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 .
As noted in the communication mailed 8/13/2026, prosecution has been reopened in view of the Pre-Appeal Brief Conference.
Claims 1-4, 7-11, 14-18, and 20-28 are pending with claims 5-6, 12-13, and 19 being previously cancelled.
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 1-4, 7-11, 14-18, and 20-28 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, 8, and 15 recite “determining, based at least in part on the pressure pulse signal, a friction coefficient”. These recitations are broad in that “based at least in part” can mean that what follows can be included or not included. Does the recitation mean that there are other factors that are used to determine the friction coefficient and if so, are these other factors necessary for the invention?
Claims 1, 8, and 15 recite modifying at least one of a friction reducer amount, a friction reducer type, or a friction reducer concentration. The recitations are indefinite as it is unclear if the “modification” is an actual operation performed in the well or if it is just a data modification (i.e. not clear if the reducer is added or if the reducer quantity is reduced in real time).
Dependent claims 2-4, 7, 9-11, 14, 16-18, and 20-28 do not act to cure the deficiencies of parent claim 1 and are thereby rejected for at least the same rationale.
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 1-4, 7-11, 14-18, and 20-28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e. 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, 8, and 15 are directed to a method (claims 1), a system (claim 8), and an apparatus (claim 15 – one or more non-transitory computer-readable mediums including instructions), 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.
Regarding Prong I of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether they recite subject matter that falls within one of the following groups of abstract ideas: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental processes.
Claims 1, 8, and 15 recite abstract limitations including: “determining… a friction coefficient corresponding to the performance of the friction reducer in the well system; and performing one or more operations based, at least in part, on the friction coefficient,
wherein said performing the one or more operations comprises modifying at least one of a friction reducer amount, a friction reducer type, or a friction reducer concentration.” (this step is now considered abstract as the claim has been amended to state that it means “modifying” which could mean merely changing a number which one can do mentally).
These limitations, as drafted, are abstract mental processes that, under the broadest reasonable interpretation, cover performance of the limitations in the mind (such as “observation, evaluation, judgment, opinion” – MPEP 2106.04(a)), or by a human using pen and paper, and therefore recite mental processes. More specifically, nothing in the claim element precludes the aforementioned steps from practically being performed in the human mind, or by a human using pen and paper. The mere recitation of generic computing elements and/or sensors does not take the claim out of the mental process 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.
Regarding Prong II of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether the claim, as a whole, integrates the abstract into a practical application. As noted in the 2019 PEG, it must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.”
Claims 1, 8, and 15 recites the additional elements of:
“receiving a pressure pulse signal associated with a well system” which is considered insignificant extra solution activity; and
“well system” which merely links the method and apparatus to a particular technical environment or field of use (see Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)).
With respect to claim 8, the claim further recites a computing system comprising one or more processors and one or more non- transitory computer-readable mediums including instructions which, when executed by the one or more processors, cause the one or more processors to execute one or more operations. As currently recited, the functions of this additional element, including receiving and processing information, are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic device.
Claims 8 and 15 recite “instructions” which are considered “apply it”.
With respect to claim 15, the claim further recites one or more non-transitory computer-readable mediums including instructions which, when executed by a processor, cause the processor to execute one or more operations. As currently recited, the functions of these additional element, including receiving and processing information, are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic device.
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).
With respect to claims 1, 8, and 15, the claims recite the receipt of data (pressure pulses). “receiving a pressure pulse signal ...” is considered insignificant extra-solution activity as the limitations do not amount to more than mere data gathering. Thus these limitations do not contain significantly more to provide a practical application (see MPEP 2106.05(g)). 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).
“well system” merely links the method/apparatus to a particular environment or field of use. As it merely confines the use of the abstract idea to a particular technical field of use it fails to add an invention concept to the claim. This limitation represents mere token acquiescence to limiting the reach of the claim (see Flook and MPEP 2106.05(h)).
