Free Exhibits - District Court of Colorado - Colorado

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 1 of 51

Serial

Number
3506

08/050527

Art Unit

claims 1-11 paragraph specification
The the following for

are

rejected set forth

35

U.S.C
the

112
to the

the

reasons

objection

of obviousness

35

U.S.C
set

basis

rejections

103 which forth in

forms

Office

action
invention is not though patent may not be obtained as set forth in section disclosed or described identically between the subject 102 of the and the prior art are such matter sought to be the whole would been obvious at the as subject matter time the was made to person having ordinary skill in art which said matter the manner in which not be Patentability the was

made

which matter another Subject developed qualifies person of section as prior art only under or this of not preclude title patentability section where the subject matter and claimed invention the same were at the time the invention was made owned to the same to an obligation of assignment person or subject

person
are

rejected view of

35

u.s.c
and

103

as

being

unpatentable
Ball discloses an

over an

Ball

Rogers

automatic

drilling control
control

system in

which response to
teaches release as

comprises
the same

electronic

drum brake

bit principle

variations
of

basically
the rate of claims the torque the

controlling

being
of

recited in
drilling fluid

respective pressure
such the

exception
sensor and

rpm sensor opinion

Inclusion

sensors
of

in

within

scope

general

engineering

design

WS

000126

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 2 of 51

Serial Art

08/050527 3506

5-

Unit

considerations
skill in the art and

in of

that

it

well the

known

to

one fluid

of

ordinary
the

drilling

drilling are rate such as

pressure

drilling rpm
factor taught

torque penetration publication such

among and

the long

which
in the

affect general To

been

Gatlins Petroleum
Rogers discloses

Engineering

illustrate

inclusion Figs

drilling optimization control
computer which control drilling and

system

13
rate
In are achieve It art the

system for optimizing
rpm and the thrust

or

monitored

manipulated

by

computer lines skill system

optimal

penetration
obvious to one of the

col

16
the

therefore
have

modified rpm
sensor

Balls automatic
as

drilling control
and further

by
the the

been

taught

by Roger
the

including into

pressure and
so that

torque parameters be more

sensors

control the as such has

more drilling
rate can

can

be

monitored

penetration
been The

effective

in Gatlin

prior art made pertinent
to

of

and not

relied upon

is

considered Alder
all

applicants
Tanaka et

Gray

Jr

et

al

al

Jasinski

and

et

al

show Any

automatic

drilling control communication
be

concerning
Tsay at telephone

to

Dr

Frank

703

308-2170

WS

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 3 of 51

serial

Nwuber
3506

08/050521

Art Unit

Tsayf

41
1994

March

SUE9Y

WS

000128

Case 1:03-cv-02579-RPM
TO

Document 139-4
-I AND BOTTOM EDGES

Filed 01/11/2007
A..

Page 4 of 51

SNAPAPART

CARBON

FORMPTO4SS

REV.242

U.S.OPAPTMEHTOFCOMMERCE PATENTANDTPADEMARKOPPICE

SERit.NO

F3ROUPARTLSI1T

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NOTICE

S6
CLASS

ATTACIIMENT

TO

4-

OF

AP.ICANT4S

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U.S PATENT DOCUMENT

DOCUMENTS
NAME
SUBCLASS

ND

DATE APPROPRIATE
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IF

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DOCUMENTS
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DOCUMENT

ND

j7

III
OTHER REFERENCES
Including Author
Title

M-Aa
/Y%æ2

D/I9-

32_

EXAMINER

DATE

copy

of of Patent

not

being

furnished

with

this

office

See Manual

Examining

707.05

WS

000129

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 5 of 51

IN

UNITED

STATES

PATENT

TRADEMMUC

application of Bobbie Joe Bowden Serial

Atty

Docket 8-0106.01

Examiner
April

Filed For

19
SYSTEM5

AUTOMATIC

.iYJ

COMMISSIONER AND Washington

OF

D.C

20231

...

