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 Objections
Claim 3 is objected to because of the following informalities: “wherein the first lateral side of the drill carriage includes two stake implement”. Implement should be pluralized to “implements”. Appropriate correction is required.
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 (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 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 1-4, 7-9, and 13-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Deken (US 6,216,803) hereinafter referred to as Deken.
Regarding claim 1, Deken discloses a directional drill (10, fig. 1), comprising:
a drill carriage (16);
a rotating spindle (12) coupled to the drill carriage (fig. 1), wherein the rotating spindle is adapted to translate along a surface of the drill carriage (col. 2 lines 41-49, fig. 1);
a stakedown system (22) coupled to an end of the drill carriage (fig. 1), including
a plurality of first stake implements (individual stakes 22, fig. 1) including auger flights (60, fig. 1-2 and 13) located on a first lateral side of the drill carriage (see annotated fig. 1), the plurality of first stake implements both being rotated concurrently by a common drive motor (30, fig. 1, col. 3 lines 14-24 and 58-62); and
at least one second stake implement (individual stakes 22, fig. 1) including auger flights (60, fig. 1-2 and 13) located on a second lateral side of the drill carriage (see annotated fig. 1), opposite the first lateral side (see annotated fig. 1), wherein the first lateral side of the drill carriage includes a larger number of stake implements than the second lateral side (see annotated fig. 1).
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Regarding claim 2, Deken further discloses wherein the plurality of first stake implements are coupled to a single drive system to drive the plurality of first stake implements into the ground at the same time (30, fig. 1, col. 3 lines 14-24 and 58-62 and col. 7 lines 15-29).
Regarding claim 3, Deken further discloses wherein the first lateral side of the drill carriage includes two stake implement (see annotated fig. 1, wherein the first lateral side includes at least two stake implements).
Regarding claim 4, Deken further discloses wherein the second lateral side of the drill carriage includes one stake implement (see annotated fig. 1).
Regarding claim 7, Deken discloses a method of operating a directional drill (10, fig. 1), comprising:
positioning a drill carriage (16, fig. 1) and a rotating spindle (12, fig. 1) coupled to the drill carriage along a drilling axis (col. 2 lines 41-49, fig. 1);
driving multiple stake implements into the ground concurrently (22, fig. 1, col. 3 lines 14-24 and 58-62), including rotating a common drive motor coupled to the multiple stake implements (30, fig. 1, col. 3 lines 14-24 and 58-62); and
staking down the directional drill using the multiple stake implements (fig. 1, col. 3 lines 14-24 and 58-62, col. 7 lines 15-54).
Regarding claim 8, Deken further discloses further including selecting an optional desired number of stake implements from a plurality of stake implements located on both a first lateral side of the drill carriage and a second lateral side of the drill carriage wherein the first lateral side of the drill carriage includes a larger number of stake implements than the second lateral side (see annotated fig. 1).
Regarding claim 9, Deken further discloses wherein selecting an optional desired number of stake implements includes selecting a plurality of first stake implements coupled to a single driver to drive the plurality of first stake implements into the ground at the same time (see annotated fig. 1 and col. 3 lines 14-24 and 58-62).
Regarding claim 13, Deken discloses a method of operating a directional drill (10, fig. 1), comprising:
positioning a drill carriage (16, fig. 1) and a rotating spindle (12, fig. 1) coupled to the drill carriage along a drilling axis (col. 2 lines 41-49, fig. 1);
driving multiple stake implements into the ground concurrently (22, fig. 1, col. 3 lines 14-24 and 58-62), including actuating a single drive system to drive the multiple stake implements into the ground at the same time (30, fig. 1, col. 3 lines 14-24 and 58-62); and
staking down the directional drill using the multiple stake implements (fig. 1, col. 3 lines 14-24 and 58-62, col. 7 lines 15-54).
Regarding claim 14, Deken further discloses wherein driving multiple stake implements into the ground concurrently, includes rotating a common drive motor coupled to the multiple stake implements (fig. 1, col. 3 lines 14-24 and 58-62, col. 7 lines 15-54).
Regarding claim 15, Deken further discloses further including selecting an optional desired number of stake implements from a plurality of stake implements located on both a first lateral side of the drill carriage and a second lateral side of the drill carriage wherein the first lateral side of the drill carriage includes a larger number of stake implements than the second lateral side (see annotated fig. 1).
Regarding claim 16, Deken further discloses wherein selecting an optional desired number of stake implements includes selecting a plurality of first stake implements coupled to a single driver to drive the plurality of first stake implements into the ground at the same time (see annotated fig. 1 and col. 3 lines 14-24 and 58-62).
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 (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 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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Deken US Patent 6,216,803 hereinafter referred to as Deken in view of Felt (US 2009/0127001 A1), hereinafter Felt.
Regarding claim 6, Deken discloses the common drive motor (30, fig. 1, col. 3 lines 14-24 and 58-62), but fails to explicitly disclose the type of drive motor.
Felt teaches a similar device in the same field of drilling and pipe handling wherein the drive motor includes a gear drive (par. 0030).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have simply substituted the generic drive motor for a motor that includes a gear drive of Felt to yield the predictable result of operating the drive mechanism (par. 0030 of Felt).
Claims 10, 12, 17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Deken US Patent 6,216,803 hereinafter referred to as Deken in view of McGriff (US 6,497,296 B1), hereinafter McGriff.
Regarding claims 10 and 17, Deken discloses wherein selecting an optional desired number of stake implements includes selecting two first stake implements coupled to a drive motor to drive the two first stake implements into the ground at the same time (col. 3 lines 14-24 and 58-62), but fails to explicitly disclose the type of drive motor.
