DETAILED ACTION
Notice of 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 .
This office action is a Non-final Rejection to address claims that raise 112(b) issues which were not addressed in the previous office action.
Response to Arguments
Claim Rejections - 35 USC § 101
Claims 1, 11 and 16, the amendment of “controlling one or more parameters of a drilling system having the selected drilling system component, wherein controlling the one or more parameters comprises selecting a location to drill a wellbore, drilling the wellbore, varying a weight or a torque on a drill bit for drilling the wellbore, varying a drilling trajectory of the wellbore, varying a concentration or a flow rate of a fluid pumped into the wellbore, or any combination thereof…” do not overcome the rejection under 101. This limitation does not explicitly require a physical transformation/improvement to the drilling operation. The limitation recites “controlling the one or more parameters comprises selecting a location to drill a wellbore, drilling the wellbore..” The limitation of “selecting a location to drill” is an abstract idea because a person can mentally decide a location to drill. Furthermore, the step of “drilling the wellbore” amounts to “apply it” because this step merely includes instructions to implement an abstract idea which is analogous to “A method of assigning hair designs to balance head shape with a final step of using a tool (scissors) to cut the hair”. See In re Brown, 645 Fed. App'x 1014, 1017 (Fed. Cir. 2016) as discussed in MPEP 2106.05(f)(2).
The limitation of “varying a weight or a torque on a drill bit for drilling the wellbore… varying a concentration or a flow rate of a fluid pumped into the wellbore…” reflect a physical transformation to the drilling operation and is significantly more than the judicial exception; however, the claim does not require these limitations. The claim does not recite any improvement/physical change that reflects how the drilling operation is being performed differently as a result of the method. As such, the claim lacks improvement to the technology itself and further the amendments do not integrate the abstract idea into a practical application.
For the above reasons, the rejection to claims 1, 11 and 16 will be maintained.
Claim Rejections - 35 USC § 112(b)
The amendments to claims 12 and 15 overcomes the rejection of record; however, claim 12 is rejected below due to new reasons that were not addressed in the previous office action.
Claim Rejections - 35 USC § 102
Regarding claims 1, 11 and 16, the amendments to the claims overcome the rejection of record.
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 1-20 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 1-10 are directed to a method (process), claims 11-15 are directed to a computer system (machine) and claims 16-20 are directed to a non-transitory computer-readable medium (machine). 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.
Claims 1, 11 and 16 recite the abstract limitations of (or substantially similar to): “identifying the potential offset drilling runs based upon the subject drilling run, wherein the potential offset drilling runs are identified based upon a status of a drilling system component that is used to drill the subject drilling run; determining a score for each of the potential offset drilling runs; ranking the potential offset drilling runs based upon the score of each of the potential offset drilling runs; identifying a subset of the potential offset drilling runs based upon the ranking, wherein the potential offset drilling runs in the subset are most similar to the subject drilling run; performing a plurality of first comparisons of the drilling performance of the subject drilling run against drilling performances of the subset; selecting one of a plurality of drilling system components used in the subset based at least partially upon the first comparisons; controlling one or more parameters of a drilling system having the selected drilling system component, wherein controlling the one or more parameters comprises selecting a location to drill a wellbore…”, ” determining the score comprises determining parameter scores of a plurality of parameters, and determining a total score based upon the parameter scores, wherein determining the total score comprises aggregating the parameter scores, and wherein the parameter scores are weighted such that some of the plurality of parameters have higher potential values than others of the plurality of parameters…” ,
“determining a plurality of improvement scores, wherein each of the improvement scores corresponds to one of the first comparisons, and performing a second comparison of results of the first comparisons based upon the improvement scores, wherein the one of the drilling system components is selected based at least partially upon the second comparison; or the first comparisons are of the drilling performance of the drilling system component used in the subject drilling run against the drilling performances of the drilling system components used in the subset, and wherein the first comparisons comprise a distance drilled versus an average rate of penetration (ROP), a bit dull grade, a percentage of drilled footage spent steering the drill bit, and non-productive time.” (claim 11) and “determining a plurality of improvement scores, wherein each of the improvement scores corresponds to one of the first comparisons, and performing a second comparison of results of the first comparisons based upon the improvement scores, wherein the one of the drilling system components is selected based at least partially upon the second comparison; or the first comparisons are of the drilling performance of the drilling system component used in the subject drilling run against the drilling performances of the drilling system components used in the subset, and wherein the first comparisons comprise a distance drilled versus an average rate of penetration (ROP), a bit dull grade, a percentage of drilled footage spent steering the drill bit, and non-productive time.” (claim 16).
