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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/17/2026 has been entered.
Response to Arguments
Applicant's arguments filed 02/17/2026 have been fully considered and are not persuasive.
Applicant argues that they have provided “substantial additional objective evidence of nonobviousness.”
The Examiner disagrees. Objective evidence is “information that is based on factual data, which can be verified through methods such as analysis, measurement, and observation” (https://legal-resources.uslegalforms.com/o/objective-evidence). The affidavits are not accompanied with supporting data that can be verified by means such as analysis.
Response to Affidavits
The affidavits under 37 CFR 1.132 filed 02/17/2026 are insufficient to overcome the rejection of claims 1-20 based upon 35 USC 103 as set forth in the last Office action because: the showing in not commensurate in scope with the claims.
The affidavits state that the claimed subject matter solved a problem that was long standing in the art. However, there is no showing that others of ordinary skill in the art were working on the problem and if so, for how long. In addition, there is no evidence that if persons skilled in the art who were presumably working on the problem knew of the teachings of the above cited references, they would still be unable to solve the problem. See MPEP § 716.04.
The affidavits state that the claimed subject matter showed unexpected results. However, both affidavits present only subjective evidence and contain no objective evidence. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. The fact that a tapered lower jaw performed better than an non-tapered lower jaw when being inserted into a narrow space is a predictable result, and neither of the affidavits give any indication that the predictable results is to an unexpected extent (see MPEP 716.02 and 716.02(a)). Furthermore, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range (see MPEP716.02(d)).
The affidavits state that the claimed subject matter showed commercial success. However, neither affidavit presents objective evidence and are based only on subjective evidence. In addition, gross sales figures do not show commercial success absent evidence as to market share, or as to the time period during which the product was sold, or as to what sales would normally be expected in the market (see MPEP 716.03(b)(IV)).
The affidavits state that the claimed subject matter showed superiority over the alternative. However, neither affidavit presents objective evidence and are based only on subjective evidence. Furthermore, even if Applicant’s invention showed superiority over the alternative (Applicant’s pervious invention), this improvement is not evidence of nonobviousness, but evidence of predictable results of a well-known and obvious modification.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
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 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.
Claims 1-8, 12-15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Stroh (US 7,967,548) in view of Renfroe (US 3,336,068).
Stroh discloses;
Claim 1. A lamination transport system comprising: (a) an upper jaw (comprised of 30 and 32) having a flat forward face (illustrated in Fig. 1); (b) a lower jaw (comprised of 46 and 48) coupled to the upper jaw, wherein the upper jaw and the lower jaw define an interior (space between upper and lower jaw) having a forward-facing opening and a back (illustrated in Fig. 1); (c) wherein the lower jaw comprises: (i) a first side plate (30); (ii) a second side plate (32); (iii) a top face (upper surface of 50); (iv) a bottom face (bottom of 46 and 48); (d) a tooth (34) coupled to the upper jaw at a journal point (36), the tooth comprising: (i) a lamination transport contact face (42); (ii) a non-contact face (38); and (iii) a tooth tip (40); (e) a linear actuator (26) coupled to the tooth in a configuration where the tooth tip is located rearward of the journal point, (e) wherein the top face extends at least to the back of the lower jaw and is coupled between the first side plate and the second side plate in an orientation and configuration preventing the tooth tip from passing past the top face between the first side plate and the second side plate; (g) a linear actuator motor (74) coupled to the linear actuator ; and (h) a plurality of transformer laminations (78) secured at least partially within the interior between the tooth and the lower jaw (Col. 3-4 and Fig. 1-3).
Claim 2. The lamination transport system of claim 1, wherein the upper jaw comprises a first plate (30) and a second plate (32) and wherein the tooth is provided between the first plate and the second plate (Col. 1 and Fig. 1).
Claim 3. The lamination transport system of claim 2, wherein the lower jaw comprises a portion of the first plate and a portion of the second plate and wherein the linear actuator is located between the first plate and the second plate (Col. 3 and Fig. 1).
Claim 4. The lamination transport system of claim 1, further comprising a boom (60) coupled to the upper jaw (Col. 4 and Fig. 3).
