DETAILED CORRESPONDENCE
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/12/2026, has been entered. In view of the applicant's amendments, all previously presented Section 112(a) and Section 112(b) rejections have been withdrawn.
Claims 1, 5, 6, and 10 are pending. Claims 11 is withdrawn.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed 1/12/2026 have been fully considered but they are not persuasive.
Beginning at page 6, the applicant argues against the examiner’s rejection based on Section 101. The examiner respectfully disagrees. The current Section 101 rejection considers all the numerous amendments to claim 1 since the last rejection and speaks for itself. It is noted that the applicant argues (last paragraph on page 6) that since the claim is for an “improvement” (purportedly of the type mentioned in revised MPEP2016.04(d)(1)) then the claim includes a practical application of a character negating the rejection. The examiner respectfully disagrees. The current claim 1 merely lists types of measurements obtained (mostly incorporated from the now canceled claim 7) and then applies them by continuing under a revised set of drilling parameters. This is not a significant practical application, per se, and, in light of the Section 102 rejection herein, it is also not a novel/improved use of such measurements and is not an improved drilling practice.
Beginning on page 9, the applicant argues that Moore does not recite all the limitations of claim 1, e.g., “predetermined” parameter values, because Moore is “permanently in operation”. The examiner respectfully disagrees. As discussed in the current Section 102 rejection, all setting parameters are determined before the use of the same in the subsequent drilling/ground working of the section with respect to which such setting parameters are determined. Nothing in the present claim 1 requires any discontinuity or pauses between the drilling/ground working of the sections of the hole. At the first full paragraph on page 9, the applicant also argues that Moore measures torque by an anti-stall device and in using such measurements, Moore’s measurements are used to automatically make “gross changes” to the weight on bit (WOB), such that Moore cannot “calibrate” the system according to predetermined values because it measures drilling parameters. The examiner respectfully disagrees. This measurement activity by Moore measures at least the claimed “state value” and determines/adjusts setting parameters to be used in the next section of the hole to be drilled, and this is completely consistent with and addresses what is claimed. The applicant’s use of the term “calibration” in claim 1 requires no more.
The applicant’s Section 101 and Section 102 arguments with respect to all claims rise or fall based on the outcome of the arguments addressed in the foregoing, it being noted in this regard, that the actual Section 101 and Section 102 rejections specifically address all aspects and limitations of the amended claim 1, without need of further explanation.
Election/Restrictions
In the first office action, the requirement for restriction was made final, resulting in the withdrawal of claim 11, i.e., the trench cutter. In this regard, is noted that the applicant has not filed a listing of claims wherein the status identifier for claim 11 is not “withdrawn” as required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “feed unit,” “rotary drive unit,” and “hydraulic system,” all in claim 1. The corresponding structure described in the specification as performing the claimed function, and equivalents thereof, is the hydraulic cylinders, cable winch, guide rails 24/carriage 34 (forming feed unit 30 to the extent depicted in Fig. 1) for the feed unit, the structure designated by reference numeral 32 in Fig. 1, for the rotary drive unit, and the hydraulic system discussed at paragraph ([0020]).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim 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 1, 5, 6, and 10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1 of the USPTO’s eligibility analysis entails considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35
U.S.C. 101: Process, machine, manufacture, or composition of matter.
Claim 1 is directed to a method (process). As such, the claim is directed to a statutory category of invention.
If the claim recites a statutory category of invention, the claim requires further analysis in Step 2A. Step 2A of the 2019 Revised Patent Subject Matter Eligibility Guidance is a two- prong inquiry. In Prong One, examiners evaluate whether the claim recites a judicial exception.
