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 Response to Restriction Requirement dated 10/21/2025. Claims 9-21 are currently pending. Claims 1-8 have been previously canceled. Claims 17-21 are newly added. Claims 9-14 are withdrawn as a result of the restriction requirement.
Election/Restrictions
Claims 9-14 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/21/2025.
Applicant’s election without traverse of Group II, claims 15-16 and now including new claims 17-21 in the reply filed on 10/21/2025 is acknowledged.
Claim Objections
Claim 18 is objected to because of the following informality: line 2 reads “when drill” when it should read “when the drill.” 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.
Claims 15-21 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.
Regarding claim 15, the limitation “the drilling device” in the last line lacks sufficient antecedent basis. In order to further prosecution, the limitation has been interpreted to recite “the drill.” Claims 16-21 are rejected based on their dependency from claim 15.
Regarding claim 18, the limitation “the auto-feed device” lacks sufficient antecedent basis. In order to further prosecution, the limitation has been interpreted to recite “the auto-feed.”
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 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) and in a second operating state (rate of penetration, para. 0122, after torque exceeds a threshold), 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).
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 21 is 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.
Conclusion
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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/THOMAS M WITTENSCHLAEGER/Primary Examiner, Art Unit 3731
1/23/2026