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 .
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.
Election/Restrictions
Applicant's election with traverse of Species I and IV in the reply filed on 10/13/2025 is acknowledged. The traversal is on the ground(s) that Figures 8 and 15A-D do not show a screed with a concave, downward, ground-engaging surface and merely illustrate different perspective views of the hand-held screed raking device 100. This argument is confusing because Applicant’s claim 14 recites the limitation “the concave arced dozer front face is angled downwardly”. However, since Applicant is arguing that Figures 8 and 15A-D are merely a different view of the screed rake 100, the claims will be examined as such.
The requirement is still deemed proper and is therefore made FINAL.
It is noted that the elected species only have a concave surface, and that the species with a convex surface was not elected. Claims 2, 17, 30, and 39 contain the limitation “comprises one of a concavely arced face and a convexly arced face”. Appropriate correction is required.
Drawings
The drawings are objected to because the specification discloses on page 30 “FIG. 15A depicts the underside shoe 103 having…”; “FIG. 15B depicts the underside shoe 103 having…”; “FIG. 15C depicts the underside shoe 103 having…”; and “FIG. 15D depicts the underside shoe 103 having…”. However, not only is reference numeral 103 not shown, there is no indication in any of Figures 15A-D that there is any shoe at all, as the textured bottom surface appears to be monolithic with the screed head. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 1-9, 11-13, 14-23, 26-27 and 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-9, and 12 of U.S. Patent No. 10,480,134 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 of the patent (which depends from claim 1) covers the limitations of claims 1-2 and 11-12 of the instant application. Claim 6 of the patent covers claims 5 and 6 of the instant application. Claim 8 of the patent (which depends from claims 6 and 1) covers claim 7 of the instant application. Claim 9 of the patent covers claim 8 of the instant application. Claim 12 of the patent covers claim 9 of the instant application. And claim 7 of the patent covers claim 13 of the instant application. While the patent fails to explicitly disclose the limitations claimed in claims 3 and 4 of the instant application, it appears that a concavely arced dozer front face (as claimed in claim 1 of the patent) would be capable of preventing the screed head from lifting upward (since the bottom front tip would cut into the paving material) as the hand-held screed rake is operated by a user to apply and compact a paving material onto a surface in a non-segregating manner and the concavely arced dozer front face would be structurally configured to gather a paving material and the underside shoe would be configured to spread the paving material, a core function of a screed being to spread paving material. Claims 14-23 and 25-26 are simply the subcombination (screed head) of the combination (screed) claimed in claims 1-9 and 11-13 of the instant application, and since the limitations are the same they would also be covered by the patent as detailed above.
Claim 27 of the instant application is a combination of limitations from claims 1, 3, and 11 of the instant application, and is therefore covered by the patent as detailed above. Claims 28-32 and 34-35 of the instant application contain limitations that are the same as limitations in claims 1, 2, 4, 7, 9, 12, and 13 of the instant application, and are therefore covered by the patent as detailed above.
Claim 36 of the instant application is a combination of limitations from claims 1 and 3 of the instant application (with “lifting away from a paving surface” being synonymous with “lifting upward”, “surface facing plate” being synonymous with “bottom plate”, and “shoe” being synonymous with “underside shoe) and is therefore covered by the patent as detailed above. Claims 37-41 and 43-46 of the instant application contain limitations that are substantially the same as limitations in claims 2, 4-5, 7-9, and 11-13 of the instant application, and are therefore covered by the patent as detailed above.
Claim 10, 24, 33, and 42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,480,134 B1 in view of GB 1078495 A. While the patent fails to explicitly disclose the limitation claimed in each of claims 10, 24, 33, and 42, claim 1 of the patent discloses “an underside shoe comprising: an upwardly angled leading surface”. GB 1078495 A teaches a pavement iron, which is basically a screed for smoothing paving material, and shows in Figure 2 an attachable bottom section (2) that is analogous with the underside shoe and shows an upwardly angled leading surface (top surface of 2 which is immediately under 11), that attachable bottom section having a thickness in a direction orthogonal to a bottom plate decreasing from the leading surface to the back end. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the thickness of the underside shoe to be as claimed in view of GB 1078495’s disclosure based on design choice.
Claim Interpretation
While all of the claims recite “screed rake”, Applicant’s specification and figures are not in accordance with the conventional definition of a rake, having projecting prongs or tines. Applicant’s paragraph [0014] discloses that the bottom surface could be a smooth bottom surface, and Figures 1 and 2 show a completely flat, smooth, solid bottom surface. Therefore, all instances of “screed rake” will be considered simply as “screed”.
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.
Claims 14-26 and 39 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 14-26 are confusing as written. Claim 14 appears to claim the structure of the screed head from claim 1 (such as shown in Figure 1) but simply rotated (such as shown in Figures 15A-D); the claim language is confusing because the “bottom” in claim 1 should no longer be a bottom in claim 14. The terminology for relative positions (bottom, underside, upwardly, downwardly, etc.) used in claims 14-26 become meaningless and are therefore confusing.
