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 17 November 2025 have been fully considered.
The 102 rejection is withdrawn due to amendments. However, a new 112(a) rejection is made due to the amendments as discussed below.
The 101 rejection is maintained and the amendments are rejected under 101 as discussed below. Applicant argues that the limitation of “optimizing” ties the abstract mathematical relationship to an improvement in the technical field of drilling efficiency. However, in order to overcome the 101 rejection, the limitation needs to provide an additional element that integrates the abstract idea into a practical application or whether the additional element amounts to significantly more than the abstract idea. However, as discussed below the optimizing step is not an additional element. Instead, the step is abstract since the claim limitation merely requires optimizing a scheme (i.e., a plan or program of action) which is a mathematical relationship and data not the actual implementation of the scheme. Therefore, the limitation is abstract.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 4-10, 12-16, and 18-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 9, and 15 recite “optimizing a drilling scheme using the one or more elastic properties.” However, there is no recitation in the originally filed application of “a drilling scheme” or any reference to optimization of one using the one or more elastic properties. The only reference to optimization of any kind is in para. [0002] of the present application’s specification that discuses optimization in relation to the general field. There is discussion that a processor can perform a drilling operation “based on rock elastic properties” in para. [0018] but there is no disclosure of optimization or a drilling scheme. Applicant argues that there is support in para. [0015[ of the specifications. However, the cited paragraph merely states that “a drilling operation may be performed based on the rock elastic properties” and then goes on to discuss how the elastic rock properties can indicate unfavorable reservoir quality and drilling parameters can be adjusted to steer the drill bit to more favorable rock. There is no discussion of optimization of a drilling scheme, merely altering a current operation.
Claims 2, 4-8, 10, 12-15, 16, and 18-20 are rejected for depending from a rejected claim.
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 1-2, 4-10, 12-16, and 18-20 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 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 1-2, 4-10, 12-16, and 18-20 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.
Claims 1, 9, and 15 recite abstract limitations, including: generating stress representatives from drill bit vibrations and strain representatives from rate of penetration via a bit-rock interaction model configured with parameters to map the drilling data to, at least in part, one or more elastic properties of the formation; determining the one or more elastic properties of the formation based on the stress representatives and the strain representatives, and optimizing a drilling scheme using the one or more elastic properties.”
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.
Examiner notes that “optimizing a drilling scheme using the one or more elastic properties” could be performed entirely mathematically. The claim limitation merely requires optimizing a scheme (i.e., a plan or program of action) which is a mathematical relationship and data not the actual implementation of the scheme. Therefore, the limitation is abstract.
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.
The claims 1, 9, and 15 recite the additional element of: obtaining drilling data of a drill bit while drilling a wellbore in a formation with the drill bit.
Claim 9 also recites the additional elements of: a drill bit configured to drill a wellbore in a formation; a processor; and a computer-readable medium having instructions stored thereon that are executable by the processor.
Claim 15 also recites the additional element of: non-transitory, computer-readable medium having instructions stored thereon that are executable by a processor to perform operations.
“[O]btaining drilling data of a drill bit while drilling a wellbore in a formation with the drill bit” amounts to insignificant extra-solution activity (i.e., activity incidental to the primary process that is merely a nominal or tangential addition to the claim, see MPEP 2106.05(g)).
“[A] drill bit configured to drill a wellbore in a formation” amounts to insignificant post-solution activity (i.e., activity incidental to the primary product that is merely a nominal or tangential addition to the claim, see MPEP 2106.05(g)).
The functions of the processor, computer-readable medium, and the non-transitory, computer-readable medium 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.
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).
Obtaining drilling data is considered insignificant extra-solution activity as the limitation does not amount to more than mere data gathering. Based on the specifications the means for data gathering are generic sensors (¶ [0017]). Given the generality of the data collection, the limitation does not contain significantly more to provide a practical application (see MPEP 2106.05(g)). Furthermore, “while drilling a wellbore in a formation with the drill bit” merely link the method to a particular technical environment or field of use. As they merely confine the use of the abstract idea to a particular technical field of use, they fail to add an inventive concept to the claim. These limitation merely represent mere token acquiescence to limiting the reach of the claim (see Flook and MPEP 2106.05(h)).
A drill bit configured to drill a wellbore in a formation is an additional element that is considered insignificant extra-solution activity as Hinz (US 2019/0249498 see ¶ [0001]) discloses using a drill bit to drill a wellbore through a formation is well-known, routine, and conventional in the art.
As discussed above, the additional elements amount to mere instructions to apply the exception (using additional elements processor, computer-readable medium, and non-transitory, computer-readable medium). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Thus, even when viewed as an ordered combination, nothing in the claims add significantly more (i.e. an inventive concept) to the abstract idea. The claim is ineligible.
Claims 2, 5, 8, 10-11, 13, and 16-17 further recite: the drilling data includes any one or more of torque on bit, weight on bit, drill bit accelerations, rotations per minute, depth of cut, and rate of penetration; the one or more elastic properties of the formation are determined based on Hooke's law; and the one or more elastic properties includes Young's modulus and Poisson's ratio which merely narrows the previously recited abstract idea limitations.
Regarding claims 4, 12, and 18, the drill bit vibrations are obtained via sensors proximate the drill bit including accelerometers, strain gauges, gyroscopes, magnetometers, or any combination thereof is an additional element that is considered insignificant extra-solution activity as Schneider (US 2009/0063055 see ¶ [0002]) discloses using an accelerometer to measure drilling vibrations is well-known, routine, and conventional in the art.
Claims 6, 14, and 19 further recites calibrating the bit-rock interaction model with the reference elastic properties which merely narrows the previously recited abstract idea limitations. Regarding the recited processes of “obtaining reference elastic properties of the formation to be drilled by the drill bit” and “outputting the parameters for the drilling data”, importing (i.e., obtaining) and sending (i.e., outputting) are considered insignificant extra-solution activities 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)). Additionally, the Symantec, TLI, OIP Techs. and buySAFE court decisions cited in MPEP 2106.05(d)(II) indicate that mere receiving or transmitting data over a network is a well‐understood, routine, conventional function when it is claimed in a merely generic manner (as it is here).
Regarding claims 7 and 20, the recited processes of inputting the drilling data and the parameters into the bit-rock interaction model to generate the stress representatives and the strain representatives, “inputting” is considered insignificant extra-solution activities as the limitation 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)). Additionally, the Symantec, TLI, OIP Techs. and buySAFE court decisions cited in MPEP 2106.05(d)(II) indicate that mere receiving or transmitting data over a network is a well‐understood, routine, conventional function when it is claimed in a merely generic manner (as it is here).
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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/KRISTYN A HALL/Primary Examiner, Art Unit 3672