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 .
Status of Claims
The following is a non-final, first office action in response to the communication filed on 12/02/2024. Claims 1—15 are currently pending.
Priority
The Applicant’s claim for benefit of WIPO Patent Application PCT/SE2022/050552 filed on 06/03/2022, has been received and acknowledged.
Information Disclosure Statement
Information Disclosure Statement received 12/02/2024 has been reviewed and considered.
Response to Arguments
Applicant's arguments and amendments filed 03/27/2026 with respect to the interpretation of claims 1, 3 and 12 have been fully considered. As addressed in the Non-Final Office Action, claims 1 and 12 are drafted in a manner where the limitation are conditional. The amendments did not resolve this issue. Accordingly a rejection under 35 U.S.C. 112(b) is issued below for claims 1 and 12 where the manner in which the claims are drafted renders the claims indefinite.
The amendments set forth with respect to claims 5 and 8 overcome the rejection under 35 U.S.C. 112(b) and are withdrawn. The amendments to claim 3 function to further obfuscate the meaning of the claim. For example, the word “thereby” is defined by Merriam Webster as “by that means.” As phrased, the limitations of claim 3 appear to be circular which renders the claim indefinite as described directly below and in the rejection under 35 U.S.C. 112(b).
Applicant's arguments and amendments filed 03/27/2026 with respect to the rejection of claims 3, 5, and 8 under 35 U.S.C. 112(b) have been fully considered and are persuasive in part. The amendments set forth with respect to claims 5 and 8 overcome the rejection under 35 U.S.C. 112(b) and are withdrawn. The amendments to claim 3 function to further obfuscate the meaning of the claim. For example, the word “thereby,” which is defined by Merriam Webster as “by that means,” is a term used to connect an action to a direct consequence. The action of claim 3 is “physically adjusting in real-time the at least one drilling parameter,” and the direct consequences consist of “obtaining an updated set of drilling parameters” and “applying the updated set of drilling parameters during the ongoing rock drilling operation.” Examiner notes that an action which has a direct consequence that reads substantially similar to the action in combination reads as a continuous loop of the action which in this scenario, renders the claim indefinite. Accordingly, the rejection of claim 3 under 35 U.S.C. 112(b) is maintained as modified below.
Applicant's arguments and amendments filed 03/27/2026 with respect to the rejection of claim 14 under 35 U.S.C. 101 are moot in view of the cancellation of claim 14. Accordingly the rejection is withdrawn.
Applicant's arguments and amendments filed 03/27/2026 with respect to the rejection of claims 3 and 4 under 35 U.S.C. 101 have been fully considered but they are not persuasive.
The Response at page 8 states “[d]ependent claims 3 and 4 depend from independent claim 1. As a matter of claim construction, each dependent claim ‘includes all of the limitations of the claim incorporated by reference into the dependent claim’… The Examiner’s analysis isolates a few verbs in Claims 3 and 4 (“obtaining,” “evaluating,” “obtaining,” “determining a need to update”) and treats them as disembodied “mental processes,” ignoring that those steps are performed within the specific drilling system and control architecture recited in claim 1,” to which the Examiner does not agree. The additional elements recited in claim 1 were addressed at pages 9 and 10 of the Non-Final Office Action dated 12/31/2025 and, for the reasons provided therein, were not found to provide for a practical application of the identified judicial exceptions. The alleged “particular drilling system” of claim 1 was not addressed; however, the only portion of the claim body which discusses the drilling machine is the portion which is also identified as conditional. Moreover, the “particular drilling system” as recited in the claim is merely “a drilling machine” which constitutes a field of use limitation and does not provide for a practical application of the identified judicial exceptions. Accordingly the assertion that claim 1 includes additional elements which provide for a practical application of the identified judicial exceptions is not persuasive.
The Response at page 8 further states “[e]ven taken in isolation, the limitations singled out by the Examiner are not ‘mental processes’ in the sense used by the USPTO guidance. In the context of the specification and claim 1 ‘obtaining an updated set of drilling parameters’ refers to acquiring updated values for mechanical drilling parameters (e.g., weight-on-bit, rotational speed, flow rate, steering parameters) from the sensors, controllers, or memory in a drilling control system, not to a person mentally recalling numbers.” The limitation as set forth in the claim states “obtaining an updated set of drilling parameters.” The limitation does not recite any of the above described features to further limit the action of obtaining. Claims are given their broadest reasonable interpretation in view of the Specification; however, importing unrecited claim limitations into the claims from the Specification is improper. Accordingly, under the broadest reasonable interpretation, the limitation “obtaining an updated set of drilling parameters,” is properly identified as a mental process because the limitation as claimed is fully performable by a human observing a data stream. Therefore the assertion that the limitation “obtaining an updated set of drilling parameters” does not constitute a mental process and/or an abstract idea is not persuasive.
