DETAILED ACTION
The amendment filed 11/9/2025 has been entered.
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 11/9/2025 have been fully considered but they are not persuasive. Applicant argues that Curlett and Van Steenwyk are nonanalogous art to the claimed invention and therefore should not used in a 103 rejection, but the examiner respectfully disagrees. It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both Curlett and Van Steenwyk are considered as both in the field of the inventor’s endeavor (i.e. drilling in the earth) and reasonably pertinent to the particular problem with which the inventor was concerned (i.e. obtaining data on a drilling operation). Applicant argues that considering the examiner considered these prior art references as analogous as being technologies as involving “drilling” is overly broad and these references do not address the same specific problem in the same specific context. This argument is not persuasive because as viewed by the examiner, and evidenced by the classification of the instant application as within the same fields as these references, “RC mineral exploration” and “oil/gas well drilling” are not considered distinct as argued. Although applicant discusses various differences one of ordinary skill may consider between these two types of drilling argued, it is not clear any of these differences are found within the invention as claimed. Further, the references are considered as pertinent to the particular problem with which the inventor was concerned as both Curlett and Van Steenwyk teach data logging techniques in a drilling system, which one of ordinary skill would recognize is pertinent to any drilling system where additional data of the drilling operation would be desired.
Applicant also argues that the channels in Curlett are not supply and return channels. However, as the rejection relies on Brown as providing the supply and return channels, this argument is not persuasive. Applicant also argues that that the measuring location in Brown cannot accommodate the Curlett configuration, and argues that there is no motivation to combine Brown with Curlett. In response to applicant's argument that the measuring location in Brown cannot accommodate the Curlett configuration, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, Curlett provides the teaching of measuring instruments in a drill string, positioned as claimed. One of ordinary skill would be motivated to provide such instruments in order to collect data on an ongoing drilling operation. Applicant further argues that, in regard to claim 20, that the examiner has not interpreted “immediately” as required by the claim. The examiner disagrees since using application’s own definition (see remarks page 9, where “immediately” may be defined as “close to something or someone in distance or time”), the components as being assembled would all be considered “close to” each other and therefore this argument is not persuasive.
Applicant further argues that Van Steenwyk’s instruments are for a different type of drilling than RC drilling and one of ordinary skill would recognize their incompatibility. This argument is not persuasive since the instruments as claimed appear to be the same as recited in Van Steenwyk. The examiner finds no claimed limitation which is not met by the combination of references, as properly motivated as would be viewed by one of ordinary skill in the art. Applicant further argues that Van Steenwyk’s disclosed instrument location would prevent application to an RC drill, but the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, Van Steenwyk teaches use of the type of instruments, and as would be viewed by one of ordinary skill, these would clearly be useful with the tool of Brown and the combination is considered proper.
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.
Claim 38 is 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.
Claim 38 recites “the first measurement is recorded at the second position and the second measurement is recorded at the first position”, while claim 37 recites “taking a first measurement at a first position” and “taking a second measurement at a second position”. It is confusing that the method includes “taking” each of a first and second measurement at a position and “recording” the first and second measurement at a different position. It is not clear what the difference is in “taking” the measurement versus “recording” the measurement, nor is it clear whether each of the first and second “measurement” would include multiple measurements, as the claim appears to recite, and therefore this claim is indefinite.
Claim Rejections - 35 USC § 103
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(s) 19-20, 26-29 and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. (US 4,819,746) in view of Curlett (US 4,836,305).
In regard to claim 19, Brown et al. disclose a measurement tool for use during pneumatic percussion drilling, the measurement tool comprising: a body (as in fig 1, e.g. at 26) comprising a drill string above a pneumatically operated hammer (components below 2 in fig 1) of the drill string, wherein the drill string comprises a reverse circulation hammer drill (col. 5, lines 31+), and wherein the body comprises one or more fluid supply channels (29) in an annular portion of the body and a central fluid return channel (as leading from 9). Brown et al. do not disclose one or more measuring instruments positioned in the drill string.
