV. REJECTIONS – 35 U.S.C. §251
The following is a quotation of the appropriate paragraphs of 35 U.S.C. §251 that form the basis for the rejections under this section made in this Office action:
(a) Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
A. Rejection Based on Original Patent Requirement
MPEP §1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP 1412.01 further provides guidelines for determining whether the reissue claims are “for the invention disclosed in the original patent” as:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
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(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
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(C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
The Fed. Cir. addressed the “original patent” requirement in Antares Pharma, Inc. v. Medac Pharma Inc., 112 USPQ2d 1865 (Fed. Cir. 2014). The court stated that “a reissue claim is for the ‘same invention’ if the original patent specification fully describes the claimed inventions, but not if the broader claims ‘are [] merely suggested or indicated in the original specification.” Antares, 112 USPQ2d at 1868 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals). Further, the court stated “‘it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.’ Rather, the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 112 USPQ2d at 1871 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals) (citation omitted), or that “the exact embodiment claimed on reissue [be] expressly disclosed in the specification.” Id.
Recently, the Fed. Cir. stated:
Thus, for broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; “[I]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” Indus Chems, 315 US at 676 (emphasis in Forum US). Stated differently, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 771 F.3d at 1362.1
Claims 9-17 are rejected under 35 U.S.C. §251 because they are not for the same invention as that disclosed as being the invention in the original patent.
First for example, Examiners find that each of method patent claims 6-8 of the 718 Patent recites methods of directing operation of a drilling system and further wherein this method comprising calculating a curvature limit of the BHA or determining the maximum possible curvature of the BHA.
Upon comparison with method patent claims 6-8, Examiners find in new method claims 9-17 in this reissue application, Applicant has deleted the step determination or calculation of the curvature limit.
However, Examiners do not find an unequivocal disclosure in the 718 Patent for a drilling operation that does not require a determination or calculation of the curvature limit. For example, Examiners find generally a single embodiment of the method of the invention of the 718 Patent, which is shown in FIGS. 8 and 9 of the 718 Patent. Within this single embodiment, step 1006 requires the calculation of the curvature limit. Furthermore, all patent claims, including the apparatus claims, requires the calculation of the curvature limit. Examiners are unable to find an embodiment or disclosure that does not require the curvature limit calculation.
Furthermore, Examiners find this calculation is critical or important to the invention as it forms the basis to determine the distance to slide when compared to the optimized path. For example, col. 15, lines 12-22, the 718 Patent states
The curvature limit of the BHA 606 may be the maximum amount of curvature that the BHA 606 can accomplish in drilling a wellbore. In some implementations, the curvature limit may be calculated by removing outliers from previous slides (such as slides with a large amount of curvature) and analyzing the dogleg severity (or curve) of the remaining slides. Once the curvature limit of the BHA 606 is determined, this value may be compared to the curvature (or “dogleg severity”) of the optimized path. By comparing this curvature the curvature limit of the BHA 606, the distance to slide may be calculated.
Thus, Examiners find the calculation of the curvature limit critical to the invention as it provided the basis to calculate slide for steering the bottom hole assembly (BHA). Furthermore, without a curvature limit, the BHA could be damaged or seize in the borehole if such a limit is exceeded. Finally, Examiners find the calculation of the curvature limit important as Applicant has retained this limitation in claims 18-21 and thus continues to assert this calculation as an important part of the invention.
As noted above, the original patent requirement puts a limit on the manner to which reissue applicants can broaden the patent claims in reissue. Specifically, claims that are broadened in reissue that cover a new scope/class of invention must have an unequivocal disclosure on the face of the original patent for that new class of invention as a separate invention. Following a careful review of claims 9-17 in this reissue application with respect to patent claims 6-8 as patented in the 718 Patent, Examiners find the new scope of claims 9-21 covers a new invention not unequivocally disclosed on the face the 718 Patent, i.e., Examiners do not find an unequivocal disclosure or a discussion of the new invention of a method of directing operation of a drilling system that does not calculate the curvature limit. Thus, Examiners conclude claims 9-17 presented in this reissue application fail the original patent requirement and thus are rejected under 35 U.S.C. §251.
Examiners further find this issue in this reissue application is analogous to the recent Federal Circuit decision in Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346 (Fed. Cir. 2019). In Forum US, the original patent claims were drawn to a workpiece having a body member and a plurality of arbors (arbors circled in FIGS. 4 and 5 at issue):
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Forum US, 926 F.3d at 1348-49. In reissue, patentee broadened the claims to simply remove the requirement as to arbors. Id. at 1349. The Federal Circuit determined that the new claims did not comply with the original patent requirement of section 251 because the face of the patent did not disclose any arbor-less embodiment, and the abstract, summary of invention, and all disclosed embodiments including arbors. Id. at 1352. The Court concluded that the specification did not clearly and unequivocally disclose an embodiment without arbors, thus the original patent requirement was violated by broadening the claims to no longer require arbors. Id. Similarly, the 718 Patent here does not clearly and unequivocally disclose a method of directing operation of a drilling system that does not calculate the curvature limit. Thus, to broaden the claims to permit Applicant to simply delete this calculation from the claims runs afoul of the original patent requirement in the same manner as at issue in Forum.
V. REISSUE OATH/DECLARATION
37 C.F.R. §1.175 Reissue oath or declaration (in part).
(a) The inventor’s oath or declaration for a reissue application, in addition to complying with the requirements of § 1.63, § 1.64, or § 1.67, must also specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent.
