DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This communication is in response to amendments filed on 06/10/2024 and response to election restriction filed on 11/01/2024.
In the application claims 1-19 are pending. Claims 1-3, 5-10, 13-17 were elected. Claims 4, 11-12, 18 and 19 are withdrawn from consideration.
With respect to, the term “transmitter” in claims 1-3, 5-10, 13-17 is interpreted to be the transmitter 130 ¶ 0063; the term “portable locator” in claims 1-3, 5-10, 13-17 is interpreted to be the “FIG. 1 for purposes of describing additional details with respect to device 20 which may be referred to interchangeably as a locator or receiver.”; “sensor” in claims 8-10, and 16-17 is interpreted to be any one of the sensors disclosed in ¶ 0063. With respect to the term “receiver” is interpreted to be the receiver 20, “FIG. 9 in conjunction with FIG. 1 for purposes of describing additional details with respect to device 20 which may be referred to interchangeably as a locator or receiver.”
Applicant’s arguments with respect to the 35 USC 112(f) interpretation of “portable locator” were fully considered; however, the arguments are not persuasive. Applicant states, “Applicant respectfully submits that the term "portable locator" represents a well-known structure to those having ordinary skill in the art such that the term is excluded from a § 112(f) interpretation by M.P.E.P. § 2181 (I)(A)… paragraph 6 will not apply if persons of ordinary skill in the art reading the specification understand the term to have a sufficiently definite meaning as the name for the structure that performs the function… Applicant respectfully submits that the subject structural name "portable locator" would be understood by one of ordinary skill to have a sufficiently definite meaning as the name for the structure that performs the recited functions of measuring the electromagnetic noise and subsequently receiving the depth frequency. Applicant respectfully submitted in Amendment A that it is necessary for the Examiner to provide an objective analysis and evidentiary basis to show that one of ordinary skill in the art would not have understood the meaning of this term at the time of the invention, as well as to explain why M.P.E.P. § 2181 (I)(A) would not apply.” Examiner respectfully disagrees. The claimed “portable locator” is a generic placeholders (prong A) followed by a functional language “a portable locator configured to perform electromagnetic noise measurements… the portable locator determines a depth of the transmitter…,” in claims 1 and 13, “the portable locator is configured to receive the depth frequency… the portable locator matches a spectral response of the transmitter” in claims 14, 15, “the portable locator is configured to receive a modulated data frequency” in claim 16, and “the portable locator is configured to recover the sensor signal…” in claims 9 and 16 (prong B) that does not provide sufficient structure (prong C) for the claimed placeholders, and therefore, satisfies the three prong test (A, B, and C) for determining claim interpretation under statute 35 USC § 112 (f), See MPEP § 2181. "The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure." Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349, 115 USPQ2d 1105, 1111 (Fed. Cir. 2015)." (from MPEP 2181(I)(A)). In this case, the claimed “portable locator” only once mentioned in the specification in without defining any structure [0004]; more importantly, claimed “portable locator” is neither a term of art nor “understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”
With respect to remarks on page 6 para 2: Every patent is presumed to be valid. See 35 U.S.C. 282, first sentence. Public policy demands that every employee of the United States Patent and Trademark Office (USPTO) refuse to express to any person any opinion as to the validity or invalidity of, or the patentability or unpatentability of any claim in any U.S. patent or the expiration date of any patent, unless re-exam/ reissue/ interference/ PTA/ ex parte/ inter partes, etc. proceedings are in place. See MPEP 1701. The question of validity or invalidity is otherwise exclusively a matter to be determined by a court. Applicant has rights to determine the patentability under 35 U.S.C. 302 and 37 CFR1.510.
The 35 USC 112 (b) rejections are withdrawn, please note the non-elected claim 4 has the same 35 USC 112 (b) issue with respect to the claimed “receiver.”
Applicant’s arguments with respect to the 35 USC 103 rejections were fully considered; however, some of the arguments are moot in view of the new grounds of rejections and some of the arguments are not persuasive.
