DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed 16 April 2026 with regards to the 101 rejections have been fully considered but they are not persuasive. Applicant argues that because the specifications identifies specific technical problems in the drilling field and then discloses a specific technical solution the claims that include the limitations of the technological improvement are allowable over 101. Applicant further argues that the amended claims include real world (i.e., physical world) tie-ins. Examiner respectfully disagrees. The amended claims include contingent limitations. Under 101 analysis all possible contingencies need to overcome the 101 rejection. In the case of claim 1, when the BDI is within the predetermined range a determination is made but no physical action is taken using the abstract idea. In the case of claims 7 and 22, the contingent limitation involving the physical world only occurs if the BDI is outside of the predetermined range. Therefore, when the BDI is inside of the predetermined range the limitation is not required under BRI. With respect to claim 22, Examiner further notes the contingent physical action is not specific since the stop/slow is merely “based on” the BDI and does not actually require specific abstract idea.
Applicant’s arguments with respect to claims 7, 16-17, and 22 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The 112(b) rejections are withdrawn due to amendments.
Claim Objections
Claim 8 is objected to because of the following informalities: A’ and ΔP are not previously defined as a constant and differential pressure. Appropriate correction is required.
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 1-14, 16-17, 19-22, and 24 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 Subject Matter Eligibility Test 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 1-14, 16-17, 19-22, and 24 are directed to a method (process), a system (machine or manufacture), and a non-transitory medium (manufacture), respectively. 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 Subject Matter Eligibility Test is a two-prong inquiry. In Prong One, examiners evaluate whether the claim recites a judicial exception.
Claim 1 recites abstract limitations, including: determining a first apparent rock strength of a formation based on the WOB; determining a second apparent rock strength of the formation based on the TOB or differential pressure; determining a bit damage indicator (“BDI”) correlated with the wear of the drill bit based on a relationship between the first apparent rock strength based on WOB and the second apparent rock strength based on TOB or differential pressure; and when the BDI is within a predetermined range, determining that the drill bit is not worn or damaged; and when the BDI falls outside of the predetermined range, determining that the drill bit is worn or damaged and removing the drill bit from service.”
Examiner notes that “removed from service” is not further defined in the specifications and therefore could be the mental process of deciding to remove the bit from service. Examiner further notes, that even if the limitation of “removing the drill bit from service” were defined the limitation is part of a contingent limitation. When a contingent limitation is present then all contingencies must contain patentable subject matter under 101. In the case of claim 1, the two contingencies are (1) the BDI being within a predetermined range and (2) the BDI being outside of the predetermined range. Currently, both contingencies are abstract as discussed above. In order to overcome the 101 rejection both contingencies must overcome the 101 rejection.
Claim 7 recites abstract limitations, including: determining a bit damage indicator (“BDI”) indicating the wear of the drill bit, the BDI being determined by a ratio between the WOB and the TOB or by a ratio between the WOB and the differential pressure.”
Claim 22 recites the abstract limitations, including: determine a bit damage indicator (“BDI”) indicating a level of wear of the drill bit, the BDI being determined by a ratio between the WOB and the TOB; determine that the drill bit is worn or damaged when the BDI falls outside a predetermined range.”
These limitations, as drafted, are a process that, under its broadest reasonable interpretation, represent mathematical relationships, mathematical formulas or equations, and/or mathematical calculations and are therefore mathematical concepts. The mere recitation of a generic computer does not take the claim out of the mathematical concepts grouping. Thus, the claim recites an abstract idea.
If the claim recites a judicial exception in step 2A Prong One, the claim requires further analysis in step 2A Prong Two. In step 2A Prong Two, examiners evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
Claims 1 and 7 recite the additional elements of: drilling into a formation using the drill bit of the drilling system; obtaining a weight-on-bit (“WOB”) from sensors of the drilling system; and obtaining a torque-on-bit (“TOB”) or differential pressure from the sensors of the drilling system.
Claim 7 also recited the additional limitation of “when the BDI falls outside of a predetermined range indicating the drill bit is worn or damaged, slowing or stopping the drilling system.” However, this limitation is a contingent limitation that is not required (i.e., the BDI can fall within the predetermined range) under BRI. Therefore, no further analysis is performed in relation to the BDI falls outside of a predetermined range.
Claim 22 recites the additional elements of: a drill string; a drill bit disposed at a distal end of the drill string; a rig disposed above a surface of a formation and at a proximal end of the drill string; a drilling motor configured to rotate the drill bit at the distal end of the drill string; one or more sensors operable to measure weight-on-bit (“WOB”) and torque-on-bit (“TOB”) associated with the drill bit; a two-way telemetry unit communicatively coupled to the one or more sensors; and a surface control unit communicatively coupled to the two-way telemetry unit, the surface control unit comprising a processor configured to execute machine-readable instructions stored on a data storage device, which when executed cause the surface control unit to: obtain the WOB from the one or more sensors via the two-way telemetry unit; obtain the TOB from the one or more sensors via the two-way telemetry unit.