(b) If the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor's oath or declaration for a reissue application must identify a claim that the application seeks to broaden. A claim is a broadened claim if the claim is broadened in any respect.
The Jan 2026 Reissue Declaration is acknowledged. However, Examiners object to the Jan 2026 Reissue Declaration on the basis that Examiners find that it fails to state a proper error in the claims on which to base this reissue. A proper error statement must identify a single word, phrase, or expression in the specification or in an original claim in the underlying patent, i.e., the 718 Patent, and how it renders the original patent wholly or partly inoperative or invalid. See MPEP §1414(II).
Examiners find that the error asserted by Applicant is as follows:
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Examiners find essentially that Applicant’s stated error is that calculating the curvature limit overly narrows claim 1 and thus is removed via the presentation of new claim 9. However, as found above, Examiners find this error and its correction in claims 9-17 violates the original patent requirement. Thus, Examiners do not find this error is a proper basis for this reissue application.
Thus, Applicant is required to provide a new declaration with a statement of error with respect to 718 Patent identifying “a single word, phrase, or expression” from the claims of the 718 Patent that rendered the 718 Patent invalid or inoperative.
VI. ADDITIONAL REJECTION – 35 U.S.C. §251
The following is a quotation of the appropriate paragraphs of 35 U.S.C. §251 that form the basis for the rejections under this section made in this Office action:
(a) Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
A. Rejection Based on Defective Declaration
Claims 1-21 and this application as a whole are rejected under 35 U.S.C. §251 as being based upon a defective reissue oath/declaration as set forth above. See 37 C.F.R. §1.175. The nature of the defects in the 2023 Reissue Declaration is set forth in the discussion above in this Office action.
VII. CLAIM REJECTIONS – 35 U.S.C. §112(a)
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.
Claims 1-21 are rejected under 35 U.S.C. §112(a) 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 at the time the application was filed, had possession of the claimed invention. Examiners note this rejection is independent of any claim interpretation under 35 U.S.C. §112(f).
Furthermore, Examiners note the MPEP §2161.01(I) provides guidance as to written description findings relating to computer implemented functional limitations:
When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. An algorithm is defined, for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary (5th ed., 2002). Applicant may "express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008) (internal citation omitted).
Examiners first note that claims 1-21 are directed to a computer implemented invention. Specifically, all claims require calculation using a controller, i.e., claims 1-5 via a controller configured to perform functions and claims 6-21 via steps with calculations being performed by a controller. Thus, Examiners find the claims, and the particular limitations as issue, are directed to a computer implemented function.
Second, Examiners find the calculations being performed by the controller are a “first slide model calculation based on achieving an inclination vector and azimuth vector” and a “second slide model calculation” “based on a single target point of a second steering target” as recited in claims 1-7 and similarly a “first slide model calculation” and a “second slide model calculation” as recited in claims 8-21. However, Examiners do not find that the claims define or provide any guidance to what these “calculations” are, i.e., what is the underlying equation, flow chart, algorithm, etc.?
Third, upon review of the specification of the 718 Patent, Examiners find the first slide model calculation corresponds to “true vertical depth, inclination and azimuth (TIA) calculations.” See at least Abstract and col. 3, lines 3-10. However, other than merely referencing this calculation, Examiners are unable to find a disclosure of an underlying equation, flow chart, algorithm or other manner to which this TIA calculation is performed. Thus, Examiners do not find the specification of the 718 Patent provides written description support for the first slide model calculation. Specifically, a calculation requires an equation.
Fourth, upon review of the specification of the 718 Patent, Examiners find the second slide model calculation corresponds to “three dimensional “J” (3DJ) calculations.” See at least Abstract and col. 3, lines 3-10. However, other than merely referencing this calculation, Examiners are unable to find a disclosure of an underlying equation, flow chart, algorithm or other manner to which this 3DJ calculation is performed. Thus, Examiners do not find the specification of the 718 Patent provides written description support for the second slide model calculation.
Additionally, claims 1-8 and 18-21 require the controller to perform the function of calculating/determining “a curvature limit of the BHA.” However, while the 718 Patent discloses “the curvature limit may be calculated by removing outliers from previous slides (such as slides with a large amount of curvature) and analyzing the dogleg severity (or curve) of the remaining slides” (See 718 Patent col. 15, lines 14-18), Examiners do not find the 718 Patent describes or defines this analysis which forms the basis to perform the “calculate” function. Specifically, what is the equation or algorithm for “calculating” this curvature limit? Thus, Examiners do not find the specification of the 718 Patent provides written description support for the calculation of the curvature limit of the BHA.
In view of the forgoing findings, Examiners do not find that claims 1-21 pending in this reissue have written description support. Specifically, Examiners find that the 718 Patent does not disclose the underlying equations or algorithms for the first and second slide model calculations which form the basis for creating a steering path to drive the bottom hole assembly to the steering target as recited in claims 1-21. Furthermore, Examiners find the 718 Patent does not disclose the underlying equations or algorithms for calculating the curvature limit as required in claims 1-8 and 18-21. Accordingly, Examiners conclude Applicant has not described the claimed invention 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 at the time the application was filed, had possession of the claimed invention.
VIII. CLAIM INTERPRETATION
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP §2111, MPEP §2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP §2111.01(I). It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01(II). Therefore, unless one of the exceptions applies below, Examiners will interpret the limitations of the pending and examined claims using the broadest reasonable interpretation.