With respect to claim 8, the claim further recites a computing system comprising one or more processors and one or more non-transitory computer-readable mediums including instructions which, when executed by the one or more processors, cause the one or more processors to execute one or more operations. As currently recited, the functions of these additional elements, including sending/receiving information and processing received information, are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic device.
With respect to claim 15, the claim further recites one or more non-transitory computer-readable mediums including instructions which, when executed by a processor, cause the processor to execute one or more operations. As currently recited, the functions of this additional element, including receiving and processing information, are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic device.
With respect to claims 8 and 15, mere “instructions” to implement an abstract idea on a computer does not meaningfully limit the claim and therefore amount to no more than merely “apply it”. See MPEP 2106.05(f)
The amendments to claims 1, 8 and 15 recite additional elements that do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. 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, 9, and 16 recite wherein at least one of a downhole operation or a downhole attribute in a wellbore of the well system is modified based, at least in part, on the friction coefficient. These are a further characterization of the performing step and are recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic device. For the reasons described above with respect to claims 1, 8, and 15, this judicial exception is not meaningfully integrated into a practical application, or significantly more than the abstract idea. In the alternative, these recitations merely indicate a field of use or technological environment in which to apply a judicial exception and thus does not amount to significantly more than the exception itself.
Claims 3, 10, and 15 recite directing an operation to modify at least one of a downhole operation or a downhole attribute in a wellbore of the well system based, at least in part, on the friction coefficient. These recitations are a further characterization of the performing step that is recited at a high level of generality such that it amounts no more than mere instructions to apply the exception using a generic device. For the reasons described above with respect to claims 1, 8, and 15, this judicial exception is not meaningfully integrated into a practical application, or significantly more than the abstract idea. In the alternative, these recitations merely indicate a field of use or technological environment in which to apply a judicial exception and thus does not amount to significantly more than the exception itself.
Claims 4, 11, and 18 recite modifying at least one of a downhole operation or a downhole attribute in a wellbore of the well system based, at least in part, on the friction coefficient. These recitations are a further characterization of the performing step that is recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic device. In the alternative, these recitations merely indicate a field of use or technological environment in which to apply a judicial exception and thus does not amount to significantly more than the exception itself.
Claims 7, 14, and 20 recite wherein said determining the friction coefficient comprises determining the friction coefficient based, at least in part, on a machine learning model trained on well system operational characteristics and conditions. Claims 7, 14, and 20 appear to be close to claiming subject matter that is significantly more than the exception itself but stop short of stating an improvement to the technology (i.e. when/where is the friction coefficient determined and used – in real time, historically, or a prediction for future wells). As determining friction coefficients and their use are well known in the art these recitations merely indicate a field of use or technological environment in which to apply a judicial exception and thus does not amount to significantly more than the exception.
Claim 21 recites wherein said determining the friction coefficient corresponding to the performance of the friction reducer in the well system comprises determining the friction coefficient without varying the friction reducer in the well system. This recitation is a further characterization of the determining step that is recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic device. In the alternative, these recitations merely indicate a field of use or technological environment in which to apply a judicial exception and thus does not amount to significantly more than the exception itself.
Claim 21 appears to be close to claiming subject matter that is significantly more than the exception itself but stops short of stating an improvement to the technology (i.e. when/where is the friction coefficient adjusted – in real time, historically, or a prediction for future wells). As friction coefficients and their use are well known in the art this recitation merely indicates a field of use or technological environment in which to apply a judicial exception and thus does not amount to significantly more than the exception.
Claim 22 recites wherein said determining the friction coefficient corresponding to the performance of the friction reducer in the well system comprises determining the friction coefficient of the friction reducer. This recitation is a further characterization of the determining step that is recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic device. In the alternative, these recitations merely indicate a field of use or technological environment in which to apply a judicial exception and thus does not amount to significantly more than the exception itself.
Claim 22 appears to be close to claiming subject matter that is significantly more than the exception itself but stops short of stating an improvement to the technology (i.e. when/where is the friction coefficient of the friction reducer determined – in real time, historically, or a prediction for future wells). As friction coefficients and friction reducers and their use are well known in the art this recitation merely indicates a field of use or technological environment in which to apply a judicial exception and thus does not amount to significantly more than the exception.
