DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/25/2026 has been entered.
Status of Claims
The following is a Non-Final Rejection in response to the claims filed on 03/09/2026 and the Request for Continued Examination filed 03/25/2026. Claims 1—5, 8, 10, and 12—21 are currently pending.
Priority
The Applicant’s claim for benefit of US Provisional Patent Application 63/425,798 filed on 11/16/2022, has been received and acknowledged.
Information Disclosure Statement
Information Disclosure Statement received 10/09/2024 and 3/14/2025 has been reviewed and considered.
Response to Arguments
Applicant's arguments filed 03/09/2026 with respect to the objection to the Specification have been fully considered and are persuasive. The objection to the specification regarding as it pertained to FIG. 7 is withdrawn.
Applicant's arguments filed 03/09/2026 with respect to the rejection of claim 5 under 35 U.S.C. 112(d) have been fully considered but they are not persuasive. The Response indicates that claim 5 has been cancelled; however, claim 5 still remains included in the claims filed on 03/09/2026. The rejection of claim 5 under 35 U.S.C. 112(d) is maintained.
Applicant's arguments filed 03/09/2026 with respect to the rejection of claims 1, 3—5, 8, 10, 12—17, and 19—23 under 35 U.S.C. 102 have been fully considered but they are not persuasive. Regarding claim 1 the Response at page 9 states “Alexander does not show or disclose the feature of a channel formed in the outside surface of the body, the channel being configured to produce a Bernoulli effect that creates a steering force on the steering device in an annulus of the borehole between the channel and a wall of the borehole during fluid flow therein, as specified in amended claim 1,” to which the Examiner does not agree. As presented in the revised rejection provided below, fluid exiting from the smaller diameter of channel 11 into the larger diameter of the annular space depicted in FIG. 1 generates a Bernoulli effect in an area bounded by channel opening 11, the outer surface of the tool, and the wellbore wall. Moreover, whether or not the Bernoulli effect generated from openings 11 materially changes the path of the tool, it is inherently a force at play with respect to the steering forces applied to the steering tool. As such, the provided amendments to claim 1 do not succeed in structurally distinguishing the instant claims from the prior art disclosure of Alexander. To this end, the MPEP states “’[a]pparatus claims cover what a device is, not what a device does.’ Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a ‘recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus’ if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).” (MPEP 2114, Section I). In view of the MPEP citation, Examiner submits that Alexander anticipates every structural limitation of claim 1 where the structural limitations are capable of performing the intended function. For the foregoing reasons, the provided amendments remain anticipated by Alexander.
The amendment provided with respect to claim 21 necessitate new grounds for rejection as provided in the rejection below; however, the claim remains anticipated by Alexander. The Response at page 10 states “Alexander does not show or disclose the channel being configured to produce a Bernoulli effect in an annulus of the borehole between the channel and a wall… when the channel is at a particular azimuthal orientation during rotation of the steering device, as specified in claim 21.” Examiner notes that the limitations directed to any disclosed azimuthal angles are not recited with respect to the channel, but rather the operation of the valve. As such, the arguments appear to be directed to limitations which are not recited in claim 21. Moreover, the amended limitations are rejected using new grounds for rejection as set forth in the modified rejection provided below.
For the foregoing reasons the rejection of claim 1, 3—5, 8, 10, 12—17, and 19—21 under 35 U.S.C. 102 is maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 5 recites the limitations “wherein the channel is in the outside surface of the body,” which were amended to be included in claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3—5, 8, 10, 12—17, and 19—23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Published US Patent Application to Alexander (US 2167194 A).
