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 .
Response to Arguments
Applicant’s amendments dated 11/18/25 have been entered. The amendments have resolved the previously presented claim objections and 112 rejections from the preceding Office Action. Please note that a new 112(b) rejection is presented for the amended claim language of claim 6, necessitated by applicant’s amendments.
Applicant's arguments filed 11/18/25 have been fully considered but they are not persuasive.
Applicant contends that the newly amended feature is not taught by Klein. Specifically, “the adapter of Klein (i.e. internal collar 32 of the drive head 24) is closed at one end and therefore not capable of receiving the drill string therethrough.”
The examiner disagrees for several reasons. First the examiner disagrees with the assertion that the one end is “closed”. As seen in Figure 3, the “closure” 30 actually contains an open bore. It is noted that the drill string is not a positively recited element of the claim and there is no particular dimensionality has been recited or is associated with a not-required “drill string” claim element.
Second, it is additionally noted that even for the sake of argument, assuming “one end” was closed, the claim does not require the receipt of a drill string via any particular end. The tube (which has a continuously open bore) and the adapter could be placed overtop a not-drilled string (as is known to occur in the art, see e.g. an overshot tool).
The examiner respectfully notes for applicant that the claim limitations appear to be largely functional in nature; and more particularly the functionality has been recited as an interaction with not-required claim elements. As stated in MPEP 2114(II), “"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647”.
The examiner notes for applicant the adapter, as seen in Figure 3-4 has an open face at 162 which may provide opportunities to differentiate from the threaded coupling identified in Klein (and the modification presented below with respect to claim 6). The examiner notes the breadth of claim 6’s ‘slot permitting relative movement’ relative to what is seen in Figure 3-4. The examiner would welcome an interview with applicant to discuss claim language to highlight this distinguishing feature as well as resolve outstanding indefiniteness issues with the claim.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Claim 12 recites “the bench”. Therefore, the bench must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 6 is objected to because of the following informalities:
Claim 6 recites “the the drill string” (last line). There is a typographical error. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 6 and 12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 recites “a position in which the tube member is aligned with the drill string and another position in which the tube member is offset from the drill string”. The recitation is unclear as it appears to require the claimed “bore hole sleeve apparatus” to which the invention is directed per the preamble to have a relative positioning state, relative to an element which is not required to exist in the claim as best understood. The recitation regarding alignment and offset positions with “the drill string” is confusing as to whether the drill string is an intended claim element.
If the claim intends to claim the sleeve apparatus functionality, it is recited unclearly. As stated in MPEP 2173.05(g), “the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008) ”
Claim 12 recites the limitation "the bench". There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2, and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Klein (US 3463247 A).
Regarding claim 1, Klein teaches a bore hole sleeve apparatus for a bore hole drill, the sleeve apparatus including:
a tube member (Fig 1, pipe “S” including both pipes 44 shown) adapted to be coupled to a mast of a mobile bore hole drill (Fig 1, coupled to mast via 24 as seen) and to be positioned within a collar region of a bore hole (Fig 1, pipe “S” capable of being placed within “collar region”/in borehole), the tube member including a longitudinal internal passage that is open at opposite ends and an external surface for facing outwardly against a wall of the bore hole (Fig 1-2, open bore extending through pipe seen with exterior facing borehole wall); and
a coupling (Fig 1, coupling 24) comprising an adapter (Fig 1, Fig 6, adapter including 32, 36, and 58) configured to be secured relative to the mast and for engaging an upper end of the tube member (Fig 6, upper end of upper tubular 44, indicated at 54 is engaged) for coupling the tube member relative to the mast when a lower end of the tube member is located within the collar region of the bore hole (Fig 1, Fig 6, upper end is engaged while pipe is in borehole as seen),
the upper end of the tube member includes a flange (Fig 6, flange is upper most thread tooth of pin end 46) extending radially outwardly from the opening (Fig 6, flange as defined from opening), the flange including a lower surface (Fig 6, lower face of flange as defined);
the adapter includes a lower plate (Fig 6, lower plate is second highest individual thread tooth on 32) that is locatable under the flange for engaging the lower surface of the flange for lifting the tube member up out of the bore hole (Fig 6, plate 58 engaged lower end of the flange; capable of being used with 24 to lift tubular 44; Column 8, line 3-7, Column 3, lines 7-8, “threads can carry the weight of the drill pipe”) and further includes a central opening for alignment with the longitudinal internal passage of the tube member (Fig 6, the internal bores of the adapter 24 and tube 44 align);
wherein the longitudinal internal passage and the central opening adapted for receiving the drill string therethrough when the tube member is located within the collar region of the bore hole (Fig 2, pipe “S” has a bore and is capable of receiving another smaller diameter pipe/drill string, which is not understood to be a required element in the claim; Fig 6, the bores including the central bore are capable of accommodating a drill string when the collar is in the bore hole, note the drill string is not required and is not required to perform any function. Please see additional discussion under the response to arguments not repeated here).
Regarding claim 2, Klein teaches wherein the coupling is adapted for releasably securing the tube member to the mast Column 8, line 3-7, Column 3, lines 7-8, the coupling selectively attaches to the tube and consequently its coupling to the mast.
Regarding claim 12, Klein teaches wherein the tube member includes a protrusion (Fig 6, protrusion 56) adapted to engage the surface of the bench (Fig 6, bench 66) for supporting the tube member within the collar region of the bore hole and for maintaining the flange spaced above the surface of the bench (Fig 6, engagement between 66 and 56 works to retain the elements in their relative position and would limit axial movement/maintain spacing).
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) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klein (US 3463247 A), in view of Reimert (US 4830408 A).
Regarding claim 6, Klein teaches is silent on wherein the adapter includes a slot (Fig 1, 6, space between uppermost and second uppermost tooth on thread) between the lower plate and upper plate that is adapted for receiving the flange (Column 3, lines 7-8, elements thread together and thus the flange moves between the slots) within the slot between a position in which the tube member is aligned with the drill string and another position in which the tube member is offset from the drill string (Fig 1, 6, flange/tooth of tubular 44 moves within the slot/teeth gap of the adapter as defined. As best understood, the tubular is able to be in varying aligned states between a drill pipe which is not required).
Klein is silent on the slot permitting lateral movement of the flange within the slot.
Reimert teaches the slot permitting lateral movement of the flange within the slot (Fig 8, slot occupied by 138 and bound by the flanges permits lateral movement within the slot; the examiner notes that the flanges defined by snap ring 170 is flexible and can be opened and the claim has been broadly recited as merely requiring a capability to ‘permit’ movement of the flange and slot).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention disclosed by Klein by having the coupling in lieu of threaded couplings as disclosed by Reimert because it is “a mechanism for securing two sections of pipe together that operates quickly. This is important in achieving the aforementioned goal of saving valuable rig time” (Column 2, lines 23-26).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THEODORE N YAO whose telephone number is (571)272-8745. The examiner can normally be reached typically 8am-4pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, TARA SCHIMPF can be reached at (571) 270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THEODORE N YAO/Primary Examiner, Art Unit 3676