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 .
Response to Amendment
Applicant’s amendment to Claim 7 is supported at least by previously presented Claims 1 and 4 alongside the embodiment of Figure 3. The embodiment of Figure 3 will be considered elected for the remainder of prosecution.
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 (i.e., changing from AIA to pre-AIA ) 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 7 is rejected under 35 U.S.C. 103 as being unpatentable over Zeiler (US20060159533A1).
Claim 7
Zeiler teaches a processing tool assembly, comprising: a processing tool (Item 20 Figure 11A); and a connecting tool unit (Figure 5A, Item 28, See also ¶0040), wherein the processing tool comprises a tool body (21) comprising: a front end surface; a rear end surface; at least one side surface connecting the front end surface and the rear end surface; and a first coupling part extending between a first end and a second end, wherein the first end is disposed at the rear end surface, wherein the first coupling part being one of: a female coupling part; and a male coupling part (Figure 11A); wherein the first coupling part includes a first identification marker (24) including identification information of the processing tool (¶0039), and wherein the first coupling part has a maximum diameter d (Figure 11A), and wherein the rear end surface at which the first end is disposed has a diameter D (Figure 11A), and wherein the connecting tool unit includes a second coupling part (Figure 5A shows the male connecting part end of the accessory (20) is placed within a receiving portion of the tool (28), which is a female coupling part.), the second coupling part being one of: a male coupling part arranged to be coupled to the female coupling part of the processing tool; and a female coupling part arranged to be coupled to the male coupling part of the processing tool (Figure 5A shows the male connecting part end of the accessory (20) is placed within a receiving portion of the tool (28), which is a female coupling part.), wherein the first coupling part is coupled to the second coupling part (Figure 5A), and wherein the first identification marker is positioned in an interface between the first coupling part and the second coupling part (Figure 5A shows the connecting part of the accessory (20) is located within the female coupling part of the tool (28), which means that the marker (24) is also inside the interface.), wherein the first identification marker is unexposed to the exterior of the processing tool assembly. (Figure 5A)
Zeiler does not explicitly disclose wherein D/2 < d <D.
However, at the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to size diameters of Zeiler within the claimed range because applicant has not disclosed that having the diameter sizes provides an advantage, is used for a particular purpose, or solves a stated problem. It is noted that published ¶0032 states “a stable mounting is achieved between the processing tool and a connecting tool unit.” as a motivation for choosing the diameters, yet due to Zeiler’s clear depiction of the diameters and their proximity to one another in Figure 11A, it is understood that this functionality is achieved by Zeiler as well. One of ordinary skill in the art, furthermore, would have expected Zeiler’s diameters, and applicant’s invention, to perform equally well with either the diameter ratio taught by Zeiler or the claimed diameters because both diameter ratios would perform the same function of providing a connection location having sufficient size to establish a stable mounting.
Therefore it would have been prima facie obvious to modify Zeiler to obtain the invention as specified in Claim 7 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Zeiler.
See also MPEP 2144.04, subsection IV. A. – change in size or proportion.
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Annotation of Zeiler, Figure 11A
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kammann (US20050230109A1).