Claim 23 recites wherein said determining the friction coefficient corresponding to the performance of the friction reducer in the well system comprises: receiving operational characteristics and conditions associated with the well system; providing the operational characteristics and conditions to a machine learning model trained to predict friction coefficients associated with friction reducers in well systems; and generating the friction coefficient based, at least in part, on an output of the machine learning model in response to said providing the operational characteristics and conditions to the machine learning model. This recitation is a further characterization of the determining step that is recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic device. In the alternative, these recitations merely indicate a field of use or technological environment in which to apply a judicial exception and thus does not amount to significantly more than the exception itself.
Claim 24 recites computing a value through a mathematical formula. Nothing in the claim element precludes the step from practically being performed in the human mind, or by a human using pen and paper. As currently recited, the functions of this element, is a process that, under its broadest reasonable interpretation, represents mathematical relationships, formulas or equations, and mathematical calculations and are therefore mathematical concepts. Thus, the claim recites an abstract idea.
Claim 25 recites computing a value through a mathematical formula. Nothing in the claim element precludes the step from practically being performed in the human mind, or by a human using pen and paper. As currently recited, the functions of this element, is a process that, under its broadest reasonable interpretation, represents mathematical relationships, formulas or equations, and mathematical calculations and are therefore mathematical concepts. Thus, the claim recites an abstract idea.
Claim 26 recites determining that friction reducer performance should be analyzed, triggering a pressure pulse in the well system, and generating the pressure pulse signal based, at least in part, on the pressure pulse. This recitation is a further characterization of the determining step that is recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic device. In the alternative, these recitations merely indicate a field of use or technological environment in which to apply a judicial exception and thus does not amount to significantly more than the exception itself.
Claim 27 recites wherein said determining that friction reducer performance should be analyzed comprises determining that a surface pressure of the well system is different than a predicted surface pressure. This recitation is a further characterization of the determining step that is recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic device. In the alternative, these recitations merely indicate a field of use or technological environment in which to apply a judicial exception and thus does not amount to significantly more than the exception itself.
Claim 27 appears to be close to claiming subject matter that is significantly more than the exception itself but stops short of stating an improvement to the technology (i.e. when/where is the analysis and comparison of the surface pressure determined/performed – in real time, historically, or a prediction for future wells). As the monitoring of surface pressures and the use of the monitoring are well known in the art, this recitation merely indicates a field of use or technological environment in which to apply a judicial exception and thus does not amount to significantly more than the exception.
Claim 28 recites wherein said determining that friction reducer performance should be analyzed comprises determining that a component of fluid being pumped into the well system has changed. This recitation is a further characterization of the determining step that is recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic device. In the alternative, these recitations merely indicate a field of use or technological environment in which to apply a judicial exception and thus does not amount to significantly more than the exception itself.
Claim 28 appears to be close to claiming subject matter that is significantly more than the exception itself but stops short of stating an improvement to the technology (i.e. when/where is the fluid component change determined – in real time, historically, or a prediction for future wells; and what fluid component is important to monitor (i.e. an actual component of the fluid or a property of the fluid). As the monitoring of wellbore fluids and the use of the monitoring are well known in the art this recitation merely indicates a field of use or technological environment in which to apply a judicial exception and thus does not amount to significantly more than the exception.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-4, 8-11, 15-18, 21-22, and 26-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dunham et al. (US 20230228185).
Regarding claim 1: Dunham discloses a method for analyzing performance of a friction reducer ([0034]). Dunham discloses receiving a pressure pulse signal associated with a well system ([0036]). Dunham discloses determining based at least in part on the pressure pulse signal a friction coefficient corresponding to the performance of the friction reducer in the well system ([0015], [0036]). Dunham discloses performing one or more operations based, at least in part, on the friction coefficient ([0016], [0034]). Dunham discloses that the performing the one or more operations comprises modifying at least one of a friction reducer amount, a friction reducer type, or a friction reducer concentration ([0016], [0034], [0081]).