These limitations, as drafted, are a process 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 mental processes. The mere recitation of generic computing elements does not take the claim out of the mental process grouping. Mental processes cover concepts performed in the human mind (including an observation, evaluation, judgment, opinion) as well as decision-making steps which encompasses the limitations listed above. The claims do not require any action as currently worded. Thus, the claims recite abstract ideas.
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.
Claim 1 recites the additional limitation of “drilling runs”. Claim 11 recites the additional limitations of “drilling run”, “a computer system” and “one or more processors”. Claim 16 recites the additional limitation of “drilling run” and “one or more processors of a computing system”.
The recitation of “drilling run” includes an additional element whose function is recited at a high level of generality and are generally linking the use of the judicial exception to a particular technological environment or field of use. Furthermore, the elements of “a computer system” and “one or more processors” mount to insignificant extra-solution activity.
Accordingly, in combination, these additional elements do not integrate the abstract ideas into practical applications because they do not impose any meaningful limits on practicing the abstract ideas.
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, the recitation of “drilling run” merely links the use of the judicial exception to a particular technical environment or field of use. Thus, even when viewed as an ordered combination, nothing in the claim(s) add significantly more (i.e. an inventive concept) to the abstract idea. Furthermore, as taught by Affinity Labs of Texas v. DirecTV, LLC, 838 F.3d 1253, 120 USPQ2d 1201 (Fed. Cir. 2016), additional elements of “cellular telephones” did limit the use of the abstract idea of “providing out-of-region access to regional broadcast content”, however the court explained that this type of limitation merely confines the use of the abstract idea to a particular technological environment (cellular telephones) and thus fails to add an inventive concept to the claims.
Regarding the recitation of a “processor” and “computing system”, these elements merely amount to “apply it.” The “processor” and “computing system’ contain mere instructions to implement the abstract ideas on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer. Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984.
Thus, even when viewed as an ordered combination, nothing in the claims add
significantly more (i.e. an inventive concept) to the abstract idea.
Claims 2-10, 12-15, 17 and 18 are further directed to abstract ideas. Nothing in the claims precludes the limitations from practically being performed in the human mind, or by a human using pen and paper. Therefore, similar to claims 1, 11 and 16, these claims do not provide a practical application of the abstract idea, and are not significantly more.
Claim 19 recites limitations which are directed to “apply it” because the claim contains mere instructions to implement an abstract idea which is analogous to “A method of assigning hair designs to balance head shape with a final step of using a tool (scissors) to cut the hair”. See In re Brown, 645 Fed. App'x 1014, 1017 (Fed. Cir. 2016) as discussed in MPEP 2106.05(f)(2). Therefore, similar to claim 16, this claim does not provide a practical application of the abstract idea, and is not significantly more.
Claim 20 recites “generating or transmitting a signal that instructs or cause a next drilling run to be performed using the selected drilling system component” which is well-understood, routine and conventional because this step merely requires transmission of data and does not integrate the abstract idea into a practical application. See Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362. Therefore, similar to claim 16, this claim does not provide a practical application of the abstract idea, and is not significantly more.
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 11-15 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.
