DETAILED ACTION
The following is a Non-Final Office Action in response to the Appeal Brief received on 19 November 2025. Claims 1-8, 10-13 and 17 were previously cancelled. Claims 9, 14-16, and 18-22 remain pending in this application.
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 .
Reopening of Prosecution After Appeal Brief
In view of the Appeal Brief filed on 19 November 2025, PROSECUTION IS HEREBY REOPENED. A new grounds of rejection is claims 9, 14-16, and 18-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/ROBERT E FENNEMA/Supervisory Patent Examiner, Art Unit 2117
Response to Arguments
Appellant 's arguments, see Appeal Brief, pgs. 3-11, filed 19 November 2025 with respect to rejected claims 9, 14-16, and 18-22 under 35 U.S.C. 101 have been fully considered but they are not persuasive.
With respect to the Appellant’s arguments,
The subject matter of claim 9 provides a technical solution to this technical problem by recommending optimal gear selection and thus clearly improves another technical field (see MPEP § 2106.05(a)). (pg. 5, paragraph 7)
The claimed steps of activating a motor of the core drill to operate the core drill with the first core bit mounted to the core drill; and deactivating the motor and measuring a drop in a rotational speed of the core drill for a predetermined time period after the deactivating are technical steps of operating the core drill that allow the diameter of the first core bit to be determined, which are specifically used to provide a recommendation of the optimal gear to be engaged for the first core bit. The entire purpose of the steps of activating a motor of the core drill and deactivating the motor and measuring a drop in a rotational speed of the core drill and providing a recommendation of the optimal gear to be engaged is to optimize the usage of core drills in a different manner than was possible in the field at the effective filing date of the present application. As discussed at paragraph [0009], these steps thus to improve the drilling speed and/or the lifetime of the core bit and tests have shown that, with the method, the drilling performance of the core drill can be improved considerably. (pg. 6, paragraph 2)
The Examiner respectfully disagrees.
Specification of the instant application filed on 17 August 2022:
However, tests have shown that users of core drills frequently do not carry out the assignment of core bit diameter and selected gear or do not carry it out optimally. This can have the disadvantageous result of the core drill working with a non-optimal torque and/or a non-optimal rotational speed of the core bit for a specific task. As a result, difficulties can arise on carrying out the drilling work or delays can occur. It is also possible for the quality of the drilling result to suffer as a result of non-optimally set gears on the core drill. (pg. 1, par. [0003])
It is an object of the present invention to provide the user of a core drill with a recommendation of an optimal gear selection. Such a gear selection recommendation is known for example in passenger cars, in which an indication with an arrow frequently occurs on the display. This indication can have for example as content the gear that is currently engaged and whether the currently engaged gear is optimal for the motor and/or the transmission in light of the current motor speed or whether a different gear should be engaged. The gear selection recommendation should, as far as possible, occur and be displayed automatically in order that the user can notice and implement it without great effort. The invention is based in particular on the object of providing a method for displaying a recommended gear or a method for the preferably automatic setting of the optimal gear for a particular core bit diameter for working with the core drill. (pg. 2, par. [0006])
The invention relates in particular to a method for automatically identifying the core bit diameter in core drills, and to the displaying and/or processing of this information. With this information, it is possible to provide the user with a recommendation for the gear selection on the core drill and thus to improve the drilling speed and/or the lifetime of the core bit. Tests have shown that, with the method, the drilling performance of the core drill can be improved considerably. The identification of the core bit diameter can preferably be used to provide the user of the core drill with an optimal gear selection recommendation for working with the core drill. (pg. 3, par. [0009])
MPEP 2104 III. - SUBJECT MATTER ELIGIBILITY
A claimed invention must be eligible for patenting. As explained in MPEP § 2106, there are two criteria for determining subject matter eligibility: (a) first, a claimed invention must fall within one of the four statutory categories of invention set forth in 35 U.S.C. 101, i.e., process, machine, manufacture, or composition of matter; and (b) second, a claimed invention must be directed to patent-eligible subject matter and not a judicial exception (unless the claim as a whole includes additional limitations amounting to significantly more than the exception). The judicial exceptions are subject matter which courts have found to be outside of, or exceptions to, the four statutory categories of invention, and are limited to abstract ideas, laws of nature and natural phenomena (including products of nature). Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 216, 110 USPQ2d 1976, 1980 (2014) (citing Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 66, 70, 106 USPQ2d 1972, 1979 (2013)). See also Bilski v. Kappos, 561 U.S. 593, 601, 95 USPQ2d 1001, 1005-06 (2010) (citing Diamond v. Chakrabarty, 447 U.S. 303, 309, 206 USPQ 193, 197 (1980)).
See MPEP § 2106 for a discussion of subject matter eligibility in general, and the analytical framework that is to be used during examination for evaluating whether a claim is drawn to patent-eligible subject matter, MPEP § 2106.03 for a discussion of the statutory categories of invention, MPEP § 2106.04 for a discussion of the judicial exceptions, and MPEP § 2106.05 for a discussion of how to evaluate claims directed to a judicial exception for eligibility. See MPEP § 2106.07(a)(1) for form paragraphs for use in rejections under 35 U.S.C. 101 based on a lack of subject matter eligibility. See also MPEP § 2105 for more information about claiming living subject matter, as well as the Leahy-Smith America Invents Act (AIA )'s prohibition against claiming human organisms.
Eligible subject matter is further limited by the Atomic Energy Act explained in MPEP § 2104.01, which prohibits patents granted on any invention or discovery that is useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon.
The criteria set forth for eligible subject matter under 35 U.S.C. 101 does not require the lack of disclosure or teaching of claimed subject matter in cited references per MPEP 2104 III (i.e. the lack of citing references under 35 U.S.C. 102 or 35 U.S.C. 103 does not provide evidence that the claimed invention is eligible under 35 U.S.C. 101). Hence, the Appellant’s arguments are not found persuasive.