The Response at page 8—9 states “[l]ikewise ‘evaluating’ and ‘obtaining a correlation’ involve algorithmically processing drilling parameter data and measured drilling conditions to compute a correlation used in a control loop.” The foregoing citation describes abstract ideas directed to making evaluations (e.g., a mental process and/or mathematical concept) and obtaining correlations (e.g., mental processes and/or mathematical concepts). The MPEP states the following regarding abstract ideas: “[t]he enumerated groupings of abstract ideas are defined as: 1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I)…; and 3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).” (MPEP 2106.04(a)). The Response at page 9 further states “[g]iven the frequency, volume, and multi-variable nature of the downhole data, these operations cannot practically be performed entirely in the human mind,” however, that has no bearing on whether or not the identified abstract ideas recite mental processes. For example, the MPEP states:
“[t]he courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid… Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer.” (MPEP 2106.04(a)(2), Section III); and
“[u]se of a computer or other machinery in its ordinary capacity… does not integrate a judicial exception into a practical application or provide significantly more... Similarly, ‘claiming the improved speed or efficiency inherent with applying the abstract idea on a computer’ does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015).” (MPEP 2106.05(f)).
The MPEP makes it clear that performing a mental process on a computer such that the mental process benefits from the increased speed at which a computer operates, does not remove the limitation identified as a mental process from the mental process grouping. Therefore the assertion that the limitations directed to “evaluating” and “obtaining a correlation” do not constitute a mental process and/or mathematical concepts are not persuasive.
The Response at page 9 further states “[f]inally, ‘determining a need to update a level of adjustment’ is a machine-implemented control decision… not a mere abstract judgement by a human observer.” Examiner submits that making determinations is within the scope of capabilities of a human mind and therefore constitutes a mental process. Furthermore, merely performing a limitation identified as a mental process on a computer does not take the limitation out of the mental process grouping. Accordingly, and for the same reasons as provided above (e.g., with respect to the actions of “evaluating” and “obtaining a correlation”), the action of “determining,” performed on a computer and/or controller constitutes a mental process and therefore is properly identified as an abstract idea. Therefore the assertion that the limitations directed to “determining a need to update a level of adjustment” do not constitute a mental process and/or mathematical concepts are not persuasive.
Finally, the assertion that the instant claims are analogous to Diamond v. Diehr is not persuasive. For example, with regards to Diamond v. Diehr, the MPEP states:
“Diamond v. Diehr provides an example of a claim that recited meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. 450 U.S. 175, 209 USPQ 1 (1981). In Diehr, the claim was directed to the use of the Arrhenius equation (an abstract idea or law of nature) in an automated process for operating a rubber-molding press. 450 U.S. at 177-78, 209 USPQ at 4. The Court evaluated additional elements such as the steps of installing rubber in a press, closing the mold, constantly measuring the temperature in the mold, and automatically opening the press at the proper time, and found them to be meaningful because they sufficiently limited the use of the mathematical equation to the practical application of molding rubber products. 450 U.S. at 184, 187, 209 USPQ at 7, 8.” (MPEP 2106.05(e)); and
“[i]n contrast, the additional elements in Diamond v. Diehr as a whole provided eligibility and did not merely recite calculating a cure time using the Arrhenius equation ‘in a rubber molding process’. Instead, the claim in Diehr recited specific limitations such as monitoring the elapsed time since the mold was closed, constantly measuring the temperature in the mold cavity, repetitively calculating a cure time by inputting the measured temperature into the Arrhenius equation, and opening the press automatically when the calculated cure time and the elapsed time are equivalent. 450 U.S. at 179, 209 USPQ at 5, n. 5. These specific limitations act in concert to transform raw, uncured rubber into cured molded rubber. 450 U.S. at 177-78, 209 USPQ at 4.” (MPEP 2106.05(h)).
Accordingly, Diehr recites a specific practical application which aligns with the requirements for showing a practical application as set forth in MPEP 2106.05(f). The claims of Diehr did not merely recite “adjusting the mold press during a rubber heating operation,” but rather provided a very specific manner in which the judicial exception was used to operate the mold press in a very specific manner (e.g., calculating cure time by inputting measured temperatures into Arrhenius equation and opening the mold when the calculated cure time and elapsed time are equivalent). Accordingly, the limitations of Diehr did not merely recite a limitation equivalent to generically applying the identified judicial exception as is currently the case with the instant claims. For the above provided reasons, the rejection of claims 3 and 4 under 35 U.S.C. 101 is maintained as provided below.
Applicant's arguments and amendments filed 03/27/2026 with respect to the rejection of claims 1 and 12 under 35 U.S.C. 102 have been fully considered but they are not persuasive. As discussed above and further addressed below, the instant independent claims include an embodiment in which none of the recited claim limitations are required to be performed. Accordingly the limitations argued in the Response at pages 10—11 are not actually required by the claim. For example, claims 1 and 12 have been amended to recite “in response to the measured particle size fulfilling a predefined criterion, physically adjusting in real-time at least one drilling parameter of the specific set of drilling parameters during the ongoing rock drilling operation.” However, the claim never recites a limitation which positively states that the measured particle size is determined to fulfill a predetermined criterion. Accordingly, the limitation is conditional and is not required to be performed in order to meet the limitations of the claim. Due to this continued deficiency in the claims, which was identified and explained in the Non-Final rejection, the arguments set forth with respect to the above stated limitation are not persuasive in showing that Al-Malki fails to anticipate the required limitations of the claims. Accordingly, the rejection has not been modified.