Claim 14 recites the limitation "the concave arced dozer front face" in lines 5 and 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites “underside show” in the third line. There is insufficient antecedent basis for this limitation in the claim. It is assumed that this is a typographical error and should read “underside shoe”.
Claim 39 recites “the dozer front face” in the first line. There is insufficient antecedent basis for this limitation in the claim. It is assumed that Applicant intended “the dozer face” as introduced in claim 36.
Correction in each instance 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)(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 1-7, 9, 36, 39-41, and 45 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Silva, US 5,609,437.
Regarding claim 1, Silva teaches a hand-held screed rake comprising:
a screed head (12) having an arced dozer front face (24+60), a back plate (62) and a bottom plate (22; Figure 2) that is connected to the arced dozer front face and the back plate at an angle; and an underside shoe (14) removably attachable (column 2 lines 18-19) to the screed head and having a leading surface (front plate of shoe) that is angled upwardly towards the bottom plate and a bottom surface (bottom of shoe) that trails away from the leading surface to a back end of the underside shoe, wherein the underside shoe abuts against the arced dozer front face and is conformably secured to the bottom plate when the underside shoe is attached to the screed head (Figures 1 and 2).
Regarding claim 2, the arced dozer front face comprises a concavely arced face extending away from the bottom surface.
Regarding claim 3, the arced dozer face is structurally capable of preventing the screed head from lifting upward as the hand-held screed rake is operated by a user to apply and compact a paving material onto a surface in a non-segregating manner, as the channel 60 would help to scoop a raised portion that might cause the screed head to lift up, and as the user pushes the screed forward with a pole handle, the scooped portion would be spread out, and Silva discloses that screed can have vibrating means (column 4 lines 63-64) which would help to compact the paving material in a non-segregating manner. It is noted that there is no structural limitation claimed to achieve this result.
Regarding claim 4, the arced dozer front face is structurally capable of gathering a paving material (in channel 60) and the underside shoe is configured to spread the paving material (the underside shoe bottom surface is smooth and a core function of a screed is to spread the paving material). It is noted that there is no structural limitation claimed to achieve this result.
Regarding claim 5, as shown in Figures 1-2, the bottom surface of the underside shoe comprises a smooth surface.
Regarding claim 6, Silva further discloses that the bottom surface of the underside shoe comprises a textured surface (column 5 lines 6-8).
Regarding claim 7, Silva further discloses that the screeding surface could include a plurality of teeth, which when applied to the surface of the paving material would cause a V-shaped or block-shaped cross-sectional pattern depending on the shape of the teeth.
Regarding claim 9, Silva further discloses screw fasteners commonly used in the art could also be employed to attach the shoe to the screed head (column 4 lines 40-43), a bolt being a common screw fastener.
Regarding claim 36, Silva teaches a screed rake comprising:
a screed head (12) having a dozer face (24+60) capable of preventing the screed head from lifting away from a paving surface since the dozer face has channel 60 which would help to scoop a raised portion that might cause the screed head to lift up, and as the user pushes the screed forward with a pole handle, the scooped portion would be spread out, a surface facing plate (22; Figure 2) that faces the paving surface as the screed rake applies the paving material thereto, and a screed back (62) that is connected to the dozer face and the surface facing plate at an angle; and
a shoe (14) removably attachable (column 2 lines 18-19) to the screed head and having a first surface (front plate of shoe) that is angled towards the surface facing plate and a second surface (bottom of shoe) that trails away from the first surface to a back of the shoe, wherein the shoe abuts against the dozer face and is conformably secured to the surface facing plate when the shoe is attached to the screed head (Figures 1 and 2).
Regarding claim 39, the dozer face comprises a concavely arced face in a direction extending away from the paving surface since the paving surface would be underneath the screed rake in use.
Regarding claim 40, the dozer face is structurally capable of gathering a paving material (in channel 60) and the shoe is configured to spread the paving material (the undershoe bottom surface is smooth and a core function of a screed is to spread the paving material). It is noted that there is no structural limitation claimed to achieve this result.
Regarding claim 41, Silva further discloses screw fasteners commonly used in the art could also be employed to attach the shoe to the screed head (column 4 lines 40-43), a bolt being a common screw fastener.
Regarding claim 45, as shown in Figures 1-2, the second surface of the shoe comprises a smooth surface.
Claim Rejections - 35 USC § 103
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 8, 14-23, and 37-38 are rejected under 35 U.S.C. 103 as being unpatentable over Silva as applied above, alone.
Regarding claim 8, while Silva fails to disclose that the respective cross-sectional pattern of the textured surface has at least one of an amplitude or height that decreases in size as the bottom surface trails away from the leading surface to the back end of the underside shoe, this appears to only affect the shape of the grooves in the paving material. It has been held that a mere change in shape is not a patentable distinction. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the respective cross-sectional pattern of the textured surface to have at least one of an amplitude or height that decreases in size as the bottom surface trails away from the leading surface to the back end of the underside shoe based on obvious design choice, especially in light of Silva disclosing that the bottom surface is used to impart any particular texture.
Regarding claim 14, Silva teaches a hand-held screed rake head comprising:
an arced dozer front face (24+60), a back plate (62) and a bottom plate (22; Figure 2) that is connected to the arced dozer front face and the back plate at an angle.