Further, the Appellant has set forth an advantage of use (i.e. a benefit of “… improve the drilling speed and/or the lifetime of the core bit and tests have shown that, with the method, the drilling performance of the core drill can be improved considerably.”) without providing any arguments/rationales/evidence to how/why the previously and newly presented additional elements amount to an improvement (i.e. enhancement) in the functioning of a computer or an improvement (i.e. enhancement) to another technology or technical field (see MPEP 2106.04(d)(1) and MPEP 2106.04(a); i.e. The Appellant has failed to provide any arguments/rationales/evidence as to how/why the claimed limitations provide an improvement (i.e. enhancement) in the functioning of a computer or an improvement (i.e. enhancement) to providing a recommendation of an optimal gear to be engaged for a core bit with a determined diameter that is attached to the drill). Hence, the Appellant’s arguments are found unpersuasive.
In regards to the Appellant’s argument,
The claimed activating the motor, deactivating the motor and providing a recommendation steps are not a drafting effort designed to monopolize any abstract idea, as the recommendation of the optimal gear to be engaged is used to impact the physical properties of the core drill. This steps ties any possible mental operations of the "using" step to a specific, concrete method for improving the operation of the core drill, as discussed for example at paragraphs [0002] to [0006] and [0010] to [0012] of the present specification. (pg. 6, paragraph 3)
Specification of the instant application filed on 17 August 2022:
The invention relates in particular to a method for automatically identifying the core bit diameter in core drills, and to the displaying and/or processing of this information. With this information, it is possible to provide the user with a recommendation for the gear selection on the core drill and thus to improve the drilling speed and/or the lifetime of the core bit. Tests have shown that, with the method, the drilling performance of the core drill can be improved considerably. The identification of the core bit diameter can preferably be used to provide the user of the core drill with an optimal gear selection recommendation for working with the core drill. (pg. 3, par. [0009])
MPEP 2106.04(d):
Accordingly, after determining that a claim recites a judicial exception in Step 2A Prong One, examiners should evaluate whether the claim as a whole integrates the recited judicial exception into a practical application of the exception in Step 2A Prong Two. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Whether or not a claim integrates a judicial exception into a practical application is evaluated using the considerations set forth in subsection I below, in accordance with the procedure described below in subsection II.
II. HOW TO EVALUATE WHETHER THE ADDITIONAL ELEMENTS INTEGRATE THE JUDICIAL EXCEPTION INTO A PRACTICAL APPLICATION
The analysis under Step 2A Prong Two is the same for all claims reciting a judicial exception, whether the exception is an abstract idea, a law of nature, or a natural phenomenon (including products of nature). Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations introduced in subsection I supra, and discussed in more detail in MPEP §§ 2106.04(d)(1), 2106.04(d)(2), 2106.05(a) through (c) and 2106.05(e) through (h).
The Examiner recognizes the Appellant has not provided arguments/rationales/evidence as to why the claimed limitations impose meaningful limits on the on the judicial exception (i.e. “determine that the first core bit attached to the core drill has the first diameter” in claim 9) more than providing insignificant extra-solution activities, which the Courts have indicated do not provide a practical application (See MPEP 2106.05(f), 2106.05(g), and 2106.05(h)). The Examiner maintains the additional limitations of “activating”, “deactiving” and “measuring” are pre-solution activities and “… providing a recommendation …” is a post-solution activity as presented in Step 2, prong two of the subject matter eligibility requirement (Final Office Action mailed on 21 July 2025) which are recited at a high level of generality and so generically they represented no more than merely gathering and outputting data. Hence, the Appellant’s argument is found unpersuasive.
With respect to the Appellant’s argument,
The claimed subject matter is analogous to the claims recently found by the Federal Circuit to be directed to a patent eligible invention in Powerblock Holdings, Inc. V. IFit, Inc., 146 F.4th 1366 (Fed. Cir. 2025). (see Remarks, pg. 6, paragraph 6)
The Examiner respectfully disagrees.
The Examiner recognizes “Powerblock Holdings, Inc.” was directed to a system that selects and automates a weight adjustment of dumbbells used in exercising and weightlifting and claim 9 of the instant application recites “providing a recommendation of the optimal gear to be engaged for the first core bit with the first diameter attached to the core drill”. Hence, the instant application is not analogous to “Powerblock Holdings, Inc.” since the claims as filed do not recite any automation of changing (i.e. adjusting) the gear of the drill. Therefore, the Appellant’s argument is found unpersuasive.
In regards to the Appellant’s argument,
Similarly, the method involves a specific type of drill - a core drill, a plurality of core bits with different diameters useable with the core drill, each of the plurality of core bits with different diameters being associated with an optimal gear of the core drill, and a motor of the core drill. (see Remarks, pg. 7, paragraph 2)
MPEP 2106.05(b) Particular Machine [R-07.2022]
III. WHETHER ITS INVOLVEMENT IS EXTRA-SOLUTION ACTIVITY OR A FIELD-OF-USE
Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the claim. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more. See Bilski, 561 U.S. at 610, 95 USPQ2d at 1009 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 197 (1978)), and CyberSource v. Retail Decisions, 654 F.3d 1366, 1370, 99 USPQ2d 1690 (Fed. Cir. 2011) (citations omitted) ("[N]othing in claim 3 requires an infringer to use the Internet to obtain that data. The Internet is merely described as the source of the data. We have held that mere ‘[data-gathering] step[s] cannot make an otherwise nonstatutory claim statutory.’" 654 F.3d at 1375, 99 USPQ2d at 1694 (citation omitted)). See MPEP § 2106.05(g) & (h) for more information on insignificant extra-solution activity and field of use, respectively.
MPEP 2106.05(h) Field of Use and Technological Environment [R-10.2019]
Another consideration when determining whether a claim integrates the judicial exception into a practical application in Step 2A Prong Two or recites significantly more than a judicial exception in Step 2B is whether the additional elements amount to more than generally linking the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application.