A. Lexicographic Definitions
A first exception to the prohibition of reading limitations from the specification into the claims is when the Applicant for patent has provided a lexicographic definition for the term. See MPEP §2111.01(IV). Following an independent review of the claims in view of the specification herein, Examiners find that Patent Owner has not provided any lexicographic definitions related to claim terms with any reasonable clarity, deliberateness and precision.
B. Claim Interpretation Under 35 U.S.C. §112(6th ¶)
A second exception to the prohibition of reading limitations from the specification into the claims is when the claimed feature is written as a means-plus-function or a step-plus-function. See 35 U.S.C. §112(6th ¶) and MPEP §2181-2183.
As noted in Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015), there is a presumption that claim terms with the word “means” invoke §112(f) and that claim terms without the word “means” do not. Williamson, 792 F.3d at 1348. This presumption is rebuttable if a challenger demonstrates that a claim term either fails to “recite sufficiently definite structure” (WIT1) or else recites “function without reciting sufficient structure for performing that function” (WIT2) Williamson, 792 F.3d at 1348. WIT1 and WIT2 are in the alternative and thus a challenger need only demonstrate one of WIT1 or WIT2 for the claims to invoke §112(f). The presumption against means-plus-function claiming is not “strong” and that a challenger need not show that the limitation is essentially devoid of anything that can be construed as structure; rather a challenger need only show that the structure is not sufficient for performing the claimed function. See Id. Sufficient structure exists when the claim language specifies the exact structure that performs the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure. See TriMed, Inc. v. Stryker Corp. 4514 F.3d 1256, 1259 (Fed. Cir. 2008).
After a claimed phrase has been shown to invoke 35 U.S.C. §112(f), as found above, the next step is to determine the corresponding structure or material as described in the specification for performing the recited function. See MPEP §2181(II) and Williamson, 792 F.3d at 1351.
Examiners find herein that claims 1-21 include one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. §112 (6th ¶) because the claim limitations use 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 or the claim limitations recite a general function without reciting sufficient steps for performing the general function. Each such limitation will be discussed in turn as follows.
B1. FL #1: “controller…” (Claims 1-5)
A first means-plus-function phrase is recited in claim 1 (and included in each of dependent claims 2-5), which recites “a controller…” or hereinafter FL #1. Examiners determine herein that FL #1 meets the test of Williamson as discussed above and thus will be interpreted as a means-plus-function limitation under 35 U.S.C. §112(f).
The Examiners find that FL #1 in claim 1 recites:
a controller in communication with the BHA, wherein the controller is configured to:
receive a drill plan;
identify a first steering target on the drill plan;
calculate a curvature limit of the BHA; determine whether the BHA can be driven to the first steering target using one of a straight line projection or a rotary drilling projection;
calculate a first optimized steering path to the first steering target using a first slide model calculation based on achieving an inclination and azimuth vector at a vertical depth;
after calculating the first optimized steering path, calculate, using a second slide model calculation based on a single target point of the first a second steering target on the drill plan with an x, y, and z coordinate, a second optimized steering path to the first second steering target, wherein the second optimized steering path has a greater amount of curvature than the first optimized steering path,
after calculating the first and second optimized steering paths, calculate a third optimized steering path to a third steering target on the drill plan using the first slide model calculation based on achieving an inclination and azimuth vector at a vertical depth;
after calculating the third optimized steering path, calculate, using the second slide model calculation based on a single target point of a fourth steering target on the drill plan with an x, y, and z coordinate, a fourth optimized steering path to the fourth steering target, such that the controller alternates between the first and second calculations; and
determine a toolface angle and a distance to slide if the BHA cannot be driven to the first steering target using the one of the straight line projection or the rotary drilling projection.
(B1)(a) Claim Phrase FL #1 Functional
Examiners find that FL #1 is functional. While this claim limitation recites a controller, the claim limits this controller based on in functionality rather than its underlying structures. For example, FL #1 recites the functionality of the controller to perform the functions to receive…, identify…, calculate…, determine…, calculate…, and determine… as recited above. However, Examiners do not find any further limitation to the structure of the controller or nor do Examiners find the functions imply or impart any specific structures to the controller. Thus, Examiners find FL #1 is a functional phrase.
Examiners further note that because nothing in the written description contradicts the plain language describing this function, the functions within FL #1 will have their ordinary and accustomed meaning.
(B1)(b) Claim Phrase FL #1 Invokes
FL #1 invokes 35 U.S.C. §112(f) because "means ... for" type language is recited. Examiners first find that “controller” is a generic placeholder or nonce term equivalent to “means” because while the term “controller” does imply some structure, it does not convey any specific structure and/or is an ambiguous structure. Examiners further note that the specification of the present specification does not define “controller” and thus the specification of the present specification does not impart or disclose any specific structure for the phrase.
Controller is definable as “A functional unit in a computer system that controls one or more units of the peripheral equipment.” See IEEE 100 The Authoritative Dictionary of IEEE Standards Terms, 7th Ed. 2000, definition of controller. Accordingly, Examiners find controller can be defined or interpretable as some part of a computer system that controls peripheral equipment according to some undefined function, but does not imply any particular “part” or “function.” Accordingly, Examiners find controller does not imply a specific structure for performing the functions of FL #1.
In view of the forgoing findings, Examiners find that while controller implies some generic structure, such as a part of a computer system, Examiners find nothing in the specification, prosecution history or the prior art to construe “controller…” in FL #1 as the name of a sufficiently definite structure for performing the functions recited in FL #1 so as to take the overall claim limitation out of the ambit of §112(6th ¶). See Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015). Rather Examiners find that controller is merely used in a generic sense as a nonce term equivalent to means as a generic base structure which has a special configuration or programming to perform the special functions recited in FL #1. Accordingly, Examiners do not find that the simple use of controller alone is a sufficient for performing the claimed function recited in FL #1 and thus conclude FL #1 invokes interpretation under 35 U.S.C. §112(f).