Regarding claim 1, Alexander discloses [a] steering augmenter for a steering device of a drilling tool in a borehole, the steering augmenter comprising: a body (elements 2, 3, 4, 5, 7, 9, 12, and 15 as depicted in FIGs. 1 and 2) having an inside surface (water course 20 is a flow path defined by an inside surface as depicted in FIG. 1) and an outside surface (see FIGs. 1 and 2) and configured to attach to a drill bit (element 6 in FIGs. 1 and 2 is a drill bit); a first flow passage defined by the inside surface of the body and configured to convey a fluid supply (water course 20 as depicted in FIG. 1); a channel formed in the outside surface of the body (openings 11 disposed in annular member 9; annular member 9 is disposed external from the body elements identified above; channel 11 cuts through the outer surface of annular member 9 at two locations; please see FIG. 1), the channel being configured to produce a Bernoulli effect that creates a steering force on the steering device (Alexander is directed to a steering device – see and compare FIGs 10—13. Moreover, the ejected fluid of Alexander, which travels from a relatively wide passage way to a relatively narrow passage way through openings 11 where the associated pressure and velocity change experienced by the fluid which is generated from the change in flow area, produces a Bernoulli effect. For example, fluid exiting from the smaller diameter of channel 11 into the larger diameter of the annular space depicted in FIG. 1 generates a Bernoulli effect in an area bounded by channel opening 11, the outer surface of the tool, and the wellbore wall. Moreover, in the given situation, whether or not the Bernoulli effect from openings 11 materially changes the path of the tool, it is inherently a force at play with respect to the forces applied to the steering tool) in an annulus of the borehole between the channel and a wall of the borehole during fluid flow therein (fluid exiting from the smaller diameter of channel 11 into the larger diameter of the annular space depicted in FIG. 1 generates a Bernoulli effect in an area bounded by channel opening 11, the outer surface of the tool, and the wellbore wall); a second flow passage fluidly connecting the first flow passage to the channel (orifice 21 and aperture 24 as depicted in FIGs. 1, 2, and 6); and a valve (valve member 5 and sleeve 23; see page 2, line 68 of the first column through line 42 of the second column) associated with the second flow passage and configured to allow, prevent or choke flow through the second flow passage (please see FIG. 6 and lines 9—24 of the second column on page 2).
Regarding claim 3, Alexander discloses wherein an azimuth difference between a junk slot (see labelled junk slot as labelled in the provided figure) of the drill bit (drill bit 6) and the channel (openings 11) is in the range of +90° to -90 (as depicted in FIG 1, openings 11 are offset by ninety degrees from the identified junk slots. Additionally, as depicted in FIG. 2, drill bit 6 may rotate relative to openings 11 as described in Col 2, Lines 34—45 which may provide further offset between the junk slot and the channel).
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Regarding claim 4, Alexander discloses wherein an azimuth difference between a junk slot (see labelled junk slot as labelled in the provided figure) of the drill bit (drill bit 6) and the channel (openings 11) is in the range of 90° to 270° (as depicted in FIG 1, openings 11 are offset by ninety degrees from the identified junk slots. Additionally, as depicted in FIG. 2, drill bit 6 may rotate relative to openings 11 as described in Col 2, Lines 34—45 which may provide further offset between the junk slot and the channel).
The subject matter of claim 5 is already rejection in the rejection of claim 1.
Regarding claim 8, Alexander discloses a stabilizer (ears 26) between the channel and the drill bit (see FIG. 2, ears 26 are disposed between channel 11 and drill bit 6).
Regarding claim 10, Alexander discloses wherein the steering device is rotatable within a borehole and the valve rotates with the steering device (the whole assembly, including valve 5 and sleeve 23, rotates together during certain valve configurations as described. For example, when sleeve 23 is in the open position, valve 5 and sleeve 23 rotate with the assembly).
Regarding claim 12, Alexander discloses the valve includes an actuator (ears 25 and 26; see page 2, second column, lines 16—24, “[s]leeve 23, is preferably provided with one or more radially extending ears 25, 26 of such radial length as to be engaged by the side wall of the bore hole when the tool is in deflected position and rotation of the drill string has commenced. When one or more of the ears have been thus engaged the sleeve is restrained against rotation long enough to effect a closure of the discharge orifice.”).
Regarding claim 13, Alexander discloses wherein the valve is rotationally independent of the steering augmenter (sleeve 23 is rotationally independent of the assembly in that it rotates separately from the assembly in order to open).
Regarding claim 14, Alexander discloses a steering augmenter as claimed in claim 1 (see rejection of claim 1 to Alexander); the drill bit attached to the steering augmenter (see drill bit 6 of FIG. 1).
Regarding claim 15, Alexander discloses [a] method for drilling a borehole into the earth, the method comprising: conveying the steering device as claimed in claim 1 (see rejection of claim 1 in view of Alexander) into the borehole (FIG. 1 depicts the apparatus in existing borehole 1); operating the valve to allow, prevent or choke flow through the second flow passage (please see FIG. 6, Col 3, Line 68 to Col 4, Line 4); creating a steering force at the steering augmenter by the produced Bernoulli effect (fluid which travels from the annular space to the openings 11 are subject to a reduction in flow area thereby generating a Bernoulli effect).
Regarding claim 16, Alexander discloses aligning the channel (openings 11) with a junk slot (see labelled junk slot as labelled in the provided figure) of the drill bit (drill bit 6), so that an azimuth difference between the junk slot and the channel is in the range of +90° to -90 (as depicted in FIG 1, openings 11 are offset by ninety degrees from the identified junk slots. Additionally, as depicted in FIG. 2, drill bit 6 may rotate relative to openings 11 as described in Col 2, Lines 34—45 which may provide further offset between the junk slot and the channel).
