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 .
Response to Amendment
This Action is in response to Applicant’s Reply of May 28, 2026.
Claim 9 has been cancelled.
Claim 32 has been added.
Claim 1 is allowable. The restriction requirement between species, as set forth in the Office action mailed on December 19, 2025, has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of December 19, 2025 is withdrawn. Claims 12 and 16 , directed to a non-elected species are no longer withdrawn from consideration because the claim(s) requires all the limitations of an allowable claim. However, claims 30 and 31, directed to a non-elected species, remain withdrawn from consideration because they do not require all the limitations of an allowable claim.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Applicant’s amendments to claims 1, 8, and 24 overcome the previously presented objections thereto.
Applicant’s amendment to claim 1 overcomes the previously presented 35 USC 103 rejection thereof.
Applicant’s amendment to claim 24 overcomes the previously presented 35 USC 103 rejection thereof.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant has indicated that claim 24 is allowable due to the incorporation of claim 9 therein.
It is first noted that claim 9 did not depend from claim 24 and thus the incorporation of claim 9 therein would not necessarily be an indication that claim 24 was allowable.
Secondly, the proper incorporation of an allowable dependent claim into its respective independent claim also requires the incorporation of all intervening dependent claims. Proper incorporation of claim 9 would have been into claim 1 and also included all of the subject matter of claims 5 and 6. The subject matter of claim 5 was not incorporated into claim 24.
Lastly, the subject matter added to claim 24 is not the same as that in claim 9. Proper incorporation of an allowable dependent claim must include all of the subject matter of the allowable claim. Claim 24 only requires the use of an iterative loop which is taught by Boone et al. (US 2009/0090555) as shown below.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” and thus are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “measuring means” and “activation means” in claim 32.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim(s) 24-29 and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hopkins et al. (US 2011/0278070, Hopkins) in view of Sheiretov et al. (US 2021/0254422, Sheir), Garcia et al. (US 2018/0216458, Garcia), and Boone et al. (US 20090090555, Boone).
Regarding claim 24: Hopkins discloses a radial drilling tool string Fig 1 for drilling a radial hole at 32 in a wellbore wall 12, Fig 1, 2, the radial drilling tool string is adapted to connect to a surface via an elongated flexible member 10 – Fig 1, the radial drilling tool string forms a longitudinal axis Fig 1, 2, the radial drilling tool string comprising:
an electronic section 16, 18, 20, 22,
an anchoring portion 28 comprising a primary anchor unit 30,
a drilling portion 26 comprising a radial drill unit 32; and
wherein the radial drill unit is adapted to rotate a drill bit [0094] and to displace [0094] and retract [0094] the drill bit in a radial direction in relation to the longitudinal axis Fig 2;
wherein the electronic section is adapted to actuate the tool string in a sequence of actions for controlling the radial drilling tool string to drill the radial hole in the wellbore wall [0093]-[0109].
Hopkins discloses all of the limitations of the above claim(s) except the drilling tool string including an orientation tool and a primary anchor sensor is connected to the primary anchor unit for measuring the primary anchor performance parameter, the electronic section being programmable with a sequence of actions via a graphical user interface (GUI) and adapted for controlling the radial drilling tool string to drill the radial hole in the wellbore wall and, the electronic section being adapted to perform an automated check of a primary anchor performance parameter while performing the sequence of actions and either continue or stop the sequence of actions if the primary anchor performance parameter does not meet set ranges or limits, the electronic section configured to automatically reprogram orchestration of any one of the anchoring portion, drilling portion, or orientation tool, or some combination thereof, based on results of the at least one automated check; and the electronic section including an iterative loop to orient the drill bit tool to a programmed orientation relative to a measured orientation.
Sheir discloses a downhole system that includes an anchor 72 as well as a sensor 250 for measuring the force applied by the anchor [0068].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Hopkins to include a primary anchor sensor for measuring a primary anchor performance parameter, as taught by Sheir, in order to have been able to determine if the anchors were applying sufficient force to the wellbore wall to keep the tool string from moving. This would have achieved the predictable results of ensuring that the tool string did not drop or move during the operation.