(B1)(c) Corresponding Structure
After a claimed phrase has been shown to invoke 35 U.S.C. §112(f), as found above, the next step is to determine the corresponding structure or material as described in the specification for performing the recited function. See MPEP §2181(II).
With regard to the hardware aspects of the FL #1, Examiners find that while the 718 Patent discloses a controller 252 as a box part of the apparatus 200 as shown in FIG. 2 of the 718 Patent, Examiners do not find the 718 Patent discloses the underlying structures for this controller beyond the blank box 252. Thus, Examiners do not find the 718 Patent clearly links any specific hardware structures to the controller of FL #1. Nevertheless, based on a review of the common definition of controller as discussed above and the specific functions recited in FL #1, Examiners find that a special purpose controller would be required to perform the recited functions, i.e., a specifical purpose computer for which the controller is a part, which is programmed to perform the functions recited in FL #1.
Additionally, the functional aspects of the processor of FL #1 are generally shown in FIGS. 8 and 9 of the 718 Patent, particular steps 1002, 1008, 1010, 1012-1022, 1102-1112 and 1116 and discussed over col. 14, line 42 to col. 18, line 57 of the 718 Patent.
However, regarding the function of “calculating a curvature limit of the BHA” Examiners are unable to find a corresponding algorithm or equation in the specification for performing this calculation as discussed above in the written description rejections. Thus, Examiners do not find the 718 Patent clearly links sufficient structures (equation or algorithm) to perform the function of calculating the curvature limit.
Furthermore, regarding the functions of FL #1 of the controller performing the first slide model calculation and the second slide model calculation, Examiners are unable to find a corresponding equation or algorithm in the specification for performing these calculations as discussed above in the written description sections. As noted above, Examiners are unable to find a written description as to the meaning of the TIA and 3DJ calculations. Thus, Examiners do not find the 718 Patent clearly links sufficient structures (equation or algorithm) to perform the functions of performing the first slide model calculation and the second slide model calculation.
Nevertheless, even though Examiners find the 718 Patent does not clearly link the functions of FL #1 to sufficient corresponding structures, as noted in 35 U.S.C. §112(f), a limitation invoking this statute will be limited to these corresponding structures and equivalents thereof as disclosed in the specification. Thus, for purposes of examination only, Examiners will interpret FL #1 as disclosed in the specification, as merely some generic controller that generally performs steps 1002, 1008, 1010, 1012-1022, 1102-1112 and 1116 of the process shown in FIGS. 8 and 9 of the 718 Patent, without regard to the manner of calculating the curvature limit or the manner of performing the first and second calculations.
C. Special Interpretations
As provided in the 2025 NF Action, Examiners provided an indefiniteness rejection of claims 1-5 regarding the scope of the display. On pages 29-30 of the Jan 2026 Amendment, Applicant specifically argued in response to this rejection that the display is “conventional display hardware.” Examiners accept and apply this interpretation to the display as merely a conventional display.
D. Conclusion of Claim Interpretation
FL #1 in claims 1-5 will be interpreted under 35 U.S.C. §112(f) as outlined above. Furthermore, the display as recited in claims 1-5 will interpreted in the manner as recited above. The remaining limitations in claims 1-21 will be interpreted using the broadest reasonable interpretation.
IX. CLAIM REJECTIONS – 35 U.S.C. §112(b)
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.
IX.A. Indefiniteness Rejections of Claims 1-5 – Invocation Under 35 U.S.C. §112(f)
Claim limitation FL #1 invokes 35 U.S.C. §112(f). However, as discussed above in the claim interpretation section above, Examiners find the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Specifically, the specification does not disclose the underlying structures of the controller, the specification does not disclose the underlying equations or algorithms for calculating the curvature limit of the BHA, the specification does not disclose the underlying equations or algorithm for performing the first slide model calculation (TIA), and the specification does not disclose the underlying equations of algorithms for perform the second slide model calculation (3DJ). Therefore, claims 1-5 are indefinite and are rejected under 35 U.S.C. §112(b).
IX.B. Indefiniteness Rejections of Claims 6-21 – Independent of 35 U.S.C. §112(f)
Claims 6-21 are rejected under 35 U.S.C. §112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. This rejection is independent of the invocation of 35 U.S.C. §112(f) for the apparatus claims above.
Claims 6 and 7 recite calculating a curvature limit of the BHA, calculating using a first slide model calculation and calculating using a second slide model calculation. Claim 8 recites determining a curvature limit of the BHA, calculating using a first slide model calculation and calculating using a second slide model calculation. Claims 9-21 recite calculating using a first slide model calculation and calculating using a second slide model calculation. Finally, claims 18-21 recite determining a curvature limit of the BHA. However, Examiners find these claims do not provide any detail of how these determinations or calculations are performed. Specifically, Examiners first do not find any equations or algorithms for the determination or calculation of the curvature limit are recited or implied in the claims. Second, Examiners do not find any equations or algorithms for the calculation using the first slide model calculation are recited or implied in the claims. Third, Examiners do not find any equations or algorithms for the calculation using the second slide model calculation are recited or implied in the claims. Examiners are thus unable to determine from the claim language what determinations or calculations are required to be performed. Finally, even when read in light of the specification of the 718 Patent in view of the written description above, Examiners are unable to determine how Applicant has intended to perform these determinations or calculations as found above in the written description rejections above. Accordingly, Examiners conclude claims 6-21 are unclear and indefinite.