Applicant argues, “Applicant respectfully notes that the Brune reference merely describes a transmitter, as part of an overall system, that is capable of transmitting at different frequencies. It should be appreciated that frequency selection is an entirely different matter. On review of the cited passages, it is noted that paragraph 63 mentions that frequency selection can be performed, for example, after monitoring background noise levels at various frequencies. The reference, however, is devoid of any disclosure or suggestion of a device that is capable of performing noise measurements at any frequency much less performing electromagnetic noise measurements at least down to a powerline frequency in the manner recited by claim 1. For this reason, Applicant respectfully submits that Brune has little, if any, bearing on the requirement in claim 1 of a portable device configured to perform noise measurements at least down to a powerline frequency. Thus, the mere mention of power lines is not enough to reasonably suggest that Brune could be seen as performing noise measurements at least down to a powerline frequency nor is the mention of a selectable depth frequency in paragraph 114” Examiner respectfully disagrees. With respect to, a portable locator (30) configured to perform electromagnetic noise measurements, Brune teaches, “FIG. 2 which illustrates a boring system 10 operating in a region 12…Boring tool 16 includes a dipole transmitter 20 having an antenna 22 that transmits a dipole locating field 24. The latter is received using a walkover portable locator/detector 30.” See Brune ¶ 0046. Brune teaches, “[o]ne problem commonly encountered during drilling and locating operations relates to noise. Such noise may emanate, for example, from traffic loops and from other directional drilling and/or cable locating operations. It is therefore advantageous … to change the locating signal to one or the other of the possible locating frequencies which is less susceptible to the particular noise that is being encountered within the drilling region.” See Brune ¶ 0115) at least down to a powerline frequency (Brune teaches, “[i]n one configuration, frequency selection can be performed at the beginning of the drilling operation, for example, after monitoring [i.e. claimed “measuring”] of background noise levels at various frequencies such that noisy frequencies may be avoided. Such noisy frequencies may be attributed, for instance, to traffic loops, invisible dog fences, cable TV, and power lines in a particular region.” See ¶ 0063) for selecting a depth frequency that is [[around 1.5 Khz and, thereafter, receive the depth frequency, Brune teaches, “[t]he present example contemplates the use of two frequencies comprising a low depth frequency of 1,516 Hz and a high depth frequency of 32,766 Hz for reasons to be described below. For the moment, it is appropriate to note that this embodiment is generally advantageous with the use of the 1,516 Hz depth locating signal since the data carrier frequency may remain at a higher value.” See ¶ 0114.
Applicant argues, “Applicant finds no mention of electromagnetic noise measurements. Applicant sees no reasonable relationship between measuring a process variable associated with a fluid in a pipe (the actual subject of paragraph 23) and electromagnetic noise measurement. The rejection then cites to paragraphs 19 and 33 with multiple mentions of radio frequency interference in the discussion. Paragraph 19 generally discusses “a field hardened industrial device” that maintains EMI (ElectroMagnetic Interference) protection “even with the outer transmitter cover removed.” In other words, the objective is to block EMI, not to measure it, as the Examiner suggests. Paragraph 33 discusses a radio frequency interference filter to block EMI that may be coupled into the device by external wiring to protect an internal electronics assembly from interference. Again, the objective is to block the EMI not to measure it. When seen in this light, it is respectfully submitted that there is nothing in the cited passages that would reasonably lead one to modify Brune to measure electromagnetic interference. Applicant is unable to understand the Examiner’s rationale for reliance on Orth in this regard. Clarification is respectfully requested in the unexpected event that reliance on Orth is maintained.” This argument is moot in view of the new grounds of rejections.
With respect to claim 1 Applicant further argues, “It is Applicant's position that the objective of Enomoto is to completely avoid powerline interference, not to measure it, such that electric earth current relating to an earthquake can be measured.” Examiner respectfully disagrees. Although applicant’s interpretation of Enomoto is incorrect, and the arguments were not persuasive. Nonetheless, Examiner and replaced Enomoto with a better reference Olsson; therefore, the arguments are moot in view of the new grounds of rejections.
