DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicants’ Preliminary Amendment, filed 1/22/2025, has been entered. Claims 1-21 are pending with claims 1-8 and 19-21 being withdrawn (see below).
Election/Restrictions
Applicants’ election without traverse of Group II. Claims 9-18 in the reply filed on 1/8/2026 is acknowledged. Claims 1-8 and 18-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/8/2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/10/2023 has been considered by the examiner. It is noted that some copies of the cited Foreign Patent Documents (Cite Nos.: B2, B4, B6, B9, B10, and B11) have been previously provided in the parent application (17442637) of this case. IDS Foreign Patent Documents Cite Nos.: B1, B3, B5, B7, and B8 have not been included as required. However, the IDS did list US Counterpart applications for each of the missing documents. The US counterparts have been considered but without reviewing the missing listed Foreign Documents, the examiner cannot be certain that the Foreign Documents and US Documents are substantially the same. Thus, all Cites crossed out on the IDS have not been considered.
Drawings
The drawings are objected to under 37 CFR 1.84(l). The drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.
Fig. 29 does not have satisfactory reproduction characteristics. The drawing appear to be a multi-generation copy of a combination of machine drawings and pictures. The lines, of the elements are not all solid. Further, some of the smaller/finer elements are not clear due to the darkness of the elements.
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.
Specification
The disclosure is objected to because of the following informalities: New (i.e. paragraph added by the Preliminary Amendment of 1/22/2025 claims priority from U.S. Patent Application Serial Nos. 18/212,723 and 17/442,637. However, the referenced applications have now matured into U.S. Pat. Nos. 12,241,316 and 11,725,469, respectively, and should be identified as such. 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 12-16 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.
Claims 12-16 recite various “vertical” and “horizontal” axis as well as a “first” and “second” axis without clearly positioning that axis in relationship to a fixed structure or reference point. Thus, claims 12-16 are indefinite as it is not clear what axis are being claimed. It should be noted that without some sort of fixed positional reference point, there might be an infinite number of axis that meet the claims as recited.
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 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.
Claims 9, 12-16 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Belik (US 20060118335).
Regarding claim 9: Belik discloses a drilling plant comprising a machine ([0002], [0009], [0018]). Belik discloses the machine comprising a base, an arm 22, 24, a tool engagement member 36 which is configured to releasably engage one of at least two different tools (Figs. 1-6B; [0018], [0020], [0034] – Belik discloses attaching different tools to the arm but it is noted that the Iron Roughneck engages at least two different tools – different pipe joints such as pin end and box end). Belik discloses that the machine is arranged on a drill floor adjacent a well center opening ([0005], [0009], [0034]).
Regarding claim 12: Belik discloses that the arm comprises a first end which is mounted on the base, and a second end which is provided with the tool engagement member, and the tool engagement member is pivotally mounted on the second end of the arm for a rotation with respect to the arm about a vertical axis (Figs. 1-6B – the engagement member 36 is mounted on a second end of arm 26 and pivots (also carries additional tools – [0034]).
Regarding claim 13: Belik discloses that the arm comprises a first end which is mounted at the base, a second end on which the tool engagement member is mounted, a first portion, a second portion, and a joint which connects the first portion and the second portion so that the second portion is rotatable with respect to the first portion, that the first portion extends from the first end to the joint, and the second portion extends from the joint to the second end, and the tool engagement member is pivotally mounted on the second end of the arm so as to rotate with respect to the second portion about a first axis and a second axis, the first axis and the second axis being perpendicular in with respect to each other (Figs. 1-6B).
Regarding claim 14: Belik discloses that one of the first axis and the second axis is parallel to a longitudinal axis of the second portion (Figs. 1-6B – it should be noted that based on the limitations of claims 13 and 14, there are a variety of different axis that, without a clearer or more specific positional relationship, can be interpreted as the axis being claimed).
Regarding claim 15: Belik discloses that one of the first axis and the second axis is a horizontal axis which extends through the second portion and which is perpendicular to a longitudinal axis of the second portion (Figs. 1-6B – it should be noted that based on the limitations of claims 13 and 15, there are a variety of different axis that, without a clearer or more specific positional relationship, can be interpreted as the axis being claimed).
Regarding claim 16: Belik discloses that the first axis is a vertical axis and the second axis is a horizontal axis (Figs. 1-6B – it should be noted that based on the limitations of claims 13 and 16, there are a variety of different axis that, without a clearer or more specific positional relationship, can be interpreted as the axis being claimed).
Regarding claim 18: Belik discloses further comprising a storage rack which is arranged so as to be reachable by the machine for a laying-down of or a retrieval of at least one of the at least two different tools and that the machine is arranged between the storage rack and the well center opening ([0021] – the machine is arranged to grasp a tool joint being stored away from the well opening and moves that tool joint to the center opening where it is connected to the drill string).
Claim 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ge (US 20110108265).
Regarding claim 9: Ge discloses a drilling plant comprising a machine (Fig. 8; [0005]). Ge discloses the machine comprising a base 12, an arm 14, 18, a tool engagement member 20 which is configured to releasably engage one of at least two different tools (Figs. 1-6B; [0005], [0041], [0044] – an articulated apparatus for handling drilling equipment, tools and other apparatus; Ge further discloses attaching different tools to the arm but it is noted that the Iron Roughneck engages at least two different tools – different pipe joints such as pin end and box end). Ge discloses that the machine is arranged on a drill floor adjacent a well center opening ([0005], [0008], [0026]).
