DETAILED ACTION
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, 5, and 6 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claims 1 and 5 refer to a geomechanical system, but fails to explain or described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Support in the specification [0009-0010] is merely a recitation of the term as presented in claims 1 and 5. Par. [0004] also does not give much further detail. The limitations of the claims do not refer to any apparatus/system parts, or any articles that may be linked to such a system, and therefore is non-enabling.
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, 5, and 6 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.
Independent claims 1 and 5 are drawn to a geomechanical system, however the limitations that follow the preamble attempt to define elements that have not been positively recited. A proper system claim must have limitations defining the actual parts of the system. For example: “A geomechanical system comprising: a wellbore casing…, a rotary casing cutter…, a plurality of cutter arms…, a free fluid…, a pump or injector…, wherein….” It is not understood as to what is being claimed by the instant invention as filed 3/30/26.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Response to Arguments
Applicant's arguments filed 3/30/26 have been fully considered but they are not persuasive. Applicant alleges that the amendments to the independent claims address the rejections under 35 USC 112, which is unfounded. The claims are both indefinite and non-enabling for reasons as stated above. The body of each of the independent claims fail to claim an actual parts of a system. Further, the recitation of “a free flowing fluid access to fractures” does not make grammatical sense, and does not define what is encompassed by the term “access” to fractures. Is it referring to an open-hole wellbore, or something? There is no adequate explanation within the specification or claims. Further, the term “wherein the fractures are created with hydraulic fracturing techniques” fails to teach the system, and is not protected within this system claim.
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 ZAKIYA W BATES whose telephone number is (571)272-7039. The examiner can normally be reached M-F 8:30am - 5pm.
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/ZAKIYA W BATES/Primary Examiner, Art Unit 3674 6/26/2026
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