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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10 September 2026 has been entered.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an exception of an abstract idea claimed in a method, system and device for transmitting and receiving data between a conventional downhole tool and surface equipment without significantly more.
The claims recite controlling a bottom hole assembly via receivers and transmitters of the assembly for sending data to a surface processor using conventional data transmission equipment; wherein the "controlling" is absent a transformative result non a reduction of a particular article to a different state or thing.
This judicial exception is not integrated into a practical application because the collection of data from conventional well known equipment and use of conventional data transmission techniques is merely a mental process of monitoring requiring minimal human interaction(s) for the metes and bounds of the controlling, considered commensurate with merely enabling or disabling a downhole assembly. See 2106.05(c) Particular Transformation.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because receiving and transmitting data from a downhole tool absent any specific transformative results amounts to a mental process requiring minimal human intervention to no claimed avail.
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 (i.e., changing from AIA to pre-AIA ) 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5, 6, 8, 9, 10, 11, 13, 14, 16, 17, 18, 19 and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Dwyer et al., U.S. 2021/0148222.
Regarding claims 1, 9 and 17, Dwyer et al. discloses using a first command received from a surface processor ([0030], the system controller for the drilling operator), controlling a bottomhole assembly (BHA) component of a downhole system by changing an operating parameter; receiving, from the downhole system comprising the BHA component, data at a transmitter module (([0033], [0034], antennas 210, 218) of the intra-BHA; transmitting, via a wireless short-range communication ([0006]) using the transmitter coil ([0034]), the data to a receiver module ([0033]) of the intra-BHA, wherein the transmitter module and the receiver module are both disposed in a pressure barrel (fig 5, 236, fig 4, 226) form an intra-BHA network using the wireless short-range communication, receiving, via the wireless short-range communication, the data at the receiver module; transmitting the data to the MWD tool; receiving, at the MWD tool, the data; and transmitting, via a type of telemetry, the data from the MWD tool to a surface processor ([0025]).
Re: claims 2, 10 and 18, the reference discloses the receiver module is a magnetometer ([0028]).
Re: claims 3, 11 and 19, the reference discloses the transmitter coil is inherently a coil winding ([0034]).
Re: claims 5 and 13, the reference discloses determining whether the downhole system is currently performing a drilling operation ([0003]) and based on the downhole system currently performing the drilling operation, using the transmitter coil to transmit the data ([0004]).
Re: claims 6 and 14, the reference discloses determining whether the downhole system is performing a drilling operation ([0003]) and based on the downhole system not currently performing the drilling operation, transmitting the data using an acoustic transmitter ([0005]).
Re: claims 8, 16 and 20, the reference discloses the data is transmitted using pulse position modulation ([0004]) or some combination thereof.
Response to Arguments
Applicant's arguments filed 10 September 2026 have been fully considered but they are not persuasive.
Applicants argue against the 35 U.S.C. § 101 as allegedly being directed to an abstract because the claims are not directed merely to monitoring or data transmission, but instead recite a particular downhole control and communication architecture for controlling a bottom hole assembly (BHA) component and communicating data through an intra-BHA network to a measurement while drilling (MWD) tool and then to the surface.
The claims are directed to a particular well known applications, tools and communications to “change an operational parameter” that is not claimed nor existent. As such the 35 U.S.C. § 101 rejection acknowledges the lack of ineligibly as a concept performed in the human mind with or without a physical aid (e.g., pen and paper) merely requiring observations, evaluations, judgments, opinions.
The claims do not recite a technological solution to a technological problem nor practical application in support of the claimed “changing of an operational parameter” which broadly requires minimal or no human interaction wherein operational changes of a BHA may change according to the formation with or without operator input.
The claims are well-understood, routine, and conventional and do not impose meaningful limits other than data gathering and outputting to a monitor and can be practically performed in a human mind simply by ignorance or minimal interaction.
Applicants argue the claims integrate any such concept into a practical application because the specification explains the downhole technical problem addressed in the claimed architecture.
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). Moreover, the claims do not require a rotary steerable system nor control of one.
Applicants argue the conventional elements of a transmitter, receiver, network measurement tool and a downhole housing present meaningful limits in a communication control system but does not tie the claimed subject matter into a specific improvement nor outcome as noted above.
Applicants argue the prior art does not disclose a pressure barrel containing the transmission and receiver module; whereas the claims do not set forth any specific structural elements to preclude the comparison to the prior art elements having the claimed modules within the prior art tool as noted in the final rejection.
Applicants argue the prior art does not disclose uphole and downhole bi-directional command and data signals and corresponding data reception.
The reference discloses in paragraph 0063 unidirectional communications to control a BHA, see paragraphs 0061, 0059 also; wherein the process is optimized for uphole and/or downhole transmissions being repeatedly performed.
Applicants argue the metes and bounds of a first command whereas the claims do not require a specific timewise nor action sequence, nor do the open ended claims require a sequence.
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 KENNETH L THOMPSON whose telephone number is (571)272-7037. The examiner can normally be reached Weekdays; 9:00-5:00, est.
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13 October 2026
/KENNETH L THOMPSON/ Primary Examiner, Art Unit 3676
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