The courts often cite to Parker v. Flook as providing a classic example of a field of use limitation. See, e.g., Bilski v. Kappos, 561 U.S. 593, 612, 95 USPQ2d 1001, 1010 (2010) ("Flook established that limiting an abstract idea to one field of use or adding token postsolution components did not make the concept patentable") (citing Parker v. Flook, 437 U.S. 584, 198 USPQ 193 (1978)). In Flook, the claim recited steps of calculating an updated value for an alarm limit (a numerical limit on a process variable such as temperature, pressure or flow rate) according to a mathematical formula "in a process comprising the catalytic chemical conversion of hydrocarbons." 437 U.S. at 586, 198 USPQ at 196. Processes for the catalytic chemical conversion of hydrocarbons were used in the petrochemical and oil-refining fields. Id. Although the applicant argued that limiting the use of the formula to the petrochemical and oil-refining fields should make the claim eligible because this limitation ensured that the claim did not preempt all uses of the formula, the Supreme Court disagreed. 437 U.S. at 588-90, 198 USPQ at 197-98. Instead, the additional element in Flook regarding the catalytic chemical conversion of hydrocarbons was not sufficient to make the claim eligible, because it was merely an incidental or token addition to the claim that did not alter or affect how the process steps of calculating the alarm limit value were performed. Further, the Supreme Court found that this limitation did not amount to an inventive concept. 437 U.S. at 588-90, 198 USPQ at 197-98. The Court reasoned that to hold otherwise would "exalt[] form over substance", because a competent claim drafter could attach a similar type of limitation to almost any mathematical formula. 437 U.S. at 590, 198 USPQ at 197.
In contrast, the additional elements in Diamond v. Diehr as a whole provided eligibility and did not merely recite calculating a cure time using the Arrhenius equation "in a rubber molding process". Instead, the claim in Diehr recited specific limitations such as monitoring the elapsed time since the mold was closed, constantly measuring the temperature in the mold cavity, repetitively calculating a cure time by inputting the measured temperature into the Arrhenius equation, and opening the press automatically when the calculated cure time and the elapsed time are equivalent. 450 U.S. at 179, 209 USPQ at 5, n. 5. These specific limitations act in concert to transform raw, uncured rubber into cured molded rubber. 450 U.S. at 177-78, 209 USPQ at 4.
A more recent example of a limitation that does no more than generally link a judicial exception to a particular technological environment is Affinity Labs of Texas v. DirecTV, LLC, 838 F.3d 1253, 120 USPQ2d 1201 (Fed. Cir. 2016). In Affinity Labs, the claim recited a broadcast system in which a cellular telephone located outside the range of a regional broadcaster (1) requests and receives network-based content from the broadcaster via a streaming signal, (2) is configured to wirelessly download an application for performing those functions, and (3) contains a display that allows the user to select particular content. 838 F.3d at 1255-56, 120 USPQ2d at 1202. The court identified the claimed concept of providing out-of-region access to regional broadcast content as an abstract idea, and noted that the additional elements limited the wireless delivery of regional broadcast content to cellular telephones (as opposed to any and all electronic devices such as televisions, cable boxes, computers, or the like). 838 F.3d at 1258-59, 120 USPQ2d at 1204. Although the additional elements did limit the use of the abstract idea, the court explained that this type of limitation merely confines the use of the abstract idea to a particular technological environment (cellular telephones) and thus fails to add an inventive concept to the claims. 838 F.3d at 1259, 120 USPQ2d at 1204.
The Appellant has merely summarized the claimed limitations of a core drill having a plurality of core bits with different diameters as set forth in claim 9; wherein the Courts have found “merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application.” The additional limitations as presented in Step 2A, prong two of the subject matter eligibility requirement in the Final Office Action mailed on 21 July 2025 were recited at a high level of generality and so generically they represented merely limiting that abstract idea to a field of use and extra-solution activities of gathering data and outputting data that do not integrate the abstract idea into a practical application. Further, the limitation of “providing a recommendation of the optimal gear to be engaged for the first core bit with the first diameter attached to the core drill” is directed to the output of data not “… operating the core drill in an optimized manner”. Hence, the Appellant’s argument is found unpersuasive.
With respect to the Appellant’s arguments,
As discussed in detail below, the present claims and are easily distinguished from those in Flook, which merely involved updating an alarm limits, and did not include any steps performed in the physical world and did not involve any machine. The claims in Flook simply recited calculations. (see Remarks, pg. 8, paragraph 4)
As noted above, Flook merely involved performing calculations and outputting data in a particular technological environment, while in contrast the present claims perform specific operations on a particular machine to provide a useful recommendation of an optimal gear for a core bit having a diameter. (see Remarks, pg. 8, paragraph 6)
The Examiner respectfully disagrees.
Specification of the instant application filed on 17 August 2022:
However, tests have shown that users of core drills frequently do not carry out the assignment of core bit diameter and selected gear or do not carry it out optimally. This can have the disadvantageous result of the core drill working with a non-optimal torque and/or a non-optimal rotational speed of the core bit for a specific task. As a result, difficulties can arise on carrying out the drilling work or delays can occur. It is also possible for the quality of the drilling result to suffer as a result of non-optimally set gears on the core drill. (pg. 1, par. [0003])
It is an object of the present invention to provide the user of a core drill with a recommendation of an optimal gear selection. Such a gear selection recommendation is known for example in passenger cars, in which an indication with an arrow frequently occurs on the display. This indication can have for example as content the gear that is currently engaged and whether the currently engaged gear is optimal for the motor and/or the transmission in light of the current motor speed or whether a different gear should be engaged. The gear selection recommendation should, as far as possible, occur and be displayed automatically in order that the user can notice and implement it without great effort. The invention is based in particular on the object of providing a method for displaying a recommended gear or a method for the preferably automatic setting of the optimal gear for a particular core bit diameter for working with the core drill. (pg. 2, par. [0006])
The invention relates in particular to a method for automatically identifying the core bit diameter in core drills, and to the displaying and/or processing of this information. With this information, it is possible to provide the user with a recommendation for the gear selection on the core drill and thus to improve the drilling speed and/or the lifetime of the core bit. Tests have shown that, with the method, the drilling performance of the core drill can be improved considerably. The identification of the core bit diameter can preferably be used to provide the user of the core drill with an optimal gear selection recommendation for working with the core drill. (pg. 3, par. [0009])
MPEP 2106.05(h) Field of Use and Technological Environment [R-10.2019]
Another consideration when determining whether a claim integrates the judicial exception into a practical application in Step 2A Prong Two or recites significantly more than a judicial exception in Step 2B is whether the additional elements amount to more than generally linking the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application.