Curlett discloses a measurement tool for use during drilling comprising a body (286 as in fig 19) comprising one or more measuring instruments (18,20,290) positioned in a drill string, wherein the body comprises fluid supply channels (320, 322) in an annular portion and a central fluid return channel (318). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the tool of Brown et al. with measuring instruments, as taught by Curlett in order to obtain downhole data on a drilling operation as it progresses.
In regard to claim 20, as combined above, the body is positioned immediately above the pneumatically operated hammer (where any position above the bit may be considered “immediately”, as would be applied to figure 1 of Brown et al.).
In regard to claim 26, Curlett discloses wherein the measuring instrument is within a compartment in an annular portion of the body (as in fig 19, as including 292/18/20/290).
In regard to claim 27, Curlett discloses wherein the compartment is within an outer diameter of the body (as in fig 19).
In regard to claim 28, Curlett discloses wherein the compartment is within an annular portion of the body (as in fig 19), radially outward of a fluid return channel.
In regard to claim 29, Curlett discloses wherein the compartment is within an annular portion of the body between fluid supply channels (as in fig 19).
In regard to claim 32, Brown et al. disclose a drilling apparatus comprising a body (as in fig 1, at 26) comprising a drill string above a pneumatically operated hammer of the drill string (as in fig 1, col. 5, lines 31+), wherein the drill string comprises a reverse circulation hammer drill (col. 5, line 31+), and wherein the body comprises one or more fluid supply channels (29) in an annular portion of the body and a central fluid return channel (as leading from 9). Brown et al. do not disclose one or more measuring instruments positioned in the drill string.
Curlett discloses a drilling apparatus comprising a body (286 as in fig 19) comprising one or more measuring instruments (18,20,290) positioned in a drill string, wherein the body comprises fluid supply channels (320, 322) in an annular portion and a central fluid return channel (318). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the tool of Brown et al. with measuring instruments, as taught by Curlett in order to obtain downhole data on a drilling operation as it progresses.
Claim(s) 21-24 and 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. in view of Curlett as applied to claim 19 above, and further in view of Van Steenwyk et al. (US 5,725,061). Brown et al. and Curlett disclose all the limitations of these claims, as applied to claim 19 above, except for disclosing that the measuring instrument comprises one or more orientation sensors, inertial movement sensors, gyroscopes, accelerometers, a gamma ray detector or that the tool is connected immediately above the hammer.
In regard to claim 21, Van Steenwyk et al. disclose sensors for positioning near a drill bit (110c, as in fig 3C) which include one or more orientation and/or movement sensors (col. 3, lines 1-10). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the tool of Brown et al., as modified by Curlett, with orientation and/or movement sensors, as taught by Van Steenwyk et al. in order to obtain position and movement information about a drilling operation as it progresses.
In regard to claim 22, Van Steenwyk et al. disclose wherein the measuring instrument comprises one or more gyroscopes (col. 3, lines 1-10).
In regard to claim 23, Van Steenwyk et al. disclose wherein the measuring instrument comprises one or more accelerometers (col. 3, lines 1-10).
In regard to claim 24, Van Steenwyk et al. disclose wherein the measuring instrument comprises a gamma ray detector (col. 3, lines 1-10). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the tool of Brown et al., as modified by Curlett, with orientation and/or movement sensors, as taught by Van Steenwyk et al. in order to obtain information about the surrounding formations during a drilling operation as it progresses.
In regard to claim 40, Van Steenwyk disclose a measurement tool is connected immediately above the drill bit in place of a standard drill rod in the drill string (as in fig 3C, also see col. 3, lines 8-12). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the tool of Brown et al., as modified by Curlett, with the measurement tool immediately above the bit, as taught by Van Steenwyk et al. in order to improve accuracy and relevance of the data (col. 3, lines 8-10, Van Steenwyk et al.).
Claim(s) 25 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. in view of Curlett and further in view of Small (US 4,633,248). Brown et al. and Curlett disclose all the limitations of these claims, as applied to claims 19 and 26 above, except for and dampening or sizing the compartment relative to the instrument such that the instrument is clear of walls of the compartment.
In regard to claim 25, Small discloses a measurement tool connected to a body by one or more dampers (32) for dampening shock/vibration. It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide a dampener, as taught by Small, with the tool of Brown et al., as modified by Curlett, to provide shock isolation to the electronic components (Small, col. 1, lines 39-44).
