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 .
Response to Arguments
Applicant's arguments filed July 28, 2025 regarding the application of the prior art have been fully considered but they are not persuasive.
Applicant’s amendment to claim 8 does overcome the previous presented rejection under 35 USC 112(b).
Applicant’s arguments and further consideration by the Examiner has caused the Examiner to issue a second Non-Final rejection. The claims do not appear to comply with 35 USC 112(a), so a new rejection is being issued below.
In response to applicant's argument that “a ‘symmetrical’ arrangement, the problem addressed by the invention of claim 1 cannot even occur, because no paving material can be trapped behind an extendable screen”, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Additionally, as acknowledge by the Applicant, the Examiner does not rely on Brown to teach this claimed limitation of positioning of the screeds. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant has not provided an argument against the modification of Brown, therefore, this argument is not persuasive and the rejection is maintained.
Applicant argues that Brown discloses that the deflecting member is only active when the extensions are closed together, and therefore does not disclose wherein the deflecting member is active when the extensions are stationary as required by the claim. This specific limitation is now rejected under 35 USC 112(a) as noted below. However, the Examiner also does not find this argument persuasive. Brown does not teach that the deflecting members works “only” when the extensions are moving, and given that the beveled edges and strike-plate always are present, they can always function when they encounter paving material. There is no evidence that Brown cannot function in this manner. Furthermore, the claim does not require all paving material, nor pacing material from a certain location to be moved toward the central axis, therefore, any paving material that is deflected would meet the limitations of the claim. Therefore, this argument is not persuasive and the rejection is maintained. This interpretation of Brown, as maintained below, is keeping in line with the written description of the instant invention (as discussed in more detail below regarding the rejection under 35 USC 112(a)).
Applicant further argues that Brown fails to disclose a shielding element as claimed and that the elements of Brown (71, 102, 100) “simply cannot prevent paving material from being pushed laterally beyond a width of the base screed”. However, the claim requires that the paving material lying in front of the screed is not pushed laterally wider than the screed. As Brown discloses that paving material in front of the screed is plowed under the screed (“simply plowed under”), Brown does disclose that the material is not pushed wider than the screed. Therefore, this argument is not persuasive and the rejection is maintained.
Applicant finally argues that Aimoto does not cure the deficiencies of Brown. Applicant argues that one of ordinary skill would not be motivated to modify Aimoto. Examiner has not made this argument, to modify Aimoto, so this argument is moot as well as unpersuasive. Therefore, the rejection is maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claims 1 and 17 recite “a material deflecting member configured to displace paving material laterally toward a central axis of the screed arraignment when the first extending screed is stationary relative to the base screed while the screed arrangement is pulled in the pulling direction”. This limitation is not supported by the specification, most specifically the underlined sections noted. Despite the recitation in the originally filed claims, which are repeated in the summary section (specifically [0008]), there is no support or description for these features. In fact, there are multiple instances that the deflecting members are utilized when the screeds are retracted and not when stationary (see [0010 - “so that when this extending screed is retracted, no paving material is jammed...”], [0025 - “the active position, the positioning of the material deflecting member at an angle to the pulling direction ensures that the paving mix is displaced towards a central axis of the screed arrangement when the extending screeds are retracted”], [0026 - “allows the paving material to be pushed away to the front when the extending screed(s) retract(s)”], [0045 - “material deflecting member 10 allows the paving mix to be displaced from an area 12 of the screed arraignment 4 when the extending scree 5 retracts”], [0047 - “material deflecting member 10' allows paving mix to be displaced from an area 12' of the screed arrangement 4 when the second extending screed 6 retracts”]). There is also no description that the screeds are retracted while the screeds are pulled in the pulling direction. There is also no description of the deflecting member being utilized while the screed arraignment is pulled in the pulling direction. Therefore, the specification fails to comply with 35 USC 112(a).
Claims 2-16 and 18-20 are rejected for depending from a rejected 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.
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.
Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Brown US Patent 4,379,653 hereinafter referred to as Brown in view of Aimoto et al JP 2000192417 hereinafter Aimoto.
Regarding claims 1 and 17, Brown discloses a screed arrangement (see Figures 2- 24) for a road paver (30) comprising a base screed (41, 42), a first extending screed (63) and a second extending screed (64), the first extending screed and the second extending screed being arranged in front of the base screed in a pulling direction (as shown on Figure 16, (64) is shown in front of base screen (42) in the pulling direction shown by the arrow on the top right corner of Figure 16) of the screed arrangement and being movable transversely to the pulling direction relative to base screed (as shown on Figure three by the arrows showing the extending direction of the screeds - see also Column 5, lines 37-57), wherein the first extending screed includes a material deflecting member (73) configured to displace paving material toward a central axis to the pulling direction of the screed arrangement when the first extending screed is stationary relative to the base screed (Column 6, lines 10-14), the base screed comprises a shielding element (71, 102, 100), and the shielding element is configured to prevent displacement of the paving material lying in front of the base screed laterally beyond a width of the base screed during retraction of the first extending screed (Column 6, lines 3-11).