The courts often cite to Parker v. Flook as providing a classic example of a field of use limitation. See, e.g., Bilski v. Kappos, 561 U.S. 593, 612, 95 USPQ2d 1001, 1010 (2010) ("Flook established that limiting an abstract idea to one field of use or adding token postsolution components did not make the concept patentable") (citing Parker v. Flook, 437 U.S. 584, 198 USPQ 193 (1978)). In Flook, the claim recited steps of calculating an updated value for an alarm limit (a numerical limit on a process variable such as temperature, pressure or flow rate) according to a mathematical formula "in a process comprising the catalytic chemical conversion of hydrocarbons." 437 U.S. at 586, 198 USPQ at 196. Processes for the catalytic chemical conversion of hydrocarbons were used in the petrochemical and oil-refining fields. Id. Although the applicant argued that limiting the use of the formula to the petrochemical and oil-refining fields should make the claim eligible because this limitation ensured that the claim did not preempt all uses of the formula, the Supreme Court disagreed. 437 U.S. at 588-90, 198 USPQ at 197-98. Instead, the additional element in Flook regarding the catalytic chemical conversion of hydrocarbons was not sufficient to make the claim eligible, because it was merely an incidental or token addition to the claim that did not alter or affect how the process steps of calculating the alarm limit value were performed. Further, the Supreme Court found that this limitation did not amount to an inventive concept. 437 U.S. at 588-90, 198 USPQ at 197-98. The Court reasoned that to hold otherwise would "exalt[] form over substance", because a competent claim drafter could attach a similar type of limitation to almost any mathematical formula. 437 U.S. at 590, 198 USPQ at 197.
In contrast, the additional elements in Diamond v. Diehr as a whole provided eligibility and did not merely recite calculating a cure time using the Arrhenius equation "in a rubber molding process". Instead, the claim in Diehr recited specific limitations such as monitoring the elapsed time since the mold was closed, constantly measuring the temperature in the mold cavity, repetitively calculating a cure time by inputting the measured temperature into the Arrhenius equation, and opening the press automatically when the calculated cure time and the elapsed time are equivalent. 450 U.S. at 179, 209 USPQ at 5, n. 5. These specific limitations act in concert to transform raw, uncured rubber into cured molded rubber. 450 U.S. at 177-78, 209 USPQ at 4.
A more recent example of a limitation that does no more than generally link a judicial exception to a particular technological environment is Affinity Labs of Texas v. DirecTV, LLC, 838 F.3d 1253, 120 USPQ2d 1201 (Fed. Cir. 2016). In Affinity Labs, the claim recited a broadcast system in which a cellular telephone located outside the range of a regional broadcaster (1) requests and receives network-based content from the broadcaster via a streaming signal, (2) is configured to wirelessly download an application for performing those functions, and (3) contains a display that allows the user to select particular content. 838 F.3d at 1255-56, 120 USPQ2d at 1202. The court identified the claimed concept of providing out-of-region access to regional broadcast content as an abstract idea, and noted that the additional elements limited the wireless delivery of regional broadcast content to cellular telephones (as opposed to any and all electronic devices such as televisions, cable boxes, computers, or the like). 838 F.3d at 1258-59, 120 USPQ2d at 1204. Although the additional elements did limit the use of the abstract idea, the court explained that this type of limitation merely confines the use of the abstract idea to a particular technological environment (cellular telephones) and thus fails to add an inventive concept to the claims. 838 F.3d at 1259, 120 USPQ2d at 1204.
The Courts found “… adding token postsolution components did not make the concept patentable" (see MPEP 2106.05(h) above). Claim 9 recites the limitations of gathering data per “activating a motor of the core drill to operate …“ and ‘deactivating the motor and measuring a drop in a rotation speed of the core drill …” to provid(e) a recommendation of the optimal gear to be engaged for the first core bit with the first diameter attached to the core drill” which is directed to the output of data. The Examiner maintains the additional limitations as presented in Step 2A, prong two of the subject matter eligibility requirement in the Final Office Action mailed on 21 July 2025 were recited at a high level of generality and so generically they represented merely limiting that abstract idea to pre-solution activities of gathering data (“activating”, “deactivating”, and “measuring”) and a post solution activity of outputting data (“providing a recommendation”) which do not integrate the abstract idea into a practical application.
In regards to the Appellant’s arguments,
Like Diehr, the present claims involve a particular machine, as discussed above. (see Remarks, pg. 8, paragraph 4)
Similarly, Applicant is not seeking to simply protect a formula for computing a number. Applicant is seeking to protect a specific method using a particular machine to improve the drilling speed and/or the lifetime of the core bit. (see Remarks, pg. 9, paragraph 4)
The Examiner respectfully disagrees.