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 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 of this title, 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 10 is rejected under 35 U.S.C. 103 as being unpatentable over Belik (US 20060118335) in view of Skjevik (US 20220163161).
Belik discloses the invention substantially as claimed and as discussed above.
Regarding claim 10: Belik discloses that one the at least two different tools comprise a slips lifting tool ([0034] – positions a casing tong which broadly includes the slips therein). Belik does not explicitly disclose that the at least other different tool comprises at least one of a thread cap removal tool, a cleaning tool, and/or a wire guide tool. Skjevik discloses that an apparatus used on a rig floor can comprise a thread cap removal tool (Fig. 4; [0049]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured the apparatus of Belik so that the at least one different tools comprises a thread cap removal tool as taught by Skjevik. As Belik discloses at least one of the other tools (a slips lifting tool - [0034]), as Belik discloses that the arm of the present invention may be utilized to position other types of equipment on a rig ([0034]), and as Skjevik explicitly discloses that another one of the tools can be a thread cap removal tool, it would have been within routine skill to have selected additional tools from a finite selection of tools (i.e. using Belik’s slip lifting tool and Skjevik’s cap removal tool). Such a simple substitution/addition would have been predictable with a reasonable expectation for success and with no unexpected results.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Belik (US 20060118335) in view of Helms et al. (US 20200199952).
Belik discloses the invention substantially as claimed and as discussed above.
Regarding claim 11: Belik discloses that the tool engagement member comprises a gripper comprising a first clamp part 44, 46 (each have a first clamp part) and a second clamp part 44, 46 (each have a second clamp part) (Figs. 1-6B; [0020]) but is silent regarding the operation of the first and second clamp parts. Belik does not explicitly disclose a gripper actuator which is configured to move the first clamp part and the second clamp part towards one another to a grip position, and away from one another to a release position, and the at least two different tools each comprise a grip part which is shaped to be gripped by the gripper via placing the first clamp part and the second clamp part around the grip part, and using the actuator to move the first clamp part and the second clamp part to the grip position. Helms discloses a gripper actuator 232 which is configured to move the first clamp part 206, 208 (each have a first clamp part) and the second clamp part 206, 208 (each have a second clamp part) towards one another to a grip position, and away from one another to a release position, and the at least two different tools 2, 4, 6 (pin and box ends and coupling of different tool joints) each comprise a grip part which is shaped to be gripped by the gripper via placing the first clamp part and the second clamp part around the grip part, and using the actuator to move the first clamp part and the second clamp part to the grip position (Fig. 3A; [0019], [0025]-[0028]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured (or understood that) the apparatus of Belik to include a gripper actuator which is configured to move the first clamp part and the second clamp part towards one another to a grip position, and away from one another to a release position, and the at least two different tools each comprise a grip part which is shaped to be gripped by the gripper via placing the first clamp part and the second clamp part around the grip part, and using the actuator to move the first clamp part and the second clamp part to the grip position as taught by Helms. As Belik discloses at least two tools gripped by an actuator, as iron roughnecks, tons, and grippers are well known in the art, and as Helms explicitly discloses that a gripper actuator which is configured to move the first clamp part and the second clamp part towards one another to a grip position, and away from one another to a release position, and the at least two different tools each comprise a grip part which is shaped to be gripped by the gripper via placing the first clamp part and the second clamp part around the grip part, and using the actuator to move the first clamp part and the second clamp part to the grip position, it would have been within routine skill to have selected a specific gripping operation and method (i.e. using an actuator to grip and release) from a finite selection of grippers (i.e. using actuators). Such a simple substitution/addition (or and understanding of Belik’s grippers) would have been predictable with a reasonable expectation for success and with no unexpected results.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Belik (US 20060118335) in view of Grimberg et al. (US 20200240256).
Belik discloses the invention substantially as claimed and as discussed above.
Regarding claim 17: Belik discloses that the machine further comprises a controller which is configured to control an operation of the machine ([0020]) but does not explicitly disclose that the controller is arranged farther from the well center opening than is a remainder of the machine. Grimberg discloses a drilling rig software system that controls rig equipment and comprises a controller which is configured to control an operation of the machine and the controller is arranged farther from the well center opening than is a remainder of the machine (Fig. 2; [0022]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured the apparatus of Belik to comprise a controller which is configured to control an operation of the machine and the controller is arranged farther from the well center opening than is a remainder of the machine as taught by Grimberg. As Belik discloses a controller but is silent on the location, as controllers of drilling rigs (drilling machines) are very well known in the art, and as Grimberg explicitly teaches a controller which is configured to control an operation of the machine and the controller is arranged farther from the well center opening than is a remainder of the machine, it would have been within routine skill to have selected a specific type of controller and position of the controller from a finite selection of controller types and positions (i.e. controllers at the apparatus/tool or more centralized controllers). Such a simple substitution/addition would have been predictable with a reasonable expectation for success and with no unexpected results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TARAS P BEMKO whose telephone number is (571)270-1830. The examiner can normally be reached on Monday-Friday 8:00-5:00 (EDT/EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached on 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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/Taras P Bemko/
Primary Examiner, Art Unit 3672
1/28/2026