DETAILED ACTION
Claims 1-20 are pending.
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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/03/2026 has been entered.
Response to Arguments
Examiner notes that a 35 U.S.C. § 112(b) rejection has been introduced herein which needs attention.
Applicant's arguments filed 02/03/2026 have been fully considered but they are not persuasive. Though Applicant’s representative amended claim 1 (and, similarly claims 12 and 19) to further recite: “[...] the force corresponding to a contact force at an interface between the one or more elements and the subsurface formation...”, Examiner notes that Dunbar (as introduced herein) reads on the limitation under a different prior art rejection interpretation. If there is a critical feature in the claims that have a certain degree of importance, it is advised to include that language in the claim(s) in keeping with the instant specification for purposes of overcoming the most recent prior art rejection.
Drawings
The drawings were received on 02/03/2026. These drawings are acceptable.
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.
Claim 4 is 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.
Claim 4 recites: “[...] wherein a first pressure measurement device of the one or more pressure measurement devices is hydraulically coupled with a plurality of the one or more elements, via a fluid passage.” Examiner notes that the claim is confusing as it is referring to a plurality (two or more) of one (singular) or more elements. For examination purposes, the Examiner will give its broadest reasonable interpretation in light of the instant specification and will assume for the limitation to read as follows: “[...] wherein a first pressure measurement device of the one or more pressure measurement devices is hydraulically coupled with [[a plurality of ]]the one or more elements, via a fluid passage.
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(s) 1-8, 11-17 and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dunbar (US Publication Number 2022/0010637 A1; hereinafter “Dunbar”).
In regard to claim 1, Dunbar discloses: A method (abstract) comprising:
obtaining, via one or more pressure measurement devices (202), measurements of a pressure of a fluid (312) when a force is applied to one or more elements (e.g., 314, 316) of a downhole tool (i.e., comprising 116 — as shown in figure 1) positioned in a wellbore (118) formed in a subsurface formation (120 — paragraphs [0010-0012, 0020-0029]), the force corresponding to a contact force at an interface (i.e., radial outer surface portion of 314 connected to 202) between (i.e., radially between) the one or more elements and the subsurface formation (as shown in figure 3), and wherein the fluid is hydraulically isolated from fluids external to the downhole tool (paragraph [0024, 0028]); and
determining the force applied to the one or more elements based on the pressure of the fluid (paragraphs [0020-0029]).
In regard to claim 2, Dunbar further discloses: wherein the downhole tool includes a fluid passage (310) filled with the fluid (abstract, paragraphs [0020-0029]), and wherein the fluid passage hydraulically couples a first element (e.g., 314 connected to 202) of the one or more elements and a first pressure measurement device (202) of the one or more pressure measurement devices (paragraphs [0020-0029] and figure 3).
In regard to claim 3, Dunbar further discloses: obtaining measurements of the fluid in the fluid passage when a force is applied to the first element, wherein the force causes a squeeze in the fluid in the fluid passage (paragraphs [0020-0029] and figure 3).
In regard to claim 4, Dunbar further discloses: wherein the downhole tool includes a fluid passage (310) filled with the fluid, and wherein a first pressure measurement device (202) of the one or more pressure measurement devices is hydraulically coupled with a plurality of the one or more elements, via a fluid passage (paragraphs [0020-0029] and figure 3).
In regard to claim 5, Dunbar further discloses: wherein the one or more pressure measurement devices include a pressure transducer (paragraphs [0020-0029]).
In regard to claim 6, Dunbar further discloses: wherein the one or more elements are configured to shift radially towards and away from a central axis of the downhole tool (paragraphs [0020-0029] and figure 3).
In regard to claim 7, Dunbar further discloses: wherein the fluid includes hydraulic fluid (paragraphs [0020-0029] and figure 3).
In regard to claim 8, Dunbar further discloses: wherein the downhole tool includes a drill bit (116 — paragraphs [0010-0012, 0020-0029] and figure 3).
In regard to claim 11, Dunbar further discloses: performing a wellbore operation (e.g., pumping drilling fluid downhole, drilling, etc.) based on the force applied to the one or more elements (paragraphs [0010-0012, 0020-0029] and figure 3).
In regard to claim 12, Dunbar discloses: An apparatus (as shown in at least figures 1 & 3) comprising:
one or more elements (e.g., 314, 316) of a downhole tool (i.e., comprising 116 — as shown in figure 1), wherein the downhole tool is positioned in a wellbore (118) formed in a subsurface formation (120 — paragraphs [0010-0012, 0020-0029]); and
one or more pressure measurement devices (202) configured to obtain measurements of a pressure of a fluid (312) when a force is applied to the one or more elements, the force corresponding to a contact force at an interface (i.e., radial outer surface portion of 314 connected to 202) between (i.e., radially between) the one or more elements and the subsurface formation (as shown in figure 3), wherein the force applied to the one or more elements is determined based on the pressure of the fluid (paragraphs [0020-0029]), and wherein the fluid is hydraulically isolated from fluids external to the downhole tool (paragraph [0024, 0028])
In regard to claim 13, Dunbar further discloses: wherein the downhole tool includes a fluid passage (310) filled with the fluid (abstract, paragraphs [0020-0029]), and wherein the fluid passage hydraulically couples a first element (e.g., 314 connected to 202) of the one or more elements and a first pressure measurement device (202) of the one or more pressure measurement devices (paragraphs [0020-0029] and figure 3).