With respect to claim 2, Applicant states, “Examiner appears to refer to paragraph 33 of Chau for the teaching of continuous transmission of the depth signal. Applicant respectfully disagrees. Applicant is unable to find any reasonable suggestion of continuous transmission of the depth signal in this passage.” Examiner respectfully disagrees. With respect to the claimed limitation of claim 2, wherein the transmitter is configured to continuously transmit the depth frequency during the inground operation. Specification states, “A depth tone generator is configured for producing an unmodulated depth tone frequency that is twenty or more times less than the carrier frequency and an antenna driver for electrically driving at least one antenna to emit the depth tone frequency and the carrier frequency for aboveground detection of the depth tone frequency and for recovery of the sensor signals from the modulated data frequency.” It is Examiner’s reasonable interpretation in view of spec [0015] that “pure tone” would be the continuously transmit depth signal. Brune teaches, “[i]n one implementation, a frequency indication is encoded on a carrier, which carrier is also used in determining the depth of the boring tool. In another implementation, the frequency indication is encoded on a carrier which is distinct from another carrier that is used in the boring tool depth determination.” See Brune ¶ 0018. Nonetheless in an analogous art, Chau teaches, “a system, apparatus and method involving an advanced drill string communication system that couples an electrical signal onto the electrically conductive drill string for data transmission while providing compensation at least for noise and distortion effects.” See Chau ¶ 0002. Chau teaches, “[a] downhole transceiver is located downhole proximate to the inground tool which is configured (i) to receive at least one sensor signal relating to an operational parameter of the inground tool, (ii) to generate a downhole signal that is transmitted to the drill rig on the drill string and which downhole signal is modulated based on the sensor signal, and (iii) to emanate an electromagnetic locating signal for above ground detection which locating signal is unmodulated at least by the sensor signal.” See Chau ¶ 0033. Chau teaches, “an embodiment which transmits locating signal 66 without modulation, at least from a practical standpoint as a pure tone [i.e. claimed continues transmission], Applicants recognize that enhanced depth range and/or homing range can be provided for a given level of transmission power that is applied to the locating signal. The enhanced capability can be attributed to factors including avoiding the diversion of carrier power to modulation side lobes as well as the ability to apply very narrow bandwidth filtering for purposes of receiving the pure tone at locator 80. The bandwidth for such a narrow band filter can be, for example, 0.5 Hz to 1 Hz. It is noted that the lower limit of the range affects response time. Stated in a different way, by transmitting an unmodulated carrier for a given depth range and/or a given homing range, the transmission power applied to locating signal 66 can be reduced at least for purposes of conserving battery power.” See ¶ 0098. Chau teaches, “many non-interfering frequencies can be used with a relatively slow symbol rate for higher noise immunity, by spreading the data across multiple channels. It is noted that for maximum depth and homing range, the modulation mode can specify that the carrier is not modulated or is essentially a pure tone.” See Chau ¶ 0101. Applicant has failed to argue, why Examiner’s interpretation of the claimed “continuously transmit depth signal” is improper in view of the specification.
With respect to claim 6, Applicant states, “Claim 6 recites that the transmitter includes a direct digital synthesizer configured to generate the depth frequency. Initially, the rejection asserts that it would be obvious for Brune to implement the exact same circuitry in his transmitter as in his receiver which includes a direct digital synthesizer (DDS)… no evidence is cited in Brune to explain what known element in a transmitter could be replaced by a DDS. That is, a DDS in a transmitter would necessarily serve a completely different purpose than a DDS in a receiver. In Brune, the DDS is used to generate a mixing frequency in a heterodyne receiver. In contrast, the DDS in claim 6 directly generates a depth frequency for transmission by a transmitter. Based on these differences, Applicant continues to believe that this suggested substitution amounts to a complex modification that would not be within the set of skills possessed by one of ordinary skill in the art. In response, the Examiner asserts that Applicant's argument is not persuasive since Brune's transmitter can alternately transmit at one of four frequencies and it would "behoove" Brune to utilize a DDS in the transmitter. Applicant respectfully disagrees. The mere ability of Brune to transmit at four different frequencies is respectfully submitted to be deficient as evidence to support modifying Brune in the suggested manner. The leap to the conclusion that this would "behoove" Brune to use a DDS in the transmitter is therefore respectfully submitted to be conclusory. Applicant respectfully submits that if it were reasonable and necessary to use a DDS in his transmitter, he would have done so. Accordingly, it is respectfully submitted that a prima facie case of obviousness has not been made.” Examiner respectfully disagrees. Brune’s “transmitter 100 may alternately transmit one of four selected carrier