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 .
Status of Claims
The following is a Final Office Action in response to the communication filed on 08/22/2025. Claims 1—20 are currently pending.
Priority
The Applicant’s claim for benefit of Published US Patent Application, US 20220290500 A1, filed on 3/9/2022, which claims priority to Provisional US Patent Application 63/159,435, filed on 3/10/2021, has been received and acknowledged.
Information Disclosure Statement
Information Disclosure Statement received 4/26/2024 has been reviewed and considered.
Response to Arguments
Applicant's arguments and amendments filed on 8/22/2025 in response to the drawing objection have been fully considered and are persuasive in part. The majority of the replacement drawings are acceptable; however, FIG. 33 will likely still render poorly and should be redrafted to in a style similar to FIG. 12.
Applicant's arguments and amendments filed on 8/22/2025 in response to the claim-oriented drawing objections (e.g., to claims 12, 17, 18, and 20) have been fully considered and are persuasive. The drawing objections directed to claims 12, 17, 18, and 20 are withdrawn.
Applicant's arguments and amendments filed on 8/22/2025 in response to the rejection of claims 4, 12, and 17—20 under 35 U.S.C. 112(b) have been fully considered and are persuasive. The rejection of claims 4, 12, and 17—20 under 35 U.S.C. 112(b) are withdrawn.
Applicant's arguments and amendments filed on 8/22/2025 in response to the rejection of claims 1—2, 5—7, 11, 13, and 16 under 35 U.S.C. 102 have been fully considered but are not persuasive. While the provided amendments require a minor adjustment to the rejection of record, the same prior art applies as modified below. Regarding the arguments, the Response at page 6 states “Lucon discloses drills comprising only one force generator,” which is not factually correct. The instant application at para. [0006] states “one or more force generators chosen from one or more voice coil actuators, one or more eccentrics driven,” as such a force generator is understood to include voice coil actuators and eccentrics. The prior art to Lucon at para. [0025] states “a sonic head comprising one or more pairs of eccentrics that vibrate in accordance with an oscillatory input force waveform.” As such, Lucon does not merely disclose drills consisting of only one force generator where “one or more pairs of eccentrics,” includes the option for more than one force generator.
The Response further states “FIG. 1 relates to background art sonic drill, which does not form part of the invention disclosed in Lucon’s claims and cannot be readily combined with the teaching at para. [0015],” to which the Examiner does not agree. FIG. 1 of Lucon depicts a sonic drill 10 including sonic drill head 12 and drill string 14. While this figure is labelled as “prior art,” the same element labels (e.g., sonic drill head 12 and drill string 14) are used in FIGs. 6A and 7 which are unambiguously directed to an embodiment of the invention. Moreover, sonic driver 12 of FIGs. 6A and 7 is depicted in a generic format (e.g., as a box). Apparatuses depicted in patent figures as generic/box form are generally understood to be well understood and/or conventional components that do not require for the specific details to be shown in order for the invention to be understood. As such, the argument that the material labelled “prior art,” of FIG. 1 and the specific aspects recited in para. [0015] (e.g., which are referencing the components identified in FIG. 1) are not combinable is not persuasive. For the foregoing reasons, the rejection to claims 1—2, 5—7, 11, 13, and 16 under 35 U.S.C. 102 is maintained as provided below.
Applicant's arguments and amendments filed on 8/22/2025 in response to the rejection of claim 8 under 35 U.S.C. 103 have been fully considered but are not persuasive. As noted in the Response “Lucon discloses an energy transfer rod disposed within a sonic drill head connected to a drill string via a flange adaptor,” where the Response further states “it is generally known in the art to use a rubber gasket within a flange connection to provide a sealed interface.” (Response, page 6). As supported by both the prior art, which is replete with examples of gaskets utilized with flanged connections (e.g., see additional references provided below), and as acknowledged in the Response, the inclusion of a seal (e.g., a gasket) within a flanged connection is well-known. The limitations of claim 8 merely require that a seal is disposed between the housing and the drill rod where the inclusion of a gasket within the flanged connection of Lucon fully obviates the limitations of claim 8. Whether or not the seal happens to provide unexpected benefits is not required by the claim. However, even if those beneficial effects (e.g., functional limitations) were recited, they would not function to overcome the rejection without the inclusion of additional limitations which are physically/structurally different from a generic seal which is disposed in a generic flange. For the foregoing reasons the arguments set for with respect to the rejection of claim 8 under 35 U.S.C. 103 are not persuasive and the rejection is maintained.