Specification of the instant application filed on 17 August 2022:
However, tests have shown that users of core drills frequently do not carry out the assignment of core bit diameter and selected gear or do not carry it out optimally. This can have the disadvantageous result of the core drill working with a non-optimal torque and/or a non-optimal rotational speed of the core bit for a specific task. As a result, difficulties can arise on carrying out the drilling work or delays can occur. It is also possible for the quality of the drilling result to suffer as a result of non-optimally set gears on the core drill. (pg. 1, par. [0003])
It is an object of the present invention to provide the user of a core drill with a recommendation of an optimal gear selection. Such a gear selection recommendation is known for example in passenger cars, in which an indication with an arrow frequently occurs on the display. This indication can have for example as content the gear that is currently engaged and whether the currently engaged gear is optimal for the motor and/or the transmission in light of the current motor speed or whether a different gear should be engaged. The gear selection recommendation should, as far as possible, occur and be displayed automatically in order that the user can notice and implement it without great effort. The invention is based in particular on the object of providing a method for displaying a recommended gear or a method for the preferably automatic setting of the optimal gear for a particular core bit diameter for working with the core drill. (pg. 2, par. [0006])
The invention relates in particular to a method for automatically identifying the core bit diameter in core drills, and to the displaying and/or processing of this information. With this information, it is possible to provide the user with a recommendation for the gear selection on the core drill and thus to improve the drilling speed and/or the lifetime of the core bit. Tests have shown that, with the method, the drilling performance of the core drill can be improved considerably. The identification of the core bit diameter can preferably be used to provide the user of the core drill with an optimal gear selection recommendation for working with the core drill. (pg. 3, par. [0009])
The Examiner recognizes, in Diehr, there is a constant determination of a value (i.e. temperature of a mold) based on operating a device, repetitive calculation and comparisons, and control of the device based on the calculation (i.e. the opening of a press), which were determine to amount to significantly more than simply calculating a (mold) time using an (Arrhenius) equation because they add meaningful limitations on the use of the equation. The limitations of claims 9, 14-16, and 18-22, as a whole, are directed to an abstract concept of determining a drop in a rotational speed of a core drill over a predetermined time period in order to determine a diameter of a bit attached to a core drill to output a recommendation of an optimal gear to be engaged for the determined bit without any additional elements limiting the use of the mental process to a practical application, as in the case of Diehr molding of rubber products. Thus, the claim limitations do not integrate the abstract idea into a practical application. Hence, the Appellant’s arguments are found unpersuasive.
With respect to the Appellant’s argument,
The only one of these examples that even implies a specific machine is the PerkinElmer and the claim only recites "measuring at least one first ultrasound screening marker from an ultrasound scan," which generically involves the use of an ultrasound scan in a conventional manner. In contrast, the claimed activating a motor of the core drill to operate the core drill with the first core bit mounted to the core drill; and deactivating the motor and measuring a drop in a rotational speed of the core drill for a predetermined time period after the deactivating are specific steps of operating the core drill. In contrast to PerkinElmer, these steps of present claim 9 do not simply recite "measuring a core drill parameter from the core drill." (see Remarks, pg. 10, paragraph 2)
The Examiner respectfully disagrees.
MPEP 2106.05(g) Insignificant Extra-Solution Activity [R-10.2019]
Another consideration when determining whether a claim integrates the judicial exception into a practical application in Step 2A Prong Two or recites significantly more in Step 2B is whether the additional elements add more than insignificant extra-solution activity to the judicial exception. The term "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity includes both pre-solution and post-solution activity. An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps in order to detect whether the transactions were fraudulent. An example of post-solution activity is an element that is not integrated into the claim as a whole, e.g., a printer that is used to output a report of fraudulent transactions, which is recited in a claim to a computer programmed to analyze and manipulate information about credit card transactions in order to detect whether the transactions were fraudulent.
Claim 9 recites the limitations of “activating a motor of the core drill to operate …“ and “deactivating the motor …” is performed to “… measur(e) a drop in a rotation speed of the core drill …”. The Examiner maintains the additional limitations as presented in Step 2A, prong two of the subject matter eligibility requirement in the Final Office Action mailed on 21 July 2025 were recited at a high level of generality and so generically they represented merely limiting that abstract idea to pre-solution activities of gathering data (“activating”, “deactivating”, and “measuring”) which do not integrate the abstract idea into a practical application. Further, the Appellant has not provided any specific arguments/rationales/evidence as to why the limitations of “activating a motor ” and “deactiving the motor” are not encompassed by the step of “measuring” that is directed to data gathering. Hence, the Appellant’s argument is found unpersuasive.
In regards to the Appellant’s arguments,
The Examiner also incorrectly dismisses the providing a recommendation of the optimal gear to be engaged for the first core bit with the first diameter attached to the core drill of claim 9 as being "mere data output" and asserts that they are "recited at a high level of generality and recited so generically it represents no more than an insignificant extra-solution activity of outputting data (see MPEP 2106.05(g))." (see Remarks, pg. 10, paragraph 3)
The Examiner is wrong. The only reference to data output in MPEP 2106.05(g) is "Whether the limitation amounts to necessary data gathering and outputting, (i.e., all uses of the recited judicial exception require such data gathering or data output)." The providing a recommendation of the optimal gear to be engaged for the first core bit with the first diameter attached to the core drill of claim 9 is not a necessary data output when considered with the step of "using the measured drop in rotational speed of the core drill over the predetermined time period in order to determine that the first core bit attached to the core drill has the first diameter." The determination of the diameter of the core bit does not necessarily lead to providing a recommendation of the optimal gear to be engaged for the first core bit. (see Remarks, pg. 11, paragraph 4 – pg. 12, paragraph 1)
Accordingly, it is wrong to suggest that the "providing a recommendation" step simply represents an insignificant extra-solution activity of outputting data (see page 8 of the Final Office Action). This activity is the benefit of the entire method and is clearly significant in the context of the claimed subject matter and the improvement of the existing core drill technology, and there is nothing in the case law or the MPEP that supports the Examiner's position in this regard. (see Remarks, pg. 11, paragraph 1)
The Examiner respectfully disagrees.
Specification of the instant application filed on 17 August 2022:
The invention relates in particular to a method for automatically identifying the core bit diameter in core drills, and to the displaying and/or processing of this information. With this information, it is possible to provide the user with a recommendation for the gear selection on the core drill and thus to improve the drilling speed and/or the lifetime of the core bit. Tests have shown that, with the method, the drilling performance of the core drill can be improved considerably. The identification of the core bit diameter can preferably be used to provide the user of the core drill with an optimal gear selection recommendation for working with the core drill. (pg. 3, par. [0009])
MPEP 2106.05(g) Insignificant Extra-Solution Activity [R-10.2019]
Another consideration when determining whether a claim integrates the judicial exception into a practical application in Step 2A Prong Two or recites significantly more in Step 2B is whether the additional elements add more than insignificant extra-solution activity to the judicial exception. The term "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity includes both pre-solution and post-solution activity. An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps in order to detect whether the transactions were fraudulent. An example of post-solution activity is an element that is not integrated into the claim as a whole, e.g., a printer that is used to output a report of fraudulent transactions, which is recited in a claim to a computer programmed to analyze and manipulate information about credit card transactions in order to detect whether the transactions were fraudulent.