Claim 22 also recited the additional limitation of “stop or slow the drilling motor based on the determination that the drill bit is worn or damaged.” However, this limitation is a contingent limitation that is not required under BRI since it is a part of the contingent step of “determining that the bit is worn or damaged when the BDI falls outside a predetermined range” (i.e., the BDI can fall within the predetermined range). Therefore, no further analysis is performed in relation to the BDI falls outside of a predetermined range. Examiner does note that the step of “stopping/slowing” merely amounts to “apply it” and 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 MPEP 2106.05(f)(1)) due to the use of the phrase “based on” which does not specifically integrate the abstract idea into a practical application.
“[D]rilling into a formation using the drill bit of the drilling system;” “obtaining a weight-on-bit (“WOB”) from sensors of the drilling system” and “obtaining a torque-on-bit (“TOB”) or differential pressure from the sensors of the drilling system” amount to insignificant extra-solution activity (i.e., activity incidental to the process that is merely a nominal or tangential addition to the claim, see MPEP 2106.05(g)).
The additional elements of: a drill string; a drill bit disposed at a distal end of the drill string; a rig disposed above a surface of a formation and at a proximal end of the drill string; a drilling motor configured to rotate the drill bit at the distal end of the drill string; one or more sensors operable to measure weight-on-bit (“WOB”) and torque-on-bit (“TOB”) associated with the drill bit; a two-way telemetry unit communicatively coupled to the one or more sensors; obtain the WOB from the one or more sensors via the two-way telemetry unit; obtain the TOB from the one or more sensors via the two-way telemetry unit amount to insignificant extra-solution activity (i.e., activity incidental to the process that is merely a nominal or tangential addition to the claim, see MPEP 2106.05(g)).
The function of the surface control unit and processor are recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using generic computer components.
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 in step 2A Prong Two, 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 “drilling into a formation using the drill bit of the drilling system” amounts to insignificant extra-solution activity as Hinz (US 2019/0249498 see ¶ [0001]; “In conventional wellbore drilling in the oil and gas industry, a drill bit is mounted on the end of a drill string…to drill through the subterranean formation.”) discloses such activities are well-known, routine, and conventional.
As discussed above a drill string; a drill bit disposed at a distal end of the drill string; a drilling motor configured to rotate the drill bit at the distal end of the drill string amounts to insignificant extra-solution activity as Hinz (US 2019/0249498 see ¶ [0001]) discloses such activities are well-known, routine, and conventional.
As discussed above a rig disposed above a surface of a formation and at a proximal end of the drill string amounts to insignificant extra-solution activity as Sonnier (US 2013/0146304 see ¶ [0002-03]) discloses such activities are well-known, routine, and conventional.
As discussed above a two-way telemetry unit communicatively coupled to the one or more sensors amounts to insignificant extra-solution activity as Perrin (US 2017/0268299 see ¶ [0030]) discloses such activities are well-known, routine, and conventional.
As noted above, obtaining a weight-on-bit (“WOB”) from sensors of the drilling system via a two-way telemetry unit and obtaining a torque-on-bit (“TOB”) or differential pressure from the sensors of the drilling system via a two-way telemetry unit is considered insignificant extra-solution activity as the limitation does not amount to more than mere data gathering and transmission. As noted in Electric Power Group, selecting information, based on types of information and availability of information for collection, analysis, and display is considered insignificant extra-solution activity (see MPEP 2106.05(g)). Additionally, the sensor(s) is recited at a high level of generality. Given the generality of the data collection, the limitation does not contain significantly more to provide a practical application (see MPEP 2106.05(g)).
