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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02 June 2026 has been entered.
Response to Arguments
Applicant's arguments filed 02 June 2026 have been fully considered but they are not persuasive.
With respect to the 101 rejections, Applicant argues that the amended claims recite a practical application of technology (i.e., drilling a wellbore in a subsurface formation) due to the limitations of “obtaining drilling data from a drill bit while drilling a wellbore, determining one or more elastic properties of the formation using a bit-rock interaction model, and adjusting, while drilling the wellbore, one or more drilling parameters comprising weight on bit (WOB), rotations per minute (RPM), or tool face orientation based on the determined elastic properties to steer the drill bit through the formation” (Applicant’s Argument/Remarks pg. 6). Applicant argues that the amended claims do not merely recite a mathematical relationship and instead the abstract idea is used to actively adjust the physical drilling parameters of the drill bit while drilling.
Examiner respectfully disagrees. First, “determining one or more elastic properties of the formation using a bit-rock interaction model” is an abstract idea as noted below. Second, while obtaining the drilling data and adjusting the drilling parameters are additional elements and not abstract ideas, as noted below, they do not integrate the abstract idea into a practical application or provide an inventive concept (i.e., amount to significantly more than the exception itself) for the reasons discussed below. Specifically, obtaining the data amounts to insignificant extra-solution activity that is data gathering and the courts have held that data gathering does not provide an inventive concept. The step of “adjusting” merely amounts to “apply it” since the limitation attempts to cover any solution and does not provide specific actions to achieve a specific solution. Therefore, the 101 rejections are maintained.
The 112(a) rejections are withdrawn due to amendments.
New 112(b) and 102 rejections are made below due to the amendments.
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 1-2, 4-10, 12-16, and 18-20 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.
Claims 1, 9, and 15 each recite “one or more drilling parameters including weigh on bit, rotations per minute, and tool face orientation”. It is unclear how the claim limitation can have one parameter and include weight on bit, rotations per minute, and tool face orientation. The current wording requires the three recited parameters. For the purpose of examination, the limitation will be interpreted as only requiring one of weigh on bit, rotations per minute, and tool face orientation.
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; and determining the one or more elastic properties of the formation based on the stress representatives and the strain representatives.”
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.
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 and adjusting, while drilling the wellbore, one or more drilling parameters including weight on bit, rotations per minute, and tool face orientation based on the one or more elastic properties to steer the drill bit through the formation.
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 step of adjusting the drilling parameters based on the elastic properties amounts to no more than mere instructions to apply the exception.
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.
Adjusting the drilling parameters “based on the one or more elastic properties to steer the drill bit through the formation” merely amounts to “apply it”. The recitation of claim limitations that attempt to cover any solution (i.e., changing a parameter) to an identified problem (i.e., steering using rock elastomeric properties) with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result (i.e., what aspects are changed or how the change is affected by the abstract idea) 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)).
As discussed above, the additional generic computer 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).
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.
Claims 1-2, 4-10, 12-16, and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lakings (US 2020/0256187).
With respect to claims 1, 9, and 15: Lakings discloses a system comprising:
a drill bit (22) configured to drill a wellbore in a formation (Fig. 2B);
a processor (¶ [0078]); and
a non-transitory computer-readable medium (¶ [0078]) having instructions stored thereon that are executable by the processor (¶ [0078]) to cause the processor to,
obtain drilling data of the drill bit while drilling the wellbore in the formation with the drill bit (26, 36; ¶ [0075, 0077-78]);
generate stress representatives from drill bit vibrations (¶ [0062, 0182, 0216]) and strain representatives from rate of penetration (¶ [0062, 0125, 0182]), 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 (¶ [0068-69, 0078, 0087, 0125, 0137, 0216, 0220, 0230]; Fig. 16);
determining the one or more elastic properties of the formation based on the stress representatives and the strain representatives (¶ [0125-34, 0135, 013-38]) and
adjusting, while drilling the wellbore, one or more drilling parameters including weight on bit, rotations per minute, and tool face orientation base on the one or more elastic properties to steer the drill bit through the formation (¶ [0212, 0230]; Fig. 19).
With respect to claims 2, 10, and 16: Lakings further discloses 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 (¶ [0075, 0077-78]).
With respect to claims 4, 12, and 18: Lakings further discloses the drill bit vibrations are obtained via sensors proximate the drill bit including accelerometers, strain gauges, gyroscopes, magnetometers, or any combination thereof (36; ¶ [0075, 0077-78]).
With respect to claims 5 and 13: Lakings further discloses the one or more elastic properties of the formation are determined based on Hooke's law (¶ [0067]).
With respect to claims 6, 14, and 19: Lakings further discloses;
obtaining reference elastic properties of the formation to be drilled by the drill bit (¶ [0183-0193, 0197-0201]);
calibrating the bit-rock interaction model with the reference elastic properties (¶ [0183-0193, 0197-0201]); and
outputting the parameters for the drilling data (¶ [0183-0193, 0197-0201]).
With respect to claims 7 and 20: 7 Lakings further discloses inputting the drilling data and the parameters into the bit-rock interaction model to generate the stress representatives and the strain representatives (¶ [0183]).
With respect to claim 8: Lakings further discloses the one or more elastic properties includes Young's modulus and Poisson's ratio (¶ [0067-68, 0134-37, 0216]).
Conclusion
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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