frequencies from the boring tool.” See ¶ 0066, it would behoove Brune to utilize a DDS in the transmitter 100, See MPEP 2143 Rationales B and E. Let us see, if we can find a multi-channel DDS that can be used by the combination of Brune-Yu-Olsson for transmission of signals. In an analogous art, Gilhousen teaches, “a method and apparatus for communicating messages or other information to one or more remote, mobile receivers. The communication system provides this information transfer for a large number of users without requiring each receiver to demodulate or decode a wide bandwidth signal on a continuous basis. This is accomplished by establishing a multi-channel Time Division Multiplexed (TDM) communication signal and dedicating one or more of the channels to transmit address information that designates message recipients and reception channels for each message.” See Col. 4 lines 61- Col.5 line 4. Gilhousen teaches, “a modulation and coding scheme that allows mass production of circuits and modules to be used for the remaining analog functions” see col. 2 line 68+. Gilhousen teaches, “encoded message symbols are used to modulate a frequency generator or source such as a Direct Digital Synthesizer which creates a phase and frequency modulated carrier, at the preselected frequency, for transmission to the satellite 20. see col. 7 lines 14-25. The Supreme Court has clearly defined the level burden on the factfinders with respect to rational underpinning, KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 401 (2007). The Office has provided the rational, “[i]t would have been obvious to one of ordinary skilled in the art at the time of invention (effective filing date for AIA application) to modify the combination of Brune-Yu-Olsson Brune's wherein Brune’s “transmitter 100 may alternately transmit one of four selected carrier frequencies from the boring tool.” See ¶ 0066 and use a multi-channel DDS that can generate the multi-bit symbol stream as suggested by Gilhousen it would behoove Brune to utilize a DDS in the transmitter that would allow continuous delivery of messages as well as related communication parameters as suggested by Gilhousen, See MPEP 2143 Rationales C, D and F.” Applicant has not provided a reason why said rational is insufficient, in view of, KSR Int'l Co. v. Teleflex, Inc.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a portable locator configured to perform electromagnetic noise measurements… the portable locator determines a depth of the transmitter…,” in claims 1 and 13, interpreted to be “portable device includes a receiver configured to (i) measure the electromagnetic noise and identify a set of symbol frequencies in response to the measured electromagnetic noise for subsequent transmission from the transmitter to form a multi-bit symbol stream based on the set of symbol frequencies” See ¶ 0011;
“the portable locator is configured to receive the depth frequency… the portable locator matches a spectral response of the transmitter” in claims 14, 15, is interpreted to be “device 20 is configured for receiving an electromagnetic depth signal 120 and an electromagnetic data signal 122 that are transmitted from a transmitter 130 that is supported within the boring tool or other inground tool.” See ¶ 0060, “the received signal can be processed such that the receiver response matches the symbol spectra as illustrated by plot 553 of FIG. 7. In particular, the spectral response of the receiver can be matched to the spectral characteristics of the transmitter by integrating the received symbol stream over a time period that corresponds to the time duration or period of each symbol” See ¶ 0087;
“the portable locator is configured to receive a modulated data frequency” in claim 16, is interpreted to be “for example, portable device 20 of FIG. 1 and a boring tool, or other transmitter that transmits an electromagnetic signal such as, for example, depth signal 120 of FIG. 2 or a modulated signal from which depth can be determined based on signal strength.” See ¶ 0111;
“the portable locator is configured to recover the sensor signal…” in claims 9 and 16 is interpreted to be “the portable device includes a receiver configured to receive the transmitter signal as a multibit symbol stream which at least characterizes a set of sensor information relating to the operation of the transmitter during the inground operation to recover the set of sensor information.” See ¶ 0010;
Claimed “portable locator” is interpreted to be portable device 20, “portable device 20 can transmit the reallocated power scheme to drill rig 80 via telemetry signal 44. The drill rig can then transfer the new power scheme to transmitter 130 via the drill string by using the latter as an electrical conductor... portable device 20 can be configured with an additional antenna 712 (FIG. 1) such as a dipole antenna for transmitting a signal for direct reception by transmitter 130. Modulation of this signal can be decoded by transmitter 130 to recover the new power scheme.” See ¶ 0098.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claims13-17 are objected to because of the following informalities:
Claim 13 is directed to “…system comprising: a portable locator…” However, the preamble on the dependent claims 14-17 are directed to the “portable locator” and not the “system” of claim 13.
Appropriate correction is required.
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.
Claim(s) 1, 5, 7-10, 13 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Brune (US 2002/0105331 A1), in view of Yu (US 2010/0194405 A1) and further in view of Olsson (US 20060232259 A1).
