DETAILED CORRESPONDENCE
Claims 1, 5, 6, 10, 11, and 15-18 are pending. Claim 11 is withdrawn.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
Section 102
Applicant’s arguments with respect to the Section 102 rejection have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Section 101
Beginning at page 6, the applicant cites specification text and argues that the text discloses a “technical improvement”, i.e., “an improvement in technology or a technical field” (Remarks, page 9), such as discussed in the guidelines discussed in the December 5, 2025 memorandum from Charles Kim, then Deputy Commissioner for Patents (the “Memo”), such a “technical improvement” thus requiring specification evaluation beyond what was provided by the examiner in the Section 101 rejection in the RCE nonfinal, mailed January 30, 2026. The examiner respectfully disagrees.
In this regard, it is noted that MPEP 2106.05(a)(II) indicates "Notably, the court did not distinguish between the types of technology when determining the invention improved technology. However, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology," and also provides examples that the courts have indicated may not be sufficient to shown and improvement to technology, e.g., “iii. Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48”. This is strongly analogous to claim 1 here.
In this case, the claimed improvement, by the applicant's own admission, is an improvement in the decision making process so as to operate without relying on the experience or knowledge of the operator. therefore, the improvement is a judicial exception of making determinations (a mental process), and an improvement cannot be in the judicial exception itself. The examiner additionally notes that a Section 101 analysis does not include whether the application of a judicial exception is novel.
Accordingly, no “technical improvement” is disclosed in the cited text, thus, additional and/or particularized specification analysis of the type required by the Memo, is not triggered. The applicant’s Section 101 arguments rise or fall based on the foregoing applicant position.
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, 10, and 15-18 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:
obtaining, from a memory, first values of 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,
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 the
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 of the hole to the first depth during the first calibration section,
obtaining, from the memory, second values of 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 the hydraulic system for driving the rotary drive unit and/or the feed unit,
controlling the underground construction device in a second calibration section of creating the hole to perform second ground working of the hole to from the first depth to a second depth deeper than the first depth according to the second values of the second setting, wherein the first values of the first setting parameters differ from the 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 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 first values of the first setting parameters, the first state value, the 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 the hydraulic system for driving the rotary drive unit and/or the feed unit, and
controlling the underground construction device to perform the optimized ground working of the ground for creating the hole to from the second depth 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. It is noted that “a memory” can be memory of the human mind and the claim does not require a computing device with a hard drive memory.
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.
Regarding claim 15, 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 16, 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 17, 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 18, 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.
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 15 and 16 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 15 The term "relatively" is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. If the claim is amended to limit the term to a relationship specifically between the rotational speeds in the first and second setting parameters, respectively, then it is likely that this rejection will be withdrawn.
Claim 16 The term "extreme" is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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, 6, 10, 17, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goldman et al. (US20030015351).
Claim 1 Goldman discloses a method for automatically calibrating ground working with an underground construction device, which comprises a rotary drive unit 72 for rotationally driving a ground working tool 22 and a feed unit 12 by means of which the ground working tool is introduced into the ground for creating a hole [Figs. 1-5; abstract; 0023,0024,0057, 0066, 0073], the method comprising:
obtaining, from a memory, first values of first setting parameters including a first torque of the rotary drive unit [para. 0032,0033,0060,0064,0067], a first feed force of the feed unit [e.g., WOB; para. 0060,0064,0067], and a first pressure or a volume in a hydraulic system for driving the rotary drive unit and/or the feed unit [e.g., the hydraulics of at least the rotary drive 74; para. 0028,0032, the rotary drive speed/rpm necessarily being controlled by the hydraulic pressure],
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 the first values of the first setting parameters [e.g., using the predicted operational parameters until the first depth at which measurements were taken at step 106, compared/analyzed at steps 108,110, and changed at step 114, at which step 114 the first setting parameters are changed/fine tuned, resulting in a stored second setting parameters; para. 0034-0036],