Sir
Applicant timely responds the Office Action Dated

11

1994

as

follows

fl THE
lease
The the following new

claims
system according to

automatic drilling

drilling

claim

wherein

said

fluid tube

pressure regulator
to in one

comprises

Bourdon sensor to

said drilling

pressure pressure

measure

changes at

drilling end said

flapper said flapper

coupled

Bourdon response to

wherein changes and

pivots fluid

about

pivot point

in drilling means outputting drilling The wherein said

pressure measured
to

said of

Bourdon said

tube

responsive to said

the

pivoting

flapper
of in

relay

signal

fluid

pressure
system according

automatic bit

to

claim

weight

regulator coupled

comprises
said bit weight

Bourdon measure changes flapper said in flapper weight in

sensor

to

coupled at one end to said Bourdon about pivot said Bourdon
to response

wherein to changes

pivots

bit

measured

tube
of

means outputting bit

responsive
signal to

the

pivoting

said
of

for ohanges
in

said relay representative

weight

WSI400130

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 6 of 51

.341
wherein

The said

automatic drill string

drilling torque

system

according

to

claim

regulator

comprises
torque sensor

flourdon

said drill in at one string end to

to measure changes
flapper

torque
said Bourdon

coupled

tube wherein
to changes and flapper of changes in

said flapper
in

pivots

about

pivot

point

in response Bourdon of said

string means

torque to the

by said
pivoting

responsive signal to

outputting
ill string The

said relay

representative

torque
system aocording

automatic drill

to

claim

wherein

RPM regulator
tube in coupled pivots RPM to about coupled to said RPMt

comprises RPM sensor
tc

Bourdon

measure changes
flapper said in means flapper

string one end

to said

Bourdon response

tube to

wherein

pivot point
said

string

Bourdon of

tube
said

and

responsive to

pivoting

flapper
of in

outputting
drill string

said relay

representative

RPM

The rejected

stands

objected

to

claims

1-fl

stand

under

35 the

112

first

paragraph
to the

Applicant
and page

respeotfully traverses
directs the

objection
to page

specification

Examiners

attention

35

line

32

through

36
four

line

23

Applicants

automatic
to control by

drilling

system utilizes all
even

drilling parameters
they are

drilling one

though

interrelated

selecting using the

parameter

as

the

primary control
as secondary or

parameter back-up

and controls

remaining parameters
the of an

Thus
release

parameter
the

to

provide unless that

primary control one of the

regulates

drill string
level

remaining parameters
override the

undesirable
and

triggers

it to

primary control

Wsoool3l

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 7 of 51

release acceptable

of

the

drill

string
regulation

Once the

the

parameter of the

reaches drill

an

string

returns
To

the prevent

primary the

control

parameter
secondary control parameters an will from

continually
adjusts the not the

overriding level control by That

the which

primary the point

control

parameter
parameters undesirable will

operator
override

secondary where

primary

only

conditions their primary

registered

the

primary

control adjustment of the

trigger
the

intervention control
interference

variability the release

permits drill

string an undesirable

from

secondary by the

controls
primary

unless

condition

not

registerable

control submits

parameter the

occurs

Applicant which system
clearly

therefore
the

respectfully

specification

above-explanation to one

of

the

automatic the the

drilling how

describes

skilled
to are central

parameters
drill

may be

utilized
though

tandem

release

of

string

even

somewhat
the to the

interrelated

Accordingly
35

respectfully first

withdrawal of the specification
35

USC

112

paragraph

objection

Furthermore
first

Applicant respectfully
rejection that of claims

traverses the
because the

Usc

112

paragraph

1fl

specification override not

clearly
the

secondary an

controls

will only

primary

control

when

undesirable

drilling occurs
withdrawal

registerable by therefore
also

primary control
requests

Applicant the 35 USC

112

first Claims

paragraph

rejection
rejected

of

claims

111
by Ball in view

1il
and

stand

under

of

Rogers

Applicant above-rejection because clearly tails Applicants

respectfully Applicants to suggest to

traverses disclosure
one of

the proposed
skill

combination
the

ordinary

solution

to

particular problem

\oocainfltoaoa-ot.a

WS
If

000132

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 8 of 51

Applicant problems directional

designed

his during

drilling

system

to

overcome

encountered drilling the

operations
when drill only weight For

especially

operations

on

bit
in

utilized to control directional against weight
the on bit

string

example
often

drilling

cperations
resulting

drill weight the actual

string sensor weight

lays

measuring
on

different drill

from

bit
the

consequently drill string damage
in the on

controller incorrectly drilling operations

releases and

possible

drilling bit capable an of

In

response

to

that an

deficiency automatic different

systems

Applicant
control one

drilling system parameters Impeding With respect
on

drilling under the
reading

of

to prevent

incorrect or

from

parameter

damaging

drilling

that reference merely
control any

weight
does not

bit
or

drilling suggest drill that

system

Ball

disclose
fluid

teach

other parameter
or drill

i.e
the