Applicant's arguments and amendments filed on 8/22/2025 in response to the rejection of claims 9 and 10 under 35 U.S.C. 103 have been fully considered but are not persuasive. The Response at page 7 states “Hall discloses a spring mechanism (205) disposed between the drill rod (drill string 100) and a drill bit component (jack element 200).” These elements are all that is required to anticipate the limitations of claim 9. As with claim 8, the alleged functional benefits/features (e.g., which are not recited in claim 9) are inconsequential to the rejection if the structural limitations of the claim are met. Moreover, claim 10 was rejected as being directed to purely functional language which did not provide any additional structures or elements to differentiate the construction/configuration of the spring-damper beyond being disposed between the drill rod and the drill bit. Utilizing functional language (e.g., focusing on what the apparatus achieves rather than how it is configured) to overcome a rejection where the claimed structure/elements/configuration is fully anticipated or obviated is not a successful avenue for overcoming the type of rejection provided with claims 9 and 10. Additionally, whether or not the motivation to incorporate a feature from a secondary reference achieves the same intention as the instant application is not relevant. The requirement for an adequate combination under KSR A does not require teaching, suggestion, or motivation and it further does not require the same predictable result, it merely requires a predictable result. For the foregoing reasons the arguments set for with respect to the rejection of claims 9 and 10 under 35 U.S.C. 103 are not persuasive and the rejection is maintained.
Applicant's arguments and amendments filed on 8/22/2025 in response to the rejection of claims 17—20 under 35 U.S.C. 103 have been fully considered and are persuasive in overcome the rejection of record. However, the amendments which replace “a gauge,” with “a control system and a display,” require new grounds for rejection as provided below. As such, the rejection to claims 17—20 under 35 U.S.C. 103 is maintained as modified below.
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because multiple figures are either currently illegible or may become illegible upon printing. Replacement drawings are requested for the following figures: FIG. 33. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Claim Objections
Claim 17 is objected to because of the following informalities: claim 17 appears to be missing a period. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1—2, 5—7, 11, 13, and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Published US Patent Application to Lucon (US 20110056750 A1).
Claims 3, 4, and 15 are rejected for being exclusively directed to the non-rejected embodiment of “voice coil actuators” based on the figures shown and without specific descriptions. As such, claims 3, 4, and 15 do not function for further narrow the rejected embodiment (e.g., eccentrics driven by a motor).
Regarding claim 1, Lucon discloses [a] resonance-enabled drill (para. [0015], “a sonic drill apparatus”), comprising: a housing (FIG. 1 depicts an unlabelled housing enclosing sonic drill head 12); one or more force generators (“pairs of eccentrics”) chosen from two or more voice coil actuators, or one or more pairs of eccentrics (para. [0025], “a sonic head comprising one or more pairs of eccentrics that vibrate in accordance with an oscillatory input force waveform”), or two classes of force generators, wherein one or more voice coil actuators are tuned to a first frequency range and one or more eccentrics are tuned to a second frequency range; one or more sonic heads (sonic drill head 12 as depicted in FIG. 1) coupled to the one or more force generators (sonic drill head 12 as depicted in FIG. 1 shows eccentrics as force generators); a plurality of springs coupling the housing to the one or more sonic heads (para. [0015], “means for imposing a coupling rate between the sonic head and the drill rig or frame (e.g., a pneumatic spring, rubber-like material mounts, or conventional springs).”); and a drill rod (“drill rod” of para. [0015]) disposed on its proximal end to the one or more sonic heads (para. [0015], “sonic drill apparatus comprising… a sonic head comprising excitation means (e.g., eccentrics) that vibrate in accordance with an oscillatory input force waveform, a drill string that vibrates in accordance with an oscillatory displacement waveform and a drill bit.”).
Regarding claim 2, Lucon discloses a bit disposed on the distal end of the drill rod (para. [0015], “sonic drill apparatus comprising… a sonic head comprising excitation means (e.g., eccentrics) that vibrate in accordance with an oscillatory input force waveform, a drill string that vibrates in accordance with an oscillatory displacement waveform and a drill bit.”).