Consider claim 1, a system (10) for use in horizontal directional drilling that includes a drill string (18) that extends from a drill rig to an inground tool (16) such that extension and retraction of the drill string (18) moves the inground tool (16) through the ground (14) during an inground operation, (Brune teaches, “FIG. 2 which illustrates a boring system 10 operating in a region 12. It is noted that like reference numbers are used to refer to like components wherever possible throughout the various figures. The surface of the ground is indicated by the reference number 14. System 10 includes a boring tool 16 that is positioned on the end of a drill string 18 which is only partially shown. Boring tool 16 includes a dipole transmitter 20 having an antenna 22 that transmits a dipole locating field 24.” See Brune ¶ 0046)
said system comprising:
a portable locator (30) configured to perform electromagnetic noise measurements (Brune teaches, “FIG. 2 which illustrates a boring system 10 operating in a region 12…Boring tool 16 includes a dipole transmitter 20 having an antenna 22 that transmits a dipole locating field 24. The latter is received using a walkover portable locator/detector 30.” See Brune ¶ 0046. Brune teaches, “[o]ne problem commonly encountered during drilling and locating operations relates to noise. Such noise may emanate, for example, from traffic loops and from other directional drilling and/or cable locating operations. It is therefore advantageous … to change the locating signal to one or the other of the possible locating frequencies which is less susceptible to the particular noise that is being encountered within the drilling region.” See Brune ¶ 0115) at least down to a powerline frequency (“Brune teaches, In one configuration, frequency selection can be performed at the beginning of the drilling operation, for example, after monitoring [i.e. claimed “measuring”] of background noise levels at various frequencies such that noisy frequencies may be avoided. Such noisy frequencies may be attributed, for instance, to traffic loops, invisible dog fences, cable TV, and power lines in a particular region.” See ¶ 0063) for selecting a depth frequency that is [[less than]] 1.5 Khz and, thereafter, receive the depth frequency, Brune teaches, “[t]he present example contemplates the use of two frequencies comprising a low depth frequency of 1,516 Hz and a high depth frequency of 32,766 Hz for reasons to be described below. For the moment, it is appropriate to note that this embodiment is generally advantageous with the use of the 1,516 Hz depth locating signal since the data carrier frequency may remain at a higher value.” See ¶ 0114; and
Brune teaches, a transmitter (element 20 of fig. 2 OR element 100 of fig. 7) carried by the inground tool (16), ( Brune teaches, “System 10 includes a boring tool 16 that is positioned on the end of a drill string 18 which is only partially shown. Boring tool 16 includes a dipole transmitter 20 having an antenna 22 that transmits a dipole locating field 24.” See Brune ¶ 0046) configured for transmitting the depth frequency such that the portable locator (30) determines a depth of the transmitter (20/100) based on receiving the depth frequency during the inground operation, (Brune teaches, “[t]he depth locating signal is provided to driver section 140 for mixing therein with the data carrier frequency. The combined signals are then transmitted simultaneously from antenna 146. Like the data carrier frequency, the depth locating signal is transmitted at any desired frequency, selectively separate from the frequency of the data carrier frequency, and is switchable on-the-fly between any frequencies within the range of divide by N counter 128. The present example contemplates the use of two frequencies comprising a low depth frequency of 1,516 Hz and a high depth frequency of 32,766 Hz” See ¶ 0114)
Brune teaches “low depth frequency of 1,516 Hz” = 1.516 Khz and does not explicitly teach, selecting a depth frequency that is less than 1.5 Khz,
First, it is Office’s position that selecting a depth frequency that is less than 1.5 Khz, i.e. (1.49 Khz) is purely a design choice and applicant has not claimed or show any significant improvement in the functionality of the claimed machine via selecting a depth frequency that is less than 1.5 Khz (i.e. 1.49 Khz). Patent Trial and Appeals Board has held that “[d]esign choice applies when old elements in the prior art perform the same function as the now claimed structures. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed feature solves no stated problem and presents no unexpected result and “would be an obvious matter of design choice within the skill of the art”). However, when the claimed structure performs differently from the prior art a finding of obvious design choice is precluded. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious design choice precluded when claimed structure and the function it performs are different from the prior art). See In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995) (“design choice” is appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function). Ex parte Bagnall, et al. See MPEP 2144.04.
Second, [A] modification of a process parameter may be patentable if it ‘produce[s] a new and unexpected result which is different in kind and not merely in degree from the results of the prior art." In re Aller, 220 F.2d 454, 456, 105 USPQ 233. Applicant cited no “new and unexpected result” between selecting a depth frequency that is 1.516 Khz and 1.49 Khz (i.e. less than 1.5 Khz). The depth range discloses the claimed invention except for it would have been obvious to one having ordinary skill in the art at the time the invention was made to, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the workable ranges involves only routine skill in the art. In re Aller 105 USPQ 233. See MPEP 2144.05.
Third, Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. Applicant cited no “Evidence of unexpected properties” between selecting a depth frequency that is 1.516 Khz and 1.49 Khz (i.e. less than 1.5 Khz) discloses the claimed invention except for it would have been obvious to one having ordinary skill in the art at the time the invention was made to, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 716.02(b).