drilling may be

pressure

string of

torque
drill

string

used to
employs

control the
the Rogers

release reference

string

Thus

Examiner

Gatlin publication to modify
attempt to

the
automatic thrust

drilling system drilling system and drill the rate bolt
speed of in

in an

construct discloses
in an

Applicants
only

However
are

Rogers

that drill

interdependent of drill

apparatus coal

maximizes mine to drill
the Gatlin such as

utilized

holes

the

coal

mines
various drilling

publication discloses drilling fluid penetration density

only

parameters

drilling
drill

pressurj and

affect

rate

bit
submits that fairly

Applicant
and one Gatlin of fail

therefore
to provide

both

Rogers

any

disclosure

that

suggests
in

ordinary on bit

skill drill

in the

art that

problems be solved

encountered
by

weight
an

control system does

systems may utilizing address

constructing

automatic

drilling etence

other drilling parameters
is not even

The concerned with

not

remotely the

the

controlling

WS

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 9 of 51

release Gatlin variables the issue

of

drill teaches on the the

during downhole

the

drilling

of

borehole that various
address both the

only
have of

consequences and drill that even such not

penetration of recognize strings

even

controlling
Gatlin fail

Thus
in

Rogers control

and

to
of

the

release

drill

exists

Accordingly
that

Applicant problem
parameters bit string In of

respectfully

that
mere

without of affect

recognition
various

exists
and

the

interrelatedness

drilling of drill
drill

fact do not

those their

incorporation

control light and of of deficiencies in submits

teachings that
the an

Rogers

Gatlin
Ball of

Applicant with
Rogers

respectfully and Gatlin

combination

constitutes

inpermissible use
are

hindsight
parameters

Merely
affect use such in the

various
rate of

parameters drill bit

related

and does

those not

penetration without
do not

control Both in discloses different on

system and

obvious
Gatlin drill

suggesting
address

use
involved

Rogers

string

and

certainly or

neither reference
combination in of

that

the use

of

different parameters
solve control only the problems

parameters bit drill

will

encountered Applicant

weight

systems

therefore

respectfully than weight on

submits the bit may
be in

suggestion to

that

parameters
of

employed Applicants
submits

control

drill

exists

disclosure combination

Accordingly
of

Applicant and Gatlin
is an

that the

with Rogers
of

imperaissible

hindsight using

reconstruction

Applicants
because

claimed mere specific

invention

Applioants
does teach

interrelatedness of parameters solution
submits

to

specific

problem allowable
added of

Applicant

respectfully

1il 1518
Because

are

Claims regulators claimed

have none

claim

the

design

of

cited respectfully

referenoes submits

discloses

the

regulators

those claims are

\DQ.aMIfl\O1C4.O1.S-3

WS

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 10 of 51

allowable
Applicant has reviewed the and prior deems art

made

record references the not to

applied anticipate invention
In or

the in

claims

those

any

combination

render

obvious

claimed

view

of of the

foregoing
rejected

Applicant claims and consideration early of the new of

reconsideration

claims
the Application

further

solicits

allowance

Respectfully

submitted

DONALD Milan 1631 Building 115 East Travis Street San Antonio Texas

LAW OFFICES

2102250007

DATE

OLim

______________
Christopher

Makay

Reg
AflORNEY

No

34475

FOR APPLICMIT

CERTIFICATE

OF

EXPRESS

MAIL

Ana that the foregoing documents Robinson do hereby certify Service with the are being deposited United States Postal as addressed Nail postage in an to the Express prepaid envelope Commissioner of Patqnts and D.C 20231 on Washington this date of ThliOIQti

Express

Mail

No

ThIn1In331

ItS

Dat

Xba

4a

JoR

I4

Robinson

WS

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 11 of 51

UNITED
Patent Addreae

DEPAEIF.COMMERCE
Tradeinerk COMMISSIONER D.C Washington
OffIce

PATENTS
20231

AND TRADEMANCS

NUMBER

FlUNG

FIRST

NAMED

INVENTOR

ATTORNEY

DOCKET

08/050527

BOWDEN TSAV.F CSM1IOB1O

B-0106.01
EXAMMER

DONALD COMUZZI 1631 MILAN BUILDING 115 EAST TX 78205 SAN ANTONIO
melee
comnoinicaton born the siege

ART

UNIT

PAPER

NUMBEWj

3506
DATE

/0
08/10/94

MMLED

In

olyourepcslon

COtJISSIOtEROF

PATENTS

Arc TRADEMAISCS

This

bee

been

Responsive

to

communication

filed

an

I/o/nt
38

.kmie

anton

is

resells

shortened
tenure to

statutory

period the

br

reeponee

to response

action
will

to the epplicatton to

monthe
become sbendoned

days from
133

detiot

this letter

respond

within

cause

Petit

FOU.O

ATTACHMENTS
Cited by

St
P10-882

ACTIQIS

Notice NOtice InformatIon

by ExamIner

Notice

re Patent of

Drswtg
Patent

on

How

to Effect

Drawing

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PTO.1474

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1838

453 0.5.213

stOotitar

EXAMINERS

MflON

W804J0136

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 12 of 51

serial Number Art Unit
3506

08/050527

Part

III

DETAILED

ACTION

SpecIfication The following of first

paragraph

of 35

U.S.C
The

112

written specification shall contain description of and the manner and of making using process as to it in such full clear concise enable which skilled in the pertains any or with which it is most nearly to and use connected the same and shall set forth the mode contemplated by the inventor of carrying out his invention