The Examiner maintains the additional limitations as presented in Step 2A, prong two of the subject matter eligibility requirement in the Final Office Action mailed on 21 July 2025 were recited at a high level of generality and so generically they represented merely limiting that abstract idea to pre-solution activities of gathering data (i.e. “activating”, “deactivating”, and “measuring”) and a post-solution activity (i.e. “providing a recommendation”) which do not integrate the abstract idea into a practical application. Further, the Appellant has not provided any specific arguments/rationales/evidence as to why “… providing a recommendation of the optimal gear to be engaged for the first core bit with the first diameter attached to the core drill of claim 9 is not a necessary data output when considered with the step of ‘using the measured drop in rotational speed of the core drill over the predetermined time period in order to determine that the first core bit attached to the core drill has the first diameter.’ The determination of the diameter of the core bit does not necessarily lead to providing a recommendation of the optimal gear to be engaged for the first core bit.” in light of claim 9’s recitation of “providing a recommendation” subsequent to a determination of a diameter of a core bit. Hence, the Appellant’s arguments are found unpersuasive.
With respect to the Appellant’s argument
As previously discussed, the operation of gear selection in a core drill is improved upon by the claimed method. The steps of activating the motor, deactivating the motor and providing a recommendation are sufficiently limiting to prevent the preemption of further innovation in the field of core drill operations on the basis of abstract ideas, laws of nature, or natural phenomena. " although preemption is not a standalone test for eligibility, it remains the underlying concern that drives the two-part framework from Alice Corp. and Mayo (Steps 2A and 2B)." (See MPEP § 2106.07(a)(1)). (see Remarks, pg. 11, paragraph 3)
The Examiner respectfully disagrees.
The Examiner recognizes preemption was not an issue set forth in the Final Office Action mailed on 21 July 2025, hence the argument is moot.
In regards to the Appellant’s argument,
It is respectfully submitted that the claims are directed to patent eligible subject matter because, as discussed above, the claims provide an inventive concept that is "significantly more" than any possible mental process in the claim. (see Remarks, pg. 11, paragraph 4)
The Examiner respectfully disagrees.
The Appellant has set forth a broad and conclusionary statement asserting the judicial exception is “significantly more” without providing any specific arguments/rationales/evidence as to why the previously presented limitations amount to significantly more than the abstract idea. Hence, the Appellant’s argument is found unpersuasive.
With respect to the Appellant’s argument,
As discussed in the present application, the "well known" methods did not allow providing the recommendation of an optimal gear as in claim 9. (see Remarks, pg. 11, paragraph 5)
The Examiner respectfully disagrees.
MPEP 2104 III. - SUBJECT MATTER ELIGIBILITY
A claimed invention must be eligible for patenting. As explained in MPEP § 2106, there are two criteria for determining subject matter eligibility: (a) first, a claimed invention must fall within one of the four statutory categories of invention set forth in 35 U.S.C. 101, i.e., process, machine, manufacture, or composition of matter; and (b) second, a claimed invention must be directed to patent-eligible subject matter and not a judicial exception (unless the claim as a whole includes additional limitations amounting to significantly more than the exception). The judicial exceptions are subject matter which courts have found to be outside of, or exceptions to, the four statutory categories of invention, and are limited to abstract ideas, laws of nature and natural phenomena (including products of nature). Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 216, 110 USPQ2d 1976, 1980 (2014) (citing Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 66, 70, 106 USPQ2d 1972, 1979 (2013)). See also Bilski v. Kappos, 561 U.S. 593, 601, 95 USPQ2d 1001, 1005-06 (2010) (citing Diamond v. Chakrabarty, 447 U.S. 303, 309, 206 USPQ 193, 197 (1980)).
See MPEP § 2106 for a discussion of subject matter eligibility in general, and the analytical framework that is to be used during examination for evaluating whether a claim is drawn to patent-eligible subject matter, MPEP § 2106.03 for a discussion of the statutory categories of invention, MPEP § 2106.04 for a discussion of the judicial exceptions, and MPEP § 2106.05 for a discussion of how to evaluate claims directed to a judicial exception for eligibility. See MPEP § 2106.07(a)(1) for form paragraphs for use in rejections under 35 U.S.C. 101 based on a lack of subject matter eligibility. See also MPEP § 2105 for more information about claiming living subject matter, as well as the Leahy-Smith America Invents Act (AIA )'s prohibition against claiming human organisms.
Eligible subject matter is further limited by the Atomic Energy Act explained in MPEP § 2104.01, which prohibits patents granted on any invention or discovery that is useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon.
The criteria set forth for eligible subject matter under 35 U.S.C. 101 does not require the lack of disclosure or teaching of claimed subject matter in cited references per MPEP 2104 III (i.e. the lack of citing references under 35 U.S.C. 102 or 35 U.S.C. 103 does not provide evidence that the claimed invention is eligible under 35 U.S.C. 101). Hence, the Appellant’s argument is not found persuasive.
Claims 9, 14-16, and 18-22 stand rejected under 35 U.S.C. 112 (a) and 35 U.S.C. 101 as set forth below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 9, 14-16, and 18-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Per MPEP 2164.01(a), there are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
Claim 9 encompasses an operation of a core drill with a mounted core bit per an activation and deviation of a motor, wherein a decrease in rotational speed of the core drill is measured over a predetermined time period after deactivation of the motor and the measured decrease in the rotational speed of the core drill is used to determine a diameter of the mounted core bit to ascertain a recommendation of an optimal gear for a future engagement of the mounted core bit.