Regarding claim 5, Lucon discloses wherein the one or more force generators are one or more pairs of eccentrics (see rejection of claim 1), where each eccentric is driven by one electric motor(para. [0015], “a sonic head comprising excitation means (e.g., eccentrics) that vibrate in accordance with an oscillatory input force waveform”; para. [0015], “means for driving the sonic drill apparatus (e.g., by hydraulic fluid having a pressure and a flow rate to drive the eccentrics, or electricity to drive the electric motors to drive the eccentrics)…”).
Regarding claim 6, Lucon discloses wherein the one or more force generators comprises two paired sets of eccentrics (para. [0025], “a sonic head comprising one or more pairs of eccentrics that vibrate in accordance with an oscillatory input force waveform”) configured to exert no vertical force, using a 180 phase angle between the two paired sets of eccentrics (para. [0031], “two pairs of counter rotating eccentrics, each pair is phased from each other to give a vertical force magnitude from zero to maximum amplitude.” The phase angle associated with the maximum amplitude is understood to be a phase angle of 180 degrees).
Regarding claim 7, Lucon discloses wherein the one or more force generators comprises two paired sets of eccentrics (para. [0025], “a sonic head comprising one or more pairs of eccentrics that vibrate in accordance with an oscillatory input force waveform”) configured to exert full vertical force, using a 0 phase angle between the two paired sets of eccentrics (para. [0031], “two pairs of counter rotating eccentrics, each pair is phased from each other to give a vertical force magnitude from zero to maximum amplitude.”).
Regarding claim 11, Lucon discloses an energy transfer rod and flange adaptor disposed between the one or more sonic heads and the drill rod (see FIG. 1 where an energy transfer rod disposed within sonic drill head 12 which an adaptor flange to attached to drill string 14).
Regarding claim 13, Lucon discloses wherein kinetic energy stored in the drill by the one or more sonic heads is directly offset by potential energy stored within the plurality springs (para. [0148], “[b]y examining Equation 4, it can be observed that there is a particular frequency at which the inertia forces, caused by the mass, directly offsets the stored force, exerted by spring 24.”).
Regarding claim 16, Lucon discloses [t]he drill of claim 1 (see claims 1 above), having a resonance frequency, and, when the drill is on resonance, an input force is in phase with the resultant oscillation velocity of the one or more sonic heads (para. [0023], “the invention is a method for controlling a sonic drill having a displacement and an operating range and operating at a phase angle (e.g., a phase angle between an input force waveform and a displacement waveform, a velocity waveform, an acceleration waveform or a jerk waveform).”).
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(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published US Patent Application to Lucon (US 20110056750 A1) as described above with respect to claim 1 and in further view of Published US Patent to McGuire et al., hereinafter “McGuire” (US 7032677 B2).
Regarding claim 8, while FIG. 1 of Lucon depicts an energy transfer rod disposed within sonic drill head 12 which is connected to a drill string by way of a flanged adaptor, Lucon may not explicitly disclose “a seal disposed between the housing and the drill rod.” However, it is known in the art to include a rubber gasket within flanged connections in order to provide for a sealed connection. For example, Published US Patent to McGuire, which is in the same field of endeavor as the instant application insofar as it is related to flanged connections used in oil and gas applications, teaches “[t]he lockdown flange 220 includes top flanged end 68 a cylindrical mandrel 222, and a bottom end 224 that includes an annular groove 226 for accommodating a high-pressure fluid seal, such as a flange gasket, well known in the art.” (Col 10, Lines 1—5).
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 generically depicted flange adaptor of Lucon to include a high pressure seal as described by McGuire where including a seal within a flange is well known in the art.
Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published US Patent Application to Lucon (US 20110056750 A1) as described above with respect to claim 1 and in further view of Published US Patent Application to Hall et al., hereinafter “Hall” (US 20070221408 A1).
Regarding claim 9, Lucon may not explicitly disclose the limitations of “a spring-damper disposed between the drill rod and a drill bit.” Hall, which is in the same field of endeavor as the instant application insofar as Hall is directed to drilling which uses vibrations as a drive mechanism, teaches the deficient limitations. For example, Hall teaches a spring-damper (spring mechanism 205) disposed between the drill rod (drill string 100) and a drill bit (jack element 200). Hall further teaches “It is believed that by tuning the weight on bit (WOB) and the spring force of the spring mechanism with the reaction force imposed by the formation 105 that a resonant frequency of the formation may be produced causing the formation proximate the jack element to self destruct.” (Hall, para. [0021]). As such, the inclusion of the spring mechanism is understood to provide for an improved drilling result.
