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 02 December 2025 have been fully considered.
Applicant argues that “using a prediction of a cutter wear severity to modify a downhole operational attribute reflects an improvement to technology for designing and operating well systems” imposes a meaningful limit sufficient to overcome the §101 rejection. Applicant goes on to explain that “the cutter wear severity may be used as a trigger for determining that the drill bit should be replaced.” Examiner agrees that specific claim language directed to the wear severity and its relationship to relacing a drill bit would be sufficient to overcome the 101 rejection (i.e., the language of claim 3). That is why claim 3 and its equivalent claims are not rejected under §101. However, the independent claims do not specifically relate the cutter wear severity and the drill bit replacement. Instead, the independent claims merely recite the generic limitation of “modifying a downhole operational attribute based, at least in part, on the cutter wear severity.” In order to overcome the 101 rejection, the limitation needs to integrate the abstract idea into a specific, positively recited physical transformation. A generic recitation relating (i.e., “based on”) an abstract idea (i.e., “cutter wear severity”) to a generic operation (i.e., “modifying a downhole operational attribute”) is not sufficient to overcome the 101 rejection since this type of recitation is equivalent to the words “apply it” (See MPEP 2106.05(f)(1)). See below for further discussion of the 101 rejection.
Examiner agrees that Samuel does not disclose predicting a wear severity of a particular cutter of a drill bit. However, Examiner disagrees that Zhan does not cure the deficit. Applicant admits (see Remarks pg. 16) that Zhan discloses determining a cutter wear but argues that Zhan does not disclose predicting a cutter wear and instead discloses direct measurement. However, Zhan is used below as a secondary reference to teach that it is obvious to examine a particular cutter (i.e., not all the cutters of the bit) in relation to cutter wear. Zhan is not used to teach how the predicting occurs.
The claim and specification objections are withdrawn due to arguments.
The previous 112(b) rejections are withdrawn due to amendments. However, a new 112(b) rejection is presented 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.
Claim 2 is 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.
With respect to claim 2, it is unclear how the input cutter forces are determined based on an input drill bit. For the purpose of examination, the limitation of “an input drill bit” will be interpreted as “an input drill bit response.”
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, 12-17, 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 1-20 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: “predicting a cutter wear severity of a particular cutter of the drill bit during drilling of the wellbore based on the input drill bit response.”
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.
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 a downhole operational attribute amounts to no more than mere instructions to apply the exception.
The additional elements of “a drill bit,” “for drilling a wellbore.” and “during 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,” and “during 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” 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)).
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, 15-17, and 20 further recite:
determining cutter forces on the cutter based on the input drill bit energy; 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 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 cutter forces on the cutter based on the input drill bit response, 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 forces on the cutter; and 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 modifying the downhole operational attribute based, at least in part, on the cutter wear severity comprises: adjusting/instruction to adjust the 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, 3-6, 11-14, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Samuel (US 2021/0363871) in view of Zhan (US 2023/0175394).
With respect to claim 1, 6, and 14: 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]).
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 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 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 claims 3, 11, and 18: Samuel from the combinations of Samuel and Zhan further teaches 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 that the cutter wear severity of exceeds a wear severity threshold replacing the drill bit (¶ [0023, 0058, 0061]).
Samuel does not explicitly disclose the steps of replacing the drill bit.
Zhan teaches the steps of replacing a worn drill bit (¶ [0047-48]) are stopping drilling of the wellbore (¶ [0048, 0065]; drilling of the wellbore is stopped since the drill bit is removed); brining the drill bit (200) to a surface of the wellbore (¶ [0048, 0065]); replacing the drill bit with a new drill bit (124; ¶ [0048]); and placing the new drill bit downhole (¶ [0048]).
It would be obvious to one having ordinary skill in the art before the effective filing date to substitute the steps of replacing the drill bit of Zhan for the generic replacement of Samuel and Zhan since doing so would perform the same predictable result or replacing a drill bit.
With respect to claims 4, 12, and 19: Samuel from the combination of Samuel and Zhan further teaches modifying the downhole operational attribute based, at least in part, on the wear severity comprises: adjusting the at 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 and Zhan further teaches the 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).
With respect to claims 13 and 20: Samuel from the combination of Samuel and Zhan further teaches 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 (¶ [0021, 0033).
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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/KRISTYN A HALL/Primary Examiner, Art Unit 3672
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