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 .
Response to Arguments
Applicant's arguments filed 06 April 2026 have been fully considered but they are not persuasive. Applicant argues that the instant amended claimed invention satisfies the enablement requirement under 35 U.S.C. 112(a), and that the filed application allegedly provides sufficient information to enable the skilled artisan to make and use the claimed invention without undue experimentation. The Examiner respectfully disagrees. Applicant argues on page 9 of the filed response that the claimed invention does not require the establishment or determination of an ”actual reservoir composition,” and that, allegedly, if the “actual reservoir composition” was known, then measuring the gas composition of the gas sample would be redundant and unnecessary. This is not factually correct based on the instant disclosure. Although Applicant has amended the claimed invention to remove the previously recited limitations: “wherein the interpretation confidence index provides an assessment of how well the measured gas composition reflects an actual reservoir composition,” the fundamental intentional objective of the claimed invention is to compute an “interpretation confidence index” (which is based on “a plurality of coefficients” which are chosen/assigned in regards to a “plurality of drilling conditions and a plurality of environmental conditions”) to assess/judge how well the measured composition reflects an “actual reservoir composition,” otherwise, one of ordinary skill in the art would have no guidance and/or directions to conduct the now recited method/process step of: “changing the mud logging operation to adjust the interpretation confidence index” now recited in instant independent claim 1. In addition, the preambles of instant independent claims 1, 11 and 16 recite: “A method/system for assessing (emphasis added) downhole gas composition measurements,” and, as such, the “assessing” process step set forth in the preambles require the knowledge/establishment of an “actual reservoir gas composition.”
Without the knowledge/establishment of an “actual reservoir composition” one of ordinary skill in the art would have no way to determine if any changes in the mud logging operations based on the computed interpretation confidence index (i.e. alteration of the plurality of coefficients used to compute the interpretation confidence index) would be successful or unsuccessful in achieving an improved subsequently calculated interpretation confidence index. Completely contrary to the Applicant’s arguments that an actual reservoir composition is not required to make and/or use the instant claimed invention, the claimed invention absolutely requires knowledge/establishment of an “actual reservoir composition” which is essential to make and/or use the claimed invention is further supported by Applicant’s arguments on pages 9-10 of the response, wherein Applicant points to the instant filed specification para 0004, quoting: “While such gas measurements may provide valuable insight about the contents of the reservoir, the gas concentrations measured at the surface can sometimes be different (even significantly different) than the actual reservoir gas composition. There is a need in the industry to assess how well gas composition measurements made at the surface reflect the actual reservoir gas composition” (emphasis added). As such, the claimed invention requires knowledge/establishment of an “actual reservoir composition” employing chosen/assigned coefficients based on drilling and environmental conditions, wherein the chosen/assigned coefficients are employed to compute the interpretation confidence index, is absolutely essential to make and/or use the claimed invention.
The above analysis is clearly supported by instant specification paras 0021-0022, which Applicant quoted on page 10 of the arguments, stating: “The computed ICI may provide an indication of how close the gas composition measurements made at 102 are to the actual reservoir fluid (gas) composition (or how confidently the measurements may be trusted to indicate the actual reservoir composition and properties)” and “the computed ICI may provide an indication of how close the gas composition measurements made at 122 are to the actual reservoir fluid (gas) composition (as well as how close the interpreted fluid type and properties are to the actual fluid type and properties)” (emphasis added). As such, without clear knowledge and/or establishment of an actual reservoir gas composition, the question is, how can one of ordinary skill in the art be confident and/or trust the gas composition measurements made are an indication of how close the gas composition measurements made are to the actual reservoir gas composition via the computed interpretation confidence index? This fundamental question cannot be answered without the establishment/knowledge of an actual reservoir gas composition, and, as such, the instant disclosure fails to enable one of ordinary skill in the art to make and/or use the instant invention. 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 any definition, or 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.” As pointed out previously, the preambles of instant independent claims 1, 11 and 16 recite: “A method/system for assessing downhole gas composition measurements,” which requires the establishment/determination/knowledge of an actual reservoir gas composition, wherein the interpretation confidence index provides the assessment in regards to the actual reservoir gas composition, set forth in the preambles. 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.