The nature of the invention is drawn to a method of determining a recommendation for a gear in which the core drill should be engaged based on a determined diameter of a mounted core bit. The core drill comprises use of a plurality of core drill bits with different diameters associated with a plurality of respective optimal gears for each of the plurality of core drill bits; wherein upon a deactivation of the core drill with the mounted core bit for a predetermined time period, a rotational speed of n of the mounted core bit is registered as a function of time t to acquire function n(t) that describes a profile of the rotational speed over the time period. Subsequent to the acquisition of the function n(t), the function n(t) is further evaluated using mathematical operations or consulting look-up tables to determine the diameter of the mounted core bit, wherein the diameter is used to decide a recommendation for an optimal gear engagement for the mounted core bit. However, the disclosure does not provide a description and/or explanation of how the diameter is determined from the evaluated function n(t) per a generic and broad use of any mathematical operation or look-up table (see U.S. Patent Publication No. 2023/0105911 A1 (instant application): pg. 2, par. [0026] and pg. 3, par. [0037]).
Further, as of the effective filing date of the instant application, one of ordinary skill in the art would have known the state of the art of determining a diameter of a tool bit includes using a digital caliper to measure across the widest portion of the cutting edges, using a drill gauge, or performing a cutting test method to measure a width of a resulting void. The state of the art does not provide a method of determining a diameter of a tool bit based on the utilization of a measured drop in a rotational speed of a core drill over a predetermined time with a mathematical operation or look-up table was predictable. Hence, taking these factors into account, one of ordinary skill in the art would not have known how to use the measured drop in the rotational speed of the core drill over the predetermined time period to determine the diameter of the mounted core bit based on the Appellant’s disclosure, without requiring undue experimentation by one of ordinary skill in the art given the brief specification neither provides direction, drawings, nor working examples (see U.S. Patent Publication No. 2023/0105911 A1 (instant application): pg. 2, par. [0026] and pg. 3, par. [0037]).
Additionally, none of the prior art of record are applicable to a rejection and do not assist in the enabling of the invention. Accordingly, in light of the totality of evidence, the Examiner asserts the Appellant has not enabled one or ordinary skill to use the invention of claim 9 to determine a diameter of a core bit attached to the core drill to provide a recommendation for engagement of each associated optimal gear of the core drill for each of the plurality of core bits with different diameters.
Claims 14-16 and 18-22, dependent from claim 9, stand rejected under 35 U.S.C. 112(a) for the same rationale as set forth in claim 9.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 9, 14-16, and 18-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 9:
At step 1, the claim recites a method comprising of a combination of steps, therefore is a process, which is a statutory category of invention.
At step 2A, prong one, the claim recites “using the determined drop in rotational speed of the core drill over the predetermined time period in order to determine that the first core bit attached to the core drill has the first diameter”.
The limitation of “using the determined drop in rotational speed of the core drill over the predetermined time period in order to determine that the first core bit attached to the core drill has the first diameter”, as drafted, is a process, under its broadest reasonable interpretation covers performing the limitation in the mind. Where, nothing in the claim precludes the step from being practically performed in the mind. For example, “determine” in the context of the claim encompasses an assessment between different pieces of data to generate (e.g. ascertain) new data (i.e. a diameter; see U.S. Patent Publication No. 2023/0105911 A1: 2, par. [0026]). (MPEP 2106.04(a)(2): The use of a physical aid (e.g., pencil and paper or a slide rule) to help perform a mental step (e.g., deriving new data) does not negate the mental nature of the limitation, but simply accounts for variations in memory capacity from one person to another.)
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
At step 2A, prong two, the judicial exception is not integrated into a practical application. In particular, the claim recites “… a gear to be engaged for a core drill, a plurality of core bits with different diameters useable with the core drill, and including a first core bit with a first diameter of the different diameters, each of the plurality of core bits with different diameters being associated with an optimal gear of the core drill”; “activating a motor of the core drill to operate the core drill with the first core bit mounted to the core drill”; “deactivating the motor and measuring a drop in a rotational speed of the core drill for a predetermined time period after the deactivating”; and “providing a recommendation of the optimal gear to be engaged for the first core bit with the first diameter attached to the core drill”.
The limitations “… a gear to be engaged for a core drill, a plurality of core bits with different diameters useable with the core drill, and including a first core bit with a first diameter of the different diameters, each of the plurality of core bits with different diameters being associated with an optimal gear of the core drill” are generally recited at a high level of generality and merely limits the abstract ideas to a field of use. (MPEP 2106.07(a)): “similar to how limiting the computer implemented abstract idea in Flook to petrochemical and oil-refining industries was insufficient. See e.g., Parker v. Flook, 437 U.S. 584, 588-90, 198 USPQ 193, 197-98 (1978) (limiting use of mathematical formula to use in particular industries did not amount to an inventive concept).”). The Courts have found “a claim directed to a judicial exception cannot be made eligible ‘simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use.’ Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application.” (MPEP 2106.05(h)).
The limitations of “activating a motor of the core drill to operate the core drill with the first core bit mounted to the core drill” and “deactivating the motor and measuring a drop in a rotational speed of the core drill for a predetermined time period after the deactivating” represent mere data gathering. The limitations are recited at a high level of generality and recited so generically they represent no more than an insignificant extra-solution activity of gathering data (see MPEP 2106.05(g)).
The limitation of “providing a recommendation of the optimal gear to be engaged for the first core bit with the first diameter attached to the core drill” represents mere data output. The limitation of “providing” is recited at a high level of generality and recited so generically it represents no more than an insignificant extra-solution activity of outputting data (see MPEP 2106.05(g)).
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Thus, the claim is directed to an abstract idea.
At step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As previously discussed with respect to the integration of the abstract idea into a practical application, the additional elements of “… a gear to be engaged for a core drill, a plurality of core bits with different diameters useable with the core drill, and including a first core bit with a first diameter of the different diameters, each of the plurality of core bits with different diameters being associated with an optimal gear of the core drill” merely limit the abstract idea to a field of use. Wherein, limiting the invention to a field of use cannot provide an inventive concept. Thus, the claim is not patent eligible. (MPEP 2106.05(h)).
The limitations of “activating a motor of the core drill to operate the core drill with the first core bit mounted to the core drill” and “deactivating the motor and measuring a drop in a rotational speed of the core drill for a predetermined time period after the deactivating”, as discussed above, represent insignificant extra-solution activities of data gathering. Further the limitations are well-understood, routine and conventional; wherein the courts have found limitations directed to obtaining data, recited at high level of generality, to be well-understood, routine, and conventional. See MPEP 2106.05(d)(II), “storing and retrieving information in memory”.