Regarding claim 2: Dunham discloses that at least one of a downhole operation or a downhole attribute in a wellbore of the well system is modified based, at least in part, on the friction coefficient ([0016], [0034]).
Regarding claim 3: Dunham discloses directing an operation to modify at least one of a downhole operation or a downhole attribute in a wellbore of the well system based, at least in part, on the friction coefficient ([0016], [0034]).
Regarding claim 4: Dunham discloses modifying at least one of a downhole operation or a downhole attribute in a wellbore of the well system based, at least in part, on the friction coefficient ([0016], [0034]).
Regarding claim 8: Dunham discloses a system comprising a computing system comprising one or more processors and one or more non-transitory computer-readable mediums including instructions which, when executed by the one or more processors, cause the one or more processors to execute one or more operations ([0011]). Dunham discloses analyzing performance of a friction reducer ([0034]). Dunham discloses instructions to receive a pressure pulse signal associated with a well system ([0036]). Dunham discloses instructions to determine, based at least in part on the pressure pulse signal, a friction coefficient corresponding to the performance of the friction reducer in the well system ([0015], [0036]). Dunham discloses instructions to perform one or more operations based, at least in part, on the friction coefficient ([0016], [0034]). Dunham discloses that the instructions to perform one or more operations comprise instructions to modify at least one of a friction reducer amount, a friction reducer type, or a friction reducer concentration ([0016], [0034], [0081]).
Regarding claim 9: Dunham discloses that at least one of a downhole operation or a downhole attribute in a wellbore of the well system is modified based, at least in part, on the friction coefficient ([0016], [0034]).
Regarding claim 10: Dunham discloses that the instructions further include instructions to direct an operation to modify at least one of a downhole operation or a downhole attribute in a wellbore of the well system based, at least in part, on the friction coefficient ([0016], [0034]).
Regarding claim 11: Dunham discloses that the instructions further include instructions to modify at least one of a downhole operation or a downhole attribute based, at least in part, on the friction coefficient ([0016], [0034]).
Regarding claim 15: Dunham discloses one or more non-transitory computer-readable mediums including instructions which, when executed by a processor, cause the processor to execute one or more operations ([0011]). Dunham discloses analyzing performance of a friction reducer ([0034]). Dunham instructions to receive a pressure pulse signal associated with a well system ([0036]). Dunham discloses instructions to determine, based at least in part on the pressure pulse signal, a friction coefficient corresponding to the performance of the friction reducer in the well system ([0015], [0036]). Dunham discloses instructions to perform one or more operations based, at least in part, on the friction coefficient ([0016], [0034]). Dunham discloses that the instructions to perform one or more operations comprise instructions to modify at least one of a friction reducer amount, a friction reducer type, or a friction reducer concentration ([0016], [0034], [0081]).
Regarding claim 16: Dunham discloses that at least one of a downhole operation or a downhole attribute in a wellbore of the well system is modified based, at least in part, on the friction coefficient ([0016], [0034]).
Regarding claim 17: Dunham discloses that the instructions further comprise instructions to direct an operation to modify at least one of a downhole operation or a downhole attribute in a wellbore of the well system based, at least in part, on the friction coefficient ([0016], [0034]).
Regarding claim 18: Dunham discloses that the instructions further include instructions to modify at least one of a downhole operation or a downhole attribute based, at least in part, on the friction coefficient ([0016], [0034]).
Regarding claim 21: Dunham discloses that the determining the friction coefficient corresponding to the performance of the friction reducer in the well system comprises determining the friction coefficient without varying the friction reducer in the well system ([0015], [0016], [0034], [0036], [0081]).
Regarding claim 22: Dunham discloses that the determining the friction coefficient corresponding to the performance of the friction reducer in the well system comprises determining the friction coefficient of the friction reducer ([0015], [0016], [0034], [0036], [0081]).
