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 .
Claim Status
This Office action is in response to the amendments filed 4/30/2026. Claims 9-25 are currently pending. Claims 15 and 18 have been amended. Claims 1-8 have been previously canceled. Claims 22-25 are newly added. Claims 9-14 are withdrawn as a result of the restriction requirement.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 15-20 and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Maus (US 2021/0381361 A1) in view of Wohlfeil (US 3475997).
Regarding claim 15, Maus discloses a drilling system comprising a drill (the assembly of 146 and 148 – Fig. 1A) and an auto-feed for feeding the drill (500 – Fig. 5), wherein the drill is operable in a first operating state (rate of penetration, para. 0122, prior to torque exceeding a threshold, para. 0117) at the drilling start in an existing borehole (see note) and in a second operating state (rate of penetration, para. 0122, after torque exceeds a threshold) during a normal drilling operation in a positive direction (see note), the system being configured in such a way that a changeover between the first operating state and the second operating state occurs as a result of a comparison between an actual value of a friction torque and a reference value (para. 0117). Note that both the first operating state and the second operating state are fully capable of being operable at anytime including in the start of drilling and during normal drilling operation in a positive direction. Hence, Maus meets the limitations “the drill is operable in a first operating state at the drilling start in an existing borehole and in a second operating state during a normal drilling operation in a positive direction.”
However, Maus does not disclose that the changeover occurs in conjunction with determination of a direction of movement of the drill.
Wohlfeil discloses a similar drilling system wherein a drill (12 – Fig. 1B) is operable in a first operating state (feed rate prior to detection, abstract) and a second operating state (feed rate after detection, abstract), the system being configured in such a way that a changeover between the first operating state and the second operating state occurs with a determination of direction of movement of the drill (abstract). One of ordinary skill in the art, upon reading the teaching of Wohlfeil would have recognized that the feed rate is similar to the rate of penetration of Maus since both are related to how quickly a drill is progressing through a substance.
Therefore, it would have been obvious to one ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified the drilling system of Maus to also require the changeover to be based on a direction of movement of the drill as taught by Wohlfeil. One of ordinary skill in the art would have been motivated to make this modification because it would provide further confirmation that the changeover is appropriate thereby improving the reliability of the operation.
Maus, as modified by Wohlfeil, further teaches:
Claim 16, the first operating state is terminated when the actual value is higher than the reference value (par. 0117, Maus) and when the direction of movement of the drilling device is negative (the drill “rebounding” is the negative direction, abstract, Wohlfeil).
Claim 17, the system is configured so that after the first operating state has been terminated, the drill is driven deeper into a borehole (para. 0122, Maus; it is clear that the mitigating action is to allow the drill to continue deeper into the borehole).
Claim 18, the system is configured to run with constant speed of motor of the auto-feed when the drill is driven into the borehole (this is a recitation of functional language; in this case, since the operating of the system is dependent on the modeled friction, it is possible that the friction doesn’t change or changes in such a way that the motor is run with constant speed).
Claim 19, the system is configured so that the drill is driven into the borehole with a constant feed rate (as above, this is a recitation of functional language; in this case, since the operating of the system is dependent on the modeled friction, it is possible that the friction doesn’t change or changes in such a way that the drill is driven into the borehole at a constant feed rate).
Claim 20, the system is configured so that the actual value and the reference value are compared with one another in a further comparison (the system is continually monitoring and making the comparisons, para. 0089, Maus), the system being configured so that, at a predefined ratio of actual value to reference value, the drilling operation is continued in the second operating state (comparing to a threshold, para. 0117, Maus, is a predefined ratio of actual value to reference value).
Claim 22, the constant feed rate is 01. mm/min (as noted above in the rejection of claim 19, the feed rate is a recitation of functional language; in this case it is possible to drill with a constant feed rate of 0.1 mm/min).
Claim 23, essentially all of the elements of the claimed invention in claim 20.
However, Maus, as modified by Wohlfeil, does not expressly teach the value of the predefined ratio.
In this case, it is noted that the predefined ratio is a result effective variable since it impacts the transition to the second operating state and thus the overall efficiency of the drilling system.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have used any functional predefined ratio of actual value to reference value including one in which the predefined ratio is 50% since it has been held that where the prior art teaches the general conditions of a claim, discovering the functional values require only routine skill in the art. In re Aller, 105 USPQ 233.
