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.
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Claims 1-5, 7-14 and 16-18 of Application No. 18/934,974 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No(s). US 11,802,477 B2 and US 12,158,069 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of Application No. 18/934,974 are broader and an obvious variant of the claims of U.S. Patent No(s). US 11,802,477 B2 and US 12,158,069 B2 respectively.
Claim Objections
Claims 4 and 11 are objected to because of the following informalities:
Claim 4 recites “a first wire coil…a second wire coil”. It is presumed to recite “the first wire coil…the second wire coil”. See claim 1, lines 10 and 13.
Claim 11 recites “a first wire coil…a second wire coil”. It is presumed to recite “the first wire coil…the second wire coil”. See claim 9, lines 6 and 9.
Appropriate correction is required.
Allowable Subject Matter
Claims 1 and 9 would be allowable if rewritten or amended to overcome the objections and nonstatutory double patenting rejection set forth above in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claim 1, Bittar (US 2011/0006773 A1) discloses a horizontal directional drilling (HDD) system (see at least Figures 1 and 7A, items 18 and 702 | [0020] note the desired horizontal path (18) | [0032] note 12 inch borehole (702) passing horizontally through a formation (704) at a depth of 1020 feet), comprising:
an HDD drilling rig (see at least Figure 1, item 2 | [0018]);
a plurality of drill rods coupled together to form a drill string, the drill string operatively coupled to the HDD drilling rig (see at least Figure 1, item 8 | [0018]); and
a drill head carried by an end of the drill string opposite the HDD drilling rig, the drill head including an underground transmitter, the underground transmitter configured for wireless communication (see at least Figure 1, item 26 | [0020] note the bottom-hole assembly includes a tool (26) | [0042] note the tool (26) includes multiple tilted-antennas that transmit encoded electromagnetic signals including at least tool orientation information to the surface at different frequencies)), the underground transmitter comprising:
a control circuitry for transmitting data associated with an operation of the drill head, the control circuitry (see at least [0042] note the tool (26) includes multiple tilted-antennas that transmit encoded electromagnetic signals including at least tool orientation information to the surface at different frequencies | [0024] note control circuitry in Figure 2 of US Patent. No. 7,265,552 | [0019] note orientation information) including:
a first wire coil of a plurality of distinct wire coils (see at least [0042] note multiple tilted-antennas | [0025] note the tilted-antenna is comprised of coils), and
a second wire coil of the plurality of distinct wire coils (see at least [0042] note multiple tilted-antennas); and
a multi-coil antenna assembly including:
the plurality of distinct wire coils, each one of the plurality of distinct wire coils having a different inductance associated therewith and thereby capable of transmitting in a separate frequency range (see at least [0042] note different frequencies | [0025] note the number of loops or turns affects inductance), the control circuitry coupled with the plurality of distinct wire coils to control which of the plurality of distinct wire coils is activated and thereby generating data signals at a given time by selectably actuating one or the other of the first wire coil or the second wire coil (see at least [0042] note the multiple tilted-antennas operate at different frequencies and fire at different times).
With respect to the other limitations, paragraph [0024] of Bittar refers US Patent. No. 7,265,552. Figure 2 of US Patent. No. 7,265,552 illustrates what could be interpreted as a first switch and second switch via the transmitter enable circuit (30).
Bittar 798ꞌ (US 2009/0309798 A1) illustrates an HDD system comprising a multi-coil assembly including an antenna core, and the plurality of distinct wire coils positioned proximate to the antenna core, each one of the plurality of distinct wire coils having a different inductance (see at least the abstract, note tilted-antennas | Figure 2 | [0008-0010] | [0021] note the antenna (100) comprises multiple coils of wire surrounding a central core (105)).
However, Bittar (US 2011/0006773 A1), Bittar 552ꞌ (US 7,265,552 B2), Bittar 798ꞌ (US 2009/0309798 A1), Montgomery (US 2011/0309948 A1), Johnson (US 2,054,424 A), Omeragic (US 2019/0063205 A1), and Beigl (US 7,356,495 B2) do not disclose and/or fairly suggest a first switch connected to a first wire coil of a plurality of distinct wire coils, the first switch operable via an optical signal receivable from a first light source, and a second switch connected to a second wire coil of the plurality of distinct wire coils, the second switch operable via an optical signal from a second light source; and the control circuitry coupled with the plurality of distinct wire coils to control which of the plurality of distinct wire coils is activated and thereby generating data signals at a given time by selectably actuating one or the other of the first light source or the second light source.
Moreover, modifying Bittar (US 2011/0006773 A1), Bittar 552ꞌ (US 7,265,552 B2) and Bittar 798ꞌ (US 2009/0309798 A1) to achieve the claimed limitations can only be achieved by hindsight.
Claim 9 recites limitations similar to claim 1, and is allowable as indicated above.
Claims 2-5, 7, 8, 10-14 and 16-18 are allowable by virtue of their dependency.
Conclusion
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/BRIAN WILSON/Primary Examiner, Art Unit 2689