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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 30 July 2026 has been entered.
Response to Arguments
Applicant's arguments filed 30 July 2026 have been fully considered but they are not persuasive.
Applicant argues that the incorporation of the allowable subject matter of claim 3 overcomes the 101 rejections. Examiner respectfully disagrees. The amendments to the independent claims to include the limitation of "in response to said determining whether the cutter wear severity exceeds the wear severity threshold, stopping drilling of the wellbore" is "apply it" since it covers all possible solutions and does not specifically link the abstract idea to a particular solution. The claim limitation has the step of determining if the cutter wear severity exceed the wear severity threshold and then in response to the determining stopping drilling of the wellbore. However, the limitation does not tie the action of stopping drilling to a specific determination since the claim merely requires the step of determining to be performed and then once any determination is made (i.e., any relationship between the cutter wear severity and the wear severity threshold) the drilling is stopped. The language of claim 3 was narrower and integrated the abstract idea since it required the use of the abstract idea to have the physical action performed. The current amendment does not use the abstract idea itself, merely the existence of an abstract idea. Therefore, the abstract idea is not used to perform a specific action for a specific solution and does not overcome the 101 rejections.
The previous 112(b) rejection is withdrawn due to amendments but new 112(b) rejections are presented below due to the amendments.
The previous 103 rejections are withdrawn due to amendments. However, a new 103 rejection is made with regards to claims 1 and 4-5 with the addition of Hird (US 2022/0220178246) as discussed below.
Claim Rejections - 35 USC § 112
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, 4-10, 12-14, 16-17, and 19-20 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.
Claim 1 recite “determining cutter forces on a particular cutter” and “predicting a cutter wear severity of a particular cutter.” It is unclear if the particular cutter referred to by the two limitations is the same particular cutter. For the purpose of examination, the limitation will be interpreted as being the same particular cutter.
Claim 6 recites the limitation "the cutter of the drill bit" in line 7. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, “the cutter” will be interpreted as being the same structure as “a particular cutter” recited earlier in the claim.
Claim 14 recites the limitation "the cutter of the drill bit" in line 10. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, “the cutter” will be interpreted as being the same structure as “a particular cutter” recited earlier in the claim.
Claims 2, 4-5, 7-10, 12-13, 16-17, and 19-20 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 1-2, 4-10, 12-14, 16-17, and 19-20 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 1-2, 4-10, 12-14, 16-17, and 19-20 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.
Claims 1, 6, and 14 recite abstract limitations, including: “determining cutter forces on a particular cutter of the drill bit based on the input drill bit response; predicting a cutter wear severity of a particular cutter/the cutter of the drill bit during drilling of the wellbore based on the input drill bit response/cutter forces; and determining whether the cutter wear severity exceeds a wear severity threshold.”
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.
Claims 1, 6, and 14 recite the additional elements of: determining an input drill bit response to a drill bit for drilling a wellbore based on at least one operational attribute during drilling of the wellbore and modifying a downhole operational attribute based, at least in part, on the cutter wear severity, wherein said modifying the downhole operational attribute based, at least in part, on the cutter wear severity; and in response to said determining whether the cutter wear severity exceeds the wear severity threshold, stopping drilling of the wellbore.
Claim 6 also recites the additional elements of a non-transitory computer readable medium and a processor.
Claim 14 also recites the additional elements of a computer readable medium and a processor.
Determining an input drill bit response based on at least one operational attribute amounts to insignificant extra-solution activity (i.e., activity incidental to the primary process that is merely a nominal or tangential addition to the claim, see MPEP 2106.05(g)).
Modifying the downhole operational attribute based, at least in part, on the cutter wear severity; and in response to said determining whether the cutter wear severity exceeds the wear severity threshold, stopping drilling of the wellbore amounts to no more than mere instructions to apply the exception (i.e., “apply it”).
The additional elements of “a drill bit,” “for drilling a wellbore,” “during drilling of the wellbore,” and “stopping drilling of the wellbore” merely link the method to a particular technical environment or field of use.
The functions of the non-transitory computer readable medium, computer readable medium, and the processor are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component.