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to have modified the drilling system of Lucon to include the spring mechanism of Hall by known methods, where each element functions the same separately as they do in the combination. The combination would yield the predictable result of providing for an improved drilling result by causing the formation to self-destruct, as taught by Hall.
Claim 10 is directed to functional language attributed to the spring-damper without providing for structural limitations which differentiate the configuration of the instant spring from the cited prior art of Hall as presented in claim 9. As described in para. [0021] of Hall, the spring mechanism 205 is understood to be configured to perform the same features as recited in claim 10.
Claim(s) 17—20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Published US Patent Application to Lucon (US 20110056750 A1) as described above with respect to claim 1 and in further view of Published US Patent to Maron (US 4821563 A) and Published US Patent to Whalley (US 9946445 B2).
Regarding claim 17, Lucon discloses a control system (resonant sonic drill control system 200 depicted in FIG. 13 which includes PLC 254) and a display (user interface 260 is part of control system 200) functionally coupled to the drill to receive information about the drill (see FIG. 13 where PLC 254 and user interface 260 are connected to sonic drill 226 through multiple sensors; para. [0190], “[i]n the embodiment illustrated in FIG. 13, the sensors include eccentric pressure sensor 230, eccentric pressure sensor 232, pull pressure sensor 234, push pressure sensor 236, drive sensor or driver sensor 240, rotary sensor or rotation sensor 242, push-pull position sensor 244 and eccentric sensor.”), including current operating conditions (para. [0194], “during the frequency sweep, displacement, velocity, and/or acceleration amplitude and phase of the sonic driver are measured by driver sensor 240.” Driver sensors 240 is part of control system 200), and calculations from measurements of the drill (para. [0194], “each measured velocity or each measured acceleration is converted into a relative displacement amplitude by dividing each measurement by the angular frequency of excitation or the angular frequency of excitation squared, respectively.”), including the resonance frequency (para. [0193], “after resonant sonic drill control process 270 is initiated… a frequency sweep over the operating range of sonic drill apparatus 236 is performed in sweep frequencies step 274. A frequency sweep is performed by changing the frequency of the oscillating input force (e.g., speed of rotation of counter rotating eccentrics 60) fast enough to not excite sonic drill apparatus 236 to harmful amplitudes, but also slow enough to allow time for the vibrations of sonic drill apparatus 236 to build to adequate amplitudes so that usable data can be recorded.” Examiner notes that FIG. 16B is a process which uses a frequency sweep at step 422 to calculate “the optimum resonant operating point at step 424.) … the control system providing the information and calculations to an operator (see FIGs. 20—23 which constitutes “analysis of data obtained by monitoring” a sonic drill. Examiner notes that the data provided in FIGs. 20—23 is provided by the control system), including when the drill is in resonance (see the above citation directed to the resonance frequency along with FIGs. 20—23) … and changes in a boundary condition (para. [0196], “From the resultant data, the most efficient operating mode is determined by a computer, e.g., PLC 254, in set frequency step 276. PLC 254 then controls sonic drill apparatus 236 to operate in the most efficient operating mode by tracking the phase difference…” Examiner notes that an operating mode constitutes a boundary condition. Paragraph [0034] provides additional boundary conditions which may be calculated from sensor data. See also FIG. 19 which shows the sonic drill responses ).
Lucon may not explicitly disclose a sensor or measurement directed to weight-on-bit; however, monitoring weight on bit is well known in the art of drilling. For example, Maron, which is in the same field of endeavor as the instant application insofar as Maron is directed to drilling teaches “[i]t is well known that the parameters of weight-on-bit (WOB), torque-on-bit (TOB) and side or bending force on bit (BOB) are important values to measure and/or control in the drilling of a well such as an oil or gas well.” (Maron, Col 1, Lines 10—15).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a weight-on-bit measurement, as taught by Maron, in the displayed data of Lucon. Maron provides explicit teaching, suggestion, or motivation to include the weight on bit measurement in a display cluster as it is well known in the art that weight on bit is an important drilling parameter to both monitor and control.