In regard to claim 30, Small discloses a measurement tool wherein a compartment is sized relative to the instrument so that movement of the instrument is clear of the walls of the compartment (as in fig 1). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide a dampener, and thus providing the instrument as clear of the walls of the compartment, as taught by Small, with the tool of Brown et al., as modified by Curlett, to provide shock isolation to the electronic components (Small, col. 1, lines 39-44).
Claim(s) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. in view of Van Steenwyk et al.
In regard to claim 33, Brown et al. disclose a method of measuring (with) a measurement tool during reverse circulation (RC) pneumatic percussion drilling operations comprising the steps: drilling a hole using a drill string having an RC drill bit (as would be used, col. 3, lines 31+), a pneumatic hammer for the RC drill bit (10 as in fig 1) and a body (at 26, as in fig 1) above the hammer; wherein fluid is supplied through one or more fluid supply channels (29, col. 5, lines 67+ as leading to col. 6, lines 54+) in an annular portion of the body and fluid is returned through a central fluid return channel (as leading from 9, col. 6, lines 64+). Brown et al. do not disclose one or more measuring instruments and measuring the orientation of the body as the hole is being drilled.
Van Steenwyk et al. disclose a method of measuring (with) a measurement tool during drilling including one or more measuring instruments (110c, fig 3c) above a drill bit and measuring the orientation of the tool body as a hole is being drilled (col. 6, lines 4-9). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the method of Brown et al. with the instruments as taught by Van Steenwyk et al. in order to provide data on tool orientation during drilling.
Claim(s) 34-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. in view of Van Steenwyk et al. as applied to claim 33 above, and further in view of Spaulding (US 7,975,392). Brown et al. in view of Van Steenwyk et al. disclose all the limitations of these claims except for measuring during a pause (although it is implied that measurements would be taken at all times including during a pause).
Spaulding discloses a method wherein during each pause in drilling a measuring instrument takes a measurement (col. 2, lines 16-20). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide that during each pause of drilling of the method of Brown et al., as modified by Van Steenwyk et al., as measurement is taken, as taught by Spaulding, in order to improve accuracy by taking measurements when the bit is paused.
In regard to claim 35, as combined above, the measurement comprises a calibration measurement (insofar as any measurement may be compared against others and be a “calibration”, where no particular use is claimed).
In regard to claim 36, Spaulding discloses wherein the pause in drilling comprises an addition or removal of a drill rod (col. 2, lines 16-20).
Claim(s) 37 and 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. in view of Van Steenwyk et al. and Spaulding, as applied to claim 35 above, except for teaching measurements 180 degrees apart and taking first and second measurements at each position.
In regard to claim 37, Estes et al. disclose a method wherein measurements are taken during drilling including taking a first measurement at a first position then rotating 180 degrees and taking a second measurement at a second position (paragraph 47). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide multiple measurement as taught by Estes et al., with the method of Brown et al., as modified by Van Steenwyk et al., and Spaulding, in order to improve accuracy of data (Estes et al., paragraph 47).
In regard to claim 38, Estes et al. disclose wherein the method includes a first measurement is recorded at the second position and the second measurement is recorded at the first position (paragraph 47, where multiple accelerometers provide measurements at each position).
Claim(s) 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. in view of Van Steenwyk et al. and further in view of Small (US 4,633,248). Brown et al. and Van Steenwyk et al. disclose all the limitations of these claims, as applied to claims 19 and 26 above, except for dampening vibrations/shocks experienced by the measuring instrument.
Small discloses a method including dampening vibrations/shocks experience by a measuring instrument (as in fig 1, 32 as providing dampening) for dampening shock/vibration. It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide dampening, as taught by Small, with the method of Brown et al., as modified by Van Steenwyk et al. to provide shock isolation to the electronic components (Small, col. 1, lines 39-44).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to D Andrews whose telephone number is (571)272-6558. The examiner can normally be reached M-F, 7-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at 571-272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D. ANDREWS/Primary Examiner, Art Unit 3672
11/28/2025