invention

The first

specification as

is

objected

to

under

25 teach

112
how
to an

paragraph
use the

failing to

adequately failing to

make enabling

and/or

invention

i.e

provide

disclosure
best control for teaches the of the an automatic of parameters torque the fluid

drilling

release drilling

response to any
the bit

combinations

including and

drilling fluid

pressure
further with

drilling teaches

drilling
drill

rpm
release and

Applicant
increases

decreasing

pressure
vise that
the of

bit weight
In this

drilling

torque or

decreasing fails to

rpm

and

versa

regard
the rate will

applicant

apparently
the

consider

during

operation
are in

factors

affecting any change

penetration

fact

interrelated
the others

one the

parameter

eventually

affect

while

holding

WS

000137

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 13 of 51

Serial

Number
3506

Art Unit

rate

of

penetration In this drill

constant instant string will as

controlling for due to

the

release by

drill

string

invention release

instance
decreasing the

increasing bit in

the rate of when
first

detected

cause

drilling torque and one would have drill string
to

according decrease would command also have to rate created

to of

the

invention
the

immediately obviously

releasing

serious

conflict

to the previous operational Similar bit weight between
the It to is or between would the

control between the rpm and and as

occur

drilling and

torque remaining

the rpm

pumping

pressure

parameters

well
failed

the examiners
logical

that explanation Because it

at with
is

applicant
respect known in the

has

provide
can be

such art of

conflicts that among

resolved
the

well

other things
and the

relationship
parameters and one can not

between
the

penetration pressure

drilling the bit

including

pumping

the

rpm
and

drilling torque are
simply one by

interrelated parameter Gatlin pp

from

others

see Petroleum
herein as

Enaineering

Carl

114131

included the page

reference
in page for how

Specifically
35 line the 32

operational

procedures
23 fails bit

through

36

line

to teach
and

how
the

drilling fluidaffects
control overrides

the the

primary control

Examiner

WS

000138

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 14 of 51

Serial Art

Number
3506

08/050527

4-

Unit

also the best

could rpm and

understand torque to these
arid

among

the can be

control switched of taken

parameters
since as

regulators an

understood
all

achieve four

optimal

control to

drilling
into

operation

need properly

consideration

should

Claims

1li

1518
the

are

rejected set

under 35

U.s.c
objection

112
to

first paragraph the specification The
the basis following for
is

reasons

forth

103 which quotation of 35 U.S.C rejections set forth in this

forms

Office

action not patent may not be though the invention disclosed or described as set forth in section identically of this title 102 if the differences between the matter to and the are such prior the matter whole would have obvious at the as subject time the invention wae made having person skill the art to which said subject matter pertains manner Patentability shall not be negatived in which by the invention was made
matter which Subject person developed by another of section as prior art only subsection or 102 of this shall not preclude patentability under this section where the subject matter and the claimed invention were at the invention was made owned same person subject to an