In regard to claim 14, Dunbar further discloses: wherein the downhole tool includes a fluid passage (310) filled with the fluid, and wherein a first pressure measurement device (202) of the one or more pressure measurement devices is hydraulically coupled with a plurality of the one or more elements, via a fluid passage (paragraphs [0020-0029] and figure 3).
In regard to claim 15, Dunbar further discloses: wherein the one or more pressure measurement devices include a pressure transducer (paragraphs [0020-0029]).
In regard to claim 16, Dunbar further discloses: wherein the one or more elements are configured to shift radially towards and away from a central axis of the downhole tool (paragraphs [0020-0029] and figure 3).
In regard to claim 17, Dunbar further discloses: wherein the downhole tool includes a drill bit (116 — paragraphs [0010-0012, 0020-0029] and figure 3).
In regard to claim 19, Dunbar discloses: A system (abstract and figures 1 & 3) comprising:
a downhole tool (i.e., comprising 116 — as shown in figure 1) to be positioned in a wellbore (118) formed in a subsurface formation (120 — paragraphs [0010-0012, 0020-0029]);
one or more elements (e.g., 314, 316) positioned on the downhole tool (paragraphs [0020-0029] and figure 3); and
one or more pressure measurement devices (202) configured to obtain measurements of a pressure of a fluid (312) when a force is applied to the one or more elements, the force corresponding to a contact force at an interface (i.e., radial outer surface portion of 314 connected to 202) between (i.e., radially between) the one or more elements and the subsurface formation (as shown in figure 3), wherein the force applied to the one or more elements is determined based on the pressure of the fluid (paragraphs [0020-0029]), and wherein the fluid is hydraulically isolated from fluids external to the downhole tool (paragraph [0024, 0028]).
In regard to claim 20, Dunbar further discloses: wherein the downhole tool includes a fluid passage (310) filled with the fluid (abstract, paragraphs [0020-0029]), and wherein the fluid passage hydraulically couples a first element (e.g., 314 connected to 202) of the one or more elements and a first pressure measurement device (202) of the one or more pressure measurement devices (paragraphs [0020-0029] and figure 3).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 9 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dunbar (US Publication Number 2022/0010637 A1; hereinafter “Dunbar”) in view of Thomas (US Publication Number 2017/0275951 A1; hereinafter “Thomas”).
In regard to claim 9, Dunbar discloses claim 1 above.
However, Dunbar is silent in regard to: wherein the one or more elements include a button, a cutter, or any combination thereof.
Nonetheless, Thomas teaches a downhole drilling assembly (abstract and figure 1), similar to that of Dunbar. Thomas teaches that pressure measurement devices (e.g., pressure transducer 410) can be coupled to elements, such as, cutters (428) — paragraphs [0041-0044].
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to simply substitute the pressure sensing system/mechanism, as taught by Dunbar, with that corresponding to the pressure of a cutting element, as taught by Thomas, to yield the predictable result of allowing an alternative way of controlling “[...] the amount that the cutting elements of the drilling tool cut into a geological formation” (paragraph [0004] of Thomas). See MPEP 2143, section I, subsection B.
In regard to claim 18, Dunbar discloses claim 12 above.
However, Dunbar is silent in regard to: wherein the one or more elements include a button, a cutter, or any combination thereof.
Nonetheless, Thomas teaches a downhole drilling assembly (abstract and figure 1), similar to that of Dunbar. Thomas teaches that pressure measurement devices (e.g., pressure transducer 410) can be coupled to elements, such as, cutters (428) — paragraphs [0041-0044].
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to simply substitute the pressure sensing system/mechanism, as taught by Dunbar, with that corresponding to the pressure of a cutting element, as taught by Thomas, to yield the predictable result of allowing an alternative way of controlling “[...] the amount that the cutting elements of the drilling tool cut into a geological formation” (paragraph [0004] of Thomas). See MPEP 2143, section I, subsection B.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dunbar (US Publication Number 2022/0010637 A1; hereinafter “Dunbar”) in view of Thomas (US Publication Number 2017/0275951 A1; hereinafter “Thomas”).
In regard to claim 10, Dunbar discloses collecting data (e.g., pressure data) from the downhole tool using sensor(s) (paragraph [0016, 0018, 0021).
However, Dunbar is silent in regard to: designing one or more additional downhole tools based on the force applied to the one or more elements.
Nonetheless, Hall cites: “[...] to take advantage of the several advances in the design of various tools and techniques for oil and gas exploration, it would be beneficial to have real time data such as temperature, pressure, inclination, salinity, etc.” (paragraph [0004]).
Therefore, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the invention (AIA ), to modify the collection of the pressure data gathered, as taught by Dunbar, to be used in designing additional downhole tools, as taught by Hall, to allow “[...] for successful oil, gas, and geothermal well exploration and production” (paragraph [0004] of Hall).
Conclusion
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/NEEL GIRISH PATEL/Primary Patent Examiner, Art Unit 3676