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 .
Specification
The disclosure is objected to because of the following informalities: On page 2, in the section “The Armature (5),” there is an errant comma after “from” in line 5.
Appropriate correction is 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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “apparatus ... for drilling” and “apparatus ... for depositing...” in claim 3.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Objections
Claims 1-3 are objected to for minor informalities.
See MPEP § 608.01(n). “Each claim begins with a capital letter and ends with a period.” The present claims begin with a dash.
Claim 1 is objected for a typographical error in line 3. There is no verb between ”extension” and “inserted”. Examiner will consider the phrase to read, “-through which a flexible drill extension is inserted.”
Claim 3 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only. See MPEP § 608.01(n). Accordingly, the claim has not been further treated on the merits.
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 1 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 1 is directed to “A drilling shaft.” The claim further limits the components which are intended to fit within the claimed shaft and how those components interact. Specifically, the claim recites phrases “-through which” (line 2), “-through which” (line 3), “-which is connected” (line 4), and “-and which shall be...” (line 5). The term “which” is ambiguous. It is unclear what each new line’s recitation of “which” refers to. There may be a presumption that each line’s “which” refers to the component directly above it, however, it is also reasonable to consider that each new line’s “which” may refer to any of the components (singular or in combination) above it.
For example, it is unclear whether the claimed “flexible drill extension” is required to be “inserted” “through” the flexible conduit of line 2 or the metal arc shaped hollow tubing of line 1 or both.
A similar analysis applies to the auger bit of line 4. Is the auger bit connected to the hollow tubing, the flexible conduit, or the flexible drill extension, or all three?
A similar analysis applied to the rotation by a drill. Does the drill rotate the auger bit, the flexible drill extension, the flexible conduit, and/or the arc shaped hollow tubing?
Claim 3 lacks a transitional phrase. The metes and bounds of claim 3 are therefore unknown. See MPEP § 2111.03. For the purpose of examination, Examiner will consider claim 3 to be a “comprising” claim. Line 1 is thus interpreted to read: “-A process for using the apparatus in Claims 1 and 2 for drilling under an obstruction, comprising:”
Claim 3 recites the limitation "“between both sides.” There is insufficient antecedent basis for this limitation in the claim as no “sides” had previously been recited.
Claim Rejections - 35 USC § 102
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 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Warner et al. (US 4,545,442).
As to claim 1, Warner teaches -a drilling shaft (rigid drill pipe 22, see Fig 1) comprising-a metal arc shaped hollow tubing (Col 4 lines 8-10: “rigid drill pipe 22 (e.g. 1/2 inch O.D. steel pipe) which is formed in a permanent curve having a substantially constant radius of curvature.”).
The remaining limitations are functional language and intended use because the limitation define components which are ancillary to the claimed “drilling shaft.” See MPEP § 2114.1 -through which a flexible conduit is inserted (a flexible conduit is capable of being inserted into the claimed drilling shaft because the drilling shaft is hollow), -through which a flexible drill extension inserted (a flexible drill extension is capable of being inserted into the claimed drilling shaft because the drilling shaft is hollow), -which is connected on one end to an auger bit (an auger bit is capable of being connected to the flexible drill extension), -and which shall be rotated by a drill on the opposite end (the auger bit is capable of being rotated by a drill via the flexible drill extension).
As to claim 2, Warner teaches -an armature (see Fig 1, the drilling apparatus 10 has an armature) comprising stabilizing legs and support arms (the stabilizing legs are the crossmember 12 and tongue 13. The support arms are drill pipe support members 15a-d), -and guiding pathway or pathways sufficient to maintain an arcuate drilling trajectory (guide means 19 are located at an outer end of each support 15 and has a U-shaped guide 20 thereon. The guide means 19 are sufficient to maintain an arcuate drilling trajectory as shown in Fig 5).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hunter (US 3,720,272) teaches a metal arc shaped hollow tubing (curved casing 60) through which a flexible drill extension (drive shaft 31) extends. The drive shaft 31 is connected on one end to an auger bit (drill bit 40) and on the other end to a drill (motor unit 22). Hunter intends for the system to drill an arcuate path beneath an obstruction 14 which is illustrated in Fig 1 to similar to a sidewalk. Hunter appears to rely on the shape of the guide driving tool to form the arcuate shape. It appears reasonable that an artisan would perform the auger drilling of Hunter with the arcuate pipe 22 of Warner. The motivation would be to ensure a proper arcuate shape as created by Warner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB JAMES CIGNA whose telephone number is (571)270-5262. The examiner can normally be reached 9am-5pm Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB J CIGNA/Primary Examiner, Art Unit 3726 20 February 2026
1 Take for example the claimed “flexible conduit.” Since the claim is directed to a drilling shaft, limitations regarding the flexible conduit must merely be shown to be capable of being achieved by the claimed drilling shaft. If instead the claim were directed to ‘a drilling tool... comprising a drilling shaft ...and a flexible conduit inserted in the drilling shaft’ then a rejection would only be proper if the art anticipated or suggested a flexible conduit inserted in a drilling shaft.