DETAILED ACTION
This communication is a final office action on the merits and in response to amendments filed on 9/24/2025. All currently pending claims have been considered below. 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 Amendment
Applicant's amendments are sufficient to obviate the drawing objections. While Applicant submits new figure 5 for the "earth boring device" and "boring head", this is at a sufficient level of generality that the examiner does not hold it to be new matter in light of the skill of PHOSITA.
Applicant's amendments are sufficient to overcome the prior 101 rejection.
Regarding the 112(a) rejection of claim 1-15, Applicant has canceled claims 9 & 10 which recited the method of claim 1 is a computer implemented method, remarking that "[t]he pending claims, as amended, do not recite a computer program". The 112(a) rejection stemmed MPEP 2161.01, subsection I, and the written description requirement for computer implemented inventions.
The examiner first respectfully notes that pending claim 8 reads "The method of claim 1, wherein the method is carried out on a computer".
Second, the removal of "computer implementation" (paraphrased) of claims 9 & 10 is, respectfully, not sufficient to obviate the 112(a) issues previously identified on pages 5-11 of the non-final rejection. Effectually broadening the claims through cancelation of claims 9 & 10 is not sufficient to overcome a written description issue, because 112(a) is "in light of the specification". The examiner merely noted claims 9 & 10 as succinctly articulating when the specification already taught.
The examiner respectfully maintains the 112(a) rejections.
Regarding the prior art rejection, and the examiner's assertion of Applicant admitted prior art, Applicant requests clarification as to "why the pre-grant publication of the present case is considered "Applicant Admitted Prior Art".
Applicant appears to argue that the examiner is holding the entire PGPUB as prior art. This is not the case. However, MPEP 2129 is clear that discussions within the present disclosure may be considered prior art for that very same application. In the present case, Applicant readily admits, in the background section, that "[i]t is known to perform an emergency shutdown when an obstacle is detected in the region of the planned or driven boring channel" (¶ 5). Applicant state this "is known". Applicant did not say "The present invention performs an emergency shutdown…" Rather Applicant clearly says "It is known to perform an emergency shutdown". Applicant also states "[i]t is known to use earth boring devices to make earth bores or boring channels in the earth" (¶ 2). Is Applicant also asserting they invented the entire concept of drilling per se, as is the logical implication for the similarly worded phase in background paragraph 2?
MPEP 2129 further articulates that "[c]onsequently, the examiner must determine whether the subject matter identified as "prior art" is the inventor’s own work, or the work of another. In the absence of another credible explanation, examiners should treat such subject matter as the work of another" (emphasis added).
The examiner respectfully asserts that Applicant's clear statement, in the background section, that "it is known to perform an emergency shutdown when an obstacle is detected in the region of the planned or driven boring channel" is very reasonably an admission of generally available knowledge that PHOSITA would recognize, in the exact same manner as PHOSITA would recognize about "[i]t is known to use earth boring devices to make earth bores or boring channels in the earth in ¶ 2.
Regarding US 2005/0173153 (Alft), Applicant remarks on page 9 as-filed (emphasis added): "the Examiner acknowledges that Alft teaches steering the boring head to avoid colliding with an obstacle after it is detected. Completely different, the claimed methods override the shutdown warning and resumes drilling as planned, after the operator of the boring device manually checks an acknowledgement."
The examiner respectfully asserts that claim 1 contains no "plan", has no recitation that excludes steering, does not expressly require maintaining the previous trajectory, and that Applicant is attempting to improperly import this through arguments rather than limitation. This is best shown by new dependent claim 16: "the earth boring device is not steerable". This clearly shows that claim 1 encompasses steering. If Applicant would like the claims to be interpreted as excluding a change in direction after step (e), they may amend the claims accordingly to the extend the originally filed specification supports such. However, merely "continuing" to "resuming" is not commensurate with Applicant's arguments. The examiner respectfully maintains the prior art rejection of claim 1.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-6, 8, 16, & 17 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention.
Independent claim 1 recites "a) detecting obstacles in front of and/or next to the boring head; b) displaying the position of a detected obstacle relative to the boring head; c) issuing a shutdown warning when the distance between the detected obstacle and the boring head is less than a first distance; d) stopping boring of the boring channel when the shutdown warning is issued; …; f) resuming the introduction of the boring channel upon successful checking of the acknowledgement". Further, dependent claim 8, although the mere removal of claim 8 is not sufficient to obviate this issue.