Examiner notes that if the claims were amended to positively recite the limitations, a rejection which incorporates Published US Patent Application to Holt et al. (US 20240263553 A1) may be applicable. Holt et al., the filing date of which predates the filing date of the instant application, teaches a method of controlling wellbore stability with consideration for wellbore cuttings size. Published US Patent Application to Holt et al. teaches:
“[w]ellbore objects can include cuttings, cavings, fluid, retained fluid, rubble, metal, plastic, rubber lost circulation material and others.” (Holt, para. [0010]);
“measurements of the size, shape, color, and volume of objects over time is captured. These captured measurements can be used to determine an average, which is used to establish a baseline. Changes from the baseline may trigger the systems to request an operational parameter change via a control signal.” (Holt, para. [0035]);
“where the predictive model indicates that a certain size, shape, volume, number of cuttings, etc. should be present during drilling, the wellbore control engine 404 may compare such indication against the monitored value (using image data, for example). Where a deviation is present (e.g., where such deviation is greater than a preset value), the wellbore control engine 404 may request to control one or more drilling equipment and/or request a change to one or more drilling parameters.” (para. [0106]).
Accordingly, Holt et al. teaches the modification of a drilling operation in situations where it is determined that an actual cuttings size differs from a cutting size threshold.
With continued regards to claims 1 and 12, the Response at page 11 argues features which go beyond the scope of what is required by the limitations of claims 1 and 12. For example, the Response at page 11 states “Al Malki shows depth-based aggregation… and acknowledges that cuttings can be traced to depth, but does not disclose a time delay parameter and explicit time point association.” Examiner notes claims 1 and 12 recite the limitation “wherein the measured particles are associated with a point in time when the specific set of drilling parameters are used.” Accordingly, claims 1 and 12 do not recite a time delay parameter. Moreover, cuttings generated in a wellbore are implicitly associated with the point in time at which they were generated which is also implicitly associated with the drilling parameters used at the time. More specifically, as drafted, the threshold for two things to be associated with each other merely requires that they are linked in some manner. Al-Malki is not deficient in this regard.
While claims 1 and 12 do not recite a time delay parameter, claim 7 does recite a time delay parameter. For example, claim 7 states “wherein measuring the particle size of particles generated by the rock drilling operation comprises using a time delay parameter indicative of a difference between the point in time when the specific set of drilling parameters are used and when the measurement of the particle size is performed.” Accordingly, the time delay parameter of claim 7 is merely “indicative of a difference between the point in time” required for the cuttings to travel up the wellbore. Notably, a velocity of an object is indicative of the time required for the object to get from point A to point B. The time delay parameter of claim 7 was mapped to the cuttings velocity as recited in Al-Malki at para. [0044] which states “[t]he cuttings velocity Vcut may describe a cuttings transport through a wellbore and be measured in ft/min. For example, the cuttings velocity Vcut may be expressed using the following Equation 6…”. Examiner notes that equation 6 is directly used in the HCE equation (e.g., equation 12) and provided in para. [0047] of Al-Malki. In view of the foregoing, the Response at pages 9—11 is not persuasive in showing that Al-Malki is deficient in anticipating the positively recited limitations of claims 1 or 12. Accordingly the rejection of the claims is modified as provided below.
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 3 and 4 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 3 and 4 are directed to a method (process). As such, the claims are directed to statutory categories of invention.
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, examiners evaluate whether the claim recites a judicial exception
Claim 3 recites abstract limitations including: “obtaining an updated set of drilling parameters” (e.g., a mental process).
Claim 4 recite(s) abstract limitations including: “evaluating the rock drilling performance” (e.g., a mental process); “obtaining a correlation…” (e.g., a mental process and/or mathematical concept); and “determining a need to update a level of adjustment…” (e.g., a mental process).
Under the broadest reasonable interpretation, the above identified method steps cover one of 1.) limitations which may be performed in the human mind, or by a human using pen and paper, and therefore recite mental processes and/or 2.) mathematical concepts. In some scenarios, a mental process may benefit from the utilization of a mathematical concept, and therefore qualifies as both a mental process and a mathematical concept. Notably, nothing in the above limitations which are identified as being directed to mental processes precludes the limitations from practically being performed in the human mind, or by a human using pen and paper. Thus the claim recites an abstract idea.
If the claim recites a judicial exception (i.e., an abstract idea enumerated in Section I 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 3 and 4 depend from claim 1, where claim 1 recites the additional elements of: “the drilling machine” (e.g., indicative of a field of use in which the abstract idea is applied); “measuring, by use of at least one sensor, particle size of particles generated by the rock drilling operation” (e.g., mere data gathering recited at a high level of generality); and “physically adjusting in real-time at least one drilling parameter of the specific set of drilling parameters during the ongoing rock drilling operation” (e.g., mere directive to apply the judicial exception equivalent to reciting “apply it”).
Claim 3 recites the additional elements of: “increasing or decreasing the at least one drilling parameters in dependence of the measured particle size” (e.g., mere directive to apply the judicial exception equivalent to reciting “apply it”) and “applying the updated set of drilling parameters during the ongoing rock drilling operation (e.g., mere directive to apply the judicial exception equivalent to reciting “apply it”).
