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 .
Status of Claims
This action is in reply to the Applicant’s claims, filed on 07/01/2026.
Claims 1-18 and 26-27 have been canceled.
Claims 30-31 have been added.
Claims 19-25, and 28-31 are currently pending and have been examined.
Response to Amendment
The amendment filed 07/01/2026 has been entered. Claims 19-25, and 28-32 remain pending in the application. Applicant' s arguments for claims 19-25 and 28-29 has been considered and found not persuasive. The prior art rejections made in Final Office Action dated 02/05/2056 remain and are repeated below.
Regarding applicants' argument for claims 19-25 and 28-29 in response to the Final Office Action, applicant is arguing that neither reference teaches loaded vertical transport to a new drilling site. Applicant's arguments are further limiting than the claim language. Claim 19 recites "securing the drill stands vertically on the setback module." Securing the stands vertically is taught by Jantzen in view of Binder. Claim 19 does not further limit the drill stands to be transported, in the claimed "relocating" step, in a vertical orientation. Specifically, claim 19 recites "moving the setback module away from the rig module, while the setback module is holding the drill stands." The claim does not limit the drill stands to be moved in vertical orientation. The claim does not require that the "setback module" is reconfigured to maintain the vertical orientation of the drill stands. The claim merely requires there is an initial step of securing the stands vertically, but the remainder of the claim is silent as to the orientation thereafter. For example, the claim requires "moving ... while the setback module is holding the drill stands". There is no reference to the orientation of the stands nor any link to the securing step (i.e. --moving ... while the setback module comprises the secured vertical drill stands-- or --securing the drill stands vertically on the setback module wherein the setback module is in a moving configuration which comprises vertically stored drill stands .... ; moving the setback module in the moving configuration away from the rig module .... --). Therefore, Jantzen in view of Binder teaches "securing the drill stands vertically" and further teaches moving the drill stands away from the rig module, regardless of vertical or horizontal orientation of the drill stands as the claim allows.
Regarding applicant's argument of the technical difference between a short move vs a long move. Applicant's arguments are further limiting than the claim language. The claims do not include a limitation regarding the distance the setback module is moved. The claims recite the setback module is moved away from the rig (claim 22) or relocated to a new drill site (claim 23) however a distance or range is not recited. Jantzen in view of Binder teaches the storage rake or storage framework is transported therefore teaches the drill stands are move over a distance or to a new site.
Regarding applicant's argument that Jantzen and Binder are dissimilar. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the system of Jantzen by securing the drill stands vertically as taught by Binder with a reasonable expectation of success in order to hold the drill stands in a vertical orientation as taught by Binder (Fig. 7-13; Col. 4 line 45 -Col. 5, lines 3). Both Jantzen and Binder teach a drill pipe handling, storage, and transportation system for a drill rig operation, therefore both are analogous as the function is similar.
Regarding applicant's argument that finger racks are not a fingerboard. Applicant's arguments are further limiting than the claim language. Claim 19 recites "drill stand are secured to at least one fingerboard." The claim does further define the structure of the fingerboard beyond a means of securing the drill stand. Neither the specification or the drawings expand on the structure therefore, under broadest reasonable interpretation, finger racks are read as a means to secure drill stands as known by a person having ordinary skill in the art. To further clarify the rejection based upon the prior art, the mapping of the fingerboard has been updated in the teaching of Jantzen in view of Binder as shown below.
For the foregoing reasons, that arguments provided in the response dated 05/05/2023 are not persuasive and the previously presented rejection is maintained. Regarding claims 30-31, the amendments raise new issues and a new ground(s) of rejection is made.
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 31 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 31 recites the limitation: the drill stands are secured vertically to the at least one fingerboard of the setback module during the moving the setback module away from the rig module. It is unclear how this limitation is further limiting. Claim 31 is dependent on claim 30 where claim 30 recites: the drill stands are secured vertically to the at least one fingerboard of the setback module during the relocating the setback module to the new drilling site. Based upon claim 30, the drill stands are already secured vertically to the setback module and would inherently be moved away from the rig module to relocate to a new drill site. Based upon the dependency of claim 31 on 30, claim 31 does not further define or restrict the scope of the invention. Therefore, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 31 also recites: during the moving the setback module. Examiner is reading the claim as “during [[the]] moving the setback module.”