Applicant then argues on pages 10-12 of the response that the assigning of the plurality of coefficients to the plurality of drilling and environmental conditions recited in the claimed invention is enabled by the instant disclosure, since one of ordinary skill in the art understands that the interplay of wellbore conditions, service configurations, drilling conditions and environmental conditions may impact the resulting gas composition measurement, and that, allegedly, the examples provided within the instant disclosure regarding the assigning of the plurality of coefficients is not unexplained, not highly generalized, as stated by the Examiner in the previous office action. The Examiner respectfully disagrees. Applicant points to instant filed specification paragraphs 0028-0029 as alleged evidence of this position. However, the Applicant did not provide any evidence of disclosure in exactly how one of ordinary skill in the art would choose the value of the coefficients based on the drilling and environmental parameters. These and other filed specification paragraphs only state that values of the plurality of coefficients “may” be assigned, without any disclosure enabling one of ordinary skill in the art to make the actual choice/decision to apply a particular coefficient, to ultimately determine/compute the interpretation confidence index. Applicant then points to instant specification paragraph 0030, regarding drilling and environmental conditions may be evaluated in view of defined service configuration to assign the plurality of coefficients, and that the coefficients may represent a penalty for a non-optimal condition, and that less optimal may result in a larger penalty (a more highly negative coefficient), or set to zero when the conditions are taken to be optimal or near optimal, such that no penalty is applied. However, there is no disclosure in regards to one of ordinary skill to determine any particular “penalty” or “no penalty” in regards to “non-optimal,” “less optimal” or “optimal” conditions, nor is there any disclosure on the particular metes-and-bounds (i.e. ranges/values) regarding the conditions. There is no disclosed criteria and/or guidance in enabling one of ordinary skill in determining/evaluating what exactly constitutes “non-optimal, “less than optimal” or “optimal” conditions, which requires the subsequent assigning of any coefficients related to these conditions, thus failing to enable one of ordinary skill in the art to make and/or use the instant invention.
Applicant then argues that instant filed specification paragraphs 0040-0046, with reference to instant Figs. 4A-4E, provides specific examples of specific coefficients for specific conditions, and that, allegedly, when read in combination with the prior art description, the skilled artisan has (1) a mechanism to develop an ICI, (2) set of conditions and penalties, and (3) a set of specific exemplary coefficients that are consistent with the conditions and penalties. The Examiner respectfully disagrees. The instant filed specification clearly states that the aforementioned examples are non-limiting, and there is no disclosure to guide one of ordinary skill in the art to employ and/or use the non-limiting examples of assigned coefficients, or any other potential assignment of different coefficients. Taking instant Fig. 4A as a representative example, in regards to Mud Type (OBM or WMB), for unknown/undisclosed Rig/Service Configuration #1, Rig/Service Configuration #2, and Rig/Service Configuration #3. The specifications of each of these three Rig/Service Configurations are not defined or disclosed (i.e. exactly what components and/or associated operational aspects that are required/associated with each of the three Rig/Service Configurations). As such, there are unknown/undisclosed Rig/Service Configurations that are employed to assign the associated coefficients for Mud Type, either OBM or WMB in instant Fig. 4A, which fails to enable one of ordinary skill in the art to make and/or use the instant invention regarding choosing the coefficients. The instant claimed invention recites “service configuration” and the “assign/assigning a plurality of coefficients.” As such, the instant disclosure fails to enable one of ordinary skill in the art to make and/or use the claimed invention in regards to the assigned coefficients related to the recited service configurations. Applying Wands factor (F), the quantity of experimentation necessary, one of ordinary skill in the art would have to perform untold amounts of experimental service/rig configurations (including both components and associated operational aspects) and untold corresponding choices of associated appropriate coefficients to be assigned to make and/or use the instant claimed invention, thus amounting to undue experimentation. Applying Wands factor (G), being the existence of working examples, the instant disclosure fails to disclose any directions and/or guidance or working examples in regards to any particular service configuration, 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, since instant examples Figs. 4A-4E do not disclose the actual rig/service configurations associated with the coefficient values. As such, all rejections under 35 U.S.C. 112(a) are maintained.
