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 63 is objected to because it recites "the external surface of the or each rigid metal cover layer" (instead of "the external surface of the two rigid metal cover layers" since "an external surface of the two rigid metal cover layers" is previously recited) in lines 28-29. Claim 64 is objected to because it recites "the two rigid metal cover layer" (instead of "the two rigid metal cover layers") in line 4. Appropriate correction is required.
Claim Interpretation
The claims in this application are given their broadest reasonable interpretation (BRI) 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. Claim 81 recites "wherein each of the two rigid cover layers has two longitudinal edges, from which each flange portion extends." This requires each flange portion (singularly) to extend from two longitudinal edges. In light of the specification and drawings, "two longitudinal edges" is interpreted to be met by two co-axial edges or effectively two portions of the same longitudinal edge, since two edges as such are the only two longitudinal edges shown from which a single flange portion extends (as claimed for "each flange portion").
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 76, 82, and 84-86 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 76 recites "wherein the planar pieces have at least one straight or sharp external edge." However, claim 63 (from which claim 76 depends) previously recites "wherein each protruding element comprises a planar piece; each planar piece has an internal edge attached to the external surface of the or each rigid metal cover layer and an inclined external edge which is joined to the internal edge by two lateral edges having different extensions; wherein the inclined external edge is narrower than the internal edge." It is unclear if the "at least one straight or sharp external edge" is one of the edges set forth in claim 63 (especially in light of the specification) or if another edge is being introduced. Thus, the metes and bounds of the claimed edge cannot be determined. Therefore, claim 76 is indefinite and rejected under 35 U.S.C. 112(b) such that clarification and correction are required.
Claim 82 recites the limitation "the adjacent rigid metal cover layer" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim.
Claim 84 recites "two rigid metal cover layers." It is unclear if these cover layers are of the "two rigid metal cover layers" introduced in claim 63 (from which claim 84 depends) or if other cover layers are being introduced. Thus, the metes and bounds of this recitation cannot be determined. Therefore, claim 84 is indefinite and rejected under 35 U.S.C. 112(b).
Claim 85 recites "a metal roller provided with an attaching means for attaching the metal roller to a drawbar of a tractor" in lines 2-3. It is unclear if "an attaching means for attaching the metal roller to a drawbar of a tractor " is part of the claimed apparatus or is merely used therewith by being "provided" as claimed. Thus, the metes and bounds of the claimed apparatus cannot be determined. Therefore, claim 85 is indefinite and rejected under 35 U.S.C. 112(b).
Claim 85 recites the limitation "each metal roller" in line 4. It is unclear if this recitation is referring to "a metal roller" or "one or more metal rollers" previously introduced in claim 85. Thus, the metes and bounds of this limitation cannot be determined. Therefore, claim 85 is indefinite and rejected under 35 U.S.C. 112(b).
Claim 85 recites "each metal roller is provided with a cylindrical surface," in lines 4-5. It is unclear if "a cylindrical surface" is part of the claimed apparatus (i.e., of "a metal roller" or "one or more metal rollers") or is merely used therewith by being "provided" as claimed. Thus, the metes and bounds of the claimed apparatus cannot be determined. Therefore, claim 85 is indefinite and rejected under 35 U.S.C. 112(b).
Claim 86 recites the limitation "th" in line 3. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 63-69, 72, 73, 76, and 80-87 are rejected under 35 U.S.C. 103 as being unpatentable over Cour (US 2,476,084) in view of Wiedenmann (DE 20218995) and further in view of Bird (US 1,858,948).
Regarding claim 63, Cour discloses a kit for converting a metal roller (such as that including 4, 5) into an aerator tool, comprising:
two rigid metal cover layers (including 9a, 9b) configured to be removably applied and fixed around the metal roller (including 4, 5), wherein the two rigid metal cover layers are complementary (see Fig. 4) and symmetric (see col. 3, lines 32-53, which recites "each of which is curved to form one-half of a cylinder" and thus are considered to be symmetric as respective halves); wherein the two rigid metal cover layers are semi-cylindrical in shape (see col. 3, lines 32-53); wherein an external surface of the two rigid metal cover layers (including that of 9a and/or 9b) comprises means for penetrating into the soil; wherein the means for penetrating into the soil comprises a plurality of protruding elements (including 14 or at least some thereof) that are disposed in staggered rows (see Fig. 1); and
means (including 11, 12, 13, and/or 17) for facilitating the positioning of each rigid metal cover layer around the metal roller; and
wherein each protruding element (including 14 or at least some thereof) comprises a planar piece (see Figs. 1, 2, and 4), each planar piece has an internal edge attached to the external surface of the two rigid metal cover layers and an inclined external edge which is joined to the internal edge by two lateral edges having different extensions (see annotated Fig. A, below), wherein the inclined external edge is narrower than the internal edge (see annotated Fig. A, below, wherein the inclined external edge has a shorter horizontal length than the internal edge).
