DETAILED ACTION
Claims 1 – 3 and 5 - 6 have been presented for examination. Claim 1 is currently amended. Claim 4 is cancelled.
The instant office is in response to the amendments dated 01/23/2026.
Response to SPECIFICATION and WRITTEN DESCRIPTION
Applicant’s arguments have been fully considered. However, the Office does not consider them to be persuasive.
Applicant argues: “Therefore, with all due respect, the added paragraphs [0065.1] - [0065.6] do not in fact add new matter, but simply explain in greater detail what was inherent in the original specification in an effort to evidence that inventor Dr. Suryanarayana indeed had possession of the invention when the parent application to the present application was filed”
Applicant argues that the proposed amendment of the specification is to add subject matter which is “inherent in the original specification”. Examiner notes that inherency can be argued and would not by itself require the addition of embodiments that were not previously disclosed. Further, including additional details for the express purpose of providing “evidence that inventor Dr. Suryanarayana indeed had possession of the invention” is antithetical to the written description requirement.
Applicant argues: “With respect to claim 1, as amended, it should be clear that viewing the patent application drawings and text (detailed description and claims) there was at least a constructive reduction to practice that in a definite way identifies the claimed invention, a method as now recited, the mathematical model developed and programmed using a programming language, and using a spreadsheet program to facilitate inputting and outputting data. The original specification clearly detailed, in at least FIGS. 3, 4, 6A, and 6B the use of a spreadsheet to input and visualize the outputs. These figures were discussed at paragraphs [0054] - [0064] and paragraphs [0072] and [0102].” (emphasis added)
Applicant argues that the disclosure, especially Figure 3 – 4, 6A and 6B (discussed in Paragraph 54 – 64 and 72 and 102) clearly detail the use of a spreadsheet to input and visualize the outputs. Examiner respectfully notes that nowhere is it explicitly disclosed “use of a spreadsheet to input and visualize the outputs” (see emphasis in Applicant’s remarks). Specifically, there is explicitly disclosed “a custom Microsoft® Excel®-based program to model the problem” in combination with a “thermal analysis input panel”. Although a Microsoft® Excel®-based program is theoretically usable for creating the disclosed “input panel”, this is not explicitly recited since the Figures are merely “screenshot[s]”. Examiner further notes that there is not explicitly disclosed any “front end to facilitate inputs” as recited.
Response to Affidavit of PV Suryanarayana
The declaration under 37 CFR 1.132 filed 07/09/2025 is insufficient to overcome the rejection of claim 1 based upon insufficiency of disclosure under 35 U.S.C. 112(a) as set forth in the last Office action because: the support provided by the declaration is substantially the same material that is contained in the amendments to the specification and the claims, with additional conclusory statements that said material was in possession at the time the application was filed and/or included in the claimed invention (see “Affidavit of PV Suryanarayana” Page 5 “In response, I respectfully submit the following to provide more details on the claims in the patent … The specific invention in this patent … Before we applied for the patent, I worked together with one of my co-inventors (Dr Sharat Chandrasekhar) in developing such a transient thermal simulation mathematical model and algorithm capable of handling the transient behavior and phase changes of sC02, and of simulating the process of drilling with it as a drilling fluid”).
To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention (see MPEP 2163(II)). Beyond said additional conclusory statements, there is no evidence to support the conclusion that Applicant was in possession of each and every detail included in the amendments to the specification and claims (which are supported by the amended specification). Further, the stated high-level of skill of the Applicant does not in and of itself amount to evidence that the Applicant had possession of the claimed invention at the time the application was filed.
DISCUSSION WITH REGARD TO 35 U.S.C. §101 REJECTIONS
Applicant’s amendments overcome the 101 rejection. Therefore, it is withdrawn. Specifically, the claimed invention at Step 2A, Prong II recites a specific cooling configuration (i.e., “accept sCO2 and expel non-critical CO2 adjacent or nearly adjacent the at least one MWD components”), and utilizing specific components (i.e., “cooling device selected from a pressure letdown valve, a choke, and a Joule-Thompson valve”), to achieve a specific effect under specific conditions (i.e., “cooling the one or more MWD components while drilling a borehole in hot dry rock” and “thereby protecting the one or more MWD components from malfunctioning”), said cooling arrangement explicitly being in accordance with the abstract idea (i.e., “according to the mathematical model”).