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 2-6, 8-14, and 21 further recite:
the BDI is calculated according to the following equation:
B
D
I
=
C
C
S
W
-
C
C
S
T
C
C
S
T
wherein CCSW is the first apparent rock strength and CCST is the second apparent rock strength;
CCSW is calculated according to the following equation:
C
C
S
W
=
K
120
π
R
P
M
W
O
B
D
R
O
P
wherein K is a constant, D is a diameter of the drill bit, and ROP is a rate of penetration of the drill bit;
the CCST is calculated according to the following equation:
C
C
S
T
=
480
R
P
M
T
O
B
E
f
f
D
2
R
O
P
wherein D is a drill bit diameter, RPM is revolutions per minute, ROP is a rate of penetration, and Eff is an efficiency factor;
the CCST is calculated according to the following equation:
C
C
S
T
=
M
120
π
R
P
M
∆
P
D
2
R
O
P
wherein M is a constant, D is a drill bit diameter, RPM is revolutions per minute, ROP is a rate of penetration, and ΔP is a differential pressure of a drilling motor of the drilling system;
calibrating the BDI over an initial period of a drilling operation;
the BDI is calculated according to one or both of the following equations:
B
D
I
=
A
'
W
O
B
T
O
B
-
1
a
n
d
B
D
I
=
A
'
W
O
B
∆
P
-
1
;
calibrating the BDI over an initial period of a drilling operation;
calibrating the BDI comprises adjusting the constant A' such that the BDI is set to zero during the initial period;
the initial period is based on an initial drill bit penetration of 100 feet or less;
the initial period is based on an initial drill bit penetration of 50 feet or less;
the initial period is based on an initial drill bit penetration time of 60 minutes or less;
the initial period is based on an initial drill bit penetration time of 30 minutes or less;
the BDI is determined after a drilling operation is completed which merely narrows the previously recited abstract idea limitations.
Claim 16 further recites “notifying an operator that the drill bit is damaged based on the determination that the drill bit is damaged.” This is insignificant extra solution activity. As noted in Electric Power Group, selecting information, based on types of information and availability of information for collection, analysis, and display is considered insignificant extra-solution activity (see MPEP 2106.05(g)).
Claim 17 further recites “notifying the operator comprises providing an indication on a user interface device of a surface control unit of the drilling system.” This is insignificant extra solution activity. As noted in Electric Power Group, selecting information, based on types of information and availability of information for collection, analysis, and display is considered insignificant extra-solution activity (see MPEP 2106.05(g)). Furthermore, the functions of the user interface device is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component and mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Claim 19 further recites “the WOB and the TOB are received at a downhole controller unit, and wherein the method further comprises storing the WOB and the TOB on a data storage device of the downhole controller unit.” Receiving and storing data is considered insignificant extra-solution activity as the limitations amount to selecting a particular data source or type of data to be manipulated and transmitting/receiving the data. As noted in Electric Power Group, selecting information, based on types of information and availability of information for collection, analysis, and display is considered insignificant extra-solution activity (see MPEP 2106.05(g)). Furthermore, the functions of downhole controller unit and data storage device are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component and mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Claim 20 further recites “the BDI is determined by the downhole controller unit without communication to a surface control unit.” This merely narrows the previously recited abstract idea. Furthermore, the functions of downhole controller unit is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component and mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Claim 24 further recites “the surface control unit is configured to notify an operator that the drill bit is damaged based on the determination that the drill bit is damaged.” This is insignificant extra solution activity. As noted in Electric Power Group, selecting information, based on types of information and availability of information for collection, analysis, and display is considered insignificant extra-solution activity (see MPEP 2106.05(g)). Furthermore, the functions of the user interface device is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component and mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Claim Rejections - 35 USC § 102
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.
Claim 7 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Zijsling (US 4,926,950).
With respect to claim 7: Zijsling discloses a method of monitoring wear of a drill bit of a drilling system, the method comprising:
drilling into a formation using the drill bit (Fig. 1) of the drilling system (Claim 1, Col. 1, lines 54-57);
obtaining a weight-on-bit (“WOB”) from sensors of the drilling system (Col. 3, lines 30-44);
obtaining a torque-on-bit (“TOB”) from sensors of the drilling system (Col. 3, lines 30-44);
determining a bit damage indicator (“BDI”) indicating the wear of the drill bit, the BDI being determined by a ratio between the WOB and the TOB (Col. 3, lines 23-34; Claim 1) or by a ratio between the WOB and the differential pressure, and
when the BDI falls outside of a predetermined range indicating that the drill bit is worn or damaged (Claim 1; Col. 3, lines 38-44; the decision to replace means the BDI is outside the predetermined range), slowing or stopping the drilling of the drilling system (Col. 3, lines 38-44; replacing the bit requires slowing/stopping the drilling).
Claim Rejections - 35 USC § 103
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.
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Zijsling as applied to claim 7 above, and further in view of Samuel (US 2021/0363871).
With respect to claim 16: Zijsling discloses all aspects of the claimed invention except for notifying an operator that the drill bit is damaged based on the determination that the drill bit is damaged. Samuel teaches it is known in the art to notify an operator that a drill bit is damaged based on a determination that the drill bit is damaged (¶ [0032]). It would be obvious to one having ordinary skill in the art before the effective filing date to combine the notification of Samuel with the invention of Zijsling with a reasonable expectation of success since doing so would allow the operator to make better decisions and stop/adjust operations (Samuel ¶ [0032]).