Citing MPEP 2161.01 - "Computer Programming, Computer Implemented Inventions, and 35 U.S.C. 112(a)" - subsection I, emphasis added:
"Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art in a way that shows that the inventor actually invented the claimed invention at the time of filing. Id.; Ariad, 598 F.3d at 1351, 94 USPQ2d at 1172. The function of the written description requirement is to ensure that the inventor had possession of the specific subject matter later claimed as of the filing date of the application relied on; how the specification accomplishes this is not material. In re Herschler, 591 F.2d 693, 700-01, 200 USPQ 711, 717 (CCPA 1979), further reiterated in In re Kaslow, 707 F.2d 1366, 217 USPQ 1089 (Fed. Cir. 1983); see also MPEP §§ 2163 - 2163.04.
…
For instance, generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed. Ariad, 598 F.3d at 1349-50, 94 USPQ2d at 1171 ("[A]n adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries.") (citing Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1405-06); Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002) (holding that generic claim language appearing in ipsis verbis in the original specification did not satisfy the written description requirement because it failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d 1164, 1170, 25 USPQ2d 1601, 1606 (Fed. Cir. 1993) (rejecting the argument that "only similar language in the specification or original claims is necessary to satisfy the written description requirement").
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In LizardTech, claims to a generic method of making a seamless discrete wavelet transformation (DWT) were held invalid under 35 U.S.C. 112, first paragraph, because the specification taught only one particular method for making a seamless DWT and there was no evidence that the specification contemplated a more generic method. "[T]he description of one method for creating a seamless DWT does not entitle the inventor . . . to claim any and all means for achieving that objective." LizardTech, 424 F.3d at 1346, 76 USPQ2d at 1733.
Similarly, original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV.
The level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Ariad, 598 F.3d at 1351, 94 USPQ2d at 1172; Capon v. Eshhar, 418 F.3d 1349, 1357-58, 76 USPQ2d 1078, 1083-84 (Fed. Cir. 2005). Computer-implemented inventions are often disclosed and claimed in terms of their functionality. For computer-implemented inventions, the determination of the sufficiency of disclosure will require an inquiry into the sufficiency of both the disclosed hardware and the disclosed software due to the interrelationship and interdependence of computer hardware and software. The critical inquiry is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682. 114 USPQ2d 1349, 1356 (citing Ariad Pharm., Inc. V. Eli Lilly & Co, 598 F.3d 1336, 1351, 94 USPQ2d 1161, 1172 (Fed. Cir. 2010) in the context of determining possession of a claimed means of accessing disparate databases).
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It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015)".
In the present case, the figures merely show the display at various points of operation, show no details of the drilling equipment at all, provide no guidance as to the implementation of the computer program and integration with the unshown "detecting" structure, and appears to rely almost entirely on the skill of PHOSITA to write such a computer program and design such sensor equipment (a point that is expressly articulated in MPEP 2161.01, subsection I, final paragraph before subsection II, quoted directly above). The examiner also notes that, while MPEP 2161.01 is largely directed to functional limitations in apparatus claims, the holdings of LizardTech are also directed to methods, as quoted above. Applicant contemplates a computer program / computer implemented method, but does not disclose the details of that computer program, or the physical equipment therefore, in anything but the broadest possible detail. The examiner is therefore respectfully obliged to hold that claim 1 fails the written description requirement of 112(a). Claims 2-6, 8, 16, & 17 depend from claim 1.
Claim 16 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. This is a new matter rejection per MPEP 608.04.
New claim 16 recites "the earth boring device is not steerable". The originally filled specification did not show any "earth boring device". Originally filed claim 15 [canceled with the present amendment] recited "the boring head is at least partially moved back and/or moved forward in an aligned manner to avoid the at least one obstacle" (which clearly implies "steering" in some generalized, if passive, capacity). The originally filed specification discusses "steering" the boring head using the same wording from originally filed claims 7 & 15 (citing the PGPUB, 2024/0247579, ¶ 40): "the earth boring device is moved a distance backwards out of the ground and an alignment of the earth boring device is performed in response to the detected obstacle or obstacles. It may be provided that the backward movement is performed such that the boring head remains in the earth. The boring head can then be steered in the ground to avoid the obstacle or obstacles".
Although this is not definitive to the present case, the examiner also notes that horizontal, trenchless utility drilling, often uses an angled flat / oblique / paddle-like drill bit that allows for a gradually curving borehole while drilling. This is also "steering" at the level of generality of claim 16. Both the generally curved borehole and the angled flat head of the "boring head" are shown in Applicant's new figure 5. In other words, a "non-steerable drill bit" will drill an entirely straight hole and would appear incapable of drilling a curved borehole. Applicant's figure 5 shows a curved borehole, and Applicant's specification discusses steering, as cited above.