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Figure A. Cour (US 2,476,084) annotated Fig. 2.
Cour does not explicitly disclose the means for facilitating the positioning comprising female members defined on each rigid metal cover layer and configured to receive corresponding male members of the metal roller, or vice versa, as claimed. Wiedenmann teaches a kit for converting a roller into an aerator, comprising:
at least one rigid cover layer (including 10) configured to be removably applied and fixed around the roller (including 9), wherein an external surface of the at least one rigid cover layer comprises a plurality of protruding elements (5) that are disposed in staggered rows; and
means for facilitating the positioning of the at least one rigid cover layer around the roller, wherein the means for facilitating the positioning comprise female members (for 16) defined on the at least one rigid cover layer and configured to receive corresponding male members (including or of 16) of the roller, or vice versa.
Wiedenmann is analogous because Wiedenmann discloses a kit for converting a roller with a rigid cover layer. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the kit of Cour with the means for facilitating positioning as taught by Wiedenmann in order to more securely hold the cover layer in place. Additionally, providing the kit of Cour with the means for facilitating positioning as taught by Wiedenmann is a combination of prior art elements (i.e., the structure of Cour and the means for facilitating positioning of Wiedenmann) according to known methods (applying the means for facilitating positioning of Wiedenmann as taught by Wiedenmann) to yield predictable results. See MPEP § 2143.
Neither Cour nor Wiedenmann explicitly discloses the staggered rows of the protruding elements being arranged so as to cover a whole circumferential development of a cover layer, and the protruding elements overlapping as claimed. Bird teaches a rolling, ground working implement having means for penetrating into the soil comprising a plurality of protruding elements (including 71) that are disposed in staggered rows; wherein the plurality of protruding elements in staggered rows are arranged so as to cover a whole circumferential development of a cover layer (see Fig. 3); and wherein the plurality of protruding elements includes a first row of protruding elements, a first row of adjacent protruding elements circumferentially before the first row of protruding elements, and a second row of adjacent protruding elements circumferentially after the first row of protruding elements, where the first row of protruding elements partially overlaps, along a longitudinal direction, the first row of adjacent protruding elements and the second row of [adjacent] protruding elements (see Figs. 1-3).
Bird is analogous because Bird discloses a rolling, ground working implement having means for penetrating into the soil arranged so as to cover the whole circumferential development of a cover layer. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the above combination with the arrangement of protruding elements as taught by Bird in order to prevent having to re-work an area (see p. 1, col. 1) and/or to obtain good results (see p. 3, col. 1).
Regarding claim 64, Cour discloses an internal surface of each of each of the two rigid metal cover layers (including 9a, 9b) being configured to be, at least in part, in contact with a cylindrical surface of the metal roller around which each of the two rigid metal cover layers is configured to be applied (as shown in Fig. 2).
Regarding claim 65, Cour discloses a degree of curvature of each of the two rigid metal cover layers (including 9a, 9b) corresponding substantially to a degree of curvature of the metal roller on which each rigid metal cover layer (including 9a, 9b) is configured to be applied (see Figs. 2 and 4).
Regarding claim 66, Cour discloses each of the two rigid metal cover layers (including 9a, 9b) being a liner that is configured to be fitted onto the metal roller (see Figs. 2 and 4).
Regarding claim 67, Cour discloses the two rigid metal cover layers (including 9a, 9b) being made from a steel sheet (see col. 2, lines 6-13 and col. 3, lines 32-53).
Regarding claim 68, Cour discloses at least one of the two rigid metal cover layers (including 9a and/or 9b) comprising at least two sections of a cylinder surface (see col. 3, lines 32-53).
Regarding claim 69, Cour discloses the at least one of the two rigid metal cover layers (including 9a and/or 9b) having a semi cylindrical shape made of a semi cylindrical metal sheet (see col. 2, lines 6-13 and col. 3, lines 32-53).
