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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Instant independent claims 1, 11 and 16 all recite the limitations of estimating or computing an “interpretation confidence index for the measured composition” based on “drilling and environmental conditions corresponding to the measured composition” and “wherein the interpretation confidence index provides an assessment of the how well the measured composition reflects an actual reservoir gas composition.” In addition, the “interpretation confidence index” is computed/based on “assigning/assigned coefficients” for “selected ones” of the “drilling and environmental conditions,” as recited in instant dependent claims 6, 13 and instant independent claim 16.
The instant disclosure fails to provide any description and/or details to one of ordinary skill in the art in regards to establishment and/or determination of an “actual reservoir gas composition.” Without any knowledge and/or direction by the instant disclosure in the establishment and/or determination of an “actual reservoir gas composition,” the instant disclosure fails to enable one of ordinary skill in the art to make any “assessment” of how well the “measured composition,” based on the “interpretation confidence index,” reflects an actual reservoir gas composition. Applying the Wands factors (see In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), Wands factor (F), being the amount of direction provided by the inventor, it is clear the instant disclosure fails to provide sufficient direction and/or instructional details in the establishment and/or determination of an “actual reservoir gas composition,” and any subsequent “assessment” (i.e. “how confidently the measurements may be trusted to indicate the actual reservoir composition and properties,” as stated in the instant filed specification in para 0021), based on the “interpretation confidence index.” Wands factor (G), being the existence of working examples, the instant disclosure fails to disclose any details or existence of any working examples of determining and/or establishing an “actual reservoir gas composition.”
In addition, in specific regards to the computing/estimating the “interpretation confidence index,” which is computed/based on “assigning/assigned coefficients” for “selected ones” of the “drilling and environmental conditions,” the instant disclosure fails to enable one of ordinary skill to the to make and/or use the claimed invention regarding these limitations. The instant filed specification, in paras 0030-0049 and Figs. 4A-4E. attempts, but fails to enable the aforementioned claim limitations by only providing unexplained, highly generalized, but “non-limiting” guidance/example(s) (see para 0040 of the instant filed specification) regarding the “assigning/assigned coefficients” for “selected ones” of the “drilling and environmental conditions.” Taking instant Fig. 4A and associated instant filed specification para 0041 to illustrate the failure of the instant disclosure to enable one of ordinary skill in the art to make and/or use the instant claimed invention, para 0041 states in part: “mud type coefficients of -2 and -1 may be (emphasis added) assigned when using OBM and WBM with the first service configuration. For the second service configuration a mud type coefficient of -1 may be (emphasis added) assigned when using OBM and a mud type coefficient of 0 may be (emphasis added) assigned when using WBM. For the third service configuration a mud type coefficient of 0 may be (emphasis added) assigned for either OBM or WBM.” Applying Wands factor (F), there is no direction and/or guidance in regards to selecting/choosing the assigned coefficient value, which “may be” -2, -1, or 0 in regards to any particular/defined “service configuration.” This fails to enable one of ordinary skill in the art to make and/or use the instant claimed invention, since there is no direction or guidance regarding exactly how and/or why the coefficient values are chosen/assigned values. Applying Wands factor (G), being the existence of working examples, the instant disclosure fails to disclose any directions and/or guidance on exactly how and/or why the coefficients are to be chosen/assigned by one of ordinary skill in the art regarding any particular service configuration. All other claims are similarly rejected due to their dependency.
The identical argument above is made by the Examiner regarding all of the remaining unexplained, highly generalized and non-limiting guidance/example(s) provided in instant filed specification paras 0041-0049 and Figs. 4A-4E, wherein the coefficients regarding the “selected ones” of the “drilling and environmental conditions” that simply “may be” assigned, thus further failing to enable one of ordinary skill in the art to make and/or use the instant 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Instant independent claims 1, 11 and 16 all recite the limitations of estimating or computing an “interpretation confidence index for the measured composition” based on “drilling and environmental conditions corresponding to the measured composition” and “wherein the interpretation confidence index provides an assessment of the how well the measured composition reflects an actual reservoir gas composition.” It is unclear as to what exactly constitutes an “actual reservoir gas composition,” rendering the claims and their dependents indefinite. It is unclear as to how exactly the “actual” reservoir gas composition is established and/or determined, being relative to a “measured composition,” to then subsequently perform an assessment of how well the measured composition reflects an actual reservoir gas composition based on a “interpretation confidence index,” rendering the claims and all their dependents indefinite.
Conclusion
Due to the presences of rejections under 35 U.S.C. 112(a) and (b), a thorough search and consideration of the claimed invention in regards to the prior art by the Examiner could not be reasonably made, and, the absence of any prior art rejections of the claimed invention is not an indication of allowable subject matter.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant is invited to review PTO form 892 accompanying this Office Action listing Prior Art relevant to the instant invention cited by the Examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner John Fitzgerald whose telephone number is (571) 272-2843. The examiner can normally be reached on Monday-Friday from 7:00 AM to 3:30 PM E.S.T. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor John Breene, can be reached at telephone number (571) 272-4107. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. The central fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN FITZGERALD/Primary Examiner, Art Unit 2855