Brown fails to disclose wherein the second extending screed is positioned further from the base screed than the first extending screed in the pulling direction. Aimoto teaches an analogous road paver (1) with a screed arrangement (see Figures 1a-d and 2a-d). Aimoto teaches that the base screed (6) can be closest to the paver in the pulling direction (A) (Figure 2a), furthest away from the paver in the pulling direction (Figure 2b), multiple screeds the are in series (Figures 2a, 2b, and 2d), or two single extendable screeds that are in series (Figure 2c). While Brown fails to disclose the claimed orientation, it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. See also, In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the arrangement of Brown to the claimed arrangement because rearrangement of parts involves only routine skill in the art and Aimoto teaches the claimed arrangement of the screeds. Furthermore, Aimoto teaches that this arrangement allows for more controlled overlap leading to a smoother leveled material with a gentler slope upon finish [0015-0016].
Regarding claim 2, Brown as modified by Aimoto further teaches wherein the central axis is parallel to the pulling direction, each extending screed has an inner side and an outer side, the inner side is closer to the central axis than the outer side in an extended position of the respective extending screed, and the material deflecting member is arranged on the inner side of the first extending screed (see the figures of both Brown and Aimoto).
Regarding claim 3, Brown further teaches wherein the shielding element is present as a plate fastened laterally to a base screed body of the base screed and extending beyond the base screed body in the pulling direction (see Figure 3 of Brown).
Regarding claim 4, Brown further teaches wherein the shielding element is formed substantially at a same height as the first extending screed and/or the shielding element extends in the pulling direction corresponding to a working depth of the first extending screed (see Figure 16).
Regarding claim 5, Brown further teaches wherein the shielding element is configured such that it can be adjusted and/or dismantled in the pulling direction relative to the base screed (see Figure 16 which shows the plate is connected via bolts which allows for dismantle).
Regarding claim 6, Brown further wherein the shielding element is formed as part of a sideshift (100, 102, 101, 71) of the base screed (see Figure 16).
Regarding claim 7, Brown further teaches wherein the second extending screed also has a material deflecting member (74) configured for displacing paving material.
Regarding claim 8, Brown further teaches wherein the first extending screed has a shielding element (43) for the material deflecting member of the second extending screed.
Regarding claim 9, Brown further teaches wherein the material deflecting member and/or the shielding element can be heated (Column 4, line 63 to Column 5, line 10).
Regarding claim 10, Brown further teaches wherein the material deflecting member is rigidly formed on the first extending screed (as shown it is attached).
Regarding claims 11 and 12, Brown further teaches wherein the material deflecting member is adjustable relative to an extending screed body of the first extending screed (without more in the claim, everything is removable and therefore adjustable relative to).
Regarding claim 13, Brown further teaches wherein the material deflecting member is in the form of a plow structure (as shown).
Regarding claim 14, Brown further teaches wherein the material deflecting member extends in plan view at a non-zero angle to the pulling direction (see Figure 3).
Regarding claim 15, Brown further teaches wherein the screed arrangement comprises a screed operating station (30) at the base screed, and facing the first extending screed (see Figure 1).
Regarding claim 16, Brown and Aimoto teach a road paver (30 of Brown) comprising the screed arrangement according to claim 1 (see the rejection of claim 1 above).
Regarding claim 18, Brown further teaches wherein the material deflecting member slopes in plan view (as shown on Figure 2).
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Brown and Aimoto as applied to claims 2 and 17 above, and further in view of Angermann US Patent Application Publication 2011/0305509 hereinafter referred to as Angermann.
Brown and Aimoto teaches the screed arrangements as claimed, but fail to teach an adjustable deflecting member. Angermann, an analogous screed arrangements teaches deflecting members (9) located on extendable screeds (4, 5) which are controllably adjusted [0041-0043]. It would have been obvious to one having ordinary skill in the art at the time the invention was filed so substitute the beveled edges of Brown with the adjustable deflection members of Angermann to yield the predictable result of deflecting paving material and advantageously allowing control of the use of the members to no affect the paving process [0016].
Conclusion
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/TARA SCHIMPF/ Supervisory Patent Examiner, Art Unit 3676