Regarding claim 26: Dunham discloses determining that friction reducer performance should be analyzed, triggering a pressure pulse in the well system, and generating the pressure pulse signal based, at least in part, on the pressure pulse ([0015], [0016], [0034], [0036], [0081]).
Regarding claim 27: Dunham discloses that the determining that friction reducer performance should be analyzed comprises determining that a surface pressure of the well system is different than a predicted surface pressure ([0015], [0016], [0034], [0036], [0081]).
Regarding claim 28: Dunham discloses that the determining that friction reducer performance should be analyzed comprises determining that a component of fluid being pumped into the well system has changed ([0015], [0016], [0034], [0036], [0081]).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 of this title, 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 7, 14, 20, and 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Dunham et al. (US 20230228185) in view of Abuhaikal et al. (US 20240051802).
Dunham discloses the invention substantially as claimed and as discussed above.
Regarding claim 7: Dunham is silent regarding machine learning models and thus does not explicitly disclose that the determining the friction coefficient comprises determining the friction coefficient based, at least in part, on a machine learning model trained on well system operational characteristics and conditions. Abuhaikal discloses that the determining a friction coefficient comprises determining the friction coefficient based, at least in part, on a machine learning model trained on well system operational characteristics and conditions ([0010]; claim 6). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to configured Dunham so that determining a friction coefficient comprises determining the friction coefficient based, at least in part, on a machine learning model trained on well system operational characteristics and conditions as taught by Abuhaikal. As both Dunham and Abuhaikal are concerned with fluid friction downhole, as machine learning models trained on well systems are very well known in the art, as Dunham is silent regarding machine learning models but does not preclude their use, and as Abuhaikal explicitly teaches using a machine learning model trained on well system to determine, at least in part, a friction coefficient of a downhole fluid, it would have been within routine skill to have selected a specific/desired method of determining a friction coefficient from a finite selection of determination configurations/arrangements (i.e. using machine learning models or using other analysis techniques). Such a simple addition and configuration would have been predictable with a reasonable expectation for success and with no unexpected results.
Regarding claim 14: Dunham, as modified by Abuhaikal, discloses that the instructions to determine the friction coefficient comprises instructions to determine the friction coefficient based, at least in part, on a machine learning model trained on well system operational characteristics and conditions (see above; Abuhaikal - [0010]; claim 6).
Regarding claim 20: Dunham, as modified by Abuhaikal, discloses that the instructions to determine the friction coefficient comprises instructions to determine the friction coefficient based, at least in part, on a machine learning model trained on well system operational characteristics and conditions (see above; Abuhaikal - [0010]; claim 6).
Regarding claim 23: Dunham, as modified by Abuhaikal, discloses that the determining the friction coefficient corresponding to the performance of the friction reducer in the well system comprises receiving operational characteristics and conditions associated with the well system, providing the operational characteristics and conditions to a machine learning model trained to predict friction coefficients associated with friction reducers in well systems, and generating the friction coefficient based, at least in part, on an output of the machine learning model in response to the providing the operational characteristics and conditions to the machine learning model (see above; Dunham - [0015], [0016], [0034], [0036], [0081]; Abuhaikal - [0010]; claim 6 – machine learning model).
Regarding claim 24: Dunham, as modified by Abuhaikal, discloses calculating friction coefficients and discuss various formulas involving friction coefficients (Dunham – [0038][0056] - Abuhaikal – [0009], [0010], [0024], [0025]). However, Dunham, as modified by Abuhaikal, does not disclose computing the value of
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Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to have calculated a value of
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As mathematical manipulation is very well known, as mathematically determining friction coefficients is very well known, as both Dunham and Abuhaikal teach determining a friction coefficient but are silent regarding the recited formula, it would have been within routine skill to have selected a specific/desired mathematical formula to determine a desired/need value from a finite selection of known mathematical equations. Such a simple selection of mathematical properties would have been predictable with a reasonable expectation for success and with no unexpected results.