obligation

of

assignment

to

same

person

111
unpatentable
Ball discloses an over an

are

rejected in

under
of

35

U.S.C

103

as

being

Ball

Rogers control

Catlin

publication which
to

automatic

comprises

electronic

drum

brake

system in response

WS

000139

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 15 of 51

Serial

Number
3506

08/050527

Art Unit

the

bit
of

Fig
controlling the

Ball rate of

basically drill with the

same principle being
of the recited

release as exception and the

applicants pressure sensor
of the that of the it

claims the in the

drilling fluid
Inclusion

sensor

rpm sensor opinion

sensors
scope is well the of

examiners design ordinary
the

is well

general

engineering one fluid of

considerations
skill in the art and

known drilling are rate as

drilling

pressure

drilling rpm
factor which in the

drilling torque
the

among and

the

important
long

affect general To

penetration

such

taught

publication such

such

Catlins
Rogers

Petroleum discloses comprises

Engineering
drilling computer

illustrate control system for and

inclusion

system optimizing

Figs 1-3
the

which

penetration bit to

rate
are

which

the

drilling and

rpm

the by the

or
computer lines

weight achieve
It is

monitored penetration obvious to

manipulated

the optimal therefore

conditions one of the

Ccl

16
in the by

ordinary skill

art

have

modified

Balls
as been

automatic

drilling control
Rogeis and further

system

including the the

rpm

including into

pumping
control and

pressure and
so that

the

torque

sensors can be

system

more drilling
rate can

parameters
be more

penetration been

effectively publication

controlled

as

such

taught

Catlin

WS

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 16 of 51

Serial

08/050527 3506

rt

Unit

Allowable Subject
claims is-ia would allowable 112 base claim and

Matter if rewritten include intervening to of

overcome

the

rejection

under
of

35 the

to

limitations

and

any

Conclusion

Applicants considered judging
the

arguments are not

filed

on

June to in be

1994 persuasive

have

been fully

but they
schematic

that
automatic

diagram shown

Fig

for the

drilling control could
see

system

instant any overriding unit to

application mechanism
the to the teach in is

there

ex4s

which would allow also examiners

one

control that

override fails

applicant respect

reasonable regrading selected system
of the

technical

principles control are

how

primary specific implemented

control drilling

the

secondary when

is to be

without
the

experimentation Regarding
of base Rogers of

to

one

ordinary skill
based on the

art

claim

rejections

combination
has case

Ball

and

Gatlin

examiner believes supporting
and Rogers prima

that facie the

established
of

sufficient

grounds
Ball

obviousness
of

specifically

disclose

techniques

automatic
teaches

drilling control importance
of

based

limited

parameters

Gatlin

the

WS

000141

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 17 of 51

Serial Art

Number
3506

Unit

more

comprehensive
the

drilling background factors into

which motivation the automatic of

provides including system THIS extension

theoretical broader

drilling

in Ball IS of time policy STATUTORY

Rogers

FINAL
as set

Applicant
in 37 TO

of

the

1.136a
THIS OF THIS

AcTIN IS IN THE EVENT MAILING DATE MAILED UNTIL

SHORTENED TO OF THE

RESPONSE
IS FROM FILED WITHIN AND

THIS

AFTER

RESPONSE FINAL THE

MONTHS OF THE ACTION IS

THREE-MONTH
AND WILL IN

PERIOD

THEN

DATE PURSUANT TO C.F.R 1.136a MAILING DATE THE ADVISORY PERIOD FOR RESPONSE STATUTORY THE ACTION Any inquiry concerning this communications from the examiner whose telephone Tsay number Any inquiry this whose telephone
-of

SHORTENED ACTION IS

SHORTENED STATUTORY EXPIRE ON EXTENSION CALCULATED FROM NO EVENT THE SIX MONTHS FROM

communication or
should
is

directed

earlier to

Frank

703

3082170
to status of

general or relating should be directed to Group is 3082168

receptionist

703

Tsaffrr August
1994

PERVISORY ART

PATENT UN3T356

VS

000142

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 18 of 51

.2

IN

STATES

AND

OFFICE

application Irre Bobbie Joe --

of

Atty

Docket

No

3-0106.01

Serial

No

08/050527

Examiner
Tsay

.IIW

Filed

April

19

1993

For

GroupArtunit
AUTOMATIC DRILLING SYSTEM

GB

vr
/13

A$ENDMENT

AFTER

37

1.l16

COMMISSIONER AND Washinqton

OF

-cV cti
1994

D.C

20231

Sir
Applicant timely as responds the Final

1-.r
Of ice

rjf
dated

Action

August
IN

10

follows

SPECIFICATION

Ion
IN

page

35

line

delete

and

substitute

theref or

anfor
of claim

CLAIMSj

amended
automatically

An
the

fl
the

automatic release of

drilling the drill

system string
to

regulating

drilling rig during

drilling of

ccordina

Lfurther comprising
drill drill string string torque torque

sensor
regulator said string torque drill string

torque measuring signal relay

sensor
changes

Said
in

drill

regulator outputting

torque those

representing

coupled

said drill to

string torque output supply
and said signal drill

regulator
of said

said

relay string signal drill torque at an

regulator output

thereof

strings in

controller coupled
drill

relay
in

wherein said
relay

decrease supplying said the

string torque
strings control

results signal

that an

operates in

drill rate

strings release

controller
of said string

increase
an

and

increase

c__
WS000143

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 19 of 51

in drill drill strings release

string

torque control to

results signal effect

in said that decrease

relay

supplying said drill

strings

controller of said

in

the

amended
automatically drilling rig

An
the

ZI
the

automatic releasing

drilling drill

system
string to

for
of claim

regulating

drilling of

borehole

according

further comprising
drill drill string string RPM RPM

sensor
regulator string coupled to said drill string

RPM

sensor
in

said drill string

RPM regulator outputting

measuring signal

changes

RPM

representing

those
relay responsive regulator to to

said drill
output supply and

string signal

RPM

regulator
said drill

said

RPM
an

drill

strings

signal

output
drill increase

thereof

controller
string strings

said

relay in

wherein

an

RPM

results signal effect

relay

supplying

operates
an increase in

said drill
the in drill of string strings

controller
of said drill in signal

RPM
control to

relay operates in

supplying
said the

that

strings controller release of The automatically drilling measuring producing
said method

decrease

rate

of

string according the to
of claim the drill string

for
of

regulating

comprising the
string

steps

of

torque response
to

changes
the

in

drill in

string
drill

torque

said

signal

representing

changes

string torque relaying said controlling
signal

Dfl to
drill

string controller
increase

said

drill

string

controller to

the rate

Cs

mscn\mnso.-osAr

WS000144

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 20 of 51

of

release

of

said

drill in release an

string

when

said torque

signal and to

represents decrease said the

decrease rate

string of said

drill in

string when
drill string

signal

represents

increase

torque Tim automatically drilling rig
nethod accordina the release the string to of claim drill