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 recited step of determining an input drill bit response based on at least one operational attribute is considered insignificant extra-solution activity as the limitations do not amount to more than mere data gathering. Based on applicant’s specification the step of determining is done using sensors (Specifications ¶ [0019, 0039]; “retrieve these measurements from one or more sensors positioned at the surface and/or downhole in the wellbore”). Additionally, the sensors are recited at a high level of generality. Given the generality of the data collection, the limitation does not contain significantly more to provide a practical application (see MPEP 2106.05(g)).
Furthermore, “a drill bit,” “for drilling a wellbore,” “during drilling of the wellbore,” and “stopping drilling of the wellbore” merely link the method to a particular environment or field of use in which to apply a judicial exception. As they merely confine the use of an abstract idea to a particular technical field which does not amount to significantly more than the exception itself. (see Flook and MPEP 2106.05(h)).
“[M]odifying a downhole operational attribute based, at least in part, on the cutter wear severity, wherein said modifying the downhole operational attribute based, at least in part, on the cutter wear severity comprises in response to said determining whether the cutter wear severity exceeds the wear severity threshold, stopping drilling of the wellbore” is recited at a high level of generality such that it amount to no more than mere instruction to apply the exception (i.e., “apply it”). The recitation of claim limitations that attempt to cover any solution (i.e., modifying an downhole operational attribute) to an identified problem (i.e., cutter wear) with no restriction no 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)). Examiner notes that the limitation of “in response to said determining whether the cutter wear severity exceeds the wear severity threshold, stopping drilling of the wellbore” does not integrate the abstract idea into a practical application because the whether or not the cutter wear severity exceeds the wear severity threshold is irrelevant for the limitation. The claim language merely requires (1) determining if the cutter wear severity exceeds the wear severity threshold and (2) once question 1 is answered either yes or no, stopping the drilling no matter what the answer is. The stopping of the drilling is tied to the existence of the abstract idea not to the actual abstract idea itself. The current claim language requires the determination of a cutter wear severity relative to the wear severity threshold and once the determination has been made stopping drilling because a determination was made not because the cutter wear severity exceeded the wear severity threshold.
As discussed above, the additional elements amount to mere instructions to apply the exception (using additional elements non-transitory computer readable medium, computer readable medium, and processor). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Thus, even when viewed as an ordered combination, nothing in the claims add significantly more (i.e., an inventive concept) to the abstract idea.
Claims 2, 5, 7-10, 13, 16-17, and 20 further recite:
determining a cutter power of the cutter based on the cutter forces; determining a cutter energy of the cutter based on the cutter power; determining a cutter wear volume of the cutter based on the cutter energy; and determining a cutter wear depth of the cutter based on the cutter wear volume, wherein predicting the cutter wear severity of the cutter comprises predicting the cutter wear severity based on the cutter wear depth;
the input drill bit response comprises at least one of a weight on bit, a torque on bit, a rate of penetration, or a rotation speed of the drill bit during drilling of the wellbore;
instructions to determine a cutter power of the cutter based on the cutter forces, wherein the instructions to predict the cutter wear severity of the cutter of the drill bit during drilling of the wellbore is based on the cutter power of the cutter;
instructions to determine a cutter energy of the cutter based on the cutter forces, wherein the instructions to predict the cutter wear severity of the cutter of the drill bit during drilling of the wellbore is based on the cutter energy of the cutter;
instructions to determine a cutter wear volume of the cutter based on the cutter forces, wherein the instructions to predict the cutter wear severity of the cutter of the drill bit during drilling of the wellbore is based on the cutter wear volume of the cutter;
instructions to determine a cutter wear depth of the cutter based on the cutter forces, wherein the instructions to predict the cutter wear severity of the cutter of the drill bit during drilling of the wellbore is based on the cutter wear depth of the cutter;
the operational attribute comprises at least one of a weight on bit, a torque on bit, a rate of penetration, or a rotation speed of the drill bit during drilling of the wellbore;
determine a cutter power of the cutter based on the cutter forces, wherein the instructions executable by the processor to cause the processor to predict the cutter wear severity of at least one cutter of the drill bit during drilling of the wellbore is based on the cutter power of the cutter which merely narrows the previously recited abstract idea limitations.