Regarding claim 72, in view of the modification made in relation to claim 63, Wiedenmann teaches the means for facilitating the positioning comprising holes (for 16) defined on the at least one rigid cover layer which are configured to receive corresponding pins (including or of 16) extending radially outward from a cylindrical surface of the roller, or vice versa.
Regarding claim 73, Cour discloses the means for facilitating the positioning comprising at least two sets of pins (including 11 and/or 17) that are reciprocally spaced along a longitudinal or circumferential development of the metal roller (see Figs. 1 and 4).
Regarding claim 76, Cour discloses the planar pieces having at least one straight edge (see Figs. 2 and 4). Also, Bird teaches planar pieces (including 71) for aeration, wherein the planar pieces have at least one sharp external edge. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the above combination with the sharpened means as taught by Bird in order to prevent lifting and tearing of the soil surface.
Regarding claim 80, Cour discloses each of the two rigid metal cover layers (including 9a, 9b) comprising a flange portion (including 12 or 13) along its longitudinal sides.
Regarding claim 81, Cour discloses each of the two rigid cover layers having two longitudinal edges (see Figs. 1 and 4, wherein the flanges are along longitudinal edges), from which each flange portion (of 12, 13) extends radially (see Figs. 1 and 4).
Regarding claim 82, Cour discloses each flange portion (of 12, 13) of each rigid metal cover layer (including 9a, 9b) being configured, shaped and sized so as to be faced with a corresponding flange portion of an adjacent cover layer of the two rigid metal cover layers (see Fig. 4).
Regarding claim 83, Cour discloses the two rigid metal cover layers (including 9a, 9b) being reciprocally fastened at their longitudinal edges by a detachable coupling means (including 11).
Regarding claim 84, Cour discloses the coupling means (including 11) comprising mechanical fasteners (bolts) for securing together the two rigid metal cover layers (including 9a, 9b).
Regarding claim 85, Cour, Wiedenmann, and Bird teach the limitations of the kit in claim 63, as set forth above. Further, Cour discloses an apparatus for soil treating, comprising:
a metal roller (including 4, 5) with an attaching means (ends of 5 and/or including 7 or portions having 7) for attaching the metal roller to a drawbar of a tractor (as shown in Fig. 1) and the metal roller having a metal roller (including 4, 5) rotating about an axis of rotation (through 5) and having a cylindrical surface, capable of soil compacting; and
a kit as set forth above with respect to claim 63.
Regarding claim 86, Cour discloses the means for penetrating into the soil (including 14 or at least some thereof) being securely attached (in a manner similar to a weld) with the external surface of at least one of the two rigid metal cover layers (including 9a and/or 9b). Further, Bird teaches the means for penetrating into the soil (including 71) being removably associated with an external surface of a cover layer (see Figs. 9 and 10).
It is noted that the patentability of a product does not depend on its method of production (e.g., being welded). If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP § 2113.
Regarding 87, Cour discloses the two rigid metal cover layers (including 9a, 9b) having the same shape or size (see col. 3, lines 32-53).
Response to Arguments
Applicant’s arguments, see labeled p. 7, filed 5/16/2025, with respect to the have been fully considered and are persuasive. The § 1 of claims 63-69, 72, 73, 80, 81, 83, and 87 have been withdrawn. However, claims 76, 82, and 84-86 remain rejected under 35 U.S.C. 112(b) for the reasons set forth above.
Applicant's other arguments filed 5/16/2025 have been fully considered but they are not persuasive.
Applicant argues: "In particular, Bird teaches that the protruding element of one row partially overlaps the protruding element of the next row/next adjacent row. So, each row of protruding elements hit the ground at the same time, causing the roller to lift off the ground. However, the claimed protruding elements are staggered in the circumferential direction, and the protruding elements belonging to one row partially overlap the protruding elements of the nearest adjacent rows that come before and after the row. As such, the rows are staggered and the protruding element of one row overlaps the protruding element of the succeeding row and preceding rows, thus preventing the roller from being pushed off the ground each time a new row enters." (See Remarks of 5/16/2025, labeled p. 8.)