Nonetheless, in an analogous art, Yu teaches, to perform electromagnetic noise measurements below 1.5 Khz, Yu teaches, “a noise measurement system in power stabilization network, a variable filter applied to the same and a method for measuring noise in power stabilization network… an object of the present disclosure to attenuate a power line communication signal to operate within an input scope of an EMI measurer by using a filter capable of attenuating a particular frequency,” see ¶ 0006; Yu teaches, “signals less than 525 Khz are attenuated in filter output whereas signals in the forbidden frequency band remain unaffected. As a result, the final value of the EMI measurer is corrected as much as filter forbidden frequency attenuation rate at less than 525 KHz.” See ¶ 0039. Yu teaches, “the measuring method for the forbidden frequency band using the power stabilization network in a fault prevention testing in the power line communication devices may be positioned at a medium place between a power output terminal of the power stabilization network and a power line modem.” See ¶ 0052.
It would have been obvious to one of ordinary skilled in the art at the time of invention (effective filing date for AIA application) to modify the invention of Brune and an use an EMI measurer to measure frequency down to powerline and “signals less than 525 Khz are attenuated”, as suggested by Yu, See ¶ 0039, in an effort to allow desirable frequencies and filter undesired frequencies to achieve best possible SNR.
With respect to, selecting a depth frequency that is less than 1.5 Khz, in an analogous art, Olsson teaches, “systems for locating and tracing buried objects and more particularly to a system for detecting and tracing buried objects by means of automated active and passive signal event detection.” See ¶ 0003, Olsson teaches, “require the location and identification of existing underground utilities such as underground power lines,” See ¶ 0004, Olsson teaches, “Such horizontal field asymmetries are unexpectedly useful in determining an accurate "virtual depth" measurement, primarily because the locator user may use them to reorient the locator assembly azimuthally with respect to the buried utility line and thereby optimize locator signal-to-noise ratio (SNR). The resulting virtual depth measurements are sufficiently accurate to produce reliable automatic detection events in accordance with the system of this invention. As used herein, the term "virtual depth" denominates a distance measure related to the separation of the locator system from the target object [i.e. the depth of the object actually buried].” See ¶ 0016; Olsson teaches, “the virtual depth is assumed to be equal to the actual depth of the target if and only if the direction of the B-field vector magnitude gradient is parallel to this line connecting array centroids 30 and 32.” See ¶ 0049, Olsson teaches, teaches, “FIGS. 11 is a graphical diagram illustrating the several virtual depth signals measured while using an exemplary embodiment of this invention adapted to process virtual depth events simultaneously in several frequency bands. The line 140 represents a virtual depth signal detected in a passband centered at 8,192 Hz. The line 142 represents a virtual depth signal detected in a 4-15 kHz passband. The line 144 represents a virtual depth signal detected in a passband below 4 kHz. The line 146 represents virtual depth signal detected in a passband centered at 60 Hz… According to the method of this invention, a number of extrema are detected in the several virtual depth signals in FIG. 11, each representing an event detection. For example, the event 150 is detected at a minimum in the 8,192 Hz passband virtual depth signal line 140, which is known to be emitted by a gas line energized with an 8,192 Hz transmitter. A few feet further along the transect (some time later), the event 152 is detected at the simultaneous virtual depth signal minima in the other four bands, which indicates the presence of a buried power cable emitting several harmonics of 60 Hz.” See ¶ 0060.
It would have been obvious to one of ordinary skilled in the art at the time of invention (effective filing date for AIA application) to modify the combination of Brune- Yu, and use Olsson detector and select depth frequency that is less than 1.5 Khz, as claimed in an effort to avoid drilling through power and gas lines buried underground, as suggested by, Olsson ¶ 0005.
Consider claim 13, in a system for use in horizontal directional drilling that includes a drill string that extends from a drill rig to an inground tool such that extension and retraction of the drill string moves the inground tool through the ground during an inground operation, the inground tool including a transmitter, a portable locator, See rejection of claim 1, comprising:
Brune teaches, a portable locator (30), comprising: a receiver (150 shown in Fig. 8), (Brune teaches, “receiver 150 may readily be incorporated into either a portable walkover locator” See Brune ¶ 0070. Brune teaches, “FIG. 8, a multi-frequency receiver manufactured in accordance with the present invention is generally indicated by the reference number 150. Locating signal 60 is received by an antenna arrangement 152 which may include three orthogonally arranged x, y and z antennas indicted by reference numbers 154, 156 and 158, respectively.” See Brune ¶ 0067.)
With respect to, portable locator, configured to perform electromagnetic noise measurements at least down to a powerline frequency for selecting a depth frequency that is less than 1.5 Khz for above ground reception and to receive the depth frequency from the transmitter during the inground operation to determine a depth of the transmitter, See rejection of claim 1.