The above identified additional elements do not integrate the abstract idea into a practical application because the additional elements 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).
As discussed above, claim 1 recites the additional element of “the drilling machine” which is indicative of the field of use in which the identified judicial exceptions are applied. The MPEP states:
“[a]nother consideration when determining whether a claim integrates the judicial exception into a practical application in Step 2A Prong Two or recites significantly more than a judicial exception in Step 2B is whether the additional elements amount to more than generally linking the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible ‘simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use.’ Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application.” (MPEP 2106.50(h)); and
“[t]he courts often cite to Parker v. Flook as providing a classic example of a field of use limitation. See, e.g., Bilski v. Kappos, 561 U.S. 593, 612, 95 USPQ2d 1001, 1010 (2010) ("Flook established that limiting an abstract idea to one field of use or adding token postsolution components did not make the concept patentable") (citing Parker v. Flook, 437 U.S. 584, 198 USPQ 193 (1978)). In Flook, the claim recited steps of calculating an updated value for an alarm limit (a numerical limit on a process variable such as temperature, pressure or flow rate) according to a mathematical formula "in a process comprising the catalytic chemical conversion of hydrocarbons." 437 U.S. at 586, 198 USPQ at 196.” (MPEP 2106.05(h)).
Accordingly limitations such a recitations of generically recited equipment indicative of a field of use cannot provide for a practical application of the identified judicial exceptions.
Claim 1 further recites the additional element of “measuring, by use of at least one sensor, particle size of particles generated by the rock drilling operation,” which amounts to mere data gathering and constitutes court identified insignificant extra solution activity. For example, the MPEP states “[b]elow are examples of activities that the courts have found to be insignificant extra-solution activity: Mere Data Gathering: i. Performing clinical tests on individuals to obtain input for an equation, In re Grams, 888 F.2d 835, 839-40; 12 USPQ2d 1824, 1827-28 (Fed. Cir. 1989); ii. Testing a system for a response, the response being used to determine system malfunction, In re Meyers, 688 F.2d 789, 794; 215 USPQ 193, 196-97 (CCPA 1982)” (MPEP 2106.05(g)). Accordingly, generically recited limitations directed to mere data gathering constitute insignificant extra solution activity which cannot provide for a practical application of the identified judicial exceptions.
Claim 1 further recites the additional element of “physically adjusting in real-time at least one drilling parameter of the specific set of drilling parameters during the ongoing rock drilling operation,” which is equivalent to mere directive to apply the identified judicial exception where the application is recited at a high level of generality and does not provide for a practical application. For example, the MPEP states “[w]hen determining whether a claim simply recites a judicial exception with the words ‘apply it’ (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners may consider the following: (1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it". See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). In contrast, claiming a particular solution to a problem or a particular way to achieve a desired outcome may integrate the judicial exception into a practical application or provide significantly more. See Electric Power, 830 F.3d at 1356, 119 USPQ2d at 1743.” (MPEP 2106.05(f)). As an example, Examiner points to the limitations of Diehr which recite a specific solution to a specific problem. For example, the MPEP states “the additional elements in Diamond v. Diehr as a whole provided eligibility and did not merely recite calculating a cure time using the Arrhenius equation ‘in a rubber molding process’. Instead, the claim in Diehr recited specific limitations such as monitoring the elapsed time since the mold was closed, constantly measuring the temperature in the mold cavity, repetitively calculating a cure time by inputting the measured temperature into the Arrhenius equation, and opening the press automatically when the calculated cure time and the elapsed time are equivalent. 450 U.S. at 179, 209 USPQ at 5, n. 5. These specific limitations act in concert to transform raw, uncured rubber into cured molded rubber. 450 U.S. at 177-78, 209 USPQ at 4.” (MPEP 2106.05(h)). Accordingly, the limitation directed to adjusting a drilling process in a non-specific manner during the drilling operation does not provide for a practical application of the judicial exceptions.
Claim 3 recites the additional elements of: “increasing or decreasing the at least one drilling parameters in dependence of the measured particle size” and “applying the updated set of drilling parameters during the ongoing rock drilling operation,” which are both equivalent to a mere recitation to apply the judicial exception for the same reasons as provided above with respect to claim 1 as discussed in regards the citations to MPEP 2106.05(f) and MPEP 2106.05(h). Specifically, the applications do not provide for the level of connection between the identified judicial exception and the specific outcome which is derived from the judicial exception.
Thus, even when viewed as an ordered combination, nothing in the claims add significantly more (i.e., an inventive concept) to the abstract idea.
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—13 and 15 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 limitations of claim 1 are drafted in a manner which includes an embodiment which renders the whole claim conditional such that none of the recited limitations actually have to be performed in order to fulfill the requirements of the claim. In other words, claim 1 is drafted in a manner such that it includes an embodiment which does not positively recite anything. Examiner notes that if a limitation is conditioned on the occurrence of an action which is never positively recited, then the limitation is not required to be performed in the claim. For example, the limitation “during an ongoing rock drilling operation when the drilling machine is operated with one specific set of drilling parameters of the adjustable set of drilling parameters, measuring…” is a conditional limitation where the measuring step only occurs when the rock drilling operation is operated with one specific set of drilling parameters. Notably, the claim does not recite a limitation which requires that this condition actually occurs. As such, the claim is not drafted in a manner which requires that the measuring step is ever performed. The issue with this limitation may be fixed by replacing the word “when” with “wherein,” such that the limitations reads “during an ongoing rock drilling operation wherein the drilling machine is operated…”.