Claim 1 recites abstract limitations including (or substantially similar to), i.e., the underlined portions that follow:
A method for automatically calibrating ground working with an underground construction device, which comprises a rotary drive unit for rotationally driving a ground working tool and a feed unit by means of which the ground working tool is introduced into the ground for creating a hole, the method comprising:
controlling the underground construction device in a first calibration section of creating the hole to perform first ground working of the hole to a first depth according to predetermined first values of first setting parameters of at least one of the rotary drive unit and the feed unit, the first setting parameters including a first torque of the rotary drive unit, a first feed force of the feed unit, and a first pressure or a volume in a hydraulic system for driving the rotary drive unit and/or the feed unit,
acquiring a first state value including a first advance speed of the ground working tool, a first energy consumption of the underground construction device, a first wear on the ground working tool, and a first vibration or sound emission of the underground construction device, resulting from the first ground working during the first calibration section,
controlling the underground construction device in a second calibration section of creating the hole to perform second ground working of the hole to a second depth deeper than the first depth according to predetermined second values of second setting parameters of the at least one of the rotary drive unit and the feed unit, the second setting parameters including a second torque of the rotary drive unit, a second feed force of the feed unit, and a second pressure or a volume in a hydraulic system for driving the rotary drive unit and/or the feed unit, wherein the predetermined first values of the first setting parameters differ from the predetermined second values of the second setting parameters,
acquiring a second state value including a second advance speed of the ground working tool, a second energy consumption of the underground construction device, a second wear on the ground working tool, and a second vibration or sound emission of the underground construction device, resulting from the second ground working during the second calibration section,
determining third values of third setting parameters of the at least one of the rotary drive unit and the feed unit for optimized ground working of the ground for creating the hole based on the predetermined first values of the first setting parameters, the first state value, the predetermined second values of the second setting parameters, and the second state value, the third setting parameters including a third torque of the rotary drive unit, a third feed force of the feed unit, and a third pressure or a volume in a hydraulic system for driving the rotary drive unit and/or the feed unit, and
controlling the underground construction device to perform the optimized third ground working of the ground for creating the hole to a third depth deeper than the second depth according to the third values of the third setting parameters.
These limitations, as drafted, are a process that, under its broadest reasonable interpretation, cover performance of the limitations in the mind, or by a human using pen and paper, and therefore recite mental processes. More specifically, nothing in the claim element precludes the aforementioned steps from practically being performed in the human mind, or by a human using pen and paper. Thus, the claim recites an abstract idea.
If the claim recites a judicial exception (i.e., an abstract idea enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance, a law of nature, or a natural phenomenon), the claim requires further analysis in Prong Two. In Prong Two, examiners evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
Claim 1 recites the additional elements of: controlling the ground working based on setting parameters, as well as, at least one rotary drive unit, a ground working tool , a feed unit, and a hydraulic system [the hydraulic system for driving the feed unit and hydraulic system].
The functions of the at least one rotary drive unit, the ground working tool, the at least one feed unit, and the hydraulic system are additional elements whose functions are recited at a high level of generality and, for the “optimized” ground working, are merely invoked as tools to perform the abstract idea.
Accordingly, in combination, 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.
If the additional elements do not integrate the exception into a practical application, then the claim is directed to the recited judicial exception, and requires further analysis under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).
As discussed above, the additional elements of controlling the optimized ground breaking and at least one rotary drive unit, a ground working tool, at least one feed unit, and a hydraulic system amount to mere instructions to apply the exception. Mere instructions to apply an exception cannot provide an inventive concept.
With respect to the acquiring of state values, the Symantec, TLI, OIP Techs. and buySAFE court decisions cited in MPEP 2106.05(d)(II) indicate that mere receiving or transmitting data over a network is a well‐understood, routine, conventional function when it is claimed in a merely generic manner (as it is here). In this case, sensors are not specified, but something “acquires”, e.g., the state values. The absence of specifics in this regard is indicative of generality and high level inclusion, thus the acquisition is insignificant.
Thus, even when viewed as an ordered combination, nothing in the claims add significantly more (i.e. an inventive concept) to the abstract idea.