While Silva fails to disclose that the concave arced dozer front face is angled downwardly relative to the back plate to taper away therefrom, the claim limitation would be met if the screed was rotated (looking at Figure 1, the screed’s handle would be directed out of the page instead of into the page as shown). It has been held that a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2nd 1647. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Silva’s screed to use the tool in a different way by rotating the screed based on a different intended use, such as simply shifting a mound of paving material from one location. The resulting combination includes the concave arced dozer front face being angled downwardly relative to the back plate to taper away therefrom, and the bottom plate extends away from the concave arced dozer front face at an angle relative to the back plate.
Regarding claim 15, the resulting combination includes the bottom plate (22) being structurally configured to receive an underside shoe (14) that is removably attachable thereto (column 2 lines 18-19), with the underside shoe having a leading surface that is angled upwardly towards the bottom plate and a bottom surface that trails away from the leading surface to a back end of the underside shoe.
Regarding claim 16, the resulting combination includes the underside shoe being configured to abut against the arced dozer front face and is conformably secured to the bottom plate when the underside shoe is attached to the screed head (Figures 1 and 2 modified by rotating).
Regarding claim 17, the resulting combination includes the arced dozer front face comprising a concavely arced face extending away from the bottom surface.
Regarding claim 18, it would appear that the arced dozer face is structurally capable of preventing the screed head from lifting upward as the hand-held screed rake is operated by a user to apply and compact a paving material onto a surface in a non-segregating manner, as the channel 60 would help to shift a raised portion that might cause the screed head to lift up, and as the user pushes the screed forward with a pole handle, that portion would be spread out, and Silva discloses that screed can have vibrating means (column 4 lines 63-64) which would help to compact the paving material in a non-segregating manner. It is noted that there is no structural limitation claimed to achieve this result.
Regarding claim 19, the arced dozer front face is structurally capable of gathering a paving material (in channel 60) and the undershoe is configured to spread the paving material (the undershoe bottom surface is smooth and a core function of a screed is to spread the paving material). It is noted that there is no structural limitation claimed to achieve this result.
Regarding claim 20, the resulting combination includes the claimed limitation, since Silva further discloses that the bottom surface of the underside shoe comprises a textured surface (column 5 lines 6-8).
Regarding claim 21, the resulting combination includes the claimed limitation, since Silva further discloses that the screeding surface could include a plurality of teeth, which when applied to the surface of the paving material would cause a V-shaped or block-shaped cross-sectional pattern depending on the shape of the teeth.
Regarding claim 22, while Silva fails to disclose that the respective cross-sectional pattern of the textured surface has at least one of an amplitude or height that decreases in size as the bottom surface trails away from the leading surface to the back end of the underside shoe, this appears to only affect the shape of the grooves in the paving material. It has been held that a mere change in shape is not a patentable distinction. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the respective cross-sectional pattern of the textured surface to have at least one of an amplitude or height that decreases in size as the bottom surface trails away from the leading surface to the back end of the underside shoe based on obvious design choice.
Regarding claim 23, the resulting combination includes the claimed limitation, since Silva further discloses screw fasteners commonly used in the art could also be employed to attach the shoe to the screed head (column 4 lines 40-43), a bolt being a common screw fastener.
Regarding claim 37, Silva further discloses that the second surface of the shoe comprises a textured surface (column 5 lines 6-8). While Silva fails to disclose that the textured surface has at least one of an amplitude or height that decreases in size as the textured surface trails away from the dozer face, this appears to only affect the shape of the grooves in the paving material. It has been held that a mere change in shape is not a patentable distinction. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the respective cross-sectional pattern of the textured surface to have at least one of an amplitude or height that decreases in size as the bottom surface trails away from the leading surface to the back end of the underside shoe based on obvious design choice.
Regarding claim 38, since Silva further discloses that the screeding surface could include a plurality of teeth, which when applied to the surface of the paving material would cause a V-shaped or block-shaped cross-sectional pattern depending on the shape of the teeth, the resulting combination includes the limitation claimed.
Claims 12 and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Silva as applied above in view of Woods, US 2,692,641.
Regarding claim 12, while Silva discloses the handle (58) to be connected to a top of the screed head rather than the back plate, Woods teaches a screed with a handle and discloses the handle to be attached to a back plate (Figures 1 and 3). It has been held that rearrangement of parts involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to locate the handle to be connected to the back plate based on obvious design choice.
Regarding claim 43, while Silva discloses the handle (58) to be connected to a top of the screed head rather than the screed back, Woods teaches a screed with a handle and discloses the handle to be attached to a screed back (Figures 1 and 3). It has been held that rearrangement of parts involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to locate the handle to be connected to the screed back based on obvious design choice.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. GB 357944 A is cited for teaching a screed with an arced dozer front face.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE J CHU whose telephone number is 571-272-7819. The examiner can normally be reached M-F generally 9:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Sebesta can be reached at 571-272-0547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE J CHU/Examiner, Art Unit 3671
/CHRISTOPHER J SEBESTA/Supervisory Patent Examiner, Art Unit 3671