Regarding claims 11 and 12, the limitation of “wherein the predetermined amount of time is 2 hours if the drill bit comprises a polycrystalline diamond cutter (PDC), and/or wherein the predetermined amount of time is 7 hours and the predetermined amount of damage comprises a bit dull grade that is less than 25% worn.” is indefinite due to several reasons. It’s unclear if the claims require both the “predetermined amount of time” AND “predetermined amount of damage” or if only one of these parameters are required. Furthermore, the limitation “2 hours if the drill bit comprises a polycrystalline diamond cutter (PDC), and/or wherein the predetermined amount of time is 7 hours” is confusing due to the “and/or” language. A single “predetermined amount o time” cannot simultaneously be both 2 hours and 7 hours. Using “and/or” created confusion as to the true scope of the claim. For the above reasons, the metes and bounds of the claims are indefinite.
Claims 13-15 are also rejected under this statue as the claims depend from claim 11.
Allowable Subject Matter
Claims 1-20 are not allowed due to the rejections above; however claims 1, 11 and 16 have not been rejected using prior art.
Regarding claims 1, Benson is silent regarding determining the score comprises determining parameter scores of a plurality of parameters, and determining a total score based upon the parameter scores, wherein determining the total score comprises aggregating the parameter scores, and wherein the parameter scores are weighted such that some of the plurality of parameters have higher potential values than others of the plurality of parameters; or determining a plurality of improvement scores, wherein each of the improvement scores corresponds to one of the first comparisons, and performing a second comparison of results of the first comparisons based upon the improvement scores, wherein the one of the drilling system components is selected based at least partially upon the second comparison.
It would not be obvious to be modify Benson with the above features as it would require significant redesign to the method of Benson. Furthermore, no prior art was found, alone or in combination with Benson, to teach the above features. Therefore, such modifications would be based on impermissible hindsight.
Regarding claim 11, Benson is silent regarding :determining the score comprises determining parameter scores of a plurality of parameters, and determining a total score based upon the parameter scores, wherein determining the total score comprises aggregating the parameter scores, and wherein the parameter scores are weighted such that some of the plurality of parameters have higher potential values than others of the plurality of parameters; or determining that the subject drilling run is valid by determining that the subject drilling run has drilled footage on a bit record from a well with a known geographic location, and determining the status of the drilling system component, wherein the drilling system component comprises the drill bit, a cutter for the drill bit, a drive system, a rotary steerable system (RSS), a motor, a drilling fluid, or a combination thereof, wherein, when the drilling system component comprises the drill bit, determining the status comprises determining that the drill bit used to drill the subject drilling run is not a green drill bit, wherein the green drilling bit has been used to drill for less than a predetermined amount of time and has less than a predetermined amount of damage, wherein the predetermined amount of time is 2 hours if the drill bit comprises a polycrystalline diamond cutter (PDC), and/or wherein the predetermined amount of time is 7 hours and the predetermined amount of damage comprises a bit dull grade that is less than 25% worn.
It would not be obvious to be modify Benson with the above features as it would require significant redesign to the system of Benson. Furthermore, no prior art was found, alone or in combination with Benson, to teach the above features. Therefore, such modifications would be based on impermissible hindsight.
Regarding claim 16, Benson is silent regarding determining a plurality of improvement scores, wherein each of the improvement scores corresponds to one of the first comparisons, and performing a second comparison of results of the first comparisons based upon the improvement scores, wherein the one of the drilling system components is selected based at least partially upon the second comparison; or the first comparisons are of the drilling performance of the drilling system component used in the subject drilling run against the drilling performances of the drilling system components used in the subset, and wherein the first comparisons comprise a distance drilled versus an average rate of penetration (ROP), a bit dull grade, a percentage of drilled footage spent steering the drill bit, and non-productive time.
It would not be obvious to be modify Benson with the above features as it would require significant redesign to the system of Benson. Furthermore, no prior art was found, alone or in combination with Benson, to teach the above features. Therefore, such modifications would be based on impermissible hindsight.
Conclusion
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/LAMIA QUAIM/Examiner, Art Unit 3676
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