With respect to claim 17: Samuel from the combination of Zijsling and Samuel further teaches notifying the operator comprises providing an indication on a user interface device of a surface control unit of the drilling system (¶ [0031-32]).
Claims 22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (US 2025/0361806) in view of Zijsling (US 4,926,950) and Samuel (US 2021/0363871).
With respect to claim 22: Chen discloses a drilling system (100; Fig. 1) comprising:
a drill string (180);
a drill bit (112) disposed at a distal end of the drill string (¶ [0029-30]; Fig. 1);
a rig (110, 152; ¶ [0030]; Fig. 1) disposed above a surface (120) of a formation (108 and at a proximal end of the drill string (¶ [0029-30]; Fig. 1);
a drilling motor (116; ¶ [0030]; Fig. 1)) configured to rotate the drill bit at the distal end of the drill string (¶ [0030]; Fig. 1);
one or more sensors (¶ [0021-22, 0030]) operable to measure weight-on-bit (“WOB”) and torque-on-bit (“TOB”) associated with the drill bit (¶ [0021-22]); and
a surface control unit (170; ¶ [0031]), the surface control unit comprising a processor (201; ¶ [0031-32]) configured to execute machine-readable instructions stored on a data storage device (207; ¶ [0031-32]), which when executed cause the surface control unit to:
obtain the WOB from the one or more sensors (¶ [0021-22]);
obtain the TOB from the one or more sensors (¶ [0021-22]);
determine a bit damage indicator (“BDI”) indicating a level of wear of the drill bit based on a relationship between the WOB and the TOB (306, 402; ¶ [0026, 0041, 0075]); and
determine that the drill bit is worn or damaged when the BDI falls outside a predetermined range (¶ [0078-79]).
Chen does not explicitly disclose a two-way telemetry unit communicatively coupled to one or more sensors and a surface control unit and the WOB and TOB are obtained from the sensors via the two-way telemetry unit, the relationship between the WOB and TOB is the BDI determined by a ratio between the WOB and TOB, and slowing/stopping drilling.
Zijsling teaches determining a bit damage indicator (“BDI”) indicating a level of wear of the drill bit (Col. 3, lines 23-34; Claim 1), the BDI being determined by a ratio between the WOB and the TOB (Col. 3, lines 23-34; Claim 1), and when the BDI falls outside of a predetermined range indicating that the drill bit is worn or damaged (Claim 1; Col. 3, lines 38-44; the decision to replace means the BDI is outside the predetermined range), slowing or stopping the drilling of the drilling system (Col. 3, lines 38-44; replacing the bit requires slowing/stopping the drilling; i.e., rotating the drill bit). It would be obvious to one having ordinary skill in the art before the effective filing date to substitute the BDI determination and response of Zijsling for that of Chen since doing so would perform the same predictable result of determining bit wear.
The combination of Chen and Zijsling does not explicitly disclose a two-way telemetry unit communicatively coupled to one or more sensors and a surface control unit and the WOB and TOB are obtained from the sensors via the two-way telemetry unit.
Samuel teaches a two-way telemetry unit (125, 264; ¶ [0024, 0028-29]) communicatively coupled to one or more sensors (127, 128, 227, 228; ¶ [0024, 0028-29])) and a surface control unit (144, 244; ¶ [0024, 0028-29]), and data is obtained from the sensors via the two-way telemetry unit (¶ [0024, 0028-29]).
It would be obvious to one having ordinary skill in the art before the effective filing date to combine the two-way telemetry unit of Samuel with the invention of Chen and Zijsling with a reasonable expectation of success since doing so would allow the two-way telemetry unit to perform its designed function of transmitting information between the downhole tools and the surface where the operator is located so data can be analyzed and adjustments can be made (Samuel ¶ [0024, 0028-29, 0032]).
With respect to claim 24: Samuel from the combination of Chen, Zijsling, and Samuel further teaches the surface control unit is configured to notify an operator that the drill bit is damaged based on the determination that the drill bit is damaged (¶ [0032]). It would be obvious to one having ordinary skill in the art before the effective filing date to combine the notification of Samuel with the invention of Chen, Zijsling, and Samuel with a reasonable expectation of success since doing so would allow the operator to make better decisions and stop/adjust operations (Samuel ¶ [0032]).
Allowable Subject Matter
Claims 1-6 are allowable over the prior art but stand rejected under 25 U.S.C. 101 as discussed above.
Claims 8-14 and 19-21 would allowable over the prior art if rewritten in independent form including all of the limitations of the base claim and any intervening claims but stand rejected under 25 U.S.C. 101 as discussed above.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTYN A HALL whose telephone number is (571)272-8384. The examiner can normally be reached M-F 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at (571) 272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISTYN A HALL/Primary Examiner, Art Unit 3672
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