DETAILED ACTION
Response to Amendment
The Amendment filed on April 08, 2026 has been entered. Claims 1 and 3-9 remain pending in the application. Applicant’s amendments to the Claims have overcome each and every objection and 112(a), 112(b), 102(a)(1), and 103 rejections previously set forth in the Non-Final Office Action mailed on February 05, 2026. However, Applicant’s amendments to the Claims have necessitated new grounds of rejection.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“output transmission element” in claim 1;
“first torque transmission element” in claims 1, 8, and 9; and
“second torque transmission element” in claims 1, 8, and 9.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claim 3 is objected to because of the following informality: “several drive motors with gears are arranged” in line 2 should read “the drill drive arrangement comprises several drive motors with gears” (in order to make clear that the several drive motors with gears are part of the drill drive arrangement).
Claim 5 is objected to because of the following informality: “up to into” in line 2 should read “to”.
Claim 9 is objected to because of the following informality: “several first torque transmission elements and several second torque transmission elements are arranged, and” in lines 2-3 should read “the at least one first torque transmission element comprises several first torque transmission elements and the at least one second torque transmission element comprises several second torque transmission elements, and” (because the several first torque transmission elements of claim 9 are the at least one first torque transmission element of claim 1 and the several second torque transmission elements of claim 9 are the at least one second torque transmission element of claim 1).
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
(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.
Claims 1 and 3-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maschfab Iron Foundry Beien (DE 1268565 B), hereinafter Maschfab.
Regarding claim 1, Maschfab discloses a drill drive arrangement (shown in Figure 1) for driving an earth drilling tool (Page 1 lines 1-4 and Page 4 lines 12-14 of Machine Translation of DE 1268565 B), the drill drive arrangement (shown in Figure 1) having:
at least one drive motor (2, 2a, 12, 15, 16, 18, and 20 collectively in Figure 1) with a motor housing (2a) and a motor shaft (16), wherein a drive torque generated in the at least one drive motor (2, 2a, 12, 15, 16, 18, and 20 collectively) is transmitted directly to the motor shaft (16) (via part 20 of the at least one drive motor, Page 8 lines 38-40 and Page 9 lines 15-26 of Machine Translation of DE 1268565 B), and
a transmission (1 in Figure 1) which is downstream of the at least one drive motor (2, 2a, 12, 15, 16, 18, and 20 collectively) and is configured to convert the drive torque (Page 9 lines 7-10 and Page 7 line 39 – Page 8 line 1 of Machine Translation of DE 1268565 B), wherein the transmission (1) comprises an input transmission element (4 and the gear of the “single-stage or multi-stage” described in Page 7 line 42 of Machine Translation of DE 1268565 B which is coupled to 4, collectively) which receives the drive torque directly from the motor shaft (16) of the at least one drive motor (2, 2a, 12, 15, 16, 18, and 20 collectively) (Page 7 line 42 – Page 8 line 1 and Page 9 lines 7-10 of Machine Translation of DE 1268565 B), and an output transmission element (the “output shaft” described in Page 7 line 43) by means of which the drive torque converted by the transmission (1) can be transmitted to the earth drilling tool or to a drill string (Page 7 line 42 – Page 8 line 1 of Machine Translation of DE 1268565 B),
wherein:
the motor shaft (16) of the at least one drive motor (2, 2a, 12, 15, 16, 18, and 20 collectively) comprises a hollow end part (left end of 16 in Figure 1) forming an inner insertion space (bore 17 in Figure 1) (apparent from Figure 1) on which at least one first torque transmission element (at least one of the splines of bore 17 described in Page 8 lines 22-24 of Machine Translation of DE 1268565 B) is formed (Page 8 lines 22-24 of Machine Translation of DE 1268565 B), and
the input transmission element (4 and the gear of the “single-stage or multi-stage” described in Page 7 line 42 of Machine Translation of DE 1268565 B which is coupled to 4, collectively) of the transmission (1) has a transmission gearwheel (the gear of the “single-stage or multi-stage” described in Page 7 line 42 of Machine Translation of DE 1268565 B which is coupled to 4) and an insertion shaft (4) on which at least one second torque transmission element (at least one of the splines of 4 described in Page 8 lines 22-24 of Machine Translation of DE 1268565 B) is formed (Page 8 lines 22-24 of Machine Translation of DE 1268565 B), the insertion shaft (4) being releasably inserted axially into the inner insertion space (bore 17) of the motor shaft (16) in a matched manner to form a torque proof connection (because 17 engages 4 “in a rotationally fixed but axially displaceable manner” as described in Page 8 lines 20-24 of Machine Translation of DE 1268565 B and transmits torque).
Regarding claim 3, Maschfab discloses that several drive motors (2 and 3 in Figure 1) with gears (4 or one of the gears of the “single-stage or multi-stage” described in Page 7 line 42 of Machine Translation of DE 1268565 B being the gear of motor 2, and 23 or 22 being the gear of motor 3) are arranged (apparent from Figure 1).
Regarding claim 4, Maschfab discloses that the at least one drive motor (2, 2a, 12, 15, 16, 18, and 20 collectively) is configured as an electric motor (Page 8 lines 9-11 of Machine Translation of DE 1268565 B).
Regarding claim 5, Maschfab discloses that the insertion space (bore 17) extends from a free end of the motor shaft (16) up to into a region of the motor shaft (16) which lies within the motor housing (2a) (apparent from Figure 1).
Regarding claim 6, Maschfab discloses that the insertion shaft (4) inserted into the insertion space (bore 17) is located within the motor housing (2a) (apparent from Figure 1).
Regarding claim 7, Maschfab discloses that the insertion space (bore 17) is formed as a blind hole in the motor shaft (16) (apparent from Figure 1).
Regarding claim 8, Maschfab discloses that the at least one first torque transmission element (the at least one of the splines of bore 17 described in Page 8 lines 22-24 of Machine Translation of DE 1268565 B) and the at least one second torque transmission element (the at least one of the splines of 4 described in Page 8 lines 22-24 of Machine Translation of DE 1268565 B) form a torque-transmitting form-fit connection (because 17 engages 4 “in a rotationally fixed but axially displaceable manner” as described in Page 8 lines 20-24 of Machine Translation of DE 1268565 B and transmits torque).
Regarding claim 9, Maschfab discloses that several first torque transmission elements (the splines of bore 17 described in Page 8 lines 22-24 of Machine Translation of DE 1268565 B) and several second torque transmission elements (the splines of 4 described in Page 8 lines 22-24 of Machine Translation of DE 1268565 B) are arranged (Page 8 lines 22-24 of Machine Translation of DE 1268565 B), and that a spline groove-shaft connection is formed between the insertion shaft (4) and the motor shaft (16) (Page 8 lines 22-24 of Machine Translation of DE 1268565 B).
Response to Arguments
Applicant’s arguments with respect to claims 1 and 3-9 have been considered but are moot because they do not apply to the new interpretation of Maschfab (in which the at least one drive motor has been re-interpreted to be 2, 2a, 12, 15, 16, 18, and 20 collectively) being used in the current rejection.
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 extension fee 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 date of this final action.
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/TANZIM IMAM/Primary Examiner, Art Unit 3731
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