Due to the indefinite language of the claim 31, no prior art rejection is applied at this time as the limitation fail to provide clear and definite boundaries. As a result, it is not possible to determine the scope or to properly evaluate the patentability. Therefore, a prior art rejection is not made, not because the prior art fails to teach, but because the claim is not amendable to prior art analysis until the scope is clarified. Once the claim is amended to overcome the 35 U.S.C. 112(b) rejections and provide clear metes and bounds, the claim may be examined for novelty and non-obviousness based upon prior art.
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 19-25, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over by Jantzen (US2009/0279987) in view of Binder et al. (US9,523,249).
Claim 19. Jantzen discloses: A method for operating ([0007-0012]) a drilling rig system (Fig. 1), the drilling rig system comprising a rig module (1 drilling or service rig, Fig. 1) adapted to perform drilling operations ([0007-0012]) and a separate setback module (10 trailer, Fig. 1) adapted to hold stands of drill pipe and/or drill collars (15 pipe sections, Fig. 1) to be used during the drilling operations, the method comprising:
where drill stands are secured to at least one fingerboard of the setback module (14 finger racks, Fig. 1);
placing drill stands from the rig module in the setback module ([0031-0032]);
moving the setback module away from the rig module, while the setback module is holding the drill stands ([0022], mobile storage rack, 10 trailer, is positioned as required adjacent to 1 service rig);
lowering the mast (2 mast, Fig. 1) of the rig module when the setback module is moved away from the rig module ([0031] 2 mast is angularly oriented as required demonstrating raising or lowering, Fig. 1-3);
relocating the setback module to a new drilling site, while the setback module is holding the drill stands ([0022], mobile storage rack, 10 trailer, is positioned as required adjacent to 1 service rig);
unloading the drill stands from the setback module at the new drilling site (tripping- in, [0008, 0033]). Jantzen does not disclose: securing the drill stands vertically on the setback module.
Regarding the limitation of: lowering of the mast, relocating the service rig, and relocating the trailer with the pipe sections at new drilling site; Jantzen does not explicitly disclose. However, Jantzen does disclose the reverse operation, wherein the service rig and trailer are made operational at a site by raising the mast and loading the rig with pipe from the trailer ([0008, 0033]). It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to perform the reverse of Jantzen’s disclosed operation i.e. to lower the mast, relocate the service rig and trailer to a new location, and reconfigure the system into a drilling operation. Doing so merely represents the predictable use of known system according to its established function in a reverse sequence and has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. in re Gazda, 219 F.2d 449, 104 USPC 400 (COPA L955).
As stated previously, Jantzen does not disclose securing the drill stands vertically on the setback module but does teach securing drill stands in a horizontal orientation.
Binder discloses a pipe store for supplying and discharging pipe bodies to and from a drilling rig, having at least one framework in the form of a transporting and a vertical storage framework for pipe bodies.
Binder teaches: securing the drill stands (16 drill rods, Fig. 7) vertically (41 is vertical, Fig. 7) on the setback module (41 storage framework, Fig. 7) secured to at least one fingerboard (structure of 43 arrangement elements and 44 depressions, Fig. 10).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the horizontal storage rack on the trailer system of Jantzen with the vertical storage and lifting rack system of Binder with a reasonable expectation of success as taught by Binder (Fig. 7) because both perform the same function in similar contexts. Such a substitution represents the use of a known element according to its established function, and the results would have been predictable. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claim 20. Jantzen in view of Binder teach: The method of claim 19, wherein the placing the drill stands in the setback module is performed by means of a grabber system (Jantzen: 30 grapple, Fig. 1; Binder: 18 gripping unit, Fig. 8) of the setback module.
Claim 21. Jantzen in view of Binder teach: The method of claim 20, wherein the grabber system is adapted to transfer the stands held in the setback module to the rig module (Jantzen: [0031-0032]; Binder: Col. 5, lines 4-40) when a distance between the rig module and the setback module is between 1 m and 50 m, preferably between 2 m and 40 m, more preferred between 3 m and 30 m, more preferred between 4 m and 20 m, most preferred between 5 m and 10 m (10 trailer is posited adjacent to the 1 drilling or service rig, Fig. 1; [0022]).
Jantzen in view of Binder is silent on the distance between the trailer and service rig however, Jantzen and Binder teach that the trailer/storage is adjacent (Jantzen: Fig. 1; Binder: Fig. 8). Therefore, Jantzen and Binder teaches the claimed invention, except for the specific numerical range recited in claim 21. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to position the trailer within 1m to 50m of the service rig, 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. In other words, narrowing a general condition taught by the prior art to a specific numerical value has been held to be an obvious variation thereof. In re Aller, 105 USPQ 233 and In re Boesch, 205 USPQ 215.