In addition to the foregoing, Examiner notes that, while it is believed that Lucon modified by Maron adequately discloses the limitations of claim 18, the act of displaying data and calculations relevant to the drilling operation is well-known in the art of drilling. Issued US Patent to Whalley (US 9946445 B2), which is in the same field of endeavor as the instant application insofar as it is directed to a drilling system, underscores the prevalence of data displays for drilling operations data. For example, the background portion of Whalley states “[d]rilling control systems and planning tools for drilling operations often display schematics of a drilling system and data describing the operation of the drilling system.” (Whalley, Col 1, Lines 8—10). As such, it would be obvious to display/present/provide the collected data and associated calculations recited in Lucon and Maron because displaying operationally-relevant data is something that is often done.
Regarding claim 18, Lucon modified by Maron and Whalley teaches wherein the control system maximizes the ratio between bit motion and motion of the one or more sonic heads (para. [0019], “a sonic head comprising means for imposing an input force that vibrate in accordance with an oscillatory input force waveform, a part that vibrates in accordance with an oscillatory displacement waveform and a drill bit… means for measuring a response measures at least a phase angle between the oscillatory input force waveform and the oscillatory displacement waveform.” The oscillatory input force waveform is understood to be the motion of the sonic heads where the oscillatory displacement waveform is understood to be the motion of the bit. See also para. [0017] and [0034]. See also FIG. 20 and 21 of Lucon.).
Regarding claim 19, Lucon modified by Maron and Whalley teaches the phase displayed on the display of the control system indicates a relative position of the phase for the resonance frequency of the sonic drill (Lucon teaches displaying gathered sensor data as described in claim 17. The resonance tracking scheme of Lucon as described in para. [0176]—[0184] describes an algorithm that would generate the information required to achieve the limitations of claim 19).
Regarding claim 20, Lucon modified by Maron teaches wherein the control system measures a phase measurement between the force generator and the one or more sonic heads in the drill, the display of the control system indicating where the resonance frequency of the drill is relative to current operating frequency of the drill based on the phase measurement, or the display of the control system providing the difference between a phase estimated from a model (sonic drilling model 80 of Lucon, see para. [0160]—[0169]) for no coupling at the drill bit (para. [0169], “there exists the boundary condition caused by coupling drill tip 19 to the material being drilled.”) and the phase measurement (see para. [0164], “because the GDE has been manipulated into a useful equation that allows the use of measurable quantities, such as the phase angle ‘Φd’, the sonic drill can be characterized and monitored during the drilling process.”) , or wherein when the drill is no longer in resonance (see FIGs. 20—23), information on the stress state and safe operating conditions of the drill is provided to the control system (para. [0207]—[0209] of Lucon describes determinations made for safe operating conditions. See also FIG. 19 of Lucon), or wherein the display comprises a list or visual cues of the sonic drill’s resonant frequencies.
Allowable Subject Matter
Claims 12 and 14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 12, while Lucon discloses the use of an electric rotary motor (see para. [0015] and [0018]), Lucon does not disclose the rotor and stator configuration as recited in the claim. While the utilization of rotors and stators are known in the art of drilling, an obvious reason to combine such a feature with the primary reference was not readily apparent.
Claim 14 recite structures and features which were not included in the prior art cited in the rejection. The disclosure of Published US Patent Application to Lucon et al., hereinafter “Lucon ‘162” (US 20160236162 A1) teaches the specific structures recited in claim 14. However, Lucon ‘162 is directed to a different field of endeavor (e.g., agitating mixtures) such that a motivation to combine was not clear.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following prior art references underscore the prevalent usage of sealing rings/gaskets within pipe connections as utilized in the art of borehole generation: Issued US Patent to Sivley et al. (US 8029025 B1); Issued US Patent to Mallis et al. (US 8496274 B2); Issued US Patent to Sivley et al. (US 7380840 B2); Published US Patent Application to Wilde (US 20110186305 A1); and Issued US Patent to Dearing et al. (US 6006839 A).
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 URSULA NORRIS whose telephone number is (703)756-4731. The examiner can normally be reached Monday to Friday, 7 AM to 4 PM.
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/U.L.N./Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676
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