Regarding claim 25: Dunham, as modified by Abuhaikal, discloses calculating friction coefficients and discuss various formulas involving friction coefficients (Dunham – [0038][0056] - Abuhaikal – [0009], [0010], [0024], [0025]). However, Dunham, as modified by Abuhaikal, does not disclose computing a value of (P_1 - P_2)/(2kfQΔQ). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to have calculated a value of (P_1 - P_2)/(2kfQΔQ). As mathematical manipulation is very well known, as mathematically determining friction coefficients is very well known, and as both Dunham and Abuhaikal teach determining a friction coefficient but are silent regarding the recited formula, it would have been within routine skill to have selected a specific/desired mathematical formula to determine a desired/need value from a finite selection of known mathematical equations. Such a simple selection of mathematical properties would have been predictable with a reasonable expectation for success and with no unexpected results.
Response to Arguments
Applicants’ arguments, filed 6/16/2026 (Pre-Appeal Brief Request for Review), with respect to the previous rejections of claims 1-4, 7-11, 14-18, and 20-28 have been fully considered but they are not persuasive.
Applicants argue that limiting the operations to modifying a friction reducer amount, a friction reducer type, or a friction reducer concentration meaningfully limits the abstract idea to those three operations. Applicants assert that this situation is fundamentally identical to that in Diamond v. Diehr, where the United States Supreme Court held that the application of an abstract idea to the physical process of curing synthetic rubber was sufficient to claim a physical machine or process and therefore was not claiming the abstract idea itself. The examiner disagrees with applicants’ analysis and conclusion. Determining the friction coefficient and performing operations including modifying a friction reducer amount, a friction reducer type, or a friction reducer concentration does not provide any meaningful improvement to technology or the technical field. There are no recitations of when the modification is done (real time, historically, or for future operations (i.e. there are no limitations that provide for a downhole operation in which all of the limitations are being performed during real time). It is not clear if the modifying is actually modifying a downhole fluid with a friction reducer or just a modification of the data. Further there is no actual conclusion of what the modification accomplishes. In Diamond v. Diehr the rubber was a cured rubber and a press was automatically opened when the rubber was deemed cured. In the instant application, there is no end result. It is like a story with several chapters and just ends without a conclusion.
Regarding claims 1, 8, and 15, applicants argue that Dunham fails to explicitly or inherently disclose "determining a friction coefficient corresponding to the performance of the friction reducer in the well system”. Applicants assert that Dunham explicitly discloses determining a friction coefficient of perforations, which are holes punctured through the wellbore casing into the formation, not the friction coefficient corresponding to the performance of a friction reducer in the well system. The examiner disagrees with applicants’ analysis and conclusion. Determining a friction coefficient of perforations is a determination made in a well system. Further, as discussed above regarding the rejection of claim 1, Dunham discloses determining friction coefficients (at least [0015]), and discloses a method that informs regarding the behavior of friction reducers (at least [0034]) (i.e. performance of friction reducers.
Applicants argue that “the Office has not even cited a reference to a friction reducer, Applicant simply has no idea how the Office has come to this conclusion and the Office seems to believe that explaining the reason for the rejection on the record is unnecessary.”. Applicants further argue that “the Office's rejection is improper on the merits, both because Dunham fails to disclose the recited elements and because the Office fails to even attempt to explain how the Office's rejection overcomes this clear deficiency in the cited reference.”
The examiner apologizes for applicants’ confusion regarding the rejections above as well as the response to arguments in the Final Office Action mailed 4/21/2026. The examiner has attempted to identify where Durham discloses the broadly recited claim limitations and has attempted to make it clear that Dunham clearly discloses the instant claims as broadly recited. It should be noted that applicants’ arguments appear to be based on the fact that Dunham simply does not use the exact same terminology and explanations as applicants have recited in the instant claims. Applicants are reminded that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TARAS P BEMKO whose telephone number is (571)270-1830. The examiner can normally be reached on Monday-Friday 8:00-5:00 (EDT/EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached on 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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/Taras P Bemko/
Primary Examiner, Art Unit 3672
10/9/2026
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