for
string
of

regulating

drill
RPM

steps

measuring drill
producing said relaying controlling of said

signal

in response

to changes the changes string

in drill in

RPM
string RPM

representing signal to

drill

said drill release of said drill drill release an of said drill string

to

increase

the rate
signal

when RPM and

said

represents the rate

to said

string string

when

represents

decrease in drill
after the the

RPM

fIn claim
claim claim line line

24 25

insert insert insert

after
REMARKS

and
USC

The

specification claims 1-11

stands

objected stand and of

to

under

112
35

first

paragraph
first under

1518

rejected further and

usc

112

paragraph
35

claims by Ball

1il
in

1518
Rogers

stand

rejected
in view

103

further

Gatlin Applicants
courteous prosecution request an actual of of attorney helpful the to

thank

Examiner Tsay

for the
the the for

telephone

interviews In

during accordance with

referenced

application
submits form the of

Examiner

tsay

Applicant
the

the

specification

drilling operation
Before reference

daily drilling record
of the

see

Exhibit

describing
to an actual

operation

automatic Applicant

driller

drilling

would

like

to

point

out are not necessarily

disclosed interrelated

the

referenced

application

Ci

\SCcW\RO1Cd-tt

.s-r

ws

o00145

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 21 of 51

example

when

mud .tcrque because the RPM

is

utilized

to

the unrelated operates

drill to

bit

drill string fluid

are

completely

drilling

pressure

the

completely true when
In

independently from only
the mud there does feature control

drill is

string
to

That

is especially

rotate and

bit
RPM because claimed

that

instance string includes from the

is no

drill

torque

the drill
invention

rotate
permits when illustrates for various are

parameters not

to be

eliminated

they the

necessary
of the four

Exhibit

values

drilling mud
those

parameters as
the

required

drilling of the of drill on

employing

bit bit
of

Specifically
1700 psi of

parameters fluid

are

1245

drilling pressure

pressure

off
170

bottomTM pounds The

2000
of

psi

drilling

on
for

bottom
the

foot

drill automatic

torque
driller drill of

and 70 the claimed

string
controls the

invention

release as torque in the

interrelated

parameters Figure in and in the are

and

regulators
The of one as on page of

200203

see

connected permits

series
selection

regulators 200203
as primary as page

parameter secondary
line

control described

remaining specification

controls through
The

35

32

36

line

23
in upon

parameters

illustrated

Exhibit
the of the

are of

determined
formation the

by

drilling rig Austin
and depth of

operator the

e.g
diameter

the the

etc
drilling rig

For

example

with the

Austin chalk
low

formation weight
on

operator because
the

selects is not factors determines pounds

relatively

bit

of

1245

pounds
Based

particularly the selected that the
of drill at 70 or

hard/dense weight string on

upon

bit

the

drilling
no

operator than to
170

must or damage

toot

RPMs
drill an

may result
the

drilling operator
psi

bit

Furthermore

drilling

determines
is

that to

on bottom
.Afl

fluid pressure of

C\TMOCtSIOT\SG1O6-O

WSOOOU6

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 22 of 51

powdr
of

the from the

nud

motor

as

well

as

remove

sufficient

amounts

Unfortunately release
of

utilizing

only

weight for

on

bit

to

control

the

drill

provides the actual drill weight on bit

extremely often to

inefficient on the
the the bit being

operations borehole

Illustratively
resulting less in the the

considerably Furthermore above
170

than

at

surface increases remains

if another foot

parameter
even though

e.g
weight drill

torque on

bit
or

constant may

damage

drilling rig
the

string

drill bit
the

result
the

Consequently
release of

claimed

invention utilizing

permits

control parameters
If

drill

additional

drilling illustrated adjusting amount amount 204

pressure provides
in such

the the

primary rig

for

the

example

drilling 213

operator

manipulates appropriate appropriate

screw 214 air to
air

flapper

deflects the
and An

see
valve the 236 drill at the

Figures such at

opens release

valve rate
that

controls air motor maintains After adjusts
the

drilling

fluid

pressure

psi
drilling

adjusting 201

regulator
to As

200

operator furnishes drilling
rig

regulator

weight previously

on bit

that the

secondary operator
to determined

described

the

weight control
251

on

bit

1245

pounds

Thus

provide

secondary adjust

manipulates such to 237 opens on

adjusting amount
1260

screw 252

flapper flow the

that provides an

air

corresponding operator
valves foot

weight

bit 202

pounds

Similarly

adjusts 238 and

regulators
239 open to and

and
an

203 air

such that their flow

respective to

permit
75

corresponding Regulators

RPMs
controls
the bit

201-203
normal

therefore operation
at 2000 1245

provide

secondary 200 the

because
drilling remains
fluid at

regulator

maintains weight on

pressure

psi

while
the

approximately 170 foot

remains

at
at

approximately

pounds

and

the

RPMs

remain

ws

o00147

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 23 of 51

approximately remain

70

Accordingly

as

long not

as

drilling

operations

normal
if for

201203
example to the

will

override between drill an override

regulator

However
and

friction where

drill
string by snags

increases its such

point

thereby decreasing
202 and and

rotational

speed
the

regulator pressure

may occur
weight on

In bit

drilling

fluid

may remain
The 203 will RPM is not

relatively

stable

while

the

change
regulator valve 239

will

significantly

decrease
any of further drill increases

however opening string

because
of its

secondary
affect the the

control
release

When
no

the control and/or secondary 271 retreating

snags occurs
drilling

rapidly will Once tube most

and

if

overriding

damage

likely

result 175

drill foot flapper

rig
Bourdon nozzle

the 270

torque

exceeds

value
from

expands result

resulting nozzle
in valve 238

delivers less closing
air controls torque release control level foot When to the rises of

