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
The Preliminary Amendment filed December 16, 2024 has been entered and considered with the Office Action below.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the latch connection as recited in claims 19 and 20 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because Figures 1, 2, 4-6 and 12 include floating reference numbers, numbers that do not include any lead lines to indicate what feature they are representing. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 8, 9, and 16 are objected to because of the following informalities:
In line 3 of claim 8, “geared sleeve” should be changed to --a geared sleeve--.
In line 2 of claim 9, “he” should be changed to --the--.
The “5” at the end of claim 16 should be removed.
Appropriate correction is required.
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.
Claims 1-23 are 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.
Regarding claims 1-6, 10, and 12: The inclusion of a limitation in parenthesis, “(hereafter bar spray)” for example, is considered generally confusing as it is unclear if this feature is part of the claim language. All claim limitations must be referred to by a name that distinguishes one limitation from another and this name must be clearly associated with the claimed feature. The use of parenthesis makes it unclear if the name in the parenthesis is associated with the preceding limitation. Correction is required.
Regarding claims 1 and 4: The phrase “A drill head for use with a microtunneling apparatus to produce a bore including a housing” at the beginning of claims 1 and 4 reads as if it is the bore that includes the housing. There is no linking word or phrase to tie the drill head to the remainder of the limiations in the claims. It is suggested that the beginning of claims 1 and 4 be changed to -- A drill head for use with a microtunneling apparatus to produce a bore, the drill head comprising a housing--.
Regarding claims 2 and 3: Claims 2 and 3 require “at least one spray outlet”. It is unclear if this “at least one spray outlet” is the same spray referred to in claim 1 or a separate feature. It is recognized that each of the recitations is followed by a “hereafter” phrase however, as indicated above, it is unclear if the name in this phrase is associated with the preceding spray outlet or not. It is suggested that each recitation of “at least one spray outlet” be amended to positively indicate what the spray outlet is. For example, in claim 2, “at least one spray outlet (hereafter exhaust spray)” should be changed to --at least on exhaust spray outlet--.
Regarding claim 2: The phrase “an exhaust aperture leading to an exhaust cavity extending longitudinally of the housing” in lines 3 and 4 is considered generally confusing. It is suggested that this phrase be changed to --an exhaust aperture leading to an exhaust cavity extending in a direction parallel to a longitudinal axis of the housing of the housing --.
Regarding claims 5 and 6: Claims 5 and 6 require “at least one spray outlet”. It is unclear if this “at least one spray outlet” is the same spray referred to in claim 4 or a separate feature. It is recognized that each of the recitations is followed by a “hereafter” phrase however, as indicated above, it is unclear if the name in this phrase is associated with the preceding spray outlet or not. It is suggested that each recitation of “at least one spray outlet” be amended to positively indicate what the spray outlet is. For example, in claim 5, “at least one spray outlet (hereafter bar spray)” should be changed to --at least on bar spray outlet--.
Regarding claim 10: The phrase “to move in a longitudinally of the housing” in line 4 is considered generally confusing. It is suggested that this phrase be changed to --to move in a direction parallel to a longitudinal axis of the housing--.
Regarding claim 11: There is insufficient antecedent basis for “the annular body” in line 2 of the claim. As the “annular body” is first introduced in claim 7, it is suggested that claim 11 was intended to depend from claim 7 and it will be treated as such for the purpose of examination.
Regarding claim 13: The phrase “the radial member having at an exhaust aperture leading to an exhaust cavity extending longitudinally of the housing for extracting swarf from the working zone” in lines 3-5 is considered generally confusing. It is suggested that this phrase be changed to --the radial member having at an exhaust aperture leading to an exhaust cavity extending in a direction parallel to a longitudinal axis of the housing for extracting swarf from the working zone --.
Regarding claim 14: There is insufficient antecedent basis for “the extraction aperture” in line 3.
Regarding claim 18: The phrase “A microtunneling apparatus for producing a bore including a drive apparatus for location in a pit” at the beginning of claim 18 reads as if it is the bore that includes the drive apparatus. There is no linking word or phrase to tie the drill head to the remainder of the limiations in the claims. It is suggested that the beginning of claim18 be changed to -- A microtunneling apparatus for producing a bore, the microtunneling apparatus including a drive apparatus for location in a pit --.
