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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters “4”, “5”, and “10” have all been used to designate two different parts in at least Fig. 2. Similarly, reference characters “31” and “32” have both been used to designate two or three different parts in at least Figs. 3b and Fig. 3c. Each reference character should only be used to designate one part throughout the entirety of the specification and the figures.
The drawings are further objected to because Fig. 3c shows two different views. Each view should have its own figure number, 37 CFR 1.84(u)(1).
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: reference characters “3”, “4”, “5”, “22” and “33” are all defined using more than one term. The specification should be reviewed and amended so that each reference number is only defined using one term throughout the entirety of the specification.
Appropriate correction is required.
Claim Objections
Claims 1-17 are objected to because of the following informalities: in claim 1, line 1 should be amended to recite --A [[D]]drilling--, line 2 should be amended to end with a colon and line 4 should be amended to end with --and--. In claims 2-17, line 1 should be amended to recite --The [[D]]drilling--. Claim 11 is objected to because “30” is not defined as an epicyclic gear train in the specification. Claim 12 is objected to because “26” is not defined as the drill head in the specification. Appropriate correction is required.
Claims 5, 6, 9, 10 and 12 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only. Claim 13 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). Accordingly, claims 5-13 have not been further treated on the merits.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 USC 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.
Claims 2-4, 16 and 17 are rejected under 35 USC 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claims 2, 4, 16 and 17 the phrase "in particular" renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 16 recites the limitations "the diameter" and “the cylindrically shaped drilling robot” both in line 3. Claim 17 recites the limitations "the diameter" and “the cylindrically shaped drilling robot” in lines 2-3. There is insufficient antecedent basis for these limitations in the claims.
Consequently, claim 3 is also rejected under 35 USC 112(b) as being indefinite since it depends from rejected claim 2.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 (or as subject to pre-AIA 35 USC 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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 USC 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 USC 102(a)(2) as being anticipated by SELTMANN et al. (US 2022/0213953 A1) (“Seltmann”).
Seltmann teaches drilling robot (2) 100 for drilling a borehole (1), wherein the drilling robot (2) is purely electrically driven and comprises
- a movement unit (4) for moving and stabilizing the drilling robot (2) inside the borehole (1) (¶ [0003], [0005]),
- a rotary hammer unit with a drill head (21), a rotating system (22) and a hammering system (23), wherein the rotating system (22) is adapted to rotate the drill head (21) (around axis of rotation D, [0026]) and wherein the hammering system (23) is adapted to hammer with the drill head (21) [0011], [0026], characterized in that the hammering system (23) is adapted to operate according to an electro-pneumatic principle in order to generate an electro-pneumatic stroke [0011], [0026].
Claim Rejections - 35 USC § 103
The following is a quotation of 35 USC 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 USC 102(b)(2)(C) for any potential 35 USC 102(a)(2) prior art against the later invention.
Claims 2-4 and 17 are rejected under 35 USC 103 as being unpatentable over Seltmann, alone.
Referring to claims 2 and 3: Seltmann teaches the drilling robot (2) comprises at least one electric motor (27, 31) 40. Seltmann does not specifically teach the drilling robot comprises two electric motors. It has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Further, by including two motors, the operator would have more control over the system(s). Once modified as with claim 2, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system such that a first electric motor (27) of the at least one electric motors (27, 31) drives the rotating system (22) and a second electric motor (31) of the at least one electric motors (27, 31) drives the hammering system (23) with a reasonable expectation of success in order for the operator to have control over each system and its characteristics individually.
Referring to claim 4: Seltmann teaches the drilling robot (2) has a cylindrical shape with a diameter (D1) (Figs. 1A and 1B). Seltmann does not specifically teach the drilling robot (2) has a cylindrical shape with a diameter (D1) smaller than 250 mm, in particular smaller than 200 mm, in particular smaller than 150 mm, in particular smaller than 100 mm, in particular smaller than 90 mm. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the diameter of the drilling robot taught by Seltmann to be smaller than 90 mm with a reasonable expectation of success since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Referring to claim 17: Seltmann teaches the drill head (21) is adapted to operate with a torque in relation to the diameter (D1) of the cylindrically shaped drilling robot (2) (Figure 2B). Seltmann does not specifically teach the drill head (21) is adapted to operate with a torque in relation to the diameter (D1) of the cylindrically shaped drilling robot (2) of at least 0.35 Nm/mm, in particular of at least 0.62 Nm/mm. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the torque taught by Seltmann to be at least 0.62 Nm/mm with a reasonable expectation of success since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Allowable Subject Matter
Claims 14 and 15 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.
Claim 16 would be allowable if rewritten to overcome the rejection(s) under 35 USC 112(b) or 35 USC 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Söhnlein (US 5,746,095) teaches a rotary drilling tool with hammer drilling equipment that applies axially directed blows of relatively high force to the rotary drilling tool, that is, electropneumatically (column 1, lines 53-61).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE A LOIKITH whose telephone number is (571)270-7822. The examiner can normally be reached M-F 9am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 571-272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Catherine Loikith/Primary Examiner, Art Unit 3674
20 November 2025