Applicant lastly argues that the claimed invention is definite on pages 13 and 14 of the filed response, arguing that the claims do not recite or require determining or establishing the actual reservoir gas composition, and that again, allegedly, determining the representativeness of a measurement does not require determining the actual measurement, because otherwise the measurement would be redundant. The Examiner respectfully disagrees. As stated above, although Applicant has removed the limitations of: “wherein the interpretation confidence index provides an assessment of how well the measured gas composition reflects an actual reservoir composition,” the establishment/determination of an “actual reservoir composition” is necessary and required to make and/or use the instant claimed invention, so that the coefficients can be assigned/reassigned to calculate the interpretation confidence index. The preambles of instant independent claims 1, 11 and 16 recite: “A method/system for assessing downhole composition measurements” The recited “assessing downhole composition measurements” can only performed via the assigned coefficients and calculated interpretation confidence index, which, in turn, can only be performed if the “actual reservoir composition” is known. It is unclear as to what exactly constitutes an “actual reservoir gas composition,” rendering these claims and their dependents indefinite. As such, the ejections under 35 U.S.C. 112(b) are maintained by the Examiner.
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 1-3, 5, 7-9, 11 and 14-20 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. The preambles of instant independent claims 1, 11 and 16 recite: “A method/system for assessing (emphasis added) downhole gas composition measurements,” and, as such, the “assessing” process step set forth in the preambles require, based on the instant disclosure (see instant filed specification paras 0004, 0021 and 0022 and originally filed instant independent claims 1, 11 and 16), the knowledge/establishment of an “actual reservoir gas composition.” 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 any definition, or 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 calculated “interpretation confidence index.” As pointed out previously, the preambles of instant independent claims 1, 11 and 16 recite: “A method/system for assessing downhole gas composition measurements,” which requires the establishment/determination/knowledge of an actual reservoir gas composition, wherein the interpretation confidence index provides the assessment in regards to the actual reservoir gas composition, set forth in the preambles. 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, instant independent claim 1 recites the limitations: “changing the mud logging operation to adjust the interpretation confidence index.” These limitations require the knowledge/establishment of an actual reservoir gas composition, since, based on the calculated interpretation confidence index, its required in order to assess/judge how well the measured composition reflects an “actual reservoir composition,” otherwise, one of ordinary skill in the art would have no guidance and/or directions to conduct the aforementioned recited limitations.
In addition, and, in specific regards to the computing/estimating the “interpretation confidence index,” which is computed/based on “assigning/assigned coefficients” for “each” 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 “each” 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.” In addition, also taking instant Fig. 4A as a representative example, in regards to Mud Type (OBM or WMB), for unknown/undisclosed Rig/Service Configuration #1, Rig/Service Configuration #2, and Rig/Service Configuration #3. The specifications of each of these three Rig/Service Configurations are not defined or disclosed (i.e. exactly what components and/or associated operational aspects that are required/associated with each of the three Rig/Service Configurations). As such, there are unknown/undisclosed Rig/Service Configurations that are employed to assign the associated coefficients for Mud Type, either OBM or WMB in instant Fig. 4A, which fails to enable one of ordinary skill in the art to make and/or use the instant invention regarding choosing the coefficients. The instant claimed invention recites “service configuration” and the “assign/assigning a plurality of coefficients.” As such, the instant disclosure fails to enable one of ordinary skill in the art to make and/or use the claimed invention in regards to the assigned coefficients related to the recited service configurations. Applying Wands factor (F), the quantity of experimentation necessary, one of ordinary skill in the art would have to perform untold amounts of experimental service/rig configurations (including both components and associated operational aspects) and untold corresponding choices of associated appropriate coefficients to be assigned to make and/or use the instant claimed invention, thus amounting to undue experimentation. Applying Wands factor (G), being the existence of working examples, the instant disclosure fails to disclose any directions and/or guidance or working examples in regards to any particular service configuration, 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, since instant examples Figs. 4A-4E do not disclose the actual rig/service configurations associated with the coefficient values. All other claims are similarly rejected due to their dependency.
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 1-3, 5, 7-9, 11 and 14-20 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.
The preambles of instant independent claims 1, 11 and 16 all recite: “A method/system for assessing downhole composition measurements.” The recited “assessing downhole composition measurements” can only performed via the assigned coefficients and calculated interpretation confidence index, which, in turn, can only be performed to determine how well the measured composition reflects an “actual reservoir composition” is known. It is unclear as to what exactly constitutes an “actual reservoir gas composition,” rendering these 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.
Instant independent claims 1, 11 and 16 all recite: “A method/system for assessing downhole composition measurements,” but fail to recite the process step wherein the “assessing” is performed, based on the recited method/system limitations, thus rendering these claims and their dependents indefinite.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
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