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 .
Response to Arguments
Applicant's arguments filed 25 March 2016 have been fully considered but they are not persuasive.
Applicant argues that claim 1 is patentable subject meter under 101 because it recites elements which are not mere data manipulation and are tied to physical processes. Examiner respectfully disagrees. Claim 1, in its entirety, is an abstract idea as discussed below. The limitations of claim 1 are all limitations, as drafted, that 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. Thus, the claim recites an abstract idea. The fact that the mathematical relationship relates to physical structures is not relevant to the 101 analysis since the type of “data” (i.e., variables used) merely narrows the abstract idea and does not provide any additional elements to the abstract idea.
Applicant states that the limitations of claim 1 are not mere mathematical concepts and are therefore not directed to an abstract idea under Step 2A, Prong 1. Examiner respectfully disagrees. The limitations of claim 1 all represent mathematical relationships and are therefore mathematical concepts and thus abstract ideas.
Applicant argues that, under Step 2A, Prong 2, claim 1 integrates the claimed concept into a practical application by the optimization of drill bit selection using the more accurate rock strength estimation. This argument is moot since claim 1 has no recitation of any limitation related to drill bit selection. In order for an analysis to be performed under Step 2A, Prong 2 that the abstract idea is integrated into a practical application there must be additional elements (i.e., none abstract idea) recited in the claim. Claim 1 has no such recitation.
Applicant argues that, under Step 2B, claim 1 recites significantly more than a generic computation since as amended claim 1 includes non-conventional elements. Examiner respectfully disagrees. In order to be patentable subject matter under Step 2B the claim must recite additional elements that amount to significantly more than the abstract idea. However, claim 1 recites no additional elements.
The previous 112(b) and 103 rejections are withdrawn due to amendments. However, new 112(a) and 112(b) rejections are presented below.
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 1-20 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 8, and 14 recite “wherein the cutting force mechanical specific energy represents energy associated with rock cutting exclusive of frictional losses and wear-induced inefficiencies.” This limitation does not appear in the originally filed application. Mechanical specific energy is a term of art that is the total energy required to remove a unit volume of rock, inclusive of friction losses and wear-induced inefficiencies and any other source of energy loss. While Applicant can give “cutting force mechanical specific energy” a different meaning then the more generic “mechanical specific energy” in order to include such a limitation in the claim there must be support in the originally filed application.
Claims 2-7, 9-13, and 15-20 are rejected for depending from a rejected claim.
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 1-20 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 14 recite “wherein the cutting force mechanical specific energy represents energy associated with rock cutting exclusive of frictional losses and wear-induced inefficiencies.” It is unclear what the metes and bounds of “represents” are in the context of the claim. It is unclear what cutting force mechanical specific energy is since the term “represents” means the cutting force mechanical specific energy is not the same as energy associated with rock cutting exclusive of frictional losses and wear-induced inefficiencies and is instead a mere representation. Something that “represents” is something (i.e., the cutting force mechanical specific energy) that serves as a symbol or proxy of another (i.e., the energy associated with rock cutting exclusive of frictional losses and wear-induced inefficiencies). The current claim language makes it unclear what precisely the cutting force mechanical specific energy is.
Claims 2-7, 9-13, and 15-20 are rejected for depending from a rejected claim.
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 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 1-20 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, wherein the cutting force mechanical specific energy represents 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, wherein the cutting force mechanical specific energy represents 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, wherein the cutting force mechanical specific energy represents 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 8 and 14 the additional elements of: non-transitory, machine-readable media and a processor.
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.”
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).
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 and 4-7 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 cutting force mechanical specific energy of the drill bit at the first depth comprises determining the cutting force mechanical specific energy based on a cutting force weight on bit and a cutting force torque on bit;
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 11-13 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;
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;
instructions to determine the cutting force mechanical specific energy of the drill bit at the first depth comprise instructions to determine the cutting force mechanical specific energy based on a cutting force weight on bit and a cutting force torque on bit which merely narrows the previously recited abstract idea limitations.
Claims 15, and 17-20 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;
the instructions to determine the cutting force mechanical specific energy of the drill bit at the first depth comprise instructions to determine the cutting force mechanical specific energy based on a cutting force weight on bit and a cutting force torque on bit; 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
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 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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