compressed valve air 238

air

to valve
to

238
point

resulting where

it restricts the

motor of

204 the that

more
drill

than

valve

236

regulator
if

202 the the will

release to

string
238

Additionally

level string of

completely Regulator the

then
202

drill

completely
drill set the

ceases

returns

the

secondary

control level

i.e
the

175

pounds
regulator

After the
200

torque controls

below the
of drill

value
string
The

again

remaining

two

secondary
as

parameters for

weight

on

bit

and if

RPM
drilling

identically fluid pressure 200

described were set

torque
function as

Furthermore
as

secondary above exceeds
for

control torque
set control as

regulator

function occurs the
where

described parameter

Thus

if

situation

the

value
described

particular

assumes

above

-6

000j48

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 24 of 51

In

further

illustration
decreases regulator the 203

the such will

friction

between drill

the drill string
of RPM

string rapidly increases drill string control because
of If its until

control level

the below

release the

RPM

return will

secondary

value
regulator 238

The 202 will

torque is not

significantly

decrease
any of no further drill overriding

however
opening

secondary the

control
release and string 75

string

the drill
damage drill tube 290

RPM rapidly

increases drill

occurs
Once
the

may result
string RPM

and/or

drilling rig

exceeds

the

secondary 291 less

value
from

Bourdon nozzle to

expands result

resulting nozzle valve it 294

in flapper delivers

retreating compressed
when to

294 239

valve

resulting where

239 the

closing air flow

valve

239

closes more drill valve
than

point valve

air motor of

236

regulator if the

controls

string

Additionally

RPMs

rise

to of

level

that string of

release
Regulator torque 203 will control

drill

completely ceases
drill set string until secondary to

the

returns

level 75

the
torque 200 again

i.e
below the drill submits the art will set

RPMs

returns

controls the

release
respectfully skill

Applicant having between primary
the

drilling
the

operator

relationship set as desired

various
and as at

parameters
secondary the well

and

be

control after

Essentially which operator

arriving applying automatic to

desired known

parameters
an as

matter of
may set

drilling technology
the of the

driller of
the of

invention

previously
In the

control

release

drill string
and

view of Applicants description discussion of
primary control

each of regulators and submits could
that and

control person practice
of the

parameters ordinary claimed

Applicant
in the

respectfully
drilling art

skill

invention

without

undue

experimentation

Applicant

WS

000149

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 25 of 51

therefore objection claims 111
Applicant to

requests specification

the and

withdrawal

of rejection of

corresponding

1518
respectfully rejection in Ball of Rogers and of claims

1il
of

under
the

35

Usc

103

Ball

in view weight that RPM on

Gatlin publication
string control of

discloses Rogers discloses

bit

drill

system
coal

and thrust
by Gatlin are

bit

weight

mining the rate weight to that force the

drill of on

may

be

manipulated The

computer

optimize

penetration
bit of drill bit

publication discloses
interrelated

that

respect discloses the That

penetration
bit mud

Gatlin
depends

further upon

drill of drilling

penetration
within the the

borehole
removal increased in an

is

higher from pressures within better

mud pressures
the

expedites

cuttings

borehole
the on bit applied

Essentially resulting

hydraulic
in

increase

the

allowable

drilling of With respect
that affects suggest pressure the that drill

borehole
to claims in the and Applicant submits

recognition the to

Gatlin publication disclose
the parameter to

that hydraulic teach
that control the or

fluid fairly

drilling rate
one be of

ordinary
as

drilling

utilized Gatlin

release
obvious will

of

string
cleaner

merely recognizes
the to easier drill

concept progress

the

bit

through fluid bottom

it

Gatlin fails
indicate

disclose position

that variations
of drill of in any

drilling relative
to

pressure
of

the

borehole

The

enhanced
pressure

cleaning is

borehole

increased
drill

drilling fluid
control

not

way

related
obtained

string

increased

pressures
In the and

through
the

regulation of pumping

pressures
desired

claimed then is
in

invention
altered fluid

pump pressure is set
the

value

during

drilling operation claimed

Any

changes

drilling due

pressure registered by the
in the

invention

occur
to

position of

drill

of

wS000150

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 26 of 51

borehole because