X. ALLOWABLE SUBJECT MATTER
While all claims are rejected under 35 U.S.C. §251 and §112 as provided above, Examiners find they are nevertheless allowable over the prior art.
Regarding apparatus claims 1-5, Examiners find that FL #1 invokes interpretation under 35 U.S.C. §112(f) above and is limited to some generic controller that generally performs steps 1002, 1008, 1010, 1012-1022, 1102-1112 and 1116 of the process shown in FIGS. 8 and 9 of the 718 Patent. In these method steps, Examiners find that the first and second calculations are different in nature in view of the alternating calculations, although not supported within the disclosure of the 718 Patent. Furthermore, Examiners find this method alternates between the first and second calculations when determining the first, second, third and fourth optimized steering paths. Examiners do no find the prior art discloses or teaches such alternating as required.
Regarding method claims 6-7, as provided above, Examiners are unable to discern the nature of the first slide model calculation and the second slide model calculation. However, claims 6-7 also require alternating between the first and second calculations and additionally recite the alternating when calculating the first, second, third and fourth optimized steering paths, which Examiners find implies the first and second calculations are different is some respect. Examiners do no find the prior art discloses or teaches such alternating as required.
Regarding method claims 8-21, as provided above, Examiners are unable to discern the nature of the first slide model calculation and the second slide model calculation which are different. Furthermore, claims 1-7 also require alternating between the first and second calculations when calculating the first, second, third and fourth optimized steering paths. Examiners do no find the prior art discloses or teaches such alternating between the first and second calculations (slide model calculations) as required.
Examiners find the closest prior art, U.S. Patent Application No. 2016/0024847 (hereinafter “Benson”), teaches a drilling apparatus and method of directing operation of a drilling system that uses a steering algorithm that performs several optimized steering path corrections, each for achieving a maximal convergence path, i.e. inclination and azimuth vectors, to arrive at a convergence point, i.e., a target on the drill plan with an x, y, and z coordinate. Thus, Examiners find Benson generally uses a single calculation repeatedly throughout a drilling operation. However, Examiners do not find Benson discloses or teaches two distinct calculation methods and alternating between the two distinct calculations.
XI. EXAMINERS’ RESPONSES TO APPLICANT’S ARGUMENTS
Examiners acknowledge the Applicant’s arguments traversing the remaining objections and rejections in the 2025 NF Action. Examiners provide responses to Applicant’s arguments below. The section headings generally correspond to those provided by Applicant in the Jan 2026 Amendment.
C. Objection to the Reissue Declaration
On page 10, Applicant submit the Jan 2026 Reissue Declaration satisfies the requirements of the rules. Examiners disagree. As provided above in the objection thereof, Examiners find the error on which Applicant seeks to base this reissue application and how this error is corrected raises a rejection of the new claims under the original patent requirement. Thus, Examiners find this error is not a proper error on which to base reissue.
D. Rejection Under 35 U.S.C. §251
Over pages 11-16 of the Jan 2026 Amendment, Applicant traverses the rejection of new claims 8-17 under 35 U.S.C. 251 as being improper under the original patent requirement.
The first broadly based arguments asserted by Applicant are that “it would not be possible to obtain a broadening reissue to correct an error” (See Jan 2026 Amendment page 11) and further that “Applicant is allowed to claim the disclosed subject matter as broadly as possible” (See Jan 2026 Amendment page 12). Examiners disagree as these arguments evidence Applicant’s misunderstanding of the original patent requirement. As noted by Federal Circuit in Antares Pharma, “[b]y waiting until after the patent is issued, the applicant becomes subject to two additional requirements relevant here: first, the claims must not violate the recapture rule; second, the claims must satisfy the statutory original patent requirement of 35 U.S.C. §251.”2 Both these requirements limit the manner to which applicant in reissue is allowed to broaden the claims. Thus, while Examiners agree applicants are allowed to broaden in reissue, Examiners note to Applicant that such broadening is limited.
On page 11 of the Jan 2026 Amendment, Applicant argues that “35 U.S.C. § 251 requires that the reissue claims be for the same invention as that disclosed as being the invention in the original patent, not that the reissue claims must be the same as the original claims.” Examiners agree as this is the analysis provided in the rejection above. Examiners are simply attempting to find whether the new scope of invention now recited in claims 9-17 has unequivocal support in the specification of the 718 Patent “as a separate invention.” Examiners do not find such a disclosure and this is the reason the rejection is maintained.
On page 12 of the Jan 2026 Amendment, Applicant argues that the claims are allowable over the prior art. Examiners agree. However, Examiners note to Applicant that allowance over the prior art and satisfying the original patent requirement are two distinct findings based on distinct statutes. Thus, whether or not the claims are allowable over the prior art is immaterial to the requirements of 35 U.S.C. §251.