Claims 21 and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Maus (US 2021/0381361 A1) in view of Wohlfeil (US 3475997) and Drexl (US 2018/0297235 A1).
Regarding claim 21, Maus, as modified by Wohlfeil, discloses essentially all of the elements of the claimed invention in claim 15.
However, Maus, as modified by Wohlfeil, does not disclose that the first operating state is terminated when the actual value is higher than the reference value for a predefined time period.
Drexl teaches a drilling system, wherein a first operating state is terminated when the actual value of a parameter is higher than a reference value for a predefined period of time (para. 0053). One of ordinary skill in the art, upon reading the teaching of Drexl, would have recognized that waiting a predefined time period provides the benefit of not terminating the first operating state due to transient fluctuations, thereby improving the reliability of the drilling.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified the drilling system of Maus and Wohlfeil such that first operating state is only terminated when the actual value is above the reference value for a predefined period of time as suggested by Drexl in order to improve the reliability of the drilling.
Regarding claim 24, Maus, as modified by Wohlfeil and Drexl, does not expressly teach the predefined time period is 5 seconds.
In this case it is noted that Drexl teaches the predefined time period can be one of many values and chooses a value of 2 seconds which is close to 5 seconds. Furthermore, the predefined time period is a result effective variable since it impacts the reliability of the drilling system.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have used any functional predefined time period, including a predefined time period of 5 seconds since it has been held that when the prior art teaches the general conditions of the claim, discovering the functional values requires only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 25, Maus, as modified by Wohlfeil, teaches essentially all of the elements of the claimed invention in claim 15.
However, Maus, as modified by Wohlfeil, does not teach that the drilling system is a core drilling system.
Drexl teaches a core drilling system (para. 0001), wherein the core drilling system is operated according to a control method (para. 0001). One of ordinary skill in the art, upon reading the teaching of Drexl, would have recognized that the core drilling system of Drexl may employ a control method similar to the control method employed by Maus and Wohlfeil without comprising its ability to drill.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have applied the control method of Maus and Wohlfeil to the drilling system of Drexl since it is within the skill of one of ordinary skill in the art to apply known alternatives.
Response to Arguments
Applicant's arguments filed 4/30/2026 have been fully considered but they are not persuasive.
Regarding claim 15, applicant argues that neither Maus nor Wohlfeil discloses a first operating state at the drilling start in an existing borehole and a second operating state during a normal drilling operation in a positive direction.
However, it is noted that the limitation is a recitation of functional language. A recitation of the function of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the function, then it meets the claim. In this case, since the drill is capable of being operated in either state at any time, it is capable of operating in the first operating state at the drilling start in an existing borehole and in the second operating state during a normal drilling operation in a positive direction. Therefore, applicant’s argument is found to be not persuasive.
Regarding claim 15, applicant argues that there is no need or reason to modify the oil drilling of Maus with the cutting method of Wohlfeil since the changeover of Maus is based on computed friction and the method of Wohlfeil is based on detecting a first contact with a workpiece. The method of Wohlfeil would not provide any useful information relevant to the asserted changeover of Maus. Furthermore, the reasoning for the combination is conclusory.
In response it is noted that Wohlfeil is simply relied upon for teaching of a changeover based on the direction of a drill. As noted above in the rejection of claim 15, this would provide an extra confirmation that the changeover is appropriate and improve the reliability of the drilling system. Very clearly, the phrase “changeover is appropriate” means that the changeover happens as intended by the operator. Therefore, applicant’s argument is found to be not persuasive.
Regarding claim 20, applicant argues that the combination of Maus and Wohlfeil does not discloses “the system being configured so that, at a predefined ratio of actual value to reference value, the drilling operation is continued in the second operating state” since Maus simply discloses not being in a target range which is different that a predefined ratio.
In response it is noted that in para. 0117, Maus discloses that the drilling parameters are adjusted according to friction values exceeding a threshold. Determining if a value exceeds a threshold is simply forming a predefined ratio of an actual value to a reference value. Therefore, applicant’s argument is found to be not persuasive.
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 THOMAS M WITTENSCHLAEGER whose telephone number is (571)272-7012. The examiner can normally be reached MON-FRI: 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shelley Self can be reached at 571-272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS M WITTENSCHLAEGER/Primary Examiner, Art Unit 3731
6/4/2026
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