Consequently
Gatlin fails pressure to and

Applicant understand the

respectfully

submits

that
between

relationship position no of or the

drilling fluid within that
the

relative

drill

bit

Gatlin suggests pressure to one of

disclosure skill in

teaching

fairly

ordinary to

drilling fluid
drill

may be

utilized

the
submits

of

string
are

Accordingly
over Ball in

respectfully view of

claims
in

and view
of With

allowable Gatlin

further

respect from that

claims claim 2-4

and

claims

have

amended respectfully
upon

to

depend

Accordingly
are allowable

Applicant predicated

submits

claims claim and controlling outlined and

their

dependence
Claims inclusion of

are the the have

considered drill preceding

allowable utilizing

through drilling

their

pressure
Claims

argument
to depend from upon

been amended

claim

and

therefore
and the

are considered

allowable predicated

that dependence

preceding 10

arguments
11 include

Claims

controlling pressure
and 11 are

the

release

of

drill

string
respectfully In view

drilling submits of of the claims

fluid 10

Accordingly allowable
respectfully solicits

forgoing rejected

Applicant
claims and

request early

reconsideration allowance the

application

Respectfully LAW

submitted

OF DONALD 1631 Milam 115 East Travis Street San Antonio Texas 78205

DATE

7veAh

syQ 7Q
ChristoFer

2102250007

Reg
ATTORNEY

No

Makay

34475
APPLICANT

c.wocwIua\aolo.-os.s-p

g.

ws

000151

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 27 of 51

itCEIVED
NUV CERTIFICATE certify United an that States envelope EXPRESS
ItY4

GROUP 3500

the

prepaid
and

documents are being deposited foregoing Service as Mail postage Express addressed to the Commissioner

Washington

D.C
21/

20231

Express

Mail

No

77ifl

IXjScate

I/ID

2/

Robinson

kvv

f.il

\CoflT\o1CSot.kr

10-

WS

000152

Case 1:03-cv-02579-RPM
PA TIER
DAILY

Document 139-4 EXHIBIT

Filed 01/11/2007

Page 28 of 51

40N DRIUEVG
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WS

000153

Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

Page 29 of 51

UNITED
Patent

DEPAOF
end Trademerk

COMMERCE

onto

Addrss

50
COMMISSIONER
Washington

PATENTS
20231

AND TRADEMAffiCS

NOTICE

ALLOWANCE AND ISSUE FEE

Dies

SaSsdcennflcdOn
Isued

0mm

naSa

epa.it

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COOSJ5ERIAL

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DATE

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sMALl

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PEE DUE

DATE

DUE

THE PROSECUTiON

nON ON

IDENTIFIES

ABOVE

BEEN

AND

FOR ISSUANCE

PATENT

THE ISSUE FEE MUST BE APPLICATION SHALL BE

WITHIN

EIBEE

FROM THE
STATUTORYPERIOD

OF

OR

THIS

AS ABANDONED

HOW
lithe

TO RESPOND
the

mis NOTiCE
Status as

Review

SMALL

shown

above
your

If

SMALL ENTITY Is current SMALL ENTITY statuE
If

YES

verify

Pay
File

SMALLENTITY Is shown as N0 FEE ahown or
verIfied

statement the

of

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before

or

wIth

pay
statue
Is

of

FEE DUE shown

above

FEE
Traderneric
If

changed above
the

pay

twice nobly

the the

amotartef patent Cr

end

Office
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change
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in

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the

the

same pay

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Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007
UNITED
Patent Address

Page 30 of 51

STATES

DEPARTMENT
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COMMERCE

COMMISSIONER Washington

PATENTS

FIRST

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Case 1:03-cv-02579-RPM
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Page 32 of 51

application
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submitted COMUZZI

LAW OFFICES 1631 Milam Building
115 San

210

Antonio

Travis Street Texas 78205 225-0007

Date

IC

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By______________________
Chri topher

Reg
AflORNEY

No 34475
FOR

APPLICANT

Case 1:03-cv-02579-RPM
hereby with the

Document 139-4

Filed 01/11/2007

Page 33 of 51

prepaid
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that documents certify foregoing United States Service as addressed in an envelope to the

are being deposited Express Mail postage of Patents Commissioner

D.C
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Date

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Case 1:03-cv-02579-RPM

Document 139-4

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Document 139-4

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Case 1:03-cv-02579-RPM

Document 139-4

Filed 01/11/2007

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