On pages 12-17 of the Jan 2026 Amendment, Applicant argues that the determination of the curvature limit and the determination of the optimized path are independent, specifically that “determining optimized paths by alternating between different slide model calculations, which is allowable subject matter in the present application, can be performed independently of the curvature limit.” Examiners disagree. First as provided above in the rejection, Examiners find generally a single embodiment of the method of the invention of the 718 Patent, which is shown in FIGS. 8 and 9 of the 718 Patent and within this single embodiment, step 1006 requires the calculation of the curvature limit. Furthermore, at col. 15, lines 12-22, the 718 Patent states:
The curvature limit of the BHA 606 may be the maximum amount of curvature that the BHA 606 can accomplish in drilling a wellbore. In some implementations, the curvature limit may be calculated by removing outliers from previous slides (such as slides with a large amount of curvature) and analyzing the dogleg severity (or curve) of the remaining slides. Once the curvature limit of the BHA 606 is determined, this value may be compared to the curvature (or “dogleg severity”) of the optimized path. By comparing this curvature the curvature limit of the BHA 606, the distance to slide may be calculated.
Thus, within the single embodiment, the determination of the curvature limit is part of the single embodiment and is compared to the optimized path. Furthermore, a drill operator, i.e., one having ordinary skill in the art, would not perform a drilling operation without knowing the curvature limit as any drilling beyond this limit would either seize or damage the drill pipe in the borehole. Thus, one having ordinary skill in the art would know that any automation program3 for drilling like that being disclosed and claimed in the 718 Patent would be required to limit the optimized path to not drill beyond such curvature limit to prevent seizure or damage. This would be why the 718 Patent discloses above the curvature limit may be “compared to the curvature (or “dogleg severity”) of the optimized path.”
On page 13 of the Jan 2026 Amendment, Applicant further argues that the specification provides “permissive language” that shows alternative embodiments:
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Examiners do not find these statements sufficient to overcome the original patent requirement invention. First, Examiners find no “other implementations of the methods 1000 and 1100” are disclosed in the 718 Patent, rather only a single embodiment. As provide by the Federal Circuit and quoted in the rejections above, the new invention must be unequivocally disclosed as a “separate invention.” Since no separate invention is disclosed, i.e., Examiners find no “other implementations,” Examiners find no separate invention is disclosed in the 718 Patent without the determination of the curvature limit.
Second, Examiners find the 718 Patent uses the term “may” more than 350 times. Examiners note that possibilities are not sufficient to avoid critical features of the invention. As stated by the Federal Circuit, “[e]ven if a person of ordinary skill in the art would understand that the newly claimed… invention would be possible, that is insufficient to comply with the standard set forth in Industrial Chemicals and Antares.”4 Furthermore, to comply with the unequivocal disclosure in the manner as suggested by Applicant, the Federal Circuit requires a specific statement in the specification that the feature at issue is optional.5
On pages 13-14, Applicant notes an example of carrying out the invention wherein no steering is required. However, Examiners find this disclosure related to FIG. 4A is not a separate embodiment of invention, but merely wherein the invention is being used in a portion of a well bore that happens to be straight. Compare FIG. 4A to FIG. 4B which discloses the invention being used in a curved well bore. Examiners find no disclosure of a separate invention between FIGS. 4A and 4B.
On page 15 of the Jan 2026 Amendment, Applicant argues:
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Examiners disagree. Examiners in noting the inclusion of the calculation of the curvature limit in a dependent claim is clear evidence Applicant believes this feature is important or critical. Otherwise, Applicant would not be claiming this feature as part of its invention.
On page 16 of the Jan 2026 Amendment, Applicant argues that “calculating optimized steering paths using alternating slide model calculations does not require the use of the curvature limit and selecting an optimized steering path does not have to require use of the curvature limit.” Examiners disagree. First, Examiners find, as discussed above in the rejection, find only a single embodiment that requires the calculation of the curvature limit. Second, Examiners find it unreasonable that Applicant’s invention would create an optimized path not constrained by the curvature limits. An optimized path having curvature beyond the curvature limit could damage the drill tool or cause it to seize in the bore hole.
In view of the forgoing, Examiners do not find Applicant’s arguments sufficient to overcome the rejection of claims 9-17 as violating the original patent requirement. Examiners find no unequivocal disclosure of controller for a drilling operation that does not calculate the curvature limit as a separate invention.
On page 17 of the Jan 2026 Amendment, Applicant traverses the rejection under 35 U.S.C. 251 based on a defective declaration on the basis of the newly filed Jan 2026 Reissue Declaration. However, as noted above, Examiners object to the Jan 2026 Reissue Declaration and thus the corresponding rejection is maintained, albeit based on the newly filed Jan 2026 Reissue Declaration.
E. Objection to the Specification
Based on the claim amendments in the Jan 2026 Amendment, Examiners withdraw the objections to the specification on page 8 of the 2025 NF Action.
F. Rejection Under 35 U.S.C. §112(a)
As an overview of the written description rejections, Examiners note as found above, the invention is directed to a computer implemented invention. Such is even stated by Applicant on page 14 of the Jan 2026 Amendment wherein Applicant states “[t]he method disclosed includes automated generation, comparison, selection, display, and execution of optimized paths…” Thus, the invention lies in the programming of the computer implemented invention to automate directional drilling. However, as found in the rejections above, Examiners are unable to find equations or algorithms for how certain portions of the programming are carried out, i.e., calculating the curvature limit, calculating the first slide model calculation (TIA calculation) and the second slide model calculation (3DJ calculation). Calculations require equations. Thus, without a written description of how the calculations are accomplished, via equations or algorithms, Examiners are unable to similarly find a written description of sufficient programming required to perform the computer implemented invention.
On pages 18-22, Applicant traverses the Examiners’ findings that the “first slide model calculation” (TIA calculation) and the second slide model calculation (3DJ calculation) lack a written description. Examiners disagree and maintain the findings and rejection. Examiners note that Examiners do not dispute the specification of the 718 Patent mentions these calculations. Rather Examiners do not find the 718 Patent discloses the underlying algorithm or equations for these calculations.
