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 .
Response to Arguments
Applicant’s arguments, filed June 9, 2026, have been fully considered.
Applicant has argued that the Double Patenting rejections have been overcome by the filing of a Terminal Disclaimer. Examiner disagrees, as the Terminal Disclaimer filed on July 2, 2026 is not proper. See below for additional details.
Applicant has argued that the objections to claims 4 and 19 are overcome by amendment. Examiner agrees, and has withdrawn the objections.
Regarding the rejections under 35 U.S.C. 112, applicant has argued that amending claims 1, 10, and 17 to positively recite “the fluid transfer device” has overcome the 112 issue. Examiner disagrees, and has reiterated the rejection for reasons discussed below in the 112 section of this Office Action.
Applicant has argued that the rejection of claims 1 and 10 regarding the phrase “generating one or more potential corrective actions” has been overcome by amending the claims to recite --generating a plurality of potential corrective actions.-- Examiner agrees, and has withdrawn this particular rejection. However, claim 17 remains rejected based on the same general issue. See explanation below in the 112 section of this Office Action.
Applicant has argued that the 112 rejections of claims 5, 9, 16, and 19 have been overcome by amendment. Examiner agrees, and has withdrawn the rejections of those claims.
Regarding the rejection under 35 U.S.C. 101, applicant argues against examiner’s position that the step of controlling the fluid transfer device to implement a “subsequent corrective action” does not involve a concrete physical change, and is thus a mental process (Remarks, Page 11, first paragraph under heading “Step 2A Prong One”). To support this point, applicant refers to the claim limitation “the first corrective action comprises at least one of increasing a drive frequency of the fluid transfer device, adjusting a choke position of the fluid transfer device, or reversing a rotational direction of an impeller of the fluid transfer device,” which “cannot be performed in the human mind” (Remarks, last four lines of Page 11). While examiner agrees that the cited steps cannot be performed in the human mind, these steps are related to the claimed first corrective action, not the subsequent corrective action. Thus, applicant’s reasoning is incorrect and examiner maintains that implementing the subsequent corrective action can be considered an abstract idea.
Regarding Step 2A, Prong Two, applicant argues that the transformation of the fluid transfer device (i.e. “increasing drive frequency,” etc.) is “linked to the remaining claimed steps. For example, the ‘first corrective action’ that is implemented in the above-cited step is first generated along with a plurality of potential corrective actions where ‘generating the plurality of potential corrective actions comprises: determining a severity associated with the event condition; inputting the severity of the event condition and a type of the event condition to a model of the system; and selecting, from an output of the model, the one or more potential corrective actions’” (Remarks, Page 13, middle paragraph). Examiner respectfully disagrees. The abstract steps do not have a “flow” that clearly leads from real-world data into the transformative corrective action. Many of the steps simply introduce an abstract idea and then discard it without connecting into the next step of the process. The steps of “determining a severity,” “inputting a severity,” “selecting,” and “identifying” are recited as steps that occur on their own without influencing the next step in the determination. For example, the severity of the event condition and the type of the event condition play no recited role in the eventual identification of the first corrective action. They are input into the model, but no other role for these parameters is ever recited. The identified first corrective action is not required to involve any of the abstract parameters. Thus, the method cannot be considered to integrate the abstract idea into a practical application if the method never actually uses the abstract ideas. The method simply arrives at “identifying a first corrective action” presumably without any need for the previous information. This is further complicated by the idea that method steps are, as a rule, not assumed to be performed in a particular order (MPEP 211.01, Section II) and by the fact that the claims are based on a conditional recitation, i.e. “determining whether the drilling, pipeline, or power quality equipment is experiencing an event condition,” leaving open the possibility that no event condition is occurring and no corrective action is needed at all. Thus, examiner maintains that the abstract ideas are not integrated into a practical application, and the claims remain rejected under 35 U.S.C. 101.
Regarding Step 2B, applicant has argued that “the claims recite a non-conventional and non-generic arrangement of components that advantageously enables the system to automatically implement a corrective action including at least one of ‘increasing a drive frequence [sic] of the fluid transfer device, adjusting a choke position of the fluid transfer device, or reversing a rotational direction of an impeller of the fluid transfer device’” (Remarks, Page 15, last paragraph of the section). Examiner respectfully disagrees. While it is true that the claims recite a system that automatically implements a corrective action, this corrective action—as recited—can simply be generated from whole cloth, without any concrete ties to gathered real-world data and determinations made by a computer. The claim recites that the computer makes determinations, but these determinations are effectively never used. Consider, most importantly, the step of “identifying a first corrective action of the plurality of potential corrective actions” which is performed in a standalone manner wherein none of the data or determinations that have previously been recited are taken into account. Thus, the claim cannot be considered to recite significantly more than the abstract ideas.
Regarding the previous prior art rejections under 35 U.S.C. 103, applicant has argued that the amendments to the claims overcome these rejections. Examiner agrees, and has withdrawn the rejections under 35 U.S.C. 103.
Terminal Disclaimer
The terminal disclaimer filed on July 2, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12,221,867 has been reviewed and is NOT accepted.
The disclaimer fee of $170 in accordance with 37 CFR 1.20(d) has not been submitted, nor is there any authorization in the application file to charge a specified Deposit Account or credit card.
This application was filed on or after September 16, 2012. The party identified in the terminal disclaimer is not the applicant of record. A request to change the applicant under 37 CFR 1.46(c) must be filed and must include an application data sheet specifying the applicant in the applicant information section and comply with 37 CFR 3.71 and 3.73. To be reconsidered, the terminal disclaimer must be filed with the request under 37 CFR 1.46(c).