Claim 22. Jantzen in view of Binder teach: The method of claim 1, wherein the moving the setback module away from the rig module is performed by means of a rig walking system (Jantzen: 10 trailer may be self-propelled with its own motor and drive train, [0022]) of the setback module.
Claim 23. Jantzen in view of Binder teach: The method of claim 19, wherein the relocating the setback module to the new drilling site is performed by means of a setback moving dolly (Jantzen: 10 trailer comprises of 13 tires that function as the dolly, Fig. 1).
Claim 24. Jantzen in view of Binider teach: The method of claim 23, wherein the relocating the setback module to the new drilling site comprises raising the setback module by means of setback raising cylinders (Jantzen: 11 and 12 downrigger legs deployed to lift the trailer, Fig. 1), placing a setback moving dolly under the raised setback module (Jantzen: 13 tires function as a dolly, Fig. 1), and retracting the setback raising cylinders (Jantzen: inherent reversal to configure the trailer onto the tires for relocating, Fig. 1).
Claim 25. Jantzen in view of Binder teach: The method of claim 19, further comprising relocating the rig module to the new drilling site, wherein the drill stands are unloaded from the setback module to the rig module (Jantzen: tripping-in operations, [0008, 0033]; see previously rejected claim 1), the method further comprising using the drill stands during drilling operations (Jantzen: inherent function of drilling or service rig, [0022]).
Claim 28. Jantzen in view of Binder teach: The method of claim 19, wherein the setback module is adapted to hold at least 10 stands, preferably at least 50 stands (Jantzen: Fig. 1 illustrates approximately 90 stands on 10 trailer), more preferred at least 100 stands, and most preferred at least 500 stands.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over by Jantzen (US2009/0279987) in view of Binder et al. (US9,523,249) and further in view of Langowski et al. (US3,655,071).
Claim 29. Jantzen in view of Binder teach: The method of claim 19, setback module is adapted to hold stands. Jantzen in view of Binder does not teach: at least two joints per stand, preferably at least three joints per stand.
Langowski teaches an apparatus for use in moving stands of drill pipe, either doubles or trebles, between a horizontally racked position and a position aligned with the center line of the derrick. Langowski teaches: at least two joints per stand, preferably at least three joints per stand (double or trebles stands of drill pipe, Col. 2, lines 15-20; DP, Fig. 2).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the mobile pipe storage rack of Jantzen in view of Binder to accommodate double to trebles stands of drill pipe as taught by Langowski with a reasonable expectation of success. Such a modification would create a handling system that is economically feasible and improve operational efficiency as suggested by Langowski (Col. 2, lines 15-75).
Claims 30 is rejected under 35 U.S.C. 103 as being unpatentable over by Jantzen (US2009/0279987) in view of Binder et al. (US9,523,249) and further in view of Deterding et al. (DE3608511).
Claim 30. Jantzen in view of Binder teach: The method of claim 19.
Jantzen in view of Binder does not teach: wherein the drill stands are secured vertically during the relocating the setback module to the new drilling site.
Deterding discloses a vertical drill rod magazine for transporting drill rods.
Deterding teaches: the drill stands (12 drill rods; Fig. 1-2, 4-7) are secured vertically (12 is vertical; Fig. 1-2, 4-7) during the relocating the setback module (11 drill rod magazine; Fig. 1-2, 4-7) to the new drilling site (transport the magazine to the next location; para 7 of PE2E translated; Col. 2, lines 48-63).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the mobile pipe storage rack of Jantzen in view of Binder by including the capability of transporting the pipe in a vertical orienting as taught by Deterding with a reasonable expectation of success in order relocate the storage rack to a new location as taught by Deterding (para 7 of PE2E translated; Col. 2, lines 48-63).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Voigts et al. (DE3629946) disclose a vertical pipe storage system wherein the vertical pipe is secured with a fingerboard and the storage system is moved away from the rib by a moveable storage car. Voigts does not disclose transporting the pipe to a new location.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Craig whose telephone number is (571)270-0747. The examiner can normally be reached M-Thurs 8:00 AM to 5:00 PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tara Schimpf can be reached at (571)270-7741. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL T CRAIG/Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676
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