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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 11-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12110781. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are fully encompassed by the claims 1-10 of U.S. Patent No. 12110781. Thus, the claim limitations although broader are obviously met by the patent. Therefore, the claims are obviously directed toward the same invention.
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.
Claim(s) 11-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mercer 5764062 in view of Rempe et al. 20170335677.
Referring to claims 11,21 and 30, Referring to claims 11, 21 and 30, Mercer discloses a horizontal directional drilling (HDD) system comprising a drill head configured to drill through a terrain, the drill head including an underground transmitter (see col. 2, lines 36-40 transmitter in boring tool 28), the underground transmitter configured to transmit at least a signal corresponding to the pitch of the drill head (see col. 5, line 61-col. 6, line 4) ; a walk-over locator (36’) for use on the terrain generally above the underground transmitter, the walk-over locator configured for receiving at least the signal corresponding to the pitch of the drill head, the walk-over locator configured to determine the pitch of the drill head based on the signal (see col. 5, line 61-col. 6, line 4); and the remote display (522 of 500) or controller (516) configured to determine a depth (see fig. 1, pitch depth) of the drill head at a given drilling distance based on the pitch and a length of at least one of a given drill rod or a set of drill rods (see col. 12, lines 37-42), the depth being at least one of stored or displayed as part of a pilot bore profile (see fig. 11), the pilot bore profile comprising a plot of one or more depths at one or more respective drilling distances, the remote display configured to overlay the depth in the drilling process with the pilot bore profile (see col. 10, lines 65-col. 1, line 7). Mercer does not disclose the walk-over locator configured to provide a Global Navigation Satellite System (GNSS) geolocation of the drill head at a given instance in the drilling process (see figure 18, step 1106 and see paragraph 0114, capture GPS location of drill head) , the walk- over locator configured to relay the GNSS geolocation of the drill head, the remote display configured to receive the relayed GNSS geolocation of the drill head from the walk-over locator, the GNSS geolocation being at least one of stored or displayed as part of a pilot bore profile or remote display is configured to overlay the GNSS geolocation in the drilling process with the pilot bore profile. Rempe teaches an horizontal drilling system with a walk-over locator (704) configured to provide a Global Navigation Satellite System (GNSS) geolocation of the drill head at a given instance in the drilling process (see figure 18, step 1006 and see paragraph 0116, capture GPS location of drill head) , the walk- over locator configured to relay the GNSS geolocation of the drill head ( figure 8 at 228, see paragraph 0054 communication interface 228) to a remote display ( display 206 of machine 702), the remote display configured to receive the relayed GNSS geolocation of the drill head from the walk-over locator ( with communication interface 210’), the GNSS geolocation being at least one of stored or displayed as part of a pilot bore profile and the remote display is configured to overlay the GNSS geolocation the drilling process with the pilot bore profile ( see paragraph 0119 and paragraph 0061, GPS data can be displayed). Rempe further teaches the GPS data can be used to determine current location of drill head (see paragraph 0116). Therefore, it would be obvious to one of ordinary skill in the art to modify the system disclosed by Mercer to have walk over locator provide GNSS geolocation of the drill head to a remote display and overlay the GNSS geolocation on a pilot bore profile in view of the teachings of Rempe with a reasonable expectation of success as an alternative way of having a current location of the drill head.
Referring to claim 12, and 22, Mercer discloses the underground transmitter (65) is configured to register and transmit data associated with at least one of: drill head yaw, drill head pitch, drill head roll, drill head acceleration, ground temperature, or ground saturation (see col. 1, lines 53-59, yaw , pitch, roll, pitch) .
Referring to claim 13 and 23, Mercer discloses the walk-over locator (36’) and the remote display (522 of 500’) each are configured to communicate to each other via at least one of: a short-range wireless communication unit, a Wi-Fi wireless communication unit, a radio frequency (RF) unit, or a cellular communication unit (see paragraph figure 6 using antenna 504).
Referring to claims 14 and 24, Rempe teaches the walk-over locater ( 704) where the walk-over locater includes a global navigation satellite system (GNSS) (see fig. 8, 222, GPS) configured to determine a geolocation of the walk-over locater (see paragraph 0084).
Referring to claims 15 and 25, Rempe teaches the walk-over locater (704) is configured to transmit the determined geolocation of the walk-over locater to the remote display (using communication interface 228, see paragraph 0086).
Referring to claims 16 and 26, Rempe teaches wherein the remote display ( see fig. 8 , at 702) includes a global navigation satellite system (GNSS) (212, GPS) configured to determine a geolocation of the remote display (see paragraph 0107).
Referring to claims 17 and 27, Rempe discloses the remote display ( at 702) is configured to transmit the determined geolocation of the remote display to the walk-over locator ( using communication interface 210).
Referring to claim 18 and 28, Mercer discloses the walk-over locator (80) includes a first three- dimensional (3D) antenna (122), the first 3D antenna configured to receive signals from the underground transmitter.
Referring to claim 19 and 29, Mercer discloses the walk-over locator (80) includes a second three- dimensional (3D) antenna (126), the second 3D antenna configured to receive signals from the underground transmitter.
Referring to claim 20, Mercer discloses the underground transmitter is configured to transmit a magnetic signal (see col. 5, lines 19-21).
Response to Arguments
Applicant’s arguments with respect to claim(s) 11-30 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
As a terminal disclaimer has not been filed, the double patenting rejection also remains.
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 GIOVANNA WRIGHT whose telephone number is (571)272-7027. The examiner can normally be reached M-F 8 am- 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at (571) 272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Giovanna Wright/ Primary Examiner, Art Unit 3672