Claim 5. The lamination transport system of claim 4, further comprising a vehicle (66) coupled to the boom (Col. 4 and Fig. 3).
Claim 6. The lamination transport system of claim 1, wherein the upper jaw comprises a lower face (bottom surfaces of 30 and 32 that face upper surfaces of 46 and 48) and wherein the lower face of the upper jaw is substantially parallel to the top face of the lower jaw (Fig. 1).
Claim 7. The lamination transport system of claim 1, further comprising a vehicle attachment bracket (12) coupled to the upper jaw and to the lower jaw, and wherein the top face of the lower jaw slopes downward and away from the vehicle attachment bracket (Col. 4 and Fig. 1).
Claim 8. The lamination transport system of claim 7, wherein the bottom face of the lower jaw is substantially perpendicular to the vehicle attachment bracket (Fig. 1).
Claim 12. A lamination transport system comprising: (a) a boom (60); (b) an upper jaw (comprised of 30 and 32) coupled to the boom, the upper jaw having a flat forward face (illustrated in Fig. 1) (c) a first linear actuator (64) coupled to the boom and the upper jaw; (d) a lower jaw (comprised of 46 and 48) coupled to the upper jaw, wherein the upper jaw and the lower jaw define an opening (illustrated in Fig. 1); (e) a tooth (34) coupled to the upper jaw at a journal point (36), the tooth comprising: (i) a lamination transport contact face (42); (ii) a non-contact face (38); and (iii) a tooth tip (40); (f) a second linear actuator (26) coupled to the tooth in a configuration where the tooth tip is located closer to the boom than the journal point; (g) a linear actuator motor (74) coupled to the second linear actuator, and (h) a plurality of transformer laminations (78) secured at least partially within the opening between the tooth tip and the lower jaw (Col. 3-4 and Fig. 1-3).
Claim 13. The lamination transport system of claim 12, wherein the upper jaw comprises a lower face (bottom surfaces of 30 and 32 that face upper surfaces of 46 and 48), wherein the lower jaw comprises a top face (upper surface of 50), and wherein the lower face of the upper jaw is substantially parallel to the top face of the lower jaw (Col. 3 and Fig. 1).
Claim 14. The lamination transport system of claim 13, further comprising a vehicle attachment bracket (12) coupled to the upper jaw and to the lower jaw, and wherein the top face of the lower jaw slopes downward and away from the vehicle attachment bracket (Col. 4 and Fig. 1).
Claim 15. The lamination transport system of claim 14, wherein the lower jaw further comprises a bottom face (bottom of 46 and 48), wherein the bottom face of the lower jaw is substantially perpendicular to the vehicle attachment bracket (Fig. 1).
Claim 17. A method for transporting transformer laminations from the ground to a transport vehicle comprising: (a) providing laminations on the ground (Fig. 4); (b) providing a lamination transport system comprising: (i) an upper jaw (comprised of 30 and 32) having a flat forward face (illustrated in Fig. 1); (ii) a lower jaw (comprised of 46 and 48) coupled to the upper jaw comprising a first side plate (16), a second side plate (18) and a top face (50), wherein the upper jaw and the lower jaw define a mouth (52) having a forward-facing opening and a back (region near 20); (iv) a tooth (34) coupled to the upper jaw at a journal point (36), the tooth comprising:
a. a laminations transport contact face (42); b. a non-contact face (38); and c. a tooth tip (40);
(v) a linear actuator (26) coupled to the tooth; (vi) wherein the top face extends at least to the back of the lower jaw and is coupled between the first side plate and the second side plate in an orientation and configuration preventing the tooth tip from passing past the top face between the first side plate and the second side plate; (c) providing a vehicle (81) having a boom (60);
(d) coupling the lamination transport system to the boom (Col. 3, Ln. 6-9); (e) manipulating the vehicle, the boom, and the lamination transport system to locate the jaw tip between the ground and the laminations (Fig. 3); (f) actuating the linear actuator to move the tooth until the laminations are retained between the laminations transport contact face of the tooth and the lower jaw at a point rearward of the journal point (Claim 13, Step (d) and Fig. 3); (g) manipulating the vehicle, the boom, and the lamination transport system to lift the laminations from the ground and transport the laminations to the transport vehicle (Fig. 3-4); (h) manipulating the vehicle, the boom, and the lamination transport system to position the laminations for delivery to the transport vehicle (Fig. 4); and (i) actuating the linear actuator to move the tooth until the laminations are is released from the lamination transport system onto the transport vehicle (Col. 4, Ln. 56-60) (Col. 3-4 and Fig. 1-4).