Regarding claim 19: The phrase “latch connection at a distal end the drill string each elongate member is adapted to be adjustable” in lines 2 and 3 is considered to be generally confusing. Correction is required.
Regarding claims 7-9, 12, 15-17, and 20-23: These claims are considered indefinite due to their dependence on or incorporation of one of the above claims.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-6 and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Harrison et al. (US 2010/0206635, Harrison).
Regarding claims 1, 4, 5: Harrison disclose a drill head 30 – Fig 14-19 for use with a microtunneling apparatus to produce a bore [0009], Fig 1, the drill head including a housing having an annular shell 36 – Fig 14 and a radial member 736 – Fig 14 adjacent a distal end of the housing Fig 14, a cutter bar 34 – Fig 29-31 having at least one cutting element 810 positioned for front cutting, the cutter bar is rotatable across the radial member within a working zone of the bore to produce swarf [0135], [0137], the cutter bar having at least one bar spray outlet 812, 814 – [0135] adapted for spraying fluid towards the radial member.
Regarding claims 2 and 4: The drill head including an air cavity 600(43) extending longitudinally of the housing leading to an air aperture 601 in the radial member for supplying air to the working zone [0126], Fig 13, 16, 19, the radial member having at an exhaust aperture 592 leading to an exhaust cavity 590(47) extending longitudinally of the housing for removing swarf from the working zone [0125], the housing having at least one exhaust spray outlet Fig 13, [0113] adapted for spraying fluid towards the exhaust aperture.
Regarding claims 3 and 6: Wherein the housing has at least one housing spray outlet [0106]-[0108] – air is forced down the passage 43 and out the housing to the cutting unit adapted for spraying fluid towards the cutter bar.
Regarding claim 18 Harrison discloses a microtunneling apparatus 20 for producing a bore Fig 1, the microtunneling including a drive apparatus 32 for location in a pit Fig 1, a drill string 24 for connection to the drive apparatus, the drill string having a drive shaft 26 that is rotatable on operation of the drive apparatus Fig 1, and the above described drill head 30 for connection to the drill string such that rotation of the drive shaft results in rotation of the cutter bar [0071].
Claim Rejections - 35 USC § 103
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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) 7 and 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harrison in view of Hashimoto (US 4,828,050).
Regarding claim 7: Harrison discloses that the drill head includes an annular body 38 to a rear of the annular shell Fig 15, an input shaft 518 at a proximal end of the annular body that is rotatable about a drive axis 120/517, and an output shaft 46 extending towards the distal end of the annular shell associated with the cutter bar so that the cutter bar rotates about an output axis [0073], Fig 16 – labeled as 466 in Figure 16.
Harrison discloses all of the limitations of the above claim(s) except the drill head also including an articulated coupling within the housing between the input shaft and the output shaft that is adjustable so as to adjust an angle of articulation between the input shaft and the output shaft.
Hashimoto discloses a drilling system similar to that of Harrison. A drill head/annular shell 24 is attached to an annular body 26 and an input shaft 56 – Fig 2A in the annular body is rotated by a drive shaft 76. The input shaft is coupled to an output shaft 46 in the annular shell, wherein the output shaft drives a cutter head 23. The output shaft and input shaft are connected by an articulated coupling 53 that can be adjusted to adjust the an angle of articulation between the input shaft and the output shaft 5:43-48.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Harrison so that the input shaft and output shaft were connected by an articulated coupling, as taught by Hashimoto, in order to have ensured precise control over the direction the bore formed by the drill head 1:60-65.
Regarding claim 10: The drill head further including a plurality of radially mounted actuators 70, 70 – Fig 2A of Hashimoto positioned about the articulated coupling for adjusting the angle of articulation wherein the actuators are hydraulic articulation rams hydraulic cylinders 70, 70’ – 5:43-6:15 of Hashimoto each including a articulation piston a hydraulic cylinder includes a cylindrical housing in which a reciprocation piston is located which is arranged to move in a longitudinally of the housing Fig 2A, 5:43-6:15 of Hashimoto, each articulation piston having pivotal attachment so as to allow the articulation piston to move axially while permitting angular adjustment of the articulated coupling 5:43-6:15 of Hashimoto.
