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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08 August 2026 has been entered.
Response to Arguments
Applicant's arguments filed 08 August 2026 have been fully considered but they are not persuasive. Applicant argues that the limitation of modifying drilling operations based on the determined rock strength is not insignificant post solution activity and instead integrates the abstract idea into a practical application. Applicant further argues that the invention of the independent claims is not a generic computer function. Examiner respectfully disagrees. The step of modifying the drilling operation does not integrate the abstract idea into a practical application under Step 2A, Prong 2 since the limitation amounts to “apply it” as discussed below. The limitation does not meaningfully integrate the abstract idea into a positively recited physical transformation due to the generic nature of both (1) “based on” not being a specific enough trigger to connect the abstract idea to a practical application and (2) modifying a generic “drilling operation” is not a specific action that achieve a specific solution in order to integrate the abstract idea into a practical application.
The 112(a) and 112(b) rejections are withdrawn due to amendments.
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 1-5, 7-12, 14-18, and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an 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 1-5, 7-12, 14-18, and 20 are directed to a method (process), a system (machine or manufacture), and a non-transitory medium (manufacture), 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.
Claim 1 recites abstract limitations, including: “determining a drilling efficiency of a drill bit at a first depth in a wellbore formed in a subsurface formation based, at least in part, on a bit wear level of the drill bit; determining a cutting force mechanical specific energy of the drill bit at the first depth based on a cutting force weight on bit and a cutting force torque on bit, wherein the cutting force mechanical specific energy is energy associated with rock cutting exclusive of frictional losses and wear-induced inefficiencies; and determining a rock strength of the subsurface formation at the first depth based on the drilling efficiency and the cutting force mechanical specific energy of the drill bit.”
Claim 8 recites abstract limitations, including: “instructions to determine a drilling efficiency of a drill bit at a first depth in a wellbore formed in a subsurface formation based, at least in part, on a bit wear level of the drill bit; instructions to determine a cutting force mechanical specific energy of the drill bit at the first depth based on a cutting force weight on bit and a cutting force torque on bit, wherein the cutting force mechanical specific energy is energy associated with rock cutting exclusive of frictional losses and wear-induced inefficiencies; and instructions to determine a rock strength of the subsurface formation at the first depth based on the drilling efficiency and the cutting force mechanical specific energy of the drill bit.”
Claim 14 recites abstract limitations, including: “instructions to determine a drilling efficiency of a drill bit at a first depth in a wellbore formed in a subsurface formation based, at least in part, on a bit wear level of the drill bit; instructions to determine a cutting force mechanical specific energy of the drill bit at the first depth based on a cutting force weight on bit and a cutting force torque on bit, wherein the cutting force mechanical specific energy is energy associated with rock cutting exclusive of frictional losses and wear-induced inefficiencies; and instructions to determine a rock strength of the subsurface formation at the first depth based on the drilling efficiency and the cutting force mechanical specific energy of the drill bit.”
These limitations, as drafted, are a process that, under its broadest reasonable interpretation, represent mathematical relationships, mathematical formulas or equations, and/or mathematical calculations and are therefore mathematical concepts. The mere recitation of a generic computer does not take the claim out of the mathematical concepts 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.
With respect to claim 1, the method steps of the invention lack any recitation of a machine, let alone a recitation which creates a substantial tie so as to impose meaningful limitations on the claims scope. Accordingly, the method steps can be performed entirely manually.
Claims 1, 8 and 14 recite the additional elements of: non-transitory, machine-readable media, a processor, and instructions to modify/modifying a drilling operation on the wellbore or a subsequent drilling operation of another wellbore based, at least in part, on the determined rock strength of the subsurface formation.
The claimed computer components (i.e., processor, computer readable medium) are recited at a high level of generality and are merely invoked as tool to perform the abstract idea, and therefore amount to “apply it.”
The step of modifying a drilling operation based on the determined rock strength amounts to no more than mere instructions/steps to apply the exception and thus merely amount to “apply it”.
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).
As discussed above, the additional elements amount to mere instructions to apply the exception (using additional elements non-transitory, machine-readable media and a processor). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit).