acquiring a first state value [e.g., as done in the foregoing step 106 of Fig. 2A; para. 0036] including a first advance speed of the ground working tool [e.g., ROP; para. 0082], a first energy consumption of the underground construction device [e.g., power; para. 0071,0081] a first wear on the ground working tool [e.g., bit wear; para. 0060,0079,0081,0082], and a first vibration or sound emission of the underground construction device [para. 0152,0157], resulting from the first ground working of the hole to the first depth during the first calibration section,
obtaining, from the memory, second values of second setting parameters [e.g., the setting parameters, as so changed above at step 114, and used for the second interval to be drilled, i.e., past the depth at which the foregoing step 106 measurements were taken, compared/analyzed at steps 108,110, and changed at 114] including a second torque of the rotary drive unit [para. 0032,0033,0060,0064,0067], a second feed force of the feed unit [e.g., WOB; para. 0060,0064,0067], and a second pressure or a volume in the hydraulic system for driving the rotary drive unit and/or the feed unit [e.g., the hydraulics of at least the rotary drive 74; para. 0028, the rotary drive speed/rpm necessarily being controlled by the hydraulic pressure],
controlling the underground construction device in a second calibration section of creating the hole to perform second ground working of the hole to from the first depth to a second depth deeper than the first depth according to second values of the second setting parameters [e.g., the second depth at which measurements were taken at step 106, compared/analyzed at steps 108,110, and again changed at step 114, at which step 114 the second setting parameters are changed/fine tuned, resulting in a stored third setting parameters; para. 0034-0036], wherein the first values of the first setting parameters differ from the second values of the second setting parameters [e.g., when models are fine tuned at step 114 on Fig. 2A, such that the predictions change at step 102 for the second time through the Fig. 2A process for the second interval].
acquiring a second state value [e.g., step 106 of Fig. 2A for the second time through the Fig. 2A process for the second interval; para. 0036] including a second advance speed of the ground working tool [e.g., ROP; para. 0082], a second energy consumption of the underground construction device [e.g., power; para. 0071,0081], a second wear on the ground working tool [e.g., bit wear; para. 0060,0079,0081,0082] , and a second vibration or sound emission of the underground construction device [para. 0152,0157], resulting from the second ground working during the second calibration section [e.g., measurements taken at steps 104,106 of Fig. 2A for the second interval],
determining third values of third setting parameters of 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 first values of the first setting parameters, the first state value, the 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 the hydraulic system for driving the rotary drive unit and/or the feed unit [e.g., (1) all such parameters (i.e., torque, etc.) were included in the first and second setting parameters, as discussed in the foregoing, (2) first and second state values (i.e., measurements) were acquired as discussed above for two instances of step 106, respectively, (3) the second setting parameters being based on the fine tuned/changed first setting parameters (in that, the Fig. 2A,2B process utilized first setting parameters as part of the process for obtaining the second interval/second setting parameters, as discussed above, such that the second setting parameters are based on the first setting parameters and the fine tuning of such first setting parameters based on first state value), and (4) the Fig. 2A,2B process utilizes second setting parameters as part of the Fig. 2A,2B process for the third interval (i.e., at a depth (the second depth) starting at the second occurrence of the measurements taken at step 106, compared/analyzed at steps 108,110, and again changed at step 114, at which step 114 the second setting parameters were changed/fine tuned, resulting in a stored third setting parameters, thus the third setting parameters are ultimately based on the first setting parameters, the first state value, the second values of the second setting parameters, and the second state value, collectively, and include the listed parameters], and
controlling the underground construction device to perform the optimized ground working of the ground for creating the hole to from the second depth to a third depth deeper than the second depth according to the third values of the third setting parameters [e.g., using the third setting parameters for the third interval (starting at the above-described second depth)].
Claim 6 Goldman, 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 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 Goldman, 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 22; para. 0024].
Claim 17 Goldman, as discussed with respect to claim 1, discloses that the memory stores a calibration program [e.g., the “calibration mode” on apparatus 50; step 114 on Figs. 2A,3; para. 0072-0077,0028] configured to perform the method for automatically calibrating ground working with the underground construction device [e.g., the “calibration mode” on apparatus 50; step 114 on Figs. 2A,3; para. 0072-0077,0028], and the calibration program stores the first setting parameters [stored in place at the start of the Figs. 2A,2B prior to fine tuning changes, as discussed at claim 1 herein] and the second setting parameters [including fine tuning/changing to obtain the second setting parameters, as discussed at claim 1 herein,] as predefined fixed sets of setting parameters [e.g. each set of setting parameters being in stored and in place at the beginning of the drilling interval to the first and second depths, respectively (such first and second depths being discussed at claim 1, herein)].