Likewise, the limitation “in response to the measured particle size fulfilling a predefined criterion, physically adjusting in real-time at least one drilling parameter,” is also a purely conditional limitation where the physical adjustment hinges on the occurrence of an event which is not positively recited. For example, the claim does not positively recite that a determination or confirmation is made such that the particle size is positively recited as fulfilling a predefined criterion. As such, the claim is not drafted in a manner which requires that the physical adjusting step is ever performed.
Accordingly the limitations of claim 1 are indefinite because the claim includes an embodiment in which none of the steps are performed. Claims 1—11 and 15 depend from claim 1 and are therefore rejected under 35 U.S.C. 112(b) for depending from a rejected base claim.
Claim 12 (e.g., a system), recites substantially the same limitations as claim 1 (e.g., a method), with the exception that claim 12 is drafted in the manner of a system rather than in the manner of a method. Accordingly claim 12 is indefinite for the same reasoning as provided above with respect to claim 1. Likewise, claim 13 which depends from claim 12 is rejected under 35 U.S.C. 112(b) for depending from a rejected base claim.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1—5, 7—10, and 12—15 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Published US Patent Application to Al-Malki et al., hereinafter “Al-Malki” (US 20220251950 A1)
Regarding claim 1, Al-Malki discloses [a] method for real-time adjustment of at least one drilling parameter during rock drilling by a drilling machine, wherein the drilling machine is configured to be operated with an adjustable set of drilling parameters which influence the rock drilling performance (para. [0014], “real-time changes to hole cleaning efficiency may be detected based on changes within a drilling operation, e.g., as a wellbore passes through different formations in the subsurface. Likewise, by detecting the current hole cleaning state of a wellbore in real-time, retreatment operations may be also be automated, e.g., by adjusting various drilling fluid properties to account for changes in cutting particle sizes.”), the method comprising: during an ongoing rock drilling operation when the drilling machine is operated with one specific set of drilling parameters of the adjustable set of drilling parameters (see para. [0017], “[w]ith respect to the drilling system, drilling fluid may circulate through a drill string for continuous drilling, e.g., drilling fluid A (181) and drilling fluid B (182) as shown in FIG. 1, in order to circulate through a wellbore (e.g., drilling fluid to wellbore (171)). In particular, the ability of the drilling fluid to carry drilled cuttings from a wellbore may be governed by several factors that relate to various drilling fluid properties (e.g., mud rheology, mud weight, etc.) and various drilling operation parameters (e.g., drilling parameters (122)) such as drill pipe rotary speed (RPM), pipe eccentricity (i.e. axial location of the drill pipe), hole inclination angle, rate of penetration (ROP) (e.g., with respect to ROP data (121))., measuring, by use of at least one sensor, particle size of particles generated by the rock drilling operation (para. [0019], “an HCE value is determined using drilling fluid data (e.g., drilling fluid data A (111)), drilling operation data (e.g., drilling operation data B (112)), and/or well data (e.g., well data C (113))… Drilling operation data may include rate of penetration (ROP) of a drill string, average cutting size, cutting particle sizes, etc. Well data may include hole inclination data, pipe diameter data, etc. Likewise, HCE values may be associated with different thresholds for describing various cleaning states of a well.” Examiner notes that the particle size of the rock cuttings is a variable in determining hole cleaning where HCE is hole cleaning efficiency. See also para. [0045]—[0048]), wherein the measured particles are associated with a point in time when the specific set of drilling parameters are used (para. [0035], “FIG. 3 illustrates an example of monitoring hole cleaning states at various depth intervals of a wellbore and through a user interface in accordance with one or more embodiments… an automated drilling manager may generate a real-time HCE report (361) for depth interval A (332)… Based on this HCE data, an automated drilling manager may perform an HCE analysis function (370). In this example, the HCE analysis function (370) determines that the current and predicted HCE values (362, 364, 365) indicate a critical level of a hole cleaning state of the wellbore.”; para. [0049], “FIG. 6A shows a software application that collects drilling operation data and drilling fluid data with respect to depth in a drilling operation.”) Examiner notes that while drilled cuttings are inherently associated with a specific depth at which they are generated and associated operational parameters, the reference to Al-Malki both recognizes and monitors this relationship as described throughout the reference including the discussion at para. [0035]); in response to the measured particle size fulfilling a predefined criterion, physically adjusting in real-time at least one drilling parameter of the specific set of drilling parameters during the ongoing rock drilling operation (para. [0014], “real-time changes to hole cleaning efficiency may be detected based on changes within a drilling operation, e.g., as a wellbore passes through different formations in the subsurface. Likewise, by detecting the current hole cleaning state of a wellbore in real-time, retreatment operations may be also be automated, e.g., by adjusting various drilling fluid properties to account for changes in cutting particle sizes.”; see FIG. 4 where ROP is adjusted based on hole cleaning efficiency values which are calculated using cuttings size).