Claim 18. The method for transporting transformer laminations of claim 17, wherein the laminations are in excess of one hundred kilograms (Col. 4, Ln. 29-34).
Claim 19. The method for transporting transformer laminations of claim 17, further comprising a vehicle attachment bracket (12) coupled to the upper jaw and to the lower jaw, wherein the lower jaw further comprises a top face (upper surface of 50) and a bottom face (bottom of 46 and 48), and wherein the top face of the lower jaw slopes downward and away from the vehicle attachment bracket (Fig. 5) (Col. 3-4 and Fig. 1 and 5).
Claim 20. The method for transporting transformer laminations of claim 17, wherein the upper jaw comprises a lower face (bottom surfaces of 30 and 32 that face upper surfaces of 46 and 48), wherein the lower jaw comprises a top face (upper surface of 50), and wherein the lower face of the upper jaw is substantially parallel to the top face of the lower jaw (Col. 3 and Fig. 1).
Stroh does not recite;
Claims 1. The top face and the bottom face taper toward one another at an angle between 5-35 degrees to form a jaw tip; and the jaw tip is between 10-50mm in height.
Claim 12. The top face and the bottom face of the lower jaw taper toward one another to form a jaw tip.
Claim 17. The lower jaw tapers at an angle between 5-35 degrees to form a jaw tip and the jaw tip is between 10-50mm in height.
However, Renfroe discloses a lamination transport system comprising an upper and lower jaw which define an interior (space between upper and lower jaw) having a forward-facing opening (Fig. 2), the lower jaw having a top face and a bottom face (Fig. 2), and further teaches the top face and the bottom face taper toward one another to form a jaw tip (Fig. 2).
Therefore, in view of Renfroe’s teaching, it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified Stroh’s lower jaw such that the top face and the bottom face taper toward one another to form a jaw tip to facilitate lower jaw insertion into narrow spaces, and to optimize material use by having more material at the root of the lower jaw and less material at the tip, given that stress due to moment is maximum at the root and minimal at the tip.
Stroh, as modified by Renfroe does not recite;
Claims 1 and 17. The top face and the bottom face taper toward one another at an angle between 5-35 degrees and the jaw tip.
However, Renfroe’s lower jaw top face and bottom face clearly form an angle within the range of 0-90 degrees.
Therefore, in view of Renfroe’s disclosure of a tapered angle between the lower jaw top and bottom faces, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have determined an optimal angle range to maintain lower jaw strength while optimizing performance, 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.
The Examiner further notes that Stroh discloses “the material handling system…may be constructed of any suitable material in any suitable dimensions” (Col. 5, Ln. 42-46), which supports the Office’s position that determining a lower jaw angular dimension of 5-35 degrees involves only routine skill in the art.
Stroh, as modified by Renfroe does not recite;
Claims 1 and 17. The jaw tip is between 10-50mm in height.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have determined an optimal jaw tip height range of 10-50mm to maintain lower jaw tip strength while optimizing performance, 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.
The Examiner further notes that Stroh discloses “the material handling system…may be constructed of any suitable material in any suitable dimensions” (Col. 5, Ln. 42-46), which supports the Office’s position that determining an optimal jaw tip height range of 10-55mm involves only routine skill in the art.
Additionally, the Examiner notes that, not only has Applicant not disclosed criticality for the claimed jaw tip height range, but has disclosed “[t]he jaw tip (67) can be any desired height” (Spec. Pg. 7, Ln. 13) indicating a lack of criticality in the claimed dimensional range.