Claim 18 Goldman, as discussed with respect to claim 1, discloses that determining the third values of the third setting parameters includes selecting the third values of the third setting parameters from among the first values of the first setting parameters and the second values of the second setting parameters based on the first state value and the second state value [all as discussed at claim 1 herein], and
controlling the underground construction device to perform the optimized ground working includes controlling the underground construction device to perform the optimized ground working according to the first values of the first setting parameters and the second values of the second setting parameters selected as the third values of the third setting parameters [as discussed at claim 1 herein].
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 Goldman.
Claim 5 Goldman, 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.
Claim 15 Goldman, as discussed with respect to claim 1, discloses that the predicted rotational speeds are in a range [giving an example of 50-150 rpm; Fig. 4; para. 0091 listing], and that the predicted RPM changes at various depth intervals [e.g., the RPM curve re 266 on Fig. 4], such that the rotational speeds are low and high relative to two intervals, and otherwise discloses all the limitations of this claim, but does not explicitly disclose that such speeds are chosen as setting parameters for two intervals corresponding with, e.g., the first depth and the second depth, respectively (such depths discussed at claim 1 herein), such that the first setting parameters include a first rotational speed of the ground working tool that is a relatively low rotational speed of the ground working tool, and the second setting parameters include a second rotational speed of the ground working tool that is a relatively high rotational speed of the ground working tool. However, 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 chosen a lower value for the RPM for the first setting parameters (i.e., for the first interval to the first depth), and a higher value for the RPM for the second setting parameters (i.e., for a second interval to the second depth), since it has been held that discovering the optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F. 2d 272, 205 USPQ 215 (CCPA 1980). In this case, a different RPM would be appropriate for a more easily drilled first interval and a harder to drill second interval.
Claim 16 Goldman, as discussed with respect to claim 1, discloses that the first setting parameters include a first setting parameter of the first torque of the rotary drive unit, the first feed force of the feed unit, or the first pressure or a volume in a hydraulic system for driving the rotary drive unit and/or the feed unit, and the second setting parameters include a second setting parameter of the second torque of the rotary drive unit, the second feed force of the feed unit, or the second pressure or a volume in a hydraulic system for driving the rotary drive unit and/or the feed unit [all as discussed at claim 1 herein], and otherwise discloses all the limitations of this claim, but does not explicitly disclose that the first setting parameter Note: in light of published application paragraph [0015], such required parameters include a relatively low rotational speed and a relatively high rotational speed. Accordingly, Goldman discloses that the predicted rotational speeds are in a range [giving an example of 50-150 rpm; Fig. 4; para. 0091 listing], and that the predicted RPM changes at various depth intervals [e.g., the RPM curve re 266 on Fig. 4], such that the rotational speeds are low and high relative to two intervals [i.e., the required opposite extremes], and otherwise discloses all the limitations of this claim, but does not explicitly disclose that such speeds are chosen as setting parameters for two intervals corresponding with the first use of the Figs. 2A,2B process and the second use of the Figs. 2A,2B process, respectively, such that the first setting parameters include a first rotational speed of the ground working tool that is a relatively low rotational speed of the ground working tool, and the second setting parameters include a second rotational speed of the ground working tool that is a relatively high rotational speed of the ground working tool, i.e., the required opposite extremes. However, 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 chosen a lower value for the RPM for the first setting parameters (i.e., for the first interval to the first depth), and a higher value for the RPM for the second setting parameters (i.e., for a second interval to the second depth), since it has been held that discovering the optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F. 2d 272, 205 USPQ 215 (CCPA 1980). In this case, a different RPM would be appropriate for a more easily drilled first interval and a harder to drill second interval.
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.
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.
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
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