Regarding claim 2, Al-Malki discloses wherein the steps of measuring particle size and adjusting in real-time at least one drilling parameter are performed continuously in a control loop during the rock drilling operation (para. [0014], “by detecting the current hole cleaning state of a wellbore in real-time, retreatment operations may be also be automated, e.g., by adjusting various drilling fluid properties to account for changes in cutting particle sizes.”; see also para. [0017]—[0019]; see also FIG. 4 and 5).
Regarding claim 3, Al-Malki discloses wherein physically adjusting in real-time the at least one drilling parameter comprises increasing or decreasing the at least one drilling parameter in dependence on the measured particle size (see para. [0048], “FIG. 5, a hole cleaning model E (520) obtains various inputs based on drilling fluid data (i.e., ECD values (502), funnel viscosity data (503), average cutting size data (505), PV data (508), YP data (509)) and drilling operation data (i.e., current ROP data (501), hole inclination data (504), pipe diameter data (506), hole diameter data (507))… Based on these inputs, the hole cleaning model E (520) may determine multiple HCE values (530) for analyzing the drilling fluid circulating through the wellbore as well as making adjustments to drilling parameters with respect to one or more drilling operations.”), thereby obtaining an updated set of drilling parameters and applying the updated set of drilling parameters during the ongoing rock drilling operation (as disclosed by Al-Malki throughout the reference, the hole cleaning efficiency evaluation and associated operational adjustments, which is based on the cutting size, occurs in real-time throughout the duration of the drilling operation).
Regarding claim 4, Al-Malki discloses evaluating the rock drilling performance as a consequence of the updated set of drilling parameters (an example evaluation is performed by the hole cleaning efficiency model described in para. [0048]—[0051]); by use of the evaluation, obtaining a correlation between the updated set of drilling parameters, the rock drilling performance and the measured particle size (the hole cleaning efficiency model provides a relationship between input variables such as cutting size [see para. [0048]) and hole cleaning requirements/thresholds (see para. [0050]); and using said correlation for determining a need to update a level of adjustment in dependence on the measured particle size (the operational drilling parameters are updated according to the determination regarding the hole cleaning efficiency).
Regarding claim 5, Al-Malki discloses wherein the adjustable set of drilling parameters comprises at least one of the following: a rotational speed of a drilling tool of the drilling machine, a static load exerted on a drilling tool of the drilling machine, a percussion force exerted on a drilling tool of the drilling machine, a percussion frequency, a feed rate of a drilling tool of the drilling machine (see FIG. 4 where rate of penetration is adjusted based on the evaluation of the hole cleaning efficiency [HCE] model), a parameter indicative of a particle removal rate of particles generated by the rock drilling operation (cuttings slip velocity, see para. [0043]—[0044]), a flushing parameter, including flushing pressure and/or flushing speed (para. [0014], “by detecting the current hole cleaning state of a wellbore in real-time, retreatment operations may be also be automated, e.g., by adjusting various drilling fluid properties to account for changes in cutting particle sizes.”), a torque exerted on a drilling tool of the drilling machine.
Regarding claim 7, Al-Malki discloses wherein measuring the particle size of particles generated by the rock drilling operation comprises using a time delay parameter indicative of a difference between the point in time when the specific set of drilling parameters are used and when the measurement of particle size is performed (cuttings velocity and/or cuttings slip velocity; see para. [0043]—[0044]. The velocity of the cuttings and the carrying capacity of the drilling fluid shows whether or not the drilling fluid is effectively cleaning the cuttings as they are generated), wherein the time delay parameter is used for associating the measured particles with the point in time when the specific set of drilling parameters are used para. [0035], “FIG. 3 illustrates an example of monitoring hole cleaning states at various depth intervals of a wellbore and through a user interface in accordance with one or more embodiments… an automated drilling manager may generate a real-time HCE report (361) for depth interval A (332)… Based on this HCE data, an automated drilling manager may perform an HCE analysis function (370). In this example, the HCE analysis function (370) determines that the current and predicted HCE values (362, 364, 365) indicate a critical level of a hole cleaning state of the wellbore.”; para. [0049], “FIG. 6A shows a software application that collects drilling operation data and drilling fluid data with respect to depth in a drilling operation.”) Examiner notes that while drilled cuttings are inherently associated with a specific depth at which they are generated and associated operational parameters, the reference to Al-Malki both recognizes and monitors this relationship as described throughout the reference including the discussion at para. [0035]).
Regarding claim 8, Al-Malki discloses wherein the time delay parameter is variable in dependence on a current drilling depth during the ongoing drilling operation (as described in para. [0044]—[0046], and as described in Equation 6, Equation 7, and Equation 8 the cuttings velocity and the chip slip velocity are dependent on variables including hole depth, hole diameter, apparent viscosity of the drilling fluid, and rate of penetration).