Further, the originally filed specification cites DE 10 2008 026 456 A1 in both ¶ 4 and the IDS filed 10/19/2023, which clearly teaches steerable drill heads (fig 1) with an oblique / inclined face surface 10 that creates "a laterally directed deflection… i.e. not rota-driven drill head 1 leads to a curved bore course. Linear boring is possible with such a pilot boring head by driving it both in the feed direction and in rotation, so that the deflecting forces cancel each other out over a full revolution." (first full ¶ of page 4 of the machine translation). I.e. steerable but capable of drilling a straight borehole.
The closest support the examiner can find for "the earth boring device is not steerable" is in background ¶ 5: "the challenge remains, especially for earth boring devices that are not steerable to a sufficient extent or essentially non-steerable earth boring devices, regarding how to react to an obstacle in the planned boring channel and its surroundings".
However, both "not steerable to a sufficient extent" and "essentially non-steerable" are, by the phrases themselves, still "steerable" to some extent. In other words "essentially non-steerable" still requires some level of steerability, such as the curved borehole often used in horizontal trenches utility digging discussed above. "Essentially non-steerable" is not in the claim, and such a limitation would be likely be structurally indefinite in light of the specification for much of same the above reasons.
The examiner also notes that "is not steerable" is a functional limitation in an apparatus claim. While this is not improper per se, citing MPEP 2173.05(g), emphasis added:
"Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340, 94 USPQ2d at 1167"
The present "is not steerable" limitation attempts to encompass the structure of every conceivable "non-steerable" drill bit when, as originally filed, no drill bits were disclosed in any detail, and the specification only cites prior art which is steerable. The examiner therefore respectfully asserts new claim 16 attempts to encompass matter not supported by the original specification: every conceivable type of "non-steerable" drill bit.
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.
Claim 16 is rejected under 35 U.S.C. 112(b) 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.
New claim 16 recites "the earth boring device is not steerable". The examiner respectfully holds this to be indefinite in light of the specification as to what exactly is structurally required by a "not steerable" drill bit.
First, as a new claim, the examiner notes the 112(a) discussion above. The specification teaches steering. Original claims 7 & 15 appear to require steering "to avoid the at least one obstacle". And the drawings and specification provide no insight as to what is structurally required by a "non-steerable" bit.
Further, "the earth boring device is not steerable" is a structural recitation that attempts to define that structure through a negative functional limitation: "not steerable". While this is not improper per se, "[a] functional limitation must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used" - MPEP 2173.05(g).
"Notwithstanding the permissible instances, the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008) (noting that the Supreme Court explained that a vice of functional claiming occurs "when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty")… Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340, 94 USPQ2d at 1167" - also MPEP 2173.05(g), emphasis added.
The present case provides no guidance as to what is structurally required by a "not steerable earth boring device", and attempts the define the structure through a negative functional limitation with no clear guidance from the specification as to what it encompasses. In other words, in plain language, what structure does a "not steerable earth boring device" clearly and definitely have, and where is the support for that structure in the originally filed specification?
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.
Claims 1-6, 8, & 17 are rejected under 35 U.S.C. 103 as being unpatentable over US 2005/0173153 (Alft) in view of Applicant Admitted Prior Art, citing the present Applicant's pre-grant publication, US 2024/0247579.
The examiner notes MPEP 2129, subsections I & II regarding Applicant admitted prior art. The examiner also notes the discussion regarding the contingent limitations of claim 1 in the Claim Interpretation section above. Finally, the examiner notes that Alft incorporates U.S. Pat. No. 4,907,658 (Stangl) by reference in ¶ 168.