Hopkins discloses all of the limitations of the above claim(s) except the drilling tool string including an orientation tool, the electronic section being programmable with a sequence of actions via a graphical user interface (GUI) and adapted for controlling the radial drilling tool string to drill the radial hole in the wellbore wall and, the electronic section being adapted to perform an automated check of a primary anchor performance parameter while performing the sequence of actions and either continue or stop the sequence of actions if the primary anchor performance parameter does not meet set ranges or limits, the electronic section configured to automatically reprogram orchestration of any one of the anchoring portion, drilling portion, or orientation tool, or some combination thereof, based on results of the at least one automated check; and the electronic section including an iterative loop to orient the drill bit tool to a programmed orientation relative to a measured orientation.
Garcia discloses a system similar to that of Hopkins. Garcia discloses a radial drilling tool string 200 for drilling a radial hole [0031] in a wellbore wall Fig 2, the radial drilling tool string is connected to a surface via an elongated flexible member 112, the radial drilling tool string comprises:
an orientation tool 810 – [0078]-[0080],
an electronic section 220, 230/900, the electronic section including an input device 926 to receive input and commands from a human operator [0090], [0094] and an output device 928 – [0095],
an anchoring portion 240 comprising a primary anchor unit 242,
a drilling portion [0031] comprising a radial drill unit [0031],
wherein the radial drilling tool string forms a longitudinal axis Fig 2 and the radial drill unit is adapted to displace [0085] and retract [0085] a drill bit 514 in a radial direction in relation to the longitudinal axis Fig 9;
wherein the electronic section is programmable with a sequence of actions via a graphical user interface (GUI) and adapted for controlling the radial drilling tool string to drill the radial hole in the wellbore wall [0097], [0098], Fig 15;
wherein the electronic section is adapted to perform an automated check during the sequence of actions [0102], [0104], [0106], Fig 15,
wherein the electronic section is configured to automatically reprogram orchestration of any one of the anchoring portion, drilling portion, or orientation tool, or some combination thereof, based on results of the at least one automated check [0102], [0104], [0106], Fig 15.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Hopkins so that the drilling tool string included an orientation tool and the electronic section was programmable with a sequence of actions via a GUI for drilling the radial hole and adapted to perform automated checks on the operations and make changes to the drilling tool based on the automated checks, as taught by Garcia, in order to have been able to automatically perform the method of forming a radial hole in the direction desired based on data entered by a human operator [0097].
This modification would have resulted in perform an automated check of a primary anchor performance parameter while performing the sequence of actions and either continue or stop the sequence of actions if the primary anchor performance parameter does not meet set ranges or limits as this is part of the drilling operation of Hopkins, as modified.
Hopkins discloses all of the limitations of the above claim(s) except the electronic section including an iterative loop to orient the drill bit tool to a programmed orientation relative to a measured orientation.
Boone discloses a method and system for automated direction drilling. The process involves taking orientation measurements, comparing those measurements to set parameter thresholds, and performing an iterative loop to determine what corrections to the drilling system were necessary to ensure that the drilling progressed along the desired orientation [0055], [0056], [0113], [0119], [0123], [0124], [0141], [0151], [0171], [0193], [0194], [0206], [0218], [0240], [0241], [0391], [0400].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Hopkins so that the electronic section including an iterative loop to orient the drill bit tool to a programmed orientation relative to a measured orientation, as taught Boone, in order to have maintained the actual drilling path with the planned path, and to adjust the planned path as circumstances required [0124].
Regarding claim 25: Wherein the radial drilling tool string comprises at least two radial drill unit sensors [0036] of Hopkins – weight and torque connected to the radial drill unit for measuring a drill unit performance parameter [0036].
Regarding claim 26: Wherein the orientation tool 810 – [0078]-[0080] of Garcia adapted to be controlled by the electronic section, the orientation tool, when activated, is adapted to rotate the drilling portion around the longitudinal axis relative to the anchoring portion, and including orienting the drilling portion in relation to the anchoring portion [0143], [0145] of Garcia.
Hopkins, as modified, discloses all of the limitations of the above claim(s) except the orientation tool being rigidly connected to the anchoring portion in one end and rigidly connected to the drilling portion in an opposite end.
However, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Hopkins so that the orientation tool was rigidly connected to the anchoring portion in one end and rigidly connected to the drilling portion in an opposite end, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Regarding claim 27: Wherein the radial drilling tool string comprises an orientation tool sensor for measuring an orientation tool performance parameter [0044], [0079], [0092] of Hopkins; [0080] of Garcia.
Regarding claim 28: Hopkins, as modified, discloses all of the limitations of the above claim(s) except the radial drilling tool string comprising a secondary anchor unit within the drilling portion, and the method comprises setting the secondary anchor unit prior to drilling the radial hole.
Garcia discloses that the anchor 240 used there in can include one or more anchor modules [0088].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Hopkins to include a second anchor unit, as taught by Garcia, in order to have further stabilized the drilling unit in the well. This would have achieved the predictable results of ensuring that the string and drilling unit did not shift during the operation thus causing damage to the well and the tool string.
Regarding claim 29: The above modification to include a secondary anchor unit, as taught by Garcia, would have resulted in a secondary anchor sensor for measuring a secondary anchor performance parameter. The inclusion of anchor sensors is considered obvious over Sheir as indicated above with respect to claim 24.
Regarding claim 32: Hopkins discloses a system Fig 1, 2 for orchestrating an anchoring portion 28, a drilling portion 26 of a radial drilling tool string Fig 1 when drilling a radial hole at 32 in a wellbore wall 12 – Fig 1, 2, the anchoring portion including at least one anchoring unit having an anchor tool 30, the drilling portion including a radial drill unit having a drill bit tool 32; the system comprising:
an electronic section 16, 18, 20, 22 adapted to actuate the tool string in a sequence of actions for controlling the radial drilling tool string to drill the radial hole in the wellbore wall [0093]-[0109] by communicating with activation means of each of the at least one anchor unit and the radial drill unit [0093]-[0109], and
the electronic section in communication with a corresponding measuring means of each of the radial drill unit [0036] and the orientation tool unit [0044], [0079], [0092] for measuring, respectively, a drill bit tool performance parameter [0036], and an orientation tool performance parameter [0044], [0079], [0092].
Hopkins discloses all of the limitations of the above claim(s) except the system including an orientation portion that includes an orientation unit having an orientation tool, and the electronic section being connectable to the radial drilling tool string and programmable via a graphical user interface and adapted for automatically controlling the at least one anchoring unit, the drilling unit, and the orientating unit; the electronic section in communication with a corresponding measuring means of the at least one anchor unit for measuring an anchor tool performance parameter; the electronic section further in communication with activation means of the orientation unit; the electronic section configured to perform at least one automated check during a sequence of actions using the performance parameter from one or more of the at least one anchor unit, the radial drill unit, the orientation unit, the at least one automated check is performed at least one of prior to activating the orientation tool, while the orientation tool is activated, and after deactivating the orientation tool; the electronic section configured to automatically reprogram the orchestration of any one of the anchoring portion, the drilling portion, the orientation portion or any combination thereof, based on results of the at least one automated check, the sequence of actions of the anchoring portion, drilling portion, and orientation portion being interdependent; and the electronic section including an iterative loop to orient the drill bit tool to a programmed orientation relative to a measured orientation.
Sheir discloses a downhole system that includes an anchor 72 as well as a sensor 250 for measuring the force applied by the anchor [0068].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Hopkins to include a primary anchor sensor for measuring a primary anchor performance parameter, as taught by Sheir, in order to have been able to determine if the anchors were applying sufficient force to the wellbore wall to keep the tool string from moving. This would have achieved the predictable results of ensuring that the tool string did not drop or move during the operation.