Claim 7
Zeiler teaches a processing tool assembly, comprising: a processing tool (Figure 3A-3C and Figure 5D disclose tubes/pipes (114) that are connected pin to box.); and a connecting tool unit (480), wherein the processing tool comprises a tool body (Figure 3A-3C, Item 480) comprising: a front end surface (top surface in Figure 3A); a rear end surface (bottom surface in Figure 3A); at least one side surface connecting the front end surface and the rear end surface (Figure 3A); and a first coupling part (481) extending between a first end and a second end (Figure 3C), wherein the first end is disposed at the rear end surface (Figure 3A), wherein the first coupling part being one of: a female coupling part; and a male coupling part (Figure 3A shows the pin end (481) is a male coupling part.); wherein the first coupling part includes a first identification marker including identification information of the processing tool ((Figure 3C teaches an RFIDT (484) located at the end of the first coupling part. ¶0071 teaches the RFIDT contains data relating to the size, weight or other information associated with the drilling component.)), and wherein the first coupling part has a maximum diameter d (Figure 3C), and wherein the rear end surface at which the first end is disposed has a diameter D (Figure 3C), and wherein the connecting tool unit includes a second coupling part (482) the second coupling part being one of: a male coupling part arranged to be coupled to the female coupling part of the processing tool; and a female coupling part arranged to be coupled to the male coupling part of the processing tool (Figure 3A teaches a box end (482) that is a female coupling part that interacts with the pin end (481) of an adjacent tube (480).), wherein the first coupling part is coupled to the second coupling part (¶0089 teaches a plurality of the pipes are connected pin to box end. The assembly in Kammann is a plurality of tubes (480) connected pin to box end.), and wherein the first identification marker is positioned in an interface between the first coupling part and the second coupling part (Figure 3C shows the first identification marker (484) is located at the first coupling part (481). When the first coupling part (481) is coupled with the second (482), the identification marker will be in the interface/joint.) wherein the first identification marker is unexposed to the exterior of the processing tool assembly. (When the pin end and box end are connected, the marker (484) will be covered by the box end of the adjacent second coupling part.)
Kammann does not explicitly disclose wherein D/2 < d <D.
However, at the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to size diameters of Kammann within the claimed range because applicant has not disclosed that having the diameter sizes provides an advantage, is used for a particular purpose, or solves a stated problem. It is noted that published ¶0032 states “a stable mounting is achieved between the processing tool and a connecting tool unit.” as a motivation for choosing the diameters, yet due to 11. Kammann’s clear depiction of the diameters and their proximity to one another in Figure 11A, it is understood that this functionality is achieved by Kammann as well. One of ordinary skill in the art, furthermore, would have expected 11. Kammann’s diameters, and applicant’s invention, to perform equally well with either the diameter ratio taught by Kammann or the claimed diameters because both diameter ratios would perform the same function of providing a connection location having sufficient size to establish a stable mounting.
Therefore it would have been prima facie obvious to modify Kammann to obtain the invention as specified in Claim 7 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Kammann.
See also MPEP 2144.04, subsection IV. A. – change in size or proportion.
Claim 8
Kammann teaches the processing tool assembly according to claim 7, wherein the second coupling part includes a second identification marker including identification information of the connecting tool unit. (Figure 3B teaches the box end (482) of the tube (480) in detail. The box end has an RFIDT (484) at the coupling area. ¶0089 teaches that when a pin/box connection is made, each piece has a RFIDT in the pin and box end.)
Claim 9
Kammann teaches the processing tool assembly according to claim 8, wherein the second identification marker is positioned in the interface between the first coupling part and the second coupling part. (When the male coupling part (481) of the pin end is connected with the female coupling part (482) of the box end, the RFIDT (484) at the box end will be in the interface/joint.)
Response to Arguments
Applicant’s arguments, see remarks, filed 06/09/2026, with respect to the rejection(s) of claim(s) 1-9 under 35 USC 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Zeiler or Kamman under 35 USC 103.
Applicant’s arguments and amendment to Claim 7 are sufficient to overcome the anticipation rejections.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure can be found on the PTO-892 Form.
Document
Date
Description of Relevant Subject Matter
JPH1034471A
1998-02-10
Processing tool (1); connecting tool unit (2); tool body (7); coupling part (8); identification marker (8); second identification marker (9)
EP3812068A1
2021-04-28
Processing tool (2); connecting tool unit (3); tool body (2); coupling part (4); identification marker (13); second identification marker (n/a)
US20200391306A1
2017-09-21
Processing tool (5); connecting tool unit (12); tool body (5); coupling part (18/19); identification marker (24); second identification marker (34)
US4317585A
1980-05-30
Processing tool (10); connecting tool unit (10); tool body (14/16); coupling part (18/22); identification marker (26/28); second identification marker (26/28)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael W Hotchkiss whose telephone number is (571)272-3854. The examiner can normally be reached Monday-Friday from 0800-1600.
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/MICHAEL W HOTCHKISS/Primary Examiner, Art Unit 3726
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