Independent claim 1. Alft discloses a method for introducing a boring channel in the ground (title, abstract, fig 1) by an earth boring device ("machine 12" - fig 1, ¶ 80), wherein the earth boring device has a boring head ("boring tool 24 attached at the end of the drill string 22") which is moved to introduce the boring channel in the ground (¶ 80), and the method comprises the steps:
a) detecting obstacles ("The processor receives radar data from the radar unit indicative of subsurface strata and obstacles respectively located generally forward and/or lateral of the cutting tool." - ¶ 13) in front of and/or next to the boring head (ibid);
b) displaying the position of a detected obstacle relative to the boring head ("The boring system may also include a display for displaying a graphical representation of one or more of a boring tool location, orientation, the underground path, underground structures or boring tool movement along the underground path. Underground hazards and utilities, for example, may be graphically depicted in the display. Such a display may be provided on the boring machine, on a portable tracker unit, or both" - ¶ 56);
c) issuing a shutdown warning ("an in-tool or above-ground GPR unit may detect the presence of an obstruction several feet ahead of the boring tool. The GPR data representative of the detected obstruction is typically presented to the operator on a display of the remote unit 324" - ¶ 261. "a warning indicator 374 may be provided to alert the operator as to an impending collision situation. The warning indicator 374 may be an illuminatable indicator, a speaker that broadcasts an audible alarm or a combination of visual and audible indicators" - ¶ 277. The "shutdown warning" is not a command to stop, as shown by clause d; "A bore should remain a safe distance away from underground utilities to avoid strikes" - ¶ 191) when the distance between the detected obstacle and the boring head is less than a first, in particular selectable, distance (The detection threshold for the system, which is inherent to the sensor system. In other words, the obstacle is always there, but is only detected at a certain distance away from the bit);
e) manually checking ("Returning once again to FIG. 4, a user interface 84 provides for interaction between an operator and the boring machine 70. The user interface 84 includes various manually-operable controls, gauges, readouts, and displays to effect communication of information and instructions between the operator and the boring machine 70" - ¶ 103) a safety query ("an in-tool or above-ground GPR unit may detect the presence of an obstruction several feet ahead of the boring tool. The GPR data representative of the detected obstruction is typically presented to the operator on a display of the remote unit 324" - ¶ 261; also ¶ 277 as cited above) in the form of an acknowledgment of the shutdown warning ("The GPR data representative of the detected obstruction is typically presented to the operator on a display of the remote unit 324. The operator may issue steering commands to the boring tool 181 in order to avoid the obstruction" - ¶ 61. The user interface has "manually-operated controls… to effect communication of information and instructions between the operator and the boring machine" - ¶ 103); and
f) resuming the introducing of the boring channel upon successful checking of the acknowledgment (ibid; "resuming the introduction of the boring channel" does not exclude steering. Steering clearly and reasonably "resumes the introduction of the boring channel").
While Alft does clearly teach that it is undesirable to contact the obstruction with the bit ("A bore should remain a safe distance away from underground utilities to avoid strikes" - ¶ 191), Alft does not does not explicitly disclose stopping boring of the channel when the shutdown warning has been issued, and resuming upon operator command. Rather Alft discloses stopping boring in response to an "operational anomaly" (¶ 111). However, in the present Background, Applicant admits that "[i]t is known to perform an emergency shutdown when an obstacle is detected in the region of the planned or driven boring channel" (¶ 5 of the pre-grant publication). This is clearly an admission of general knowledge in the art ("It is known…" in the Background section). Evidence to support this being an acknowledgement of general knowledge is that the same section of the specification uses the same "It is known" phrasing to describe earth drilling per se (¶ 2). In other words, Applicant's "background" section usage of "It is known" is used to describe the entire concept of drilling (¶ 2), as well as "perform[ing] an emergency shutdown when an obstacle is detected" (¶ 5). This very reasonably points to a statement of general knowledge in the art, not a step solely developed by the present invention. As articulated in MPEP 2129, the "examiners should treat such subject matter as the work of another".
It would have been obvious to one having ordinary skill in the art at the time of filing to stop the drilling, as is known in the prior art, upon Alft identifying "an impending collision situation" (¶ 277). Again, Alft is clear that a collision is undesirable, and the reference is directed to avoiding a collision. It therefore very logically follows that when "an impending collision situation" is identified, a good and safe first step is to stop drilling. Upon relaying this information the operator, if the operator desires, "the operator may issue a steering command that may cause avoidance of an obstruction, but not within a desired safety margin (e.g., 2 feet)" (¶ 261).
2. The method according to claim 1, wherein a pre-warning is issued when the distance between the detected obstacle and the boring head is less than a second distance (drawn to the "distances" and "known obstacles" that are entered on the route during the planning stage: ¶s 120), wherein the second distance is greater than the first distance (as a known obstacle that is identified during planning, the distance between the bit and obstacle is naturally greater than "an impending collision situation").
3. The method of claim 1, wherein the display of the position of the detected obstacle relative to the boring head comprises displaying multiple views ("Further, the displays 77 and 79 may constitute two display windows of a single physical display. It is also understood that any type of view may be generated as needed, such as a top, side or perspective view, such as view with respect to the drill or the tip of the boring tool, or an oblique, isometric, or orthographic view, for example." - ¶ 132).
4. The method of claim 1, wherein the display of the position of a detected obstacle relative to the boring head comprises a display of an at least two-dimensional extent of a detected obstacle ("Further, the displays 77 and 79 may constitute two display windows of a single physical display. It is also understood that any type of view may be generated as needed, such as a top, side or perspective view, such as view with respect to the drill or the tip of the boring tool, or an oblique, isometric, or orthographic view, for example." - ¶ 132).
