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 .
Claim Interpretation
The claims repeatedly use the phrase “configured to.” For example, claim 1 recites “a wireless transmitter configured to be incorporated in the drill string” (line 4), and later, “the wireless transmitter configured to generate one or more data signals based on an operation of the drill head” (line 6), and also, “the wireless transmitter…configured to wirelessly communicate…along at least a portion of the drill string” (lines 12-13). Therefore, the phrase “configured to be incorporated in the drill string” is being interpreted to require that the wireless transmitter is actually incorporated into the drill string. Unless such an interpretation is made, the claim language that comes later would not make sense. For example, the wireless transmitter cannot be configured to communicate along the drill string unless it is incorporated in the drill string.
The claims recite “the wireless transmitter and the at least one data link transceiver configured to be physically coupled within the drill string and spaced apart from one another,” and also that the magnetometer module is “configured to convey data between the wireless transmitter and the first data link transceiver.” Thus, the phrase “configured to be physically coupled within the drill string and spaced apart from one another” is interpreted to require that these elements are actually physically coupled within the drill string and spaced apart from one another. This interpretation is required so that the ability of the magnetometer to convey data between the two elements is possible.
The term “magnetometer module” is being interpreted as an element that comprises more than simply a magnetometer sensor. Given that the magnetometer module is “configured to convey data between the wireless transmitter and the first data link transceiver,” it must contain more elements than just a magnetometer. This is consistent with paragraph 0020 of the specification, which states that “the magnetometer module 270 can be configured to serve both as a data link (e.g., like 216) and to provide and convey magnetometer data (e.g. compass data – right/left movement). In an embodiment, the magnetometer module 270 can be constructed similar to a data link transceiver…”
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, 3-10, 12-17, 19, and 20 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.
With regard to claims 1, 16, and 20:
The limitation “at least one data link transceiver configured to be wirelessly coupled to at least one of the wireless transmitter or another data link transceiver” conflicts with the limitation “the magnetometer module configured to convey data between the wireless transmitter and the first data link transceiver.” Because the claim requires the wireless transmitter and the data link transceiver to be coupled together by the magnetometer module, the earlier use of “or” is invalid. The data link transceiver cannot be coupled to another data link transceiver and not the wireless transmitter.
The term “the first data link transceiver” in the second-to-last line (and last line) of each of the independent claims lacks antecedent basis.
The phrase “the wireless transmitter and the at least one data link transceiver configured to wirelessly communicate the one or more data signals beyond the wireless transmitter along at least a portion of the drill string” is confusing. Firstly, the wireless transmitter communicating beyond itself is redundant, as a transmitter always communicates beyond itself. Essentially, it is unclear what this limitation intends to mean. It seems that the limitation is intended to related to a statement in paragraph 0010 of the Specification, which says “the drill head wireless transmitter and the at least one data link transceiver of the present wireless data telemetry system can together wirelessly communicate one or more data signals beyond a transmission range that the drill head wireless transmitter alone may have and communicate those signals along at least a portion of the drill string.” However, the actual limitation in the claims is significantly different from the specification’s language. The claim is being interpreted as requiring a wireless transmitter, a magnetometer module, and a data link transceiver, all of which together carry data from the drill head and along the drill string. It is implicit that the three elements together enable a communication range that is greater than that which would be possible with the wireless transmitter alone.
Claims 3-10, 12-15, 17, and 19 are rejected based on their dependence upon rejected claims.
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 1, 3-10, 12-17, 19, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,725,503. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the instant application are broader than those in the ‘503 patent, and thus fully encompassed by the ‘503 claims.
Claims 1, 3-10, 12-17, 19, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,163,418. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the instant application are broader than those in the ‘418 patent, and thus fully encompassed by the ‘418 claims.
Conclusion
It is noted that no prior art is applied against the claims.
The closest prior art to the claimed invention is that of Cobern (US 2006/0260843).
With regard to claim 1, (note that claims 16 and 20 are not individually addressed, as they contain essentially the same structure as claim 1) as best understood, Cobern discloses a wireless data telemetry system for use in a drilling system, the drilling system including a drill head (104) and a drill string (101), the wireless data telemetry system comprising:
a wireless transmitter (52, Fig. 3) configured to be incorporated in the drill string proximate to the drill head of the drilling system (element 52 is contained within 118, which is proximate the drill head 104 as seen in Fig. 2), the wireless transmitter configured to generate one or more data signals based on an operation of the drill head (the wireless transmitter 52 receives information from sensors 16 that are based on operation of the drill head, see Paragraph 0061); and
a magnetometer module (20, 23, 22, 50) configured to be coupled with the wireless transmitter (52 is in communication with element 50 of the magnetometer module).
Cobern fails to teach or suggest at least one data link transceiver as specifically called for in the claimed combination. Thus, Cobern also fails to teach that the magnetometer module is configured to convey data between the wireless transmitter and the data link transceiver.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT E FULLER whose telephone number is (571)272-6300. The examiner can normally be reached M-F 8:30AM - 5:30PM.
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/ROBERT E FULLER/Primary Examiner, Art Unit 3676