The step of modifying a drilling operation based on the determined rock strength merely amount to “apply it”. The reciting of claim limitations that attempt to cover any solution (i.e., modify operations) to an identified problem (i.e., bit selection/determining drilling conditions for future wells) with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result (i.e., what aspects are changed or how the change is affected by the abstract idea) does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words “apply it” (see MPEP 2106.05(f)(1)).
Thus, even when viewed as an ordered combination, nothing in the claims add significantly more (i.e., an inventive concept) to the abstract idea.
Claim 2, 4-5, and 7 further recite:
determining an average rock abrasiveness factor based, at least in part, on a cutter wear volume of a plurality of primary cutters disposed along a face of the drill bit;
determining a weight on bit (WOB) and a torque on bit (TOB) on the drill bit along a drilling depth of the wellbore based, at least in part, on a given rate of penetration of the drill bit, a given quantity of revolutions per minute of the drill bit; determining a mechanical specific energy of the drill bit based on the WOB and TOB of the drill bit along the drilling depth; and determining a plurality of values of the drilling efficiency of the drill bit along the drilling depth of the wellbore;
determining an input energy to a primary cutter of the drill bit at the first depth along a drilling depth of the wellbore; determining a required energy for the primary cutter of the drill bit to wear to the bit wear level; and determining the bit wear level at the first depth along the drilling depth of the wellbore;
the rock strength is a confined compressive strength of the subsurface formation at the first depth which merely narrows the previously recited abstract idea limitations.
Claim 9 and 11-12 further recite:
instructions to determine an average rock abrasiveness factor based, at least in part, on a cutter wear volume of a plurality of primary cutters disposed along a face of the drill bit;
instructions to determine a weight on bit (WOB) and a torque on bit (TOB) on the drill bit along a drilling depth of the wellbore based, at least in part, on a given rate of penetration of the drill bit, a given quantity of revolutions per minute of the drill bit, and a known rock strength; instructions to determine a mechanical specific energy of the drill bit based on the WOB and TOB of the drill bit along the drilling depth; and instructions to determine a plurality of values of the drilling efficiency of the drill bit along the drilling depth of the wellbore; and
instructions to determine an input energy to a primary cutter of the drill bit at the first depth along a drilling depth of the wellbore; instructions to determine a required energy for the primary cutter of the drill bit to wear to the bit wear level; and instructions to determine the bit wear level at the first depth along the drilling depth of the wellbore which merely narrows the previously recited abstract idea limitations.
Claims 15, 17-18, and 20 recite:
instructions to determine an average rock abrasiveness factor based, at least in part, on a cutter wear volume of a plurality of primary cutters disposed along a face of the drill bit;
instructions to determine a weight on bit (WOB) and a torque on bit (TOB) on the drill bit along a drilling depth of the wellbore based, at least in part, on a given rate of penetration of the drill bit, a given quantity of revolutions per minute of the drill bit, and a known rock strength; instructions to determine a mechanical specific energy of the drill bit based on the WOB and TOB of the drill bit along the drilling depth; and instructions to determine a plurality of values of the drilling efficiency of the drill bit along the drilling depth of the wellbore;
instructions to determine an input energy to a primary cutter of the drill bit at the first depth along a drilling depth of the wellbore; instructions to determine a required energy for the primary cutter of the drill bit to wear to the bit wear level; and instructions to determine the bit wear level at the first depth along the drilling depth of the wellbore; and
the rock strength is a confined compressive strength of the subsurface formation at the first depth which merely narrows the previously recited abstract idea limitations.
Claims 3, 10, and 16 further recite: determining/instructions to determine a cutter dull severity for each primary cutter of the plurality of primary cutters; determining a cutter wear depth of the plurality of primary cutters based on the cutter dull severity; and determining the cutter wear volume of the plurality of primary cutters based on the determined cutter wear depth which merely narrows the previously recited abstract idea limitations. The additional element of “via a bit-rock interaction tool” is a software/model (Specifications ¶ [0035]). The claimed computer component (i.e., software/model) is recited at a high level of generality and are merely invoked as tool to perform the abstract idea, and therefore amount to “apply it” and mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTYN A HALL whose telephone number is (571)272-8384. The examiner can normally be reached M-F 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at (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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/KRISTYN A HALL/Primary Examiner, Art Unit 3672
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