5. The method of claim 1, wherein the acknowledgment is through an alphanumeric entry and/or a key entry (The user interface 84 includes various manually-operable controls, gauges, readouts, and displays to effect communication of information and instructions between the operator and the boring machine 70" - ¶ 103; "a keyboard, keypad or other form of user input device 507" - ¶ 128; "…the user interface 84 typically comprises a user input device (e.g., keyboard, mouse, etc.) and a display" - ¶ 190; "an operator initiates boring machine and boring tool commands using a portable control unit. " - ¶ 76).
6. The method of claim 2, wherein a log of the display of the position of the detected obstacle relative to the boring head and/or output of the pre-warning and/or the shutdown warning and/or the acknowledgment is created ("A bore plan database 78 stores data concerning a pre-planned boring route, including the distance and variations of the intended bore path, boring targets, known obstacles, unknown obstacles detected during the boring operation…" - ¶ 120 - "The on-site designed bore plan may then be uploaded to the bore plan database 78 for subsequent use. As will be discussed in greater detail hereinbelow, the universal controller 72 may execute bore planning software and interact with the bore plan database 78 during a boring operation to perform "on-the-fly" real-time bore plan adjustment computations in response to detection of underground hazards, undesirable geology, and operator initiated deviations from a planned bore program" - ¶ 121; figs 4 & 10. Further, US 5,720,354 - incorporated by reference in ¶ 65 - teaches "the position data acquired by the GRS 150 is preferably communicated to a route mapping database 158 which adds the boring pathway data to an existing database while the boring operation takes place. The route mapping database 158 covers a given boring site, such as a grid of city streets or a golf course under which various utility, communication, plumbing and other conduits may be buried. The data stored in the route mapping database 158 may be subsequently used to produce a survey map that accurately specifies the location and depth of various utility conduits buried in a specific site" - col 15:16-27).
8. The method of claim 1, wherein the method is carried out on a computer (¶s 79, 121, 125, 134, 135, 190).
17. The examiner initially notes that Alft incorporates U.S. Pat. No. 4,907,658 (Stangl) by reference in ¶ 168. The method of claim 1, wherein the earth boring device is self-driven (Stangl, "Anvil 19 is press fitted into mole body 23 and extends from the forward surface of mole body 23 into the hollow section of housing 16. Anvil 19 is threadedly engaged with housing 16. A hammer or striker (not shown) which is driven by compressed air is located within mole body 23 and repeatedly strikes the anvil causing forward movement of the drilling assembly" - col 3:54-61). As a formally "incorporated by reference" document, Stangl is read as though "[t]he information incorporated is as much a part of the application as filed as if the text was repeated in the application, and should be treated as part of the text of the application as file" - MPEP 2163.07(b).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over US 2005/0173153 (Alft) & Applicant Admitted Prior Art, as cited for claim 1 above, in further view of DE 10 2008 026 456 A1 (Boike). A machine translation of Boike is included with this action.
Claim 16: First, in light of the 112(b) rejections above, the limitations have been interpreted as best able. Structurally, the examiner therefore interprets "not steerable" as an "earth boring device" that is capable of drilling a straight, linear, "non-steered" hole. The examiner acknowledges that this is likely broader than Applicant's interpretation for this limitation. However, given the above 112(a) and 112(b) issues with this limitation, and the lack of clarity from the originally filed specification, the examiner respectfully asserts it is within the broadest reasonable interpretation of the specification; a specification which is extremely broad. The examiner notes, for example, it is unclear in light of the specification what structure is encompassed by claim 16 and what "not steerable" even means in light of the specification's discussion of steering.
The combination discloses all the limitations of the parent claim but does not expressly disclose that the earth boring device is "not steerable" / can be used without steering.
However Boike discloses a boring head for a horizontal boring device (abstract) that is not steerable when desired by the operator ("Linear boring is possible with such a pilot boring head by driving it both in the feed direction and in rotation, so that the deflecting forces cancel each other out over a full revolution" (first full ¶ of page 4 of the machine translation).
Therefore it would have been obvious to PHOSITA at the time of filing to use the boring head taught by Boike in the invention taught by the combination. Alft discloses the details of the bit 24 therein only schematically, thus forcing the reader to look elsewhere for a more detailed disclosure. Boike teaches an instrumented horizontal drill bit that is capable of drilling in a linear, "non-steered", trajectory (ibid) as an art recognized suitable design for an analogous system taught by Alft.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blake Michener whose telephone number is (571)270-5736. The examiner can normally be reached Approximately 9:00am to 6:00pm CT.
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/BLAKE MICHENER/
Primary Examiner, Art Unit 3676
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