Consider claim 5, the system of claim 1 wherein the transmitter is configured to transmit the depth frequency as selected based on the noise measurements by the portable device at less than 1.5 Khz, See rejections of claim 1.
Consider claim 7, the system of claim 1 wherein the transmitter includes an antenna driver (104) that drives an antenna (146) to emit the depth frequency as a dipole locating signal at least for use in determining the depth of the transmitter, Brune teaches, “[t]ransmitter 100 includes a sensor/conditioning section 102 and a carrier generation/antenna drive section 104.” See Brune ¶ 0061. (Brune teaches, “FIG. 2 which illustrates a boring system 10 operating in a region 12…Boring tool 16 includes a dipole transmitter 20 having an antenna 22 that transmits a dipole locating field 24. The latter is received using a walkover portable locator/detector 30.” See Brune ¶ 0046. Brune teaches, “[a]n antenna drive signal is produced on an antenna line 144 which is coupled to an antenna 146 which generally comprises a dipole antenna for emanation of locating signal 24.” See Brune ¶ 0064.
Consider claim 8, the system of claim 1 wherein the transmitter includes one or more sensors to produce at least one sensor signal and the transmitter is configured to transmit the sensor signal separately from the depth frequency, (Brune teaches, “FIG. 7, sensor/conditioning section 102 includes a suitable group of sensors in this instance comprising, for example, a three-axis gyro 106, a three-axis magnetometer 108, a three-axis accelerometer 110, a roll/pitch sensor 112, a temperature sensor 114 and a battery sensing section 116.” See Brune ¶ 0062); Brune teaches, “[t]he depth locating signal is provided to driver section 140 for mixing therein with the data carrier frequency. The combined signals are then transmitted simultaneously from antenna 146. Like the data carrier frequency, the depth locating signal is transmitted at any desired frequency, selectively separate from the frequency of the data carrier frequency, and is switchable on-the-fly between any frequencies within the range of divide by N counter 128.” See ¶ 0114)
Consider claim 9, the system of claim 8 wherein the transmitter is configured to transmit a modulated data frequency that characterizes the sensor signal and the portable locator is configured to recover the sensor signal, (Brune teaches, “FIG. 7, sensor/conditioning section 102 includes a suitable group of sensors in this instance comprising, for example, a three-axis gyro 106, a three-axis magnetometer 108, a three-axis accelerometer 110, a roll/pitch sensor 112, a temperature sensor 114 and a battery sensing section 116.” See Brune ¶ 0062); and the portable locator is configured to recover the sensor signal from the modulated data frequency, Brune teaches, “[p]hysical parameters at the outputs of magnetometer 108, accelerometer 110 and roll/pitch sensor 112, … battery sensing section 116 and temperature sensor 114, are provided to a multiplexer 118 which then transfers all of these signals in multiplexed form to an analog to digital converter 120. The latter digitizes and converts the multiplexed signals into digital format, for example, at either an 8-bit or 12-bit resolution, depending on accuracy requirements. Thereafter, a microprocessor 122 processes all of the parameters provided from the analog to digital converter and converts the parameters into information relating to the in-ground transmitter coordinates or relating to down-hole conditions.” See Brune ¶ 0062. Brune teaches, “[o]nce the calculations are complete relating to all of the signals from sensors in sensor/conditioning section 102, the results are transmitted to one or more above ground locations… The carrier frequency may be selected by microprocessor 122.” See Brune ¶ 0063. Brune teaches, “data modulation section 132 passes a modulated carrier signal to a driver section 140. The driver section receives a power selection input on a power select line 142 from microprocessor 122… The transmitter can send encoded data (as is done for roll, pitch and other parameters) to allow the receiver to adjust its calibration for the new signal strength. This will allow the operator to continue monitoring depth or range without the need to recalibrate while drilling. An antenna drive signal is produced on an antenna line 144 which is coupled to an antenna 146” See Brune ¶ 0065.