Claims 9 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Stroh and Renfroe, and further in view of Cotesworth et al. (US 2,915,332).
Stroh does not recite;
Claims 9 and 16. A check valve coupled to the linear actuator.
However, Cotesworth discloses a lamination transport apparatus (Fig. 1) having gripping jaws (25 and 26) and a linear actuator (84), and further teaches a check valve (98) coupled to the linear actuator to ensure gripping is not lost during a power failure (Col. 5-6 and Fig. 1-3 and 8).
Therefore, in view of Cotesworth’s teaching, it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified Stroh’s linear actuator to include a check valve to ensure gripping is not lost during a power failure.
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Stroh in view of Renfroe.
Stroh, as modified by Renfroe, does not recite;
Claim 10. The lamination transport system of claim 1, wherein the jaw tip is 25 millimeters tall.
Claim 11. The lamination transport system of claim 1, wherein the top face and the bottom face taper define an angle of about 25 degrees.
However, Renfroe’s lower jaw is shown to taper to a dimension less than the body of the jaw, and further show the top face and the bottom face taper define is at a shallow angle (Fig. 2).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified Renfroe’s jaw tip to be 25 millimeters tall and to make the top face and the bottom face taper define an angle of about 25 degrees to meet design criteria, given that a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-5, 12, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-9 and 11-13 of U.S. Patent No. 7,967,548 in view of Renfroe.
All limitations of Claims 1-5, 12, and 17 are anticipated by the cited claims accept;
Claims 1, 12, and 17. The top face and the bottom face of the lower jaw taper toward one another to form a jaw tip.
However, Renfroe discloses a lamination transport system comprising an upper and lower jaw which define an interior (space between upper and lower jaw) having a forward-facing opening (Fig. 2), the lower jaw having a top face and a bottom face (Fig. 2), and further teaches the top face and the bottom face taper toward one another to form a jaw tip (Fig. 2).
Therefore, in view of Renfroe’s teaching, it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the claimed invention of U.S. Patent No. 7,967,548 such that the top face and the bottom face taper toward one another to form a jaw tip to facilitate lower jaw insertion into narrow spaces.
Claims 8-9 and 11-13 of U.S. Patent No. 7,967,548 in view of Renfroe does not recite;
Claims 1 and 17. The top face and the bottom face taper toward one another at an angle between 5-35 degrees and the jaw tip.
However, Renfroe’s lower jaw top face and bottom face clearly form an angle within the range of 0-90 degrees.
Therefore, in view of Renfroe’s disclosure of a tapered angle between the lower jaw top and bottom faces, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have determined an optimal angle range to maintain lower jaw strength while optimizing performance, 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.
The Examiner further notes that Stroh discloses “the material handling system…may be constructed of any suitable material in any suitable dimensions” (Col. 5, Ln. 42-46), which supports the Office’s position that determining a lower jaw angular dimension of 5-35 degrees involves only routine skill in the art.
Claims 8-9 and 11-13 of U.S. Patent No. 7,967,548 in view of Renfroe does not recite;
Claims 1 and 17. The jaw tip is between 10-50mm in height.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have determined an optimal jaw tip height range of 10-50mm to maintain lower jaw tip strength while optimizing performance, 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.
The Examiner further notes that Stroh discloses “the material handling system…may be constructed of any suitable material in any suitable dimensions” (Col. 5, Ln. 42-46), which supports the Office’s position that determining an optimal jaw tip height range of 10-55mm involves only routine skill in the art.
Additionally, the Examiner notes that, not only has Applicant not disclosed criticality for the claimed jaw tip height range, but has disclosed “[t]he jaw tip (67) can be any desired height” (Spec. Pg. 7, Ln. 13) indicating a lack of criticality in the claimed dimensional range.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 RONALD P JARRETT whose telephone number is (571)272-8311. The examiner can normally be reached M-F: 9:00 am - 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Saul Rodriguez can be reached on (571) 272-7097. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RONALD P JARRETT/Primary Examiner, Art Unit 3652