On page 18 of the Jan 2026 Amendment, Applicant states:
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However, Examiners find this argument by Applicant highlights the written description issue. Nowhere in this argument does Applicant describe the equations or algorithm for the TIA calculation. Specifically, Applicant notes inputs and resulting outputs and how those outputs are used, but avoids any discussion of the “calculation” that occurs in between the inputs and outputs. That “in between” calculation, i.e., TIA calculation (or the 3DJ calculation), is what is missing from the disclosure. The simple mention of TIA calculation or 3DJ calculation does not imply disclosure of the underlying equations/algorithm. Furthermore, Applicant has not provided any evidence these are known calculations.6
On page 18 of the Jan 2026 Amendment, Applicant “First” argues that “the specification identifies TIA expressly as a slide model used to generate optimized steering targets.” Examiners agree. However, mere mention of the TIA calculation does not provide a written description of what it is.
On page 19 of the Jan 2026 Amendment, Applicant “Second” argues “the specification provides what the TIA model is "based on" and how it functions in the system. Again, this argument highlights the inputs into the TIA calculation and how the output is used, but does not provide a description of what it is.
On page 19 of the Jan 2026 Amendment, Applicant “Third” argues that “the specification discloses the TIA model within an end-to-end algorithmic workflow sufficient for written description.” Examiners disagree. Even Applicant’s arguments only state “generation of optimized slide paths using the TIA model.” Again this argument does not provide a description of what the TIA model/calculation is.
Furthermore, the specification only states “[t]he TIA calculations may be vector-based, and may be further based on inclination and azimuth coordinates” (See 718 Patent at col. 14, lines 31-33) and further the 718 Patent at col. 17, lines 51-58 state:
At step 1102, the method 1100 may include using a TIA calculation to generate a third optimized path to the first steering target. The TIA calculation may be vector-based and may be used to produce a curve with an endpoint that is near the first steering target. In some implementations, the TIA calculation is also based on inclination and azimuth coordinates. Both TIA calculations and 3DJ calculations may be referred to as slide models.
In these sections, Examiners do not dispute mention of the TIA model/calculation, but do not find any disclosure of what it is. Specifically, Examiners are unable to find how the TIA model/calculation uses its inputs to create the optimized path.
On pages 19-20 of the Jan 2026 Amendment, Applicant “Fourth” argues the claims do not invoke 35 U.S.C. §111(f). Examiners disagree and this argument is addressed below.
Based on the forgoing, Examiners do not find Applicant’s traversal of the written description rejections related to the first slide model calculation/TIA calculation persuasive and thus maintain the finding and rejections.
On pages 20-22 of the Jan 2026 Amendment, Applicant provides similar arguments regarding the second slide model calculation/3DJ calculation as for the first slide model calculation/TIA calculation. For similar reasons as above, Examiners do not find these arguments persuasive. Specifically, while Examiners do not dispute the specification of the 718 Patent mentions 3DJ calculations and further how this 3DJ calculation uses inputs and provides outputs and how those outputs are used, Examiners are unable to find any discussion of the “calculation” that occurs in between the inputs and outputs. That in between calculation, i.e., the 3DJ calculation, is what is missing from the disclosure. The simple mention of 3DJ calculation does not imply disclosure of the underlying equations/algorithm.
On page 22 of the Jan 2026 Amendment, Applicant traverses the finding of lack of written description of the equation/algorithm for calculating the curvature limit “First” arguing that “the specification defines the parameter and its engineering meaning.” Examiners agree in general and find persons having ordinary skill in the art would understand its definition and meaning. However, the written description issue is the equation/algorithm for calculating this curvature limit invented by the inventors of the 718 Patent. That is what is missing from the specification.
On page 22 of the Jan 2026 Amendment, Applicant further states:
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However, Examiners find this argument again highlights what is missing from the specification. Specifically, what is involved in the “analyzing the dogleg severity” and what are the equations/algorithm to “set a limit value reflective of the BHA’s achieved capability in the current environment?” These are not simple operations and require complex analysis and decision making, neither of which are disclosed in the 718 Patent.
On page 23 of the Jan 2026 Amendment, Applicant argues “Second” argues that the control-flow figures and steps integrate the curvature-limit calculation at points in the algorithm, providing stepwise written description.” Examiners disagree. While Examiners agree some outliers are removed from the input data, Examiners do not find any equations or algorithm showing how the inputs are “analyzed” or how curvature limit is “set.”
On page 23 of the Jan 2026 Amendment, Applicant “Third” argues the claims do not invoke 35 U.S.C. §112(f). Examiners disagree and this argument is addressed below.
On page 23 of the Jan 2026 Amendment, Applicant “Fourth” argues the claim phrasings related to calculating the curvature limit are supported. Examiners disagree as discussed above.
Based on the forgoing, Examiners do not find Applicant’s traversal of the written description rejections related to the calculation of the curvature limit persuasive and thus maintain the finding and rejections.