Regarding claim 9, Al-Malki discloses wherein the predefined criterion is associated with a type of rock in which the ongoing drilling operation is performed (para. [0014], “real-time changes to hole cleaning efficiency may be detected based on changes within a drilling operation, e.g., as a wellbore passes through different formations in the subsurface. Likewise, by detecting the current hole cleaning state of a wellbore in real-time, retreatment operations may be also be automated, e.g., by adjusting various drilling fluid properties to account for changes in cutting particle sizes.”; para. [0049], “a user device or a control system in a well system may automatically determine an adjusted ROP value that satisfies one or more drilling parameters in addition to a specified HCE value, e.g., based on a formation type..”; See also para. [0030]—[0035] which discusses gathering lithological data and assessing the hole cleaning efficiency based on wellbore intervals).
Regarding claim 10, Al-Malki discloses wherein the predefined criterion is associated with the specific set of drilling parameters (para. [0035], “FIG. 3 illustrates an example of monitoring hole cleaning states at various depth intervals of a wellbore and through a user interface in accordance with one or more embodiments… an automated drilling manager may generate a real-time HCE report (361) for depth interval A (332)… Based on this HCE data, an automated drilling manager may perform an HCE analysis function (370). In this example, the HCE analysis function (370) determines that the current and predicted HCE values (362, 364, 365) indicate a critical level of a hole cleaning state of the wellbore.”; para. [0049], “FIG. 6A shows a software application that collects drilling operation data and drilling fluid data with respect to depth in a drilling operation.”; para. [0050], “an automated manager initiates an adjustment to current ROP value in response to determining that the current ROP values fails to satisfy one or more predetermined thresholds. Examples of predetermined thresholds may correspond to different ranges of HCE values that represent a clean hole (i.e., a clean hole threshold), a critical range approaching problems with a drilling operations (i.e., a critical interval threshold), and/or a problem range that corresponds to dangerous conditions for a drilling operations (i.e., a problem interval threshold).” Examiner notes that while drilled cuttings are inherently associated with a specific depth at which they are generated and associated operational parameters, the reference to Al-Malki both recognizes and monitors this relationship as described throughout the reference.
Regarding claim 12, Al-Malki discloses [a] control system (control system 244, see FIG. 2, 4, 5, and 7) for real-time adjustment of at least one drilling parameter during rock drilling by a drilling machine, wherein the drilling machine is configured to be operated with an adjustable set of drilling parameters which influence the rock drilling performance (para. [0014], “real-time changes to hole cleaning efficiency may be detected based on changes within a drilling operation, e.g., as a wellbore passes through different formations in the subsurface. Likewise, by detecting the current hole cleaning state of a wellbore in real-time, retreatment operations may be also be automated, e.g., by adjusting various drilling fluid properties to account for changes in cutting particle sizes.”), the control system comprising at least one sensor for measuring particle size of particles generated by a rock drilling operation of the drilling machine (sensor assembly 223; Al-Malki is taking measurements regarding the size and size distribution of the rock cuttings and therefore inherently has at least one sensor for performing the operation), wherein the control system is configured to perform: during an ongoing rock drilling operation when the drilling machine is operated with one specific set of drilling parameters of the adjustable set of drilling parameters (see para. [0017], “[w]ith respect to the drilling system, drilling fluid may circulate through a drill string for continuous drilling, e.g., drilling fluid A (181) and drilling fluid B (182) as shown in FIG. 1, in order to circulate through a wellbore (e.g., drilling fluid to wellbore (171)). In particular, the ability of the drilling fluid to carry drilled cuttings from a wellbore may be governed by several factors that relate to various drilling fluid properties (e.g., mud rheology, mud weight, etc.) and various drilling operation parameters (e.g., drilling parameters (122)) such as drill pipe rotary speed (RPM), pipe eccentricity (i.e. axial location of the drill pipe), hole inclination angle, rate of penetration (ROP) (e.g., with respect to ROP data (121))., measuring, by use of at least one sensor, particle size of particles generated by the rock drilling operation (para. [0019], “an HCE value is determined using drilling fluid data (e.g., drilling fluid data A (111)), drilling operation data (e.g., drilling operation data B (112)), and/or well data (e.g., well data C (113))… Drilling operation data may include rate of penetration (ROP) of a drill string, average cutting size, cutting particle sizes, etc. Well data may include hole inclination data, pipe diameter data, etc. Likewise, HCE values may be associated with different thresholds for describing various cleaning states of a well.” Examiner notes that the particle size of the rock cuttings is a variable in determining hole cleaning where HCE is hole cleaning efficiency. See also para. [0045]—[0048]), wherein the measured particles are associated with a point in time when the specific set of drilling parameters are used (para. [0035], “FIG. 3 illustrates an example of monitoring hole cleaning states at various depth intervals of a wellbore and through a user interface in accordance with one or more embodiments… an automated drilling manager may generate a real-time HCE report (361) for depth interval A (332)… Based on this HCE data, an automated drilling manager may perform an HCE analysis function (370). In this example, the HCE analysis function (370) determines that the current and predicted HCE values (362, 364, 365) indicate a critical level of a hole cleaning state of the wellbore.”; para. [0049], “FIG. 6A shows a software application that collects drilling operation data and drilling fluid data with respect to depth in a drilling operation.”) Examiner notes that while drilled cuttings are inherently associated with a specific depth at which they are generated and associated operational parameters, the reference to Al-Malki both recognizes and monitors this relationship as described throughout the reference including the discussion at para. [0035]); in response to the measured particle size fulfilling a predefined criterion, physically adjusting in real-time at least one drilling parameter of the specific set of drilling parameters during the ongoing rock drilling operation (para. [0014], “real-time changes to hole cleaning efficiency may be detected based on changes within a drilling operation, e.g., as a wellbore passes through different formations in the subsurface. Likewise, by detecting the current hole cleaning state of a wellbore in real-time, retreatment operations may be also be automated, e.g., by adjusting various drilling fluid properties to account for changes in cutting particle sizes.”; see FIG. 4 where ROP is adjusted based on hole cleaning efficiency values which are calculated using cuttings size).