Response to 35 U.S.C. § 103 Rejection
Applicant’s amendments overcome the prior art rejection. Therefore, the prior art rejection is withdrawn (see Allowable Subject Matter).
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 and 5 - 6 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 written description requirement. The claim(s) contains 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With regard to claim 1, it recites “(a) inputting into a mathematical model programmed using a programming language, with a spreadsheet program front end to facilitate inputs and provide all key results as output” which is reasonably interpreted as the spreadsheet program providing the later recited “computing” and “estimating” steps as said “key results as output”. Looking the originally filed disclosure (see Response to Amendments to the Specification), it is explicitly disclosed that the spreadsheet program itself performs the modeling, and not merely used as a frontend and providing outputs (see the instant application Paragraph 50 - 66 “The inventors herein have developed a custom Microsoft® Excel®-based program to model the problem. Model Method inputs … Modeling Method Outputs”). Further, there is no explicit disclosure of the mathematical model being implemented with a programming language connected to a spreadsheet program. Therefore, there is a lack of written description for the recited combination of a spreadsheet frontend and mathematical model programming language so that one of ordinary skill in the art would reasonably conclude that the inventor has possession of the claimed invention at the time of filing (see MPEP 2161.01(I) “Similarly, original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient).”).
With regard to claim 2 – 3 and 5 – 6, they are rejected by virtue of their dependency on a rejected parent claim, and without reciting additional limitations to overcome the deficiency.
Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance, subject to the 112 rejection: the limitations in claim 1 (and claims 2 – 3 and 5 – 6 by incorporation) “(f) estimating cooling of the one or more MWD components by Joule-Thomson effect cooling by modeling routing the supercritical carbon dioxide through a cooling device employing the mathematical model and the processor, the estimating comprising estimating at least one of: (i) temperatures at the one or more MWD components, at the drill bit, and of well returns at surf ace; (ii) pressures at the standpipe, the one or more MWD components, and at the drill bit (surface back pressure is given, and a parameter of the problem)”, in combination with the remaining elements and features of the claimed invention. It is for these reasons that the applicant’s invention defines over the prior art or record.
Song et al. “Wellbore flow field of coiled tubing drilling with supercritical carbon dioxide” teaches modeling the use of CO2 during underbalanced drilling. However, does not appear to explicitly disclose at least: estimating cooling of the one or more MWD components by Joule-Thomson effect cooling by modeling routing the supercritical carbon dioxide through a cooling device employing the mathematical model and the processor, the estimating comprising estimating at least one of: (i) temperatures at the one or more MWD components, at the drill bit, and of well returns at surface; (ii) pressures at the standpipe, the one or more MWD components, and at the drill bit (surface back pressure is given, and a parameter of the problem).
Verma et al. “Thermal Management of Electronics Used in Downhole Tools” teaches modeling active cooling of a downhole instrument using Joule-Thompson cooling using a vapor compression cycle. However, does not appear to explicitly disclose at least: estimating cooling of the one or more MWD components by Joule-Thomson effect cooling by modeling routing the supercritical carbon dioxide through a cooling device employing the mathematical model and the processor, the estimating comprising estimating at least one of: (i) temperatures at the one or more MWD components, at the drill bit, and of well returns at surface; (ii) pressures at the standpipe, the one or more MWD components, and at the drill bit (surface back pressure is given, and a parameter of the problem).
Marzouk et al. (US 2014/0367167) teaches cooling a sensitive component downhole using a cooling mixture chamber causing an endothermic reaction. However, does not appear to explicitly disclose at least: estimating cooling of the one or more MWD components by Joule-Thomson effect cooling by modeling routing the supercritical carbon dioxide through a cooling device employing the mathematical model and the processor, the estimating comprising estimating at least one of: (i) temperatures at the one or more MWD components, at the drill bit, and of well returns at surface; (ii) pressures at the standpipe, the one or more MWD components, and at the drill bit (surface back pressure is given, and a parameter of the problem).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 ALFRED H. WECHSELBERGER whose telephone number is (571)272-8988. The examiner can normally be reached M - F, 10am to 6pm.
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/ALFRED H. WECHSELBERGER/ExaminerArt Unit 2187
/EMERSON C PUENTE/Supervisory Patent Examiner, Art Unit 2187