Hopkins discloses all of the limitations of the above claim(s) except the system including an orientation portion that includes an orientation unit having an orientation tool, and the electronic section being connectable to the radial drilling tool string and programmable via a graphical user interface and adapted for automatically controlling the at least one anchoring unit, the drilling unit, and the orientating unit; the electronic section further in communication with activation means of the orientation unit; the electronic section configured to perform at least one automated check during a sequence of actions using the performance parameter from one or more of the at least one anchor unit, the radial drill unit, the orientation unit, the at least one automated check is performed at least one of prior to activating the orientation tool, while the orientation tool is activated, and after deactivating the orientation tool; the electronic section configured to automatically reprogram the orchestration of any one of the anchoring portion, the drilling portion, the orientation portion or any combination thereof, based on results of the at least one automated check, the sequence of actions of the anchoring portion, drilling portion, and orientation portion being interdependent; and the electronic section including an iterative loop to orient the drill bit tool to a programmed orientation relative to a measured orientation.
Garcia discloses a system similar to that of Hopkins. Garcia discloses a radial drilling tool string 200 for drilling a radial hole [0031] in a wellbore wall Fig 2, the radial drilling tool string is connected to a surface via an elongated flexible member 112, the radial drilling tool string comprises:
an orientation tool 810 – [0078]-[0080],
an electronic section 220, 230/900, the electronic section including an input device 926 to receive input and commands from a human operator [0090], [0094] and an output device 928 – [0095],
an anchoring portion 240 comprising a primary anchor unit 242,
a drilling portion [0031] comprising a radial drill unit [0031],
wherein the radial drilling tool string forms a longitudinal axis Fig 2 and the radial drill unit is adapted to displace [0085] and retract [0085] a drill bit 514 in a radial direction in relation to the longitudinal axis Fig 9;
wherein the electronic section is programmable with a sequence of actions via a graphical user interface (GUI) and adapted for controlling the radial drilling tool string to drill the radial hole in the wellbore wall [0097], [0098], Fig 15;
wherein the electronic section is adapted to perform an automated check during the sequence of actions [0102], [0104], [0106], Fig 15,
wherein the electronic section is configured to automatically reprogram orchestration of any one of the anchoring portion, drilling portion, or orientation tool, or some combination thereof, based on results of the at least one automated check [0102], [0104], [0106], Fig 15.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Hopkins so that the drilling tool string included an orientation tool and the electronic section was programmable with a sequence of actions via a GUI for drilling the radial hole and adapted to perform automated checks on the operations and make changes to the drilling tool based on the automated checks, as taught by Garcia, in order to have been able to automatically perform the method of forming a radial hole in the direction desired based on data entered by a human operator [0097].
This modification would have resulted in perform an automated check of the performance parameter of the at least one anchor unit while performing the sequence of actions and either continue or stop the sequence of actions if the at least one anchor unit performance parameter does not meet set ranges or limits as this is part of the drilling operation of Hopkins, as modified.
Hopkins discloses all of the limitations of the above claim(s) except the electronic section including an iterative loop to orient the drill bit tool to a programmed orientation relative to a measured orientation.
Boone discloses a method and system for automated direction drilling. The process involves taking orientation measurements, comparing those measurements to set parameter thresholds, and performing an iterative loop to determine what corrections to the drilling system were necessary to ensure that the drilling progressed along the desired orientation [0055], [0056], [0113], [0119], [0123], [0124], [0141], [0151], [0171], [0193], [0194], [0206], [0218], [0240], [0241], [0391], [0400].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Hopkins so that the electronic section including an iterative loop to orient the drill bit tool to a programmed orientation relative to a measured orientation, as taught Boone, in order to have maintained the actual drilling path with the planned path, and to adjust the planned path as circumstances required [0124].
Allowable Subject Matter
Claims 1-8 and 10-23 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1: The prior art of record fails to disclose or suggest an electronic section that uses an iterative loop to orient a drill bit to a programmed orientation, and if programmed orientation, during orientation, is overshoot or undershoot, the iterative loop uses a measured overshoot or undershoot value between the programmed orientation and the measured orientation during a subsequent attempt to orient the drill bit to the programmed orientation as recited in the claimed method.
Regarding claims 2-8 and 10-23: These claims are considered allowable due to their dependence on claim 1.
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 JENNIFER H GAY whose telephone number is (571)272-7029. The examiner can normally be reached Monday through Thursday, 6-3:30 and every other Friday 6-11.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Y Coupe can be reached at (571)270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER H GAY/Primary Examiner, Art Unit 3619
JHG
7/14/2026
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