Regarding claim 5, with respect to the claim 1 process and apparatus, the various metrics recited in this claim merely narrows the previously recited abstract idea limitations, thus this recitation does not provide a practical application of the abstract idea, and is not significantly more.
Regarding claim 6, the limitation recited merely elaborates on portions of the claim 1 process and apparatus without adding new process or apparatus, thus this recitation does not provide a practical application of the abstract idea, and is not significantly more.
Regarding claim 10, the limitation recited merely provides a description of the type of the recited ground working and/or the ground working tool of the claim 1 process and apparatus, thus this recitation does not provide a practical application of the abstract idea, and is not significantly more.
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.
Claims 1, 5, 6, and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 This claim recites “first setting parameters of at least one of the rotary drive unit and the feed unit”. The claim then lists required parameters that includes at least one setting parameter for each of the rotary drive unit and the feed unit. Accordingly, “at least one” is precluded by a setting parameter being required for both. An analogous preclusion is present for each of the second setting parameters and the third setting parameters, such that this claim is rejected for each of the three occurrences of “at least one,” in this regard. Claims 5, 6, and 10 depend from claim 1.
Claim 1 This claim recites “a hydraulic system” three times, making it unclear whether additional hydraulic systems are required. Claims 5, 6, and 10 depend from claim 1.
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 5, 6, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moore et al. (US20210198997).
NOTE: Krueger IV et al. (US88334870) [Krueger] is incorporated by reference in Moore [para. 0039]. All documents that are directly or indirectly incorporated by reference in Moore are treated as part of the specification of Moore. M.P.E.P. 2163.07(b).
Claim 1 Moore discloses a method for automatically calibrating ground working [e.g., drilling a well; abstract; para. 0053; Fig. 1] with an underground construction device, which comprises a rotary drive unit 20 for rotationally driving a ground working tool 24 and a feed unit 14,16,26,28,30,32,34 by means of which the ground working tool is introduced into the ground for creating a hole [Fig. 1; para. 0035-0038], the method comprising:
controlling the underground construction device [e.g., with a control and evaluation unit 18,22,60; Figs. 1,2; para. 0035, 0040] in a first calibration section of creating the hole to perform first ground working of the hole to a first depth according to predetermined first values of first setting parameters of at least one of the rotary drive unit and the feed unit [setting parameters as dictated by the particular setting configurations of the feed unit, e.g., at least the top drive 20, drawworks 38, and the BHA, to achieve at least the determined torque, WOB, and optimization settings for beginning the drilling of the hole/first ground working; Fig. 1; para. 0042; such parameters being set prior to such beginning of drilling; Krueger col. 2, lines 35-50], the first setting parameters including a first torque of the rotary drive unit [para. 0047], a first feed force of the feed unit [e.g., WOB; para. 0044], and a first pressure or a volume [e.g., flow rate; para. 0044] in a hydraulic system for driving the rotary drive unit and/or the feed unit,
acquiring a first state value including a first advance speed of the ground working tool, a first energy consumption of the underground construction device [e.g., faster drilling reducing cost; para. 0092], a first wear on the ground working tool [e.g., reducing damage; para. 0076], and a first vibration [para. 0053,0076,0077] or sound emission of the underground construction device, resulting from the first ground working during the first calibration section,
controlling the underground construction device in a second calibration section of creating the hole to perform second ground working of the hole to a second depth deeper than the first depth according to predetermined second values [e.g., the parameters determined for use in drilling the second section of the hole prior to such drilling based on information/state values acquired during the drilling of the first section] of second setting parameters of the at least one of the rotary drive unit and the feed unit, the second setting parameters including a second torque of the rotary drive unit [para. 0047], a second feed force of the feed unit [e.g., WOB; para. 0044], and a second pressure or a volume [e.g., flow rate; para. 0044] in a hydraulic system for driving the rotary drive unit and/or the feed unit, wherein the predetermined first values of the first setting parameters differ from the predetermined second values of the second setting parameters [as information is acquired, e.g., the foregoing first state value information, after or during the first ground working, Moore’s control and evaluation unit determines and decides at least an appropriate WOB and other optimization settings and adjustments many times during drilling, thus at least establishing second setting parameters for use at the beginning of the next section/second ground working, as well as, at each time the downhole torque adjustment causes a surface torque change that is analyzed by such unit to determine a new WOB and other optimization settings and adjustments; para. 0042,0051,0053,0058; Moore’s goal being to maximize the measured advance speed/ROP; para. 0042; further, although this claim does not require the second setting parameters to be based on the first state value, the foregoing addresses that relationship],