The limitation of “providing a recommendation of the optimal gear to be engaged for the first core bit with the first diameter attached to the core drill”, as discussed above, represents an insignificant extra-solution activity of outputting data. Further, the Courts have found limitations directed to outputting data, recited at a high level of generality, to be well-understood, routine, and conventional. See MPEP 2106.05(d)(II), presenting offers and gathering statistics.
Considering the additional elements individually and in combination and the claim as a whole, the additional elements do not provide significantly more than the abstract idea. Hence, the claim is not patent eligible.
Claim 14:
The limitation “… the predetermined time period is in a range from 0.1 to 5 s” merely further details “… the predetermined time period…” of claim 9, and stands rejected for the same rational as set forth above in claim 9.
Claim 15:
The limitation “… the predetermined time period is in a range from 0.4 to 1 s” merely further details “… the predetermined time period…” of claims 9 and 14, and stands rejected for the same rational as set forth above in claims 9 and 14.
Claim 16:
The limitation “… the predetermined time period is 0.5 s” merely further details “… the predetermined time period…” of claims 9, 14 and 15, and stands rejected for the same rational as set forth above in claims 9, 14 and 15.
Claim 18:
In regards to the limitation of “… the method as recited in claim 9”, the limitation is herein addressed for the same rational as set forth in claim 9.
Further, at step 1, the claim recites a concrete device (i.e. a core drill) therefore is a machine which is a statutory category of invention.
At step 2A, prong two, the judicial exception is not integrated into a practical application. In particular, the claim recites “(t)he core drill …”.
The limitation “(t)he core drill” is generally recited at a high level of generality and merely limits the abstract ideas to a field of use. (MPEP 2106.07(a)): “similar to how limiting the computer implemented abstract idea in Flook to petrochemical and oil-refining industries was insufficient. See e.g., Parker v. Flook, 437 U.S. 584, 588-90, 198 USPQ 193, 197-98 (1978) (limiting use of mathematical formula to use in particular industries did not amount to an inventive concept).”). The Courts have found “a claim directed to a judicial exception cannot be made eligible ‘simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use.’ Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application.” (MPEP 2106.05(h)).
Accordingly, the additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Thus, the claim is directed to an abstract idea.
At step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As previously discussed with respect to the integration of the abstract idea into a practical application, the additional element of “(t)he core drill” merely limit the abstract idea to a field of use. Wherein, limiting the invention to a field of use cannot provide an inventive concept. Thus, the claim is not patent eligible. (MPEP 2106.05(h)).
Considering the additional element individually and the claim as a whole, the additional element does not provide significantly more than the abstract idea. Hence, the claim is not patent eligible.
Claim 19:
At step 2A, prong one, the claim recites “the first core bit with the first diameter is determined on the basis of a look-up table having rotational speed drops associated with the different diameters”.
The limitation of “the first core bit with the first diameter is determined on the basis of a look-up table having rotational speed drops associated with the different diameters”, as drafted, is a process, under its broadest reasonable interpretation covers performing the limitation in the mind. Where, nothing in the claim precludes the step from being practically performed in the mind. For example, “determine” in the context of the claim encompasses an assessment between different pieces of data to generate (e.g. ascertain) new data (i.e. a diameter; see U.S. Patent Publication No. 2023/0105911 A1: 2, par. [0026]). (MPEP 2106.04(a)(2): The use of a physical aid (e.g., pencil and paper or a slide rule) to help perform a mental step (e.g., deriving new data) does not negate the mental nature of the limitation, but simply accounts for variations in memory capacity from one person to another.)
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
At step 2A, prong two, the judicial exception is not integrated into a practical application. In particular, the claim recites “the first core bit …”.
The limitation “the first core bit …” is generally recited at a high level of generality and merely limits the abstract ideas to a field of use. (MPEP 2106.07(a)): “similar to how limiting the computer implemented abstract idea in Flook to petrochemical and oil-refining industries was insufficient. See e.g., Parker v. Flook, 437 U.S. 584, 588-90, 198 USPQ 193, 197-98 (1978) (limiting use of mathematical formula to use in particular industries did not amount to an inventive concept).”). The Courts have found “a claim directed to a judicial exception cannot be made eligible ‘simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use.’ Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application.” (MPEP 2106.05(h)).
Accordingly, the additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Thus, the claim is directed to an abstract idea.
At step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As previously discussed with respect to the integration of the abstract idea into a practical application, the additional element of “the first core bit …” merely limits the abstract idea to a field of use. Wherein, limiting the invention to a field of use cannot provide an inventive concept. Thus, the claim is not patent eligible. (MPEP 2106.05(h)).
Considering the additional element individually and in combination and the claim as a whole, the additional element does not provide significantly more than the abstract idea. Hence, the claim is not patent eligible.
Claim 20:
The limitation “… the first core bit is free of drilling debris during the predetermined time period” merely further details “… the first core bit …” of claim 9 stands rejected for the same rational as set forth above in claim 9.
Claim 21:
The limitation “… during the activating the cored rill is operated in a speed control mode free of external loads” merely further details “… the activating …” of claim 9 stands rejected for the same rational as set forth above in claim 9.
Claim 22:
The limitation “… the plurality of core bits with different diameters have a same length and wall thickness” merely further details “… the plurality of core bits …” of claim 9 stands rejected for the same rational as set forth above in claim 9.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Appellant 's disclosure.
The following references are cited to further show the state of the art with respect to tooling machines/equipment.
U.S. Patent Publication No. 2008/0040084 A1 discloses a method for selecting at least one drill bit.
U.S. Patent Publication No. 2021/0240145 A1 discloses devices and methods for automatically controlling a step bit operation in a power tool
U.S. Patent No. 7,258,175 B2 discloses a bit selection method will generate and record or display a sequence of drill bits chosen from among a plurality of bit candidates adapted for drilling an Earth formation in response to input data representing Earth formation characteristics of the formation to be drilled
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/JENNIFER L NORTON/Primary Examiner, Art Unit 2117
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