Applicant's argument is unpersuasive because neither protruding elements being staggered in the circumferential direction nor the functionality argued is claimed. Further, protruding elements of the same row being staggered relative to each other is not required by the claims. Rather, claim 63 recites "wherein the means for penetrating into the soil comprises a plurality of protruding elements that are disposed in staggered rows;" in lines 8-9 and "wherein the plurality of protruding elements that are disposed in staggered rows are arranged so as to cover a whole circumferential development of each of the two rigid metal cover layers;" in lines 15-17. First, Bird meets the claim language in the combination of the rejection because Bird teaches a plurality of protruding elements (including 71) that are disposed in staggered rows (as each horizontal row in Fig. 1 is staggered in the longitudinal direction relative to adjacent rows in circumferential directions), wherein the plurality of protruding elements that are disposed in staggered rows are arranged so as to cover a whole circumferential development of a cover layer (best depicted in Fig. 3), and Bird teaches that the protruding element of one row partially overlaps the protruding element of the next row/next adjacent row, as admitted by Applicant. Second, it is noted that Bird is also capable of being considered to have rows along the dashed lines in annotated Fig. B, below, wherein such rows are staggered in the circumferential direction in the same manner as shown by Applicant. Finally, it is also noted that Claussen et al. (US 9,674,996) teaches a plurality of protruding elements that are disposed in rows staggered in a circumferential direction (see Figs. 9A and 9B), wherein at least one row of protruding elements partially overlaps a protruding element of each adjacent row (see Figs. 9A and 9B).
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Figure B. Bird (US 1,858,948) annotated Fig. 1.
Applicant argues: "Further, Cour and the secondary references (Bird, Wiedenmann) do not teach a planar piece that has an inclined external edge which is joined to the internal edge by two lateral edges having different extensions; wherein the inclined external edge is narrower than the internal edge. In particular, the protruding element of Bird has an external edge that is wider than the internal edge." (See Remarks of 5/16/2025, labeled p. 8.)
Applicant's argument is unpersuasive because Cour teaches a planar piece that has an inclined external edge (see annotated Fig. A, above) which is joined to the internal edge by two lateral edges having different extensions (see annotated Fig. A, above), wherein the inclined external edge is narrower than the internal edge (see annotated Fig. A, above, wherein the inclined external edge has a shorter horizontal length than the internal edge). The end points of the claimed edges are effectively arbitrary because end points for any claimed edge are not defined (or limited in some other manner) as specifically set forth (i.e., as described and/or shown) in the specification. Further, the basis for the claim language of claim 81 (see the 'Claim Interpretation' section, above) supports an interpretation of two portions of the same edge being considered two edges. Accordingly, the planar piece of Cour identified in annotated Fig. A, above, meets the claimed edges and limitations thereof required by the claim.
Additionally, in the interest of compact prosecution, Applicant's argument is unpersuasive with respect to Bird because Bird teaches a planar piece that has an inclined external edge (see annotated Fig. C, below) which is joined to the internal edge by two lateral edges having different extensions (see annotated Fig. C, below), wherein the inclined external edge is narrower than the internal edge (see annotated Fig. C, below, wherein the inclined external edge has a shorter horizontal length than the internal edge). Again, the end points of the claimed edges are effectively arbitrary because end points for any claimed edge are not defined (or limited in some other manner) as specifically set forth (i.e., as described and/or shown) in the specification. As such, the external edge of Bird identified in annotated Fig. C, below, meets the term "external edge" and the limitations thereof required by the claim.
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Figure C. Bird (US, 1,858,948) annotated Fig. 9.
Additionally, Applicant argues: "It would not have been obvious to modify the external edge (A-C-B) of the soil working element 71 of Bird because this shape/construction of the edge help the element/device to leave the surface of the ground easily (see page 3, lines 99-103) and the rearward point B continually moving to the side at an increasing greater speed." (See Remarks of 5/16/2025, labeled p. 8.)
Applicant's argument is unpersuasive because no such modification has been made in rejecting the claims. Additionally, if another reference were added to the combination teaching protruding elements having a specific shape, such a reference would be further modifying the combination and not Bird itself.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. As noted above, Claussen et al. (US 9,674,996) teaches a plurality of protruding elements that are disposed in rows staggered in a circumferential direction (see Figs. 9A and 9B), wherein at least one row of protruding elements partially overlaps a protruding element of each adjacent row (see Figs. 9A and 9B). Also, Caron et al. (US 3,922,106) teaches protruding elements arranged and shaped as claimed.
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 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 Joel F. Mitchell whose telephone number is (571)272-7689. The examiner can normally be reached 9:30-6:00.
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/JFM/11/20/25
/CHRISTOPHER J SEBESTA/Supervisory Patent Examiner, Art Unit 3671