McGriff teaches a similar device in the same field of horizontal directional drilling wherein the drive motor is a single hydraulic system (134, fig. 6, col. 5 lines 52-63).
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have simply substituted the generic drive motor for a single hydraulic system of McGriff to yield the predictable result of operating the drive mechanism (col. 5 lines 52-63 of McGriff).
Regarding claims 12 and 19, Deken in view of McGriff further teaches wherein staking down the directional drill using the selected number of stake implements (fig. 1, col. 3 lines 14-24 and 58-62, col. 7 lines 15-54 of Deken) includes selecting a staking depth (col. 5 lines 52-63, wherein the actuators control the upward and downward location and force on the stake implements of McGriff), and wherein the single hydraulic system includes a pair of hydraulic cylinders coupled together (135 and 137, fig. 6, col. 5 lines 52-63 of McGriff), and selecting the staking depth includes selecting actuation of one or both or the pair of hydraulic cylinders (col. 5 lines 52-63, wherein the actuators control the upward and downward location and force on the stake implements of McGriff).
Allowable Subject Matter
Claims 5, 11, and 18 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.
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.
See the following table for the non-statutory double patenting (NSDP) rejection.
Claims 1-5, 7-9, 11, 13-16, and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims (see table below) of U.S. Patent No. US 12,345,098 B2/ US 20210310314 A1 / US 11066877 B2 in view of Deken (US 6,216,803) . Deken teaches the stakes both being rotated concurrently by a common drive motor/actuating a single drive system to drive the multiple stake implements into the ground at the same time.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims (see table below) of U.S. Patent No. US 12,345,098 B2/ US 20210310314 A1 / US 11066877 B2 in view of Deken (US 6,216,803) and additionally in view of Felt (US 2009/0127001 A1). Felt teaches that the drive motor can include a gear drive.
Claim 10, 12, 17, and 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims (see table below) of U.S. Patent No. US 12,345,098 B2/ US 11066877 B2 in view of Deken (US 6,216,803) and additionally in view of McGriff (US 6,497,296 B1). McGriff teaches a single hydraulic system teaches that the drive motor can include a gear drive.
Instant Application 19/255,432 current claims
Patent US 12,345,098 B2
Patent US 11,713,624 B2
Patent US 11,066,877 B2
1
Claim 1, and Deken (US 6,216,803)
Claim 1 and Deken (US 6,216,803); Claim 7 and Deken (US 6,216,803)
Claim 1 and 2 and Deken (US 6,216,803)
2
Claim 3, and Deken (US 6,216,804)
Claim 1 and Deken (US 6,216,803); Claim 7 and Deken (US 6,216,803)
Claim 1 and 2, and Deken (US 6,216,803)
3
Claim 3 and 4, and Deken (US 6,216,805)
Claim 1 and Deken (US 6,216,803); Claim 7 and Deken (US 6,216,803)
Claim 1 and 3, and Deken (US 6,216,803)
4
Claim 3 and 5, and Deken US (6,216,806)
Claim 1 and Deken (US 6,216,803); Claim 7 and Deken (US 6,216,803)
Claim 1 and 4, and Deken (US 6,216,803)
5
Claim 3 and 6, and Deken (US 6,216,807)
Claim 7 and 8, and Deken (US 6,216,803)
6
Claim 3, and Deken (US 6,216,804), and Felt (US 2009/0127001 A1)
Claim 1 and Deken (US 6,216,803) and Felt (US 2009/0127001 A1); Claim 7 and Deken (US 6,216,803) and Felt (US 2009/0127001 A1)
Claim 1 and 2 and Deken (US 6,216,803) and Felt (US 2009/0127001 A1)
7
Claim 7, and Deken (US 6,216,807)
Claim 9, and Deken (US 6,216,803)
8
Claim 7 and 8, and Deken (US 6,216,807)
Claim 9-11, and Deken (US 6,216,803)
9
Claim 7 and 8, and Deken (US 6,216,807)
Claim 9, and Deken (US 6,216,803)
10
Claim 7 and 9, and Deken (US 6,216,807) , and McGriff (US 6,497,296 B1)
Claim 9, and Deken (US 6,216,803) , and McGriff (US 6,497,296 B1)
11
Claim 7 and 10, and Deken (US 6,216,807)
Claim 12, and Deken (US 6,216,803)
12
Claim 7 and 11, and Deken (US 6,216,807)
Claim 9, and Deken (US 6,216,803), and McGriff (US 6,497,296 B1)
13
Claim 7, and Deken (US 6,216,807)
Claim 9, and Deken (US 6,216,803)
14
Claim 7 and 8, and Deken (US 6,216,807)
Claim 9, and Deken (US 6,216,803)
15
Claim 7 and 8, and Deken (US 6,216,807)
Claim 9, and Deken (US 6,216,803)
16
Claim 7 and 9, and Deken (US 6,216,807)
Claim 9 and 10, and Deken (US 6,216,803)
17
Claim 7 and 9, and Deken (US 6,216,807), and McGriff (US 6,497,296 B1)
Claim 9 and 11, and Deken (US 6,216,803) and McGriff (US 6,497,296 B1)
18
Claim 7 and 10, and Deken (US 6,216,807)
Claim 9, and Deken (US 6,216,803)
19
Claim 7 and 11, and Deken (US 6,216,803), and McGriff (US 6,497,296 B1)
Claim 9, and Deken (US 6,216,803), and McGriff (US 6,497,296 B1)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Railey whose telephone number is (571)270-7353. The examiner can normally be reached M-F (8-4).
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/JENNIFER A RAILEY/Examiner, Art Unit 3676
/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676