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 Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 21-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
Step 1 of the USPTO’s eligibility analysis entails considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: Process, machine, manufacture, or composition of matter.
Claims 21 and 23 are directed to apparatus.
As such, the claims are directed to statutory categories of invention.
If the claim recites a statutory category of invention, the claim requires further analysis in Step 2A. Step 2A of the 2019 Revised Patent Subject Matter Eligibility Guidance is a two-prong inquiry. In Prong One, examiners evaluate whether the claim recites a judicial exception.
Claim 21 recites the limitation determine, from the first data, that the conical head is contacting a portion of a borehole. Claim 23 recites the limitations determine, from the first data, that the conical head is contacting a portion of a borehole, and determine, based on relative readings of the first data and the second data, that the first portion of the conical head is contacting the portion of the borehole. These limitations, as drafted, are a process that, under its broadest reasonable interpretation, recite a mental process as the limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Evaluations and judgements are done the data to make the determinations which can be done in the mind or by pen and paper. The mere recitation of a generic computer does not take the claim out of the mental process grouping.
Thus the claims recite an abstract idea.
If the claim recites a judicial exception (i.e., an abstract idea enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance, a law of nature, or a natural phenomenon), the claim requires further analysis in step 2A Prong Two. In step 2A Prong Two, examiners evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
Claim 21 recites the addition limitations of chasis, non-contact boring element, a contact boring element, conical head, a first sensor, a second sensor and a controller, receive first data from the first sensor, receive second data associated with a first time period from the second sensor, operate the non-contact boring element, receive second data associated with a second time period from the second sensor, and operate the contact boring element.
Claim 23 recites the addition limitation of chassis, non-contact boring element, conical head, a first sensor, a second sensor and a controller, receive first data from the first sensor, receive second data from the second sensor.
The limitations of chassis, non-contact boring element, a contact boring element, conical head, receive second data associated with a first time period from the second sensor, receive second data associated with a second time period from the second sensor, receive first data from the first sensor, receive second data from the second sensor amounts to insignificant extra solution activity.
The limitations of first sensor and second sensor amounts mere data gathering in conjunction with a law of nature or abstract idea as the sensors are merely tools to obtain data so that the data can be analyzed by the abstract mental process which is considered insignificant extra solution activity. See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) (see MPEP § 2106.05(g)).
The limitation of the controller is recited at a high level of generality and are merely invoked as tool to perform the abstract idea. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit).
The limitations of operate the non contact boring element and operate the contact boring merely amounts to “apply it”. The reciting of claim limitations that attempt to cover any solution (i.e. operate the non contact boring element and operate the contact boring) to an identified problem (i.e. the conical head contacting the a portion of a borehole) with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result (i.e. how the non contact boring element or contact boring is affected by the abstract idea) does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words “apply it”. See MPEP 2106.05(f)(1)
Accordingly, in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
If the additional elements do not integrate the exception into a practical application in step 2A Prong Two, then the claim is directed to the recited judicial exception, and requires further analysis under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).
As stated above the limitations of chassis, non-contact boring element, a contact boring element, conical head amount to mere insignificant extra solution activity. Wang 20190017380 (see fig. 1) teaches it is has been known since 2018 to have a chassis, non-contact boring element, a contact boring element, conical head as such having a chassis, non-contact boring element, a contact boring element is well known understood and routine.
As stated above the limitations of receive second data associated with a first time period from the second sensor, receive second data associated with a second time period from the second sensor, receive first data from the first sensor, receive second data from the second sensor amounts to insignificant extra solution activity. The Symantec, TLI, OIP Techs. and buySAFE court decisions cited in MPEP 2106.05(d)(II) indicate that mere collection or receipt of data over a network is a well‐understood, routine, conventional function when it is claimed in a merely generic manner (as it is here).
As stated above the first sensor and second sensor amounts mere data gathering in conjunction with a law of nature or abstract idea as the sensors are merely tools to obtain data so that the data can be analyzed by the abstract mental process which is considered insignificant extra solution activity. See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) (see MPEP § 2106.05(g)
As stated above, the limitation of the controller is recited at a high level of generality and are merely invoked as tool to perform the abstract idea. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit).
The limitations of operate the non contact boring element and operate the contact boring merely amounts to “apply it”. The reciting of claim limitations that attempt to cover any solution (i.e. operate the non contact boring element and operate the contact boring) to an identified problem (i.e. the conical head contacting the a portion of a borehole) with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result (i.e. how the non contact boring element or contact boring is affected by the abstract idea) does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words “apply it”. See MPEP 2106.05(f)(1)
Thus, even when viewed as an ordered combination, nothing in the claims add significantly more (i.e. an inventive concept) to the abstract idea.
Referring to claim 22, the limitations of the second data associated with the first time period indicates that excavation operations are being performed on a first portion of a bore face of the borehole, and the second data associated with the second time period indicates that excavation operations are being performed on a second portion of the bore face merely narrows the previously recited abstract idea limitations. For the reasons described above with respect to claim 21, this judicial exception is not meaningfully integrated into a practical application, or significantly more than the abstract idea.
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.
Claim(s) 21 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Wang et al. 20190017380.
Referring to claim 21, Wang discloses a system comprising a chassis (housing shown in figure 1) configured to perform excavation operations within a borehole, the chassis comprising: a non-contact boring element (3), configured to perform a boring process comprising thermal spallation within the borehole (laser drilling); a contact boring element (2), configured to perform contact boring within the borehole; a conical head (bit at 1) ;a first sensor (4), coupled to the conical head ; a second sensor (4 sensor subsystem comprises multiple sensors, see paragraph 0019)), coupled to the conical head; and a controller (6), communicatively coupled to the first sensor and configured to: receive first data from the first sensor determine, from the first data, that the conical head is contacting a portion of a borehole (see paragraph 0019), receive second data associated with a first time period from the second sensor, operate the non-contact boring element, receive second data associated with a second time period from the second sensor, and operate the contact boring element (time period from the second sensor; and operate the contact boring element (see paragraph 0020, the cutter can operate in different modes based on sensor readings).
Allowable Subject Matter
Claims 1-3,7-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art to Wang et al. 20190017380 does not teach nor suggest a non-contact boring element comprising a turbine with an after burner and operating the non-contact boring element in a second configuration, comprising adjusting the flame front of the turbine or the afterburner in comparison to a first configuration in combination with the other limitations of the claim nor would it be obvious to modify Wang to include this limitation.
Response to Arguments
Applicant's arguments filed 2/4/26 have been fully considered but they are not persuasive. Upon further review, the examiner has rejected claims 21-23 under USC 101. The rejection is detailed above. The applicant has stated that the limitations of previous recited claim 10 were added to claim 21. However, these limitations are not added to the claim and this claim is still rejectable under 35 U.S.C. 102a1 as being anticipated by Wang et al. 20190017380. This rejection is detailed above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GIOVANNA WRIGHT whose telephone number is (571)272-7027. The examiner can normally be reached M-F 8 am- 5 pm.
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/Giovanna Wright/Primary Examiner, Art Unit 3672
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