DETAILED ACTION
The amendments filed on 05/23/2025 have been entered.
Claim Rejections - 35 USC § 112
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, 7-10, 11, 13-14 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.
In claim 1, line 7, the applicant recites “the parameters”. There is insufficient antecedent basis for this feature in the claims. Claims 2-3, 7-10 are also rejected for the same reason.
In claim 1 , line 9, the applicant recites “parameters”. It is not clear if these parameters are different from the one recited in line 7. Claims 2-3, 7-10 are also rejected for the same reason.
In claim 11, line 7, the applicant recites “the parameters”. There is insufficient antecedent basis for this feature in the claims. Claims 13-14 are also rejected for the same reason.
In claim 1 , line 9, the applicant recites “parameters”. It is not clear if these parameters are different from the one recited in line 7. Claims 13-14 are also rejected for the same reason.
Allowable Subject Matter
Claim 16 is allowed
Claims 2-3 is 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.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 7-11 and 13-14 are rejected under 35 U.S.C 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1 of the USPTO’s eligibility analysis entails considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: Process, machine, manufacture, or composition of matter.
Claims 1 and 11 are directed toward a method (process).
If the claim recites a statutory category of invention, the claim requires further analysis in Step 2A. Step 2A of the 2019 Revised Patent Subject Matter Eligibility Guidance is a two-prong inquiry. In Prong One, Examiner’s evaluate whether the claim recites a judicial exception.
Claim 1 recites abstract limitations including “determining depth of cut (DOC)…”, “simulating drilling of a hypothetical wellbore using a hypothetical drill bit…”, “determining a function that provides strength of a hypothetical geological formation” , “determining strength of the geological formation using the function…”, “the DOC of the drill bit and torque exerted thereon are determined also using performance data…”, “determining pressure differential across the drilling motor by subtracting standpipe pressure (SPP) measured while the drill bit is off bottom from the SPP measured while the drill bit is drilling the wellbore”, “using the pressure differential and the performance data to determine the torque exerted on the drill bit”, and “using flow rate of drilling fluid pumped through the drilling motor and the performance data to determine angular speed of a rotor thereof”
Claim 11 recites abstract limitations including “determining depth of cut (DOC)…”, “simulating drilling of a hypothetical wellbore…”, “determining a function…”, “determining WOB using the function…”, “planning a centralizer program of a downhole tubular using the determined WOB”.
These limitations, as drafted, are a machine that, under its broadest reasonable interpretation, cover performance of the limitations in the mind, or by a human using pen and paper, and therefore recite a mental process. More specifically, nothing in the claim precludes the aforementioned steps from practically being performed in the human mind, or by a human using pen and paper. There mere recitation of generic computing elements does not take the claim out of the mental process grouping. Furthermore, as discussed in MPEP 2106.04(a)(2)(III)(A), claimed directed toward a mental process include claims to “collecting information, analyzing it, and outputting certain results of the collection and analysis,’ wherein the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstrom, S.A., 830 F.3d 1350, 1353-54, 199 USPQ2d 1739, 1741-42 (Fed. Cir. 2016)’. Additionally, the recitation of the specific variables and data limitations are insufficient as “merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from §101 undergirds the information-based category of abstract ideas (See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)). Thus, the claims recite an abstract idea.
If the claim recites a judicial exception (i.e. an abstract idea enumerated in Section | of the 2019 Revised Patent Subject Matter Eligibility Guidance, a law of nature, or a natural phenomenon), the claim requires further analysis in Prong Two. In Prong Two, examiners evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
Claims 1 and 11 recite the additional elements of a(n) “a drill bit”, “a drilling motor’, “drilling the wellbore into the geological formation using a drilling rig, the drill bit and the drilling motor”, “measuring the parameters while drilling the wellbore at the drilling rig”, These elements and steps are cited at a high level of generality, and, as applied, merely confine the use of the abstract idea to a particular technical field of use and this fails to add an inventive concept to the claim.
Accordingly, in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
If the additional elements do not integrate the exception into a practical application, then the claim is directed to the recited judicial exception, and requires further analysis under Step 2B to determine whether they provide an inventive concept (i.e. whether the additional elements amount to significantly more than the exception itself).
Claims 7-10 and 13-14 merely narrow the previously recited abstract idea limitations. For the reasons described above, this judicial exception is not meaningfully integrated into a practical application, or significantly more than the abstract idea.
Response to Arguments
Applicant's arguments filed 05/23/2025 have been fully considered but they are not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANY E AKAKPO whose telephone number is (469)295-9255. The examiner can normally be reached M-F 9am - 5pm.
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/DANY E AKAKPO/Examiner, Art Unit 3672
09/15/2025