Regarding claim 13, Al-Malki discloses a drilling machine (drilling rig 210)comprising the control system (control system 244 which is what the disclosure of Al-Malki is directed to). See FIG. 2
Al-Malki discloses the limitations of claim 15 where the method/algorithm (e.g., application 707) of Al-Malki (e.g., as depicted in FIG. 4) is executed on a computer (e.g., as depicted in FIG. 7, see also para. [0060]—[0070]).
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) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published US Patent Application to Al-Malki et al., hereinafter “Al-Malki” (US 20220251950 A1) as applied above to claim 1 and in further view of Published US Patent Application to Chen et al., hereinafter “Chen” (US 20190345060 A1).
Regarding claim 6, while Al-Makli discloses measuring the size and size distribution of the wellbore cuttings, Al-Malki may not disclose the specific method used to perform the measurements. However, Chen, which is in the same field of endeavor as the instant application insofar as it is directed to measurements associated with drill cuttings, teaches the deficient limitation.
For example, Chen teaches “Generally drill cuttings represent the geology of the formations in which the wellbores are drilled and the drilling fluids used to return the cuttings to surface… a characterization of the drill cuttings can be performed to determine the nature and properties of the drill cuttings. Typical characterizations include various techniques. By way of example, such techniques may include but are not limited to Elemental Dispersive Spectrometry (EDS) to determine the elemental composition and concentrations, X-ray powder diffraction (XRD) to determine the phase, crystal structure, lattice parameters or inter-planar distances and to quantify the crystallized mineral species present, assay of particle size distribution (PSD) by laser diffraction to determine the percentages of particles falling into different size ranges, analysis for Total Organic Carbon (TOC) using conventional measurement techniques to determine organic carbon and Fourier Transform Infrared Spectroscopy (FITR) following a liquid-solid extraction process to determine the amount of oil and grease, which encompasses a broad family of petroleum hydrocarbon constituents.” (Chen para. [0045]—[0046]). As disclosed by Chen, the foregoing techniques, which read on the limitations of claim 6, constitute the typical manner in which drill cuttings are analyzed.
As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used one of the specific cuttings analysis methods set forth in Chen, as the analysis method used in the hole cleaning efficiency model of Al-Malki. While Al-Malki may not specify the method used to analyze the drill cuttings, it would be obvious to use a typical and/or common method.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published US Patent Application to Al-Malki et al., hereinafter “Al-Malki” (US 20220251950 A1) as applied above to claim 1 and in further view of Issued US Patent to Jamieson et al., hereinafter “Jamieson” (US 12136054 B2).
Al-Malki may not disclose the limitation of claim 11 where assessments and determinations made on a first drilled well are applied to a subsequently drilled well; however, Jamieson, which is in the same field of endeavor as the instant application insofar as it is directed to optimizing operational drilling parameters while accounting for rock cutting size, teaches the deficient limitation. For example, Jamieson teaches “pressure and temperature measurements obtained during drilling of the previous well may be used as inputs to the hydraulics model for the subsequent well. Specifically, certain relationships between cutting size, ROP, WOB and RPM may be established and recorded upon drilling of the previous well, and may be used as input for the hydraulics model for the subsequent well.” (Col. 34, Line 63 — Col. 35, Line 3).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have utilized the empirical-based knowledge from a previous operation to improve the performance of a future operation as taught by Jamieson where both Jamieson and Al-Malki are directed to similar methods.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Published US Patent Application to Holt et al. (US 20240263553 A1) which teaches:
“[w]ellbore objects can include cuttings, cavings, fluid, retained fluid, rubble, metal, plastic, rubber lost circulation material and others.” (Holt, para. [0010]);
“measurements of the size, shape, color, and volume of objects over time is captured. These captured measurements can be used to determine an average, which is used to establish a baseline. Changes from the baseline may trigger the systems to request an operational parameter change via a control signal.” (Holt, para. [0035]);
“where the predictive model indicates that a certain size, shape, volume, number of cuttings, etc. should be present during drilling, the wellbore control engine 404 may compare such indication against the monitored value (using image data, for example). Where a deviation is present (e.g., where such deviation is greater than a preset value), the wellbore control engine 404 may request to control one or more drilling equipment and/or request a change to one or more drilling parameters.” (para. [0106]).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/U.L.N./Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676
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