Harrison, as modified, discloses all of the limitations of the above claim(s) except the pivotal attachment being a part spherical surface adapted to interact with a socket.
However, it would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Harrison so that the pivotal attachment included a part spherical surface adapted to interact with a socket as there are finite number of choices of pivoting connections available to a person of ordinary skill in the art for microtunneling. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under 103” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. __, 82 USPQ2d 1385 (2007)
Regarding claim 11: Wherein the annular shell is adapted to move radially relative to the annular body for adjustment of the direction the annular shell within the bore when in use [0075] of Harrison.
Regarding claim 12: The drill head further including a plurality of radially mounted hydraulic shell rams each including a shell piston which is arranged to engage an inner surface of the annular shell and adapted to move in a radial direction so as to adjust the position of the annular shell relative to the annular body [0075] of Harrison.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harrison in view of Wang et al. (US 2016/0348439, Wang).
Harrison discloses that the drill head includes an air cavity 600(43) extending longitudinally of the housing leading to an air aperture 601 in the radial member for supplying air to the working zone [0126], Fig 13, 16, 19, the radial member having at an exhaust aperture 592 leading to an exhaust cavity 590(47) extending longitudinally of the housing for removing swarf from the working zone [0125], wherein the air cavity, the working zone and the exhaust cavity defining an air flow path [0106], Fig 13.
Harrison discloses all of the limitations of the above claim(s) except the drill head including a pressure adjustment mechanism operable at the distal end of the housing for adjusting air pressure in the working zone so as to adjust the extraction of swarf from the working zone.
Wang discloses a drill system with features that are applicable to a mircotunneling apparatus [0113]. The drilling head includes multiple jets 312, 214 and Wang discloses that the pressure through these jets can be adjusted to control the amount of material moved by the jets Abstract, [0015], [0018], [0022], [0244].
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Harrison to include a pressure adjustment mechanism operable at the distal end of the housing for adjusting air pressure in the working zone so as to adjust the extraction of swarf from the working zone, as suggested by Wang, in order to have been able to adjust the pressure based on the drilling conditions in the bore [0015], [0018], [0022], [0244].
Allowable Subject Matter
Claims 8, 9, 14-17, and 19-23 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and Double Patenting rejections set forth in this Office action and to include 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 8: The prior art of record fails to disclose or suggest a drilling head of a microtunneling apparatus that includes an articulated coupling includes a drive gear associated with the input shaft, a driven gear associated with the output shaft and a geared sleeve which are adapted to allow for adjustment of the articulated coupling as recited in the claimed combination.
Regarding claim 9: Claim 9 is considered to be allowable due to its dependence on claim 8.
Regarding claim 14: The prior art of record fails to disclose or suggest a drilling head of a microtunneling apparatus that includes a pressure adjustment mechanism includes a throat member that is positioned between the air aperture and the extraction aperture to create a venturi flow therebetween, the throat member is adjustable to control venturi flow of air in the working zone as recited in the claimed combination.
Regarding claims 15-17: These claims are considered allowable due to their dependence on claim 14.
Regarding claim 19: The prior art of record fails to disclose or suggest a microtunneling apparatus that includes a pair of elongate members located at proximal end of the housing for interacting with a latch connection at a distal end the drill string each elongate member is adapted to be adjustable so as to vary the tolerance between proximal end of the housing and the distal end of the drill string as recited in the claimed combination.
Regarding claims 20-23: These claims are considered allowable due to their dependence on claim 19.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER H GAY whose telephone number is (571)272-7029. The examiner can normally be reached Monday through Thursday, 6-3:30 and every other Friday 6-11.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Y Coupe can be reached at (571)270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER H GAY/Primary Examiner, Art Unit 3619
JHG
2/3/2026