Consider claim 10, the system of claim 9 wherein the transmitter is configured to transmit the modulated data frequency at a carrier frequency that is higher than the depth frequency, Brune teaches, “it is appropriate to note that this embodiment is generally advantageous with the use of the 1,516 Hz depth locating signal since the data carrier frequency may remain at a higher value.” See ¶ 0114.1
Consider claim 16, the portable locator of claim 13 further configured to receive a modulated data frequency from the transmitter that characterizes a sensor signal generated by at least one sensor during the inground operation which sensor is supported by the transmitter (Brune teaches, “FIG. 7, sensor/conditioning section 102 includes a suitable group of sensors in this instance comprising, for example, a three-axis gyro 106, a three-axis magnetometer 108, a three-axis accelerometer 110, a roll/pitch sensor 112, a temperature sensor 114 and a battery sensing section 116.” See Brune ¶ 0062); and the portable locator is configured to recover the sensor signal from the modulated data frequency, Brune teaches, “[p]hysical parameters at the outputs of magnetometer 108, accelerometer 110 and roll/pitch sensor 112, … battery sensing section 116 and temperature sensor 114, are provided to a multiplexer 118 which then transfers all of these signals in multiplexed form to an analog to digital converter 120. The latter digitizes and converts the multiplexed signals into digital format, for example, at either an 8-bit or 12-bit resolution, depending on accuracy requirements. Thereafter, a microprocessor 122 processes all of the parameters provided from the analog to digital converter and converts the parameters into information relating to the in-ground transmitter coordinates or relating to down-hole conditions.” See Brune ¶ 0062. Brune teaches, “[o]nce the calculations are complete relating to all of the signals from sensors in sensor/conditioning section 102, the results are transmitted to one or more above ground locations… The carrier frequency may be selected by microprocessor 122.” See Brune ¶ 0063. Brune teaches, “data modulation section 132 passes a modulated carrier signal to a driver section 140. The driver section receives a power selection input on a power select line 142 from microprocessor 122… The transmitter can send encoded data (as is done for roll, pitch and other parameters) to allow the receiver to adjust its calibration for the new signal strength. This will allow the operator to continue monitoring depth or range without the need to recalibrate while drilling. An antenna drive signal is produced on an antenna line 144 which is coupled to an antenna 146” See Brune ¶ 0065.
Consider claim 17, the portable locator of claim 16 wherein the transmitter is configured to transmit the modulated data frequency at a carrier frequency that is higher than the depth frequency, See rejection of claim 10.
Claim(s) 2-3 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Brune (US 2002/0105331 A1), in view of Yu (US 2010/0194405 A1), in view of Olsson, and further in view of Chau (US 2013/0176139 A1).
Consider claim 2, the system of claim 1 wherein the transmitter is configured to continuously transmit the depth frequency [i.e. pure tone] during the inground operation, Specification states, “A depth tone generator is configured for producing an unmodulated depth tone frequency that is twenty or more times less than the carrier frequency and an antenna driver for electrically driving at least one antenna to emit the depth tone frequency and the carrier frequency for aboveground detection of the depth tone frequency and for recovery of the sensor signals from the modulated data frequency.” It is Examiner’s reasonable interpretation in view of spec [0015] that “pure tone” would be the continuously transmit depth signal. Brune teaches, “[i]n one implementation, a frequency indication is encoded on a carrier, which carrier is also used in determining the depth of the boring tool. In another implementation, the frequency indication is encoded on a carrier which is distinct from another carrier that is used in the boring tool depth determination.” See Brune ¶ 0018.
Nonetheless in an analogous art, Chau teaches, “a system, apparatus and method involving an advanced drill string communication system that couples an electrical signal onto the electrically conductive drill string for data transmission while providing compensation at least for noise and distortion effects.” See Chau ¶ 0002.
Chau teaches, “[a] downhole transceiver is located downhole proximate to the inground tool which is configured (i) to receive at least one sensor signal relating to an operational parameter of the inground tool, (ii) to generate a downhole signal that is transmitted to the drill rig on the drill string and which downhole signal is modulated based on the sensor signal, and (iii) to emanate an electromagnetic locating signal for above ground detection which locating signal is unmodulated at least by the sensor signal.” See Chau ¶ 0033. Chau teaches, “an embodiment which transmits locating signal 66 without modulation, at least from a practical standpoint as a pure tone [i.e. claimed continues transmission], Applicants recognize that enhanced depth range and/or homing range can be provided for a given level of transmission power that is applied to the locating signal. The enhanced capability can be attributed to factors including avoiding the diversion of carrier power to modulation side lobes as well as the ability to apply very narrow bandwidth filtering for purposes of receiving the pure tone at locator 80. The bandwidth for such a narrow band filter can be, for example, 0.5 Hz to 1 Hz. It is noted that the lower limit of the range affects response time. Stated in a different way, by transmitting an unmodulated carrier for a given depth range and/or a given homing range, the transmission power applied to locating signal 66 can be reduced at least for purposes of conserving battery power.” See ¶ 0098. Chau teaches, “many non-interfe