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Regarding claim 17, Alexander discloses aligning the channel (openings 11) with a junk slot (see labelled junk slot as labelled in the provided figure) of the drill bit (drill bit 6), so that an azimuth difference between the junk slot and the channel is in the range of +90° to 270 (as depicted in FIG 1, openings 11 are offset by at least ninety degrees from the identified junk slots. Additionally, as depicted in FIG. 2, drill bit 6 may rotate relative to openings 11 as described in Col 2, Lines 34—45 which may provide further offset between the junk slot and the channel).
Regarding claim 19, Alexander discloses wherein a stabilizer (ears 25 and 26) is between the channel and the drill bit (see FIG. 2, ears 26 are disposed between channel 11 and drill bit 6).
Regarding claim 20, Alexander discloses rotating the steering device (the assembly is rotated with the drill string rotation) and rotating the valve with the steering device (in certain configurations, sleeve 23 of valve/member 5 rotates with the assembly) within the borehole.
Regarding claim 21, Alexander discloses [a] steering augmenter for a steering device of a drilling tool in a borehole, the steering augmenter comprising: a body (elements 2, 3, 4, 5, 7, 12, and 15 as depicted in FIGs. 1 and 2) having an inside surface (water course 20 is a flow path defined by an inside surface as depicted in FIG. 1) and an outside surface (see FIGs. 1 and 2) and configured to attach to a drill bit (element 6 in FIGs. 1 and 2 is a drill bit); a first flow passage defined by the inside surface of the body and configured to convey a fluid supply (water course 20 as depicted in FIG. 1); a channel formed on the outside of the body (openings 11 disposed in annular member 9; annular member 9 is disposed external from the body elements identified above; channel 11 cuts through the outer surface of annular member 9 at two locations; please see FIG. 1) and is selectively rotatable on the body (bearing balls 10 allow annular member 9 to rotate relative to the elements identified as the body) and fixable to the body (annular member 9 is attached to the elements identified as the body), the channel being configured to produce a Bernoulli effect in an annulus of the borehole between the channel and a wall of the borehole during fluid flow therein (fluid exiting from the smaller diameter of channel 11 into the larger diameter of the annular space depicted in FIG. 1 generates a Bernoulli effect in an area bounded by channel opening 11, the outer surface of the tool, and the wellbore wall); a second flow passage fluidly connecting the first flow passage to the channel (orifice 21 and aperture 24 as depicted in FIGs. 1, 2, and 6); and a valve (valve member 5 and sleeve 23; see page 2, line 68 of the first column through line 42 of the second column) associated with the second flow passage and configured to allow, prevent or choke flow through the second flow passage (please see FIG. 6 and lines 9—24 of the second column on page 2) wherein the valve is operated to increase the fluid flow when a rotational azimuth of the steering device about a rotational axis of the steering device is within a preselected range of values (Examiner notes that in order for the tool to directionally steer the drill bit, the fluid which is used to divert the drill bit, which passes through valve member 5, has to be directionally oriented. Furthermore, valve member 5 has to be open in order for the fluid to be ejected to direct the drill string. As such the disclosure of Alexander anticipates the function of the valve).
Regarding claim 22, Alexander discloses wherein the sleeve is selectively fixable by mating surfaces of the drill bit and the sleeve (annular member 9 is attached to the assembly at a surface as depicted in FIG. 1 and the drill bit is selectively fixable to the assembly by a threaded connection such that the two components are selectively fixable to each other by threaded connections).
Regarding claim 23, Alexander discloses wherein the sleeve is fixable by a fastener (the annular member 9 is attached to the assembly by at least the bearing balls 10 as depicted in FIG. 1).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published US Patent Application to Alexander (US 2167194 A) as applied to claim 1 above, and further in view of Published US Patent to Arfele (US 5967244 A).
Regarding claim 2, while Alexander depicts a configuration assembled with multiple threaded components, including a drill bit (6) threaded to the assembly (e.g., see FIG. 1), Alexander does not explicitly disclose that the thread is a timed thread. However, However, Arfele, which is in the same field of endeavor as the instant application insofar as it relates to drilling flow paths, teaches the deficient limitation. For example, Arfele teaches “[t]his technique can permit the nozzle and receptacle thread patterns to be timed with the nozzle flow direction so that the final seated position of the nozzle produces the desired orientation of the exit flow path from the bit.” (Arfele, Col 2, Lines 1—6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the timed threads of Arfele by replacing the attachment means for connecting the drill bit of Alexander with the timed threads of Arfele. The function of the timed threads were known in the art to be used to connect drill bits to drill strings where the predictable result would be a utilizing the timed thread connection to connect a drill bit to a drill string.
Allowable Subject Matter
Claim 18 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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/U.L.N./Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676
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