Claims 4, 12, and 19 further recite adjusting/instruction to adjust at least one operational attribute to reduce cutter wear severity during the drilling of the wellbore. This element is recited at a high level of generality such that it amount to no more than mere instruction to apply the exception (i.e., “apply it”). The recitation of claim limitations that attempt to cover any solution (i.e., changing a parameter) to an identified problem (i.e., cutter wear) with no restriction no 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)).
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.
Claims 1 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Samuel (US 2021/0363871) in view of Hird (US 2022/0220178246) and Zhan (US 2023/0175394).
With respect to Claim 1: Samuel discloses a method comprising:
determining an input drill bit response (¶ [0021, 0033]) to a drill bit (114) for drilling a wellbore (116) based on at least one operational attribute during drilling of the wellbore (¶ [0021, 0033-34]);
predicting a cutter wear severity (¶ [0027-28]) of at least one cutter of the drill bit during drilling of the wellbore based on the input drill bit response (¶ [0022, 0027-28, 0033]); and
modifying a downhole operational attribute based, at least in part, on the cutter wear severity (¶ [0032, 0058]), wherein said modifying the downhole operational attribute based, at least in part, on the wear severity comprises determining whether the cutter wear severity exceeds a wear severity threshold (¶ [0023, 0058, 0061]; threshold is where the drilling efficiency warrants replacement of the drill bit); and in response to determining whether the cutter wear severity of exceeds a wear severity threshold stopping drilling of the wellbore (¶ [0023, 0058, 0061]; drilling of the wellbore is stopped since the drill bit is removed).
Samuel further discloses a non-transitory, computer-readable medium having instructions stored thereon that are executable by a processor to cause the processor to perform the steps (¶ [0024, 0029, 0031]).
Samuel does not disclose determining cutter forces on a particular cutter of the drill bit based on the input drill bit response and the at least one cutter is a particular cutter of the drill bit.
Hird teaches it is known in the art to determine cutter forces on a particular cutter of the drill bit based on the input drill bit response and the at least one cutter is a particular cutter of the drill bit (¶ [0017-18]). It would be obvious to one having ordinary skill in the art before the effective filing date to combine the cutter force determination of Hird with the invention of Samuel with a reasonable expectation of success since doing so would allow for more information about the cutter to be determined.
The combination of Samuel and Hird does not teach the at least one cutter is a particular cutter of the drill bit
Zhan teaches it is known in the art to determine the cutter wear severity of a particular cutter of a drill bit during drilling of a wellbore based on input data (¶ [0041]). It would be obvious to one having ordinary skill in the art before the effective filing date to substitute the analysis of a particular cutter of Zhan for the analysis of the at least one cutter of Samuel and Hird with a reasonable expectation of success since doing so would perform the same predictable result of determining the wear severity of a cutter so modifications can be made to the drilling operation.
With respect to claim 4: Samuel from the combination of Samuel, Hird, and Zhan further teaches adjusting the least one operational attribute to reduce cutter wear severity during the drilling of the wellbore (¶ [0032, 0058]).
With respect to claim 5: Samuel from the combination of Samuel, Hird, and Zhan further teaches the input drill bit response comprises at least one of a weight on bit, a torque on bit, a rate of penetration, or a rotation speed of the drill bit during drilling of the wellbore (¶ [0021, 0033).
Allowable Subject Matter
Claim 2 would be allowable over the prior art if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims but is still rejected under 101 as discussed above.
Claims 6-10, 12-14, 16-17, and 19-20 would be allowable over the prior art if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action but are still rejected under 101 as discussed above.
The following is a statement of reasons for the indication of allowable subject matter:
The art of record does not teach or make obvious determining a force on a particular cutter of a drill bit based on an input drill bit response and then using the cutter force to determine a cutter wear severity in combination with the other claim limitations.
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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/KRISTYN A HALL/Primary Examiner, Art Unit 3672
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