Please refer to the Terminal Disclaimer review decision mailed August 7, 2026 for additional details.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-10, 12-17, 19, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,221,867. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are broader than those in the ‘867 patent and are fully encompassed by the ‘867 claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-10, 12-17, 19, and 20 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.
With regard to claim 1, the terms “drilling, pipeline, or power quality equipment” and “fluid transfer device” are confusing. While the claims now recite that the “drilling, pipeline, or power quality equipment comprises the fluid transfer device,” the scope of the claims remains confusing given the continued presence of the terms “drilling, pipeline, or power quality equipment.” The claim still recites “determining whether the drilling, pipeline, or power quality equipment is experiencing an event condition based on the first data.” It is unclear if this step relates to the fluid transfer device, as this step is recited before the fluid transfer device is introduced. It is noted that the specification only contains discussion of event conditions related to a fluid transfer device.
With regard to claim 1, the phrase “selecting, from an output of the model, the one or more potential corrective actions” is confusing, given that the claim previously refers to “a plurality of potential corrective actions.”
With regard to claims 10 and 17, in a similar manner as discussed in the paragraph above, these claims recite “electrical or mechanical oil and gas production equipment” as the element that experiences the event condition, and then “a fluid transfer device” as the element that is commanded in order to alleviate the condition. Again, it is unclear whether the event condition is experienced by the fluid transfer device, or by some other component.
With regard to claim 17, this claim recites that the controller is configured to “generate a first corrective action” and that generating the corrective action comprises “receiving, as an output of the model, the first corrective action.” This limitation is confusing, as it appears that the processor both generates and receives the first corrective action. Claims 1 and 10 have a different construction, in which the processor first generates a plurality of corrective actions, and then the model is used to select a particular action from that plurality of actions. Claim 17 does away with this construction and is ambiguous as a result.
Claims 3, 6-8, 13-15, and 20 are rejected based on their dependence upon rejected claims.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3-10, 12-17, 19, and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) the following steps, which can be considered mental processes.
determining whether the drilling, pipeline, or power quality equipment is experiencing an event condition based on the first data;
generating one or more potential corrective actions comprising controlling operation of a fluid transfer device resulting in a change to the parameter of the drilling, pipeline, or power quality equipment;
determining a severity associated with the event condition;
identifying a first corrective action of the one or more potential corrective actions;
selecting, from an output of the model, the one or more potential corrective actions;
determining whether the drilling, pipeline, or power quality equipment is experiencing a subsequent event condition; and
controlling the fluid transfer device to implement a subsequent corrective action comprising sending a second control signal to the fluid transfer device, the subsequent corrective action based on at least a set of subsequent data received from the sensor and the first corrective action.
(Unique to independent claim 17): determine a reward value for the first corrective action based on the second data
The “determining” steps are clearly mental processes, as there is no structure recited that performs this step, and no criteria identified for how the data would indicate an “event condition” has occurred. Additionally, the term “event condition” is so broad as to encompass all possible operating states of the equipment, including “on” or “off” states, which are easily identifiable by a human.
The “generating” step can encompass an operator’s decision to take any particular action based on their experience.
The “identifying” step is not required to be based on the output of the model, and thus could be performed completely in the mind without the influence of the model, without reference to the collected data, and without regard to the event condition.
The step of “selecting, from an output of the model, the one or more potential corrective actions” can also be performed in the human mind, given that no particular criteria for selection is recited, and thus a random or arbitrarily selection could be made by a user. Furthermore, it is unclear what the actual output of the model is, and why any “selection” would be needed.
The step of “controlling the fluid transfer device to implement a subsequent corrective action” does not involve a concrete physical change, as does the previously-recited “first corrective action.” The generic term “corrective action” can include such things as “checking a valve lineup” and “drive frequency closed-loop control” (see paragraph 0149 of the specification). These actions do not necessarily involve any concrete physical change to the equipment, and thus are abstract.
This judicial exception is not integrated into a practical application because, while the method does require a physical change to the fluid transfer device in the first controlling step, the claim does not provide any way to assess whether that change actually follows from the data that is received. The “determining,” “generating,” and “identifying” steps do not recite any particular comparison or manipulation of the data that leads to the corrective action. These steps appear unconnected, and do not “flow” from one another. For example, the steps of “selecting, from an output of the model, the one or more potential corrective actions” and “identifying a first corrective action of the plurality of potential corrective actions” do not involve any recited selection criteria, and appear to completely ignore the severity and the type of event condition that have been inputted into the model.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the terms “drilling, pipeline, or power quality equipment” (claim 1), “oil and gas production equipment” (claim 10), and “electrical or mechanical oil and gas production equipment” (claim 17), and “fluid transfer device” (all claims) are generic recitations that cover essentially any equipment on a well site. Applicant admits such equipment is well-understood, routine, and conventional (see paragraphs 0002 and 0003 of the specification). Also, a generic “sensor associated with the…equipment” is notoriously well-known and cannot amount to significantly more than the abstract idea.
Claims 3-9, 12-16, 19, and 20 do not contain any subject matter that renders the claims eligible. The dependent claims merely recite additional mental steps.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT E FULLER whose telephone number is (571)272-6300. The examiner can normally be reached M-F 8:30AM - 5:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tara Schimpf can be reached at 571-270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT E FULLER/Primary Examiner, Art Unit 3676