G. Claim Interpretation
On page 24 of the Jan 2026 Amendment, Applicant traverses the claim interpretation under 35 U.S.C. §112(f) by arguing that the specification unambiguously states that “it is the express intention of the applicant not to invoke 35 U.S.C. § 112(f) for any limitations of any of the claims herein, except for those in which the claim expressly uses the word “means” together with an associated function.” Examiners do not dispute this statement, but nevertheless find such a statement unpersuasive. As noted in 35 U.S.C. §112(f), “[a]n 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.” Thus, the analysis is on what the claim recites, NOT what the specification states. Examiners find Applicant chose to write certain limitations of the claims in a means-plus-function format and thus Examiners have interpreted these certain limitations accordingly. The fact that the specification states an intention otherwise is not persuasive to overcome the plain language of the claims as drafted by Applicant.7
On page 25 of the Jan 2026 Amendment, Applicant argues that the controller limitation, i.e., FL #1 does not invoke §112(f) because a controller is a “definite computing element.” Examiners disagree. In invoking §112(f), the issue is not whether there is some structure, the issue is whether a claim term either fails to “recite sufficiently definite structure” (WIT1) or else recites “function without reciting sufficient structure for performing that function” (WIT2). Examiners are relying at least on WIT2, i.e., the limitation FL #1 does not recite sufficient structure to perform the functions. Specifically, Examiners find the algorithm for performing all the functions recited in FL #1 is not manifested in FL #1. As found in the claim interpretation section above, and not disputed by Applicant, a special configuration or programming of some generic controller would be required to perform the functions recited in FL #1, a simple controller is not sufficient to perform the function. If no special configuration or special programming is required, then any generic controller regardless of what it is used for, would read on FL #1.
One page 25 of the Jan 2026 Amendment, Applicant argues that “[p]rocessors/controllers are recognized structures, and programming to perform particular steps does not strip structural character.” Examiners agree with this statement. However, Examiners are not stripping anything structural from “controller” but rather Examiners merely find a generic controller is not a sufficient structure to perform the functions recited in FL #1, rather a specifically configured/programmed controller is required wherein the programming/algorithm required to perform the function is manifested within the limitation. However, since Examiners do not find the programming/algorithm is sufficiently manifested in FL #1, Examiners find insufficient structures for performing all the functions of FL #1. Such is the basis for the invocation.
On page 26 of the Jan 2026 Amendment, Applicant argues the “718 Patent links functions to concrete structures and algorithms…” Examiners disagree. As found above, Examiners are unable to find a written description on the equations/algorithms for calculating the curvature limit, the first slide model calculation and the second slide model calculations. Thus, since Examiners are unable to find sufficient written descriptions for these calculations, the specification does not clearly link the functions to appropriate algorithms.
H. Claim Rejections Under 35 U.S.C. §112(b)
On pages 27-28 of the Jan 2026 Amendment, Applicant traverses the indefiniteness rejections of claims 1-5 for the same reasons as provided in sections G and F above. For the same as provided above, Examiners do not find these arguments persuasive.
On page 28 of the Jan 2026 Amendment, Applicant traverses the indefiniteness rejections of claims 6-21 for the same reasons as provided in section F above. For the same as provided above, Examiners do not find these arguments persuasive.
On pages 29-30 of the Jan 2026 Amendment, Applicant traverses the indefiniteness rejections of claims 1-5 based on the display limitation. Applicant specifically argues that the display is “conventional display hardware” and thus the rejection is withdrawn and the display as recited in claims 1-5 is merely interpreted as a conventional display.
XII. PRIOR OR CONCURRENT PROCEEDINGS
Applicant is reminded of the obligation apprise the Office of any prior or concurrent proceedings in which the 718 Patent is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, or litigations and the results of such proceedings.
XIII. INFORMATION MATERIAL TO PATENTABILITY
Applicant is further reminded of the continuing obligation under 37 C.F.R. §1.56 to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
XIV. CONCLUSION
Claim 1-21 are pending and examined.
Claim 1-21 are rejected.
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 C.F.R. §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 C.F.R. §1.17(a)) pursuant to 37 C.F.R. §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.
The prior art made of record which is considered pertinent to Applicant’s disclosure is listed on the document titled ‘Notice of Reference Cited’ (“PTO-892”). Unless expressly noted otherwise by the Examiners, all documents listed on the PTO-892 are cited in their entirety.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to KENNETH WHITTINGTON whose telephone number is (571) 272-2264. The Examiner can normally be reached on 8:30am - 5:00pm, Monday - Friday.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, SPE Art Unit 3992, can be reached at (571) 272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
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/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992
Conferees:
/JACOB C. COPPOLA/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
1 Forum US Inc. v. Flow Valve LLC, 926 F.3d 1346, (Fed. Cir. 2019).
2 See Antares Pharma, Inc. v. Medac Pharma, Inc., 771 F.3d 1354, 1358 (Fed. Cir. 2014).
3 See Jan 2026 Amendment page 14 wherein Applicant states “[t]he method disclosed includes automated generation, comparison, selection, display, and execution of optimized paths…”
4 See Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346, 1352 (Fed. Cir. 2019)
5 See id. At 1452 wherein the Federal Circuit held that “nowhere do the written description or drawings disclose that arbors are an optional feature of the invention.”
6 Examiners submit that if Applicant were to submit evidence that the TIA and 3DJ calculations are well known to persons having ordinary skill in the art and evidence of what the underlying equations/algorithms are for these calculations, such written description rejections may be overcome.
7 Application of 35 U.S.C. §112(f) is driven by the claim language, not by applicant’s intent or mere statements to the contrary included in the specification or made during prosecution. See In re Donaldson Co., 16 F.3d at 1194, 29 USPQ2d at 1850 (stating that 35 U.S.C. §112, sixth paragraph ‘merely sets a limit on how broadly the PTO may construe means-plus-function language under the rubric of reasonable interpretation’). See MPEP §2181(I).