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 .
Response to Arguments
Applicant's arguments filed 02 January 2026 have been fully considered but are moot since they are not directed to any of the current claims.
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 17-18 and 23-24 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 17 and 23 require each jaw of the first pair of gripping jaws to be actuated by “a separate actuating device.” It is unclear if the separate actuating device for each jaw (i.e., two actuating devices) are in addition to the at least one actuating device recited in the independent claims (i.e., three actuating devices in total for the first gripper) or if the at least one actuating device of the first gripper comprises separate actuating devices for actuating each jaw in the first pair of gripping jaws (i.e., two actuating devices in total for the first gripper). For the purpose of examination, the limitation will be interpreted as being a total of two actuators (i.e., the at least one actuating device of the first gripper comprises separate actuating devices for actuating each jaw in the first pair of gripping jaws).
Claims 18 and 24 are rejec5ted for depending from a rejected claim.
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 15-17, 19, 21-23 and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, and 6 of U.S. Patent No. 11,713,630. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of the claims at issue are present in the claims of the issued patent. The issued patent merely discloses additional limitations (i.e., first/second common jaw pivot). Furthermore, claim 21 of the claims at issue recites “a vise frame rotation joint that is coaxial with a drill string axis” which is a broader version of the limitation of “a rotation joint between the first gripper and the second gripper to provide rotation about a drill stem axis.”
Allowable Subject Matter
Claims 15-16, 19, 21-22, and 25 are allowable over the prior art but are rejected under a non-statutory double patenting rejection as discussed above.
Claims 17 and 23 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and a terminal disclaimer was filed in order to overcome the current non-statutory double patenting rejection discussed above.
Claims 18 and 24 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 20 and 26 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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:
Randall (US 2014/0151124) discloses a directional drill, comprising:
a directional drill vise (30), the directional drill vise, including:
a first gripper (62), including:
a first pair of gripping jaws (¶ [0024]; 84, 86) located in a vise frame (34; Figs. 2-3);
at least one first actuating device (¶ [0024]; 88) coupled to the first pair of gripping jaws (¶ [0024]);
a second gripper (64), including:
a second pair of gripping jaws (¶ [0024]; 84, 86) located in the vise frame (Figs. 2-3);
at least one second actuating device (¶ [0024]; 88) coupled to the second pair of gripping jaws (¶ [0024]);
a slot (slot between gripping jaws in Figs. 3-5) to permit sideways loading and unloading of drill rods (80,81) into the first pair of gripping jaws (the slot allows for sideways loading if desired; Figs. 3-5);
a rotation joint (joint that allows rotation between 62 and 64; ¶ [0025]) between the first gripper and the second gripper to provide rotation about a drill stem axis (¶ [0025]; Fig. 5) OR a vise frame rotation joint (joint that allows rotation between 62 and 64; ¶ [0025]) that is coaxial with a drill string axis (¶ [0025]; Fig. 5); and
a rotation actuator (100) to drive relative rotation between the first gripper and the second gripper (¶ [0025]; the actuator is called a linear actuator in the prior art but it drives relative rotation about the vice frame rotation joint and is therefore also a rotation actuator).
The art of record does not teach a drill head movably mounted to a carriage frame; the directional drill vise movably mounted to the carriage frame; and wherein the second pair of gripping jaws is laterally enclosed in combination with the other claim limitations. Randall specifically is an additional tool to be used with a drill head and carriage frame. Examiner notes that “enclosed” means surrounded on all sides. Therefore, the first pair of gripping jaws is laterally enclosed means the gripping jaws are surrounded on all lateral sides. It is not obvious to have a slot in the first pair of gripping jaws and complete lateral enclosure with the second pair of gripping jaws in combination with the other claim limitations.
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 KRISTYN A HALL whose telephone number is (571)272-8384. The examiner can normally be reached M-F 9:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/KRISTYN A HALL/Primary Examiner, Art Unit 3672
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