acquiring a second state value including a second advance speed of the ground working tool [e.g., as discussed above, at least the change in torque at the surface and advance speed/rate of penetration (ROP); para. 0039,0042,0044,0045 and Krueger ROPS tool 52; Krueger Fig. 2; col. 6, lines 48-64], a second energy consumption of the underground construction device [e.g., faster drilling reducing cost; para. 0092], a second wear on the ground working tool [e.g., reducing damage; para. 0076], and a second vibration [para. 0053,0076,0077] or sound emission of the underground construction device, resulting from the second ground working during the second calibration section [as discussed above, since such state values are acquired many times with many responsive adjustments made, such responsive adjustments (new/second setting parameters) will occur at the completion of a second section of hole],
determining third values of third setting parameters of the at least one of the rotary drive unit and the feed unit for optimized ground working of the ground for creating the hole based on the predetermined first values of the first setting parameters and the first state value [at least in that the third values are based on the second values and second state value, which, as discussed above, are based on the first values and first state value], the predetermined second values of the second setting parameters, and the second state value, the third setting parameters including a third torque of the rotary drive unit, a third feed force of the feed unit, and a third pressure or a volume in a hydraulic system for driving the rotary drive unit and/or the feed unit [this is but one more instance acquiring state values for use in the foregoing many adjustments to setting parameters to be used for the next (which would include a third) section of hole to be drilled, all adjustments, and all parameter selections, made in order to optimize ground working, at least by maximizing the advance speed/ROP, as discussed above], and
controlling the underground construction device to perform the optimized [as discussed above, the adjusted setting parameters (thus creating at least third setting parameters) are for the purpose of optimizing the drilling of an optimized ground working, e.g., the next/third section of hole, the next/third section necessarily being deeper than the second section drilled during the second ground working].
Claim 6 Moore, as discussed with respect to claim 1, discloses monitoring a third advance speed of the ground working tool during the optimized ground working over time and over an advance distance of the ground working tool in the hole [as discussed at claim 1 herein, advance speed/ROP is measured and maximized during drilling, such that it is monitored during the optimized (e.g., at least a third ground working over time and through the advancing distance/depth of the ground working tool, thus providing at least a third advance speed/ROP of the ground working tool].
Claim 10 Moore, as discussed with respect to claim 1, discloses that the first ground working, the second ground working, and the third ground working includes drilling with a drilling tool [e.g., bit 24; para. 0036].
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 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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Moore.
Claim 5 Moore, as discussed with respect to claim 1, discloses that the second depth, and otherwise discloses all the limitations of this claim, but does not explicitly disclose that the second depth is up to a depth of 5 m. It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have drilled to the described depth range in the second ground working, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable range involves only routine skill in the art. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05I.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Clark et al. (US20150308253), Turner et al. (US20130098683), Samuel (US20160281490), Jeffryes (US20040168827), and Buerger et al. (US10900343), all appear to disclose making repeated adjustments to drilling parameters based on measured conditions, including, e.g., torque.
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 GEORGE STERLING GRAY whose telephone number is (313)446-4820. The examiner can normally be reached 7-4 Eastern - M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tara Schimpf can be reached on 571-270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GEORGE S GRAY/ Primary Examiner, Art Unit 3676