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 .
DETAILED ACTION
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 15 - 20 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.
Regarding claim 15, it is unclear how many filler blade(s) are recited in the claim. Line 20 of claim 15 recites "one or more filler blades". However, line 22 of claim 15 recites "a first filler blade", line 24 of claim 15 recites "a second filler blade", and line 25 of claim 15 recites "a third filler blade". Examiner agrees with Applicant that the “first, second, and third filler blades” constitute the “one or more filler blades”. However, Examiner maintains that it is unclear how “first, second, and third filler blades” can constitute less than three filler blades. Given that the claim requires three separate filler blades, the “one or more filler blades” must include at least three blades. Therefore, Examiner has interpreted “one or more filler blades” as “three or more filler blades”, as best understood. Claim 18 contains a similar error.
Regarding claim 15, it is unclear how many packing wheel(s) are recited in the claim. Line 20 of claim 15 recites "at least one packing wheel". However, line 26 of claim 15 recites "a first packing wheel" and line 28 of claim 15 recites "a second packing wheel". Examiner agrees with Applicant that the “first and second packing wheels” constitute the “at least one packing wheel”. However, Examiner maintains that it is unclear how “first and second packing wheels” can constitute less than two packing wheels. Given that the claim requires two separate packing wheels, the “at least one packing wheel” must include at least two packing wheels. Therefore, Examiner has interpreted “at least one packing wheel” as “two or more packing wheels”, as best understood. Claim 18 contains a similar error.
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 - 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,441,292. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, claim 4 of the ‘292 patent recites all of the structural limitations recited in claim 1 of the present application. Although claim 4 of the ‘292 fails to explicitly teach at least one first packing wheel “configured to be disposed at least partially within the trench”, the aforementioned limitation represents intended use and is not given patentable weight in an apparatus claim. The apparatus as recited in claim 4 of the ‘292 patent is capable of performing aforementioned the intended use given an appropriately-sized trench.
Regarding claim 15 of the present application, claim 4 of the ‘292 patent recites all of the structural limitations recited in the aforementioned claim of the present application. Although claim 4 of the ‘292 fails to explicitly teach at least one packing wheel configured to be disposed “at least partially within the trench”, the aforementioned limitation represents intended use and is not given patentable weight in an apparatus claim. The apparatus as recited in claim 4 of the ‘292 patent is capable of performing aforementioned the intended use given an appropriately-sized trench. Claim 4 of the ‘292 patent fails to explicitly recite the apparatus is “configured to, in a single pass, dig the trench, dispose at least a portion of the hose into the trench, dispose the first portion of the removed soil into the trench, and pack the at least a portion of the first portion of the removed soil in the trench”. However, given the structural elements as recited in claim 4 of the ‘292 patent and the arrangement of said structural elements on the claimed apparatus, the apparatus is obviously “configured to, in a single pass, dig the trench, dispose at least a portion of the hose into the trench, dispose the first portion of the removed soil into the trench, and pack the at least a portion of the first portion of the removed soil in the trench”.
Regarding claim 18 of the present application, claim 4 of the ‘292 patent recites all of the structural limitations recited in the aforementioned claim of the present application. Although claim 4 of the ‘292 fails to explicitly teach one or more packing wheels “configured to be disposed at least partially within the first and second trenches”, the aforementioned limitation represents intended use and is not given patentable weight in an apparatus claim. The apparatus as recited in claim 4 of the ‘292 patent is capable of performing aforementioned the intended use given an appropriately-sized trenches. Claim 4 of the ‘292 patent fails to explicitly recite the apparatus is “configured to, in a single pass, dig the first and second trenches, dispose at least a portion of the hose into at least one of the first and second trenches, dispose at least a first portion of the removed soil into the first and second trenches with one or more filler blades of the first and second trench filler-packers, respectively, and pack at least a portion of the first portion of the removed soil in the first and second trenches with one or more packing wheels of the first and second trench filler-packers, respectively”. However, given the structural elements as recited in claim 2 of the ‘292 patent and the arrangement of said structural elements on the claimed apparatus, the apparatus is obviously “configured to, in a single pass, dig the first and second trenches, dispose at least a portion of the hose into at least one of the first and second trenches, dispose at least a first portion of the removed soil into the first and second trenches with one or more filler blades of the first and second trench filler-packers, respectively, and pack at least a portion of the first portion of the removed soil in the first and second trenches with one or more packing wheels of the first and second trench filler-packers, respectively”.
Response to Arguments
Applicant's arguments filed 12 December 2025 have been fully considered but they are not persuasive.
Applicant argues that there is no question that the first, second, and third filler blades constitute the one or more filler blades. Examiner agrees with Applicant that the “first, second, and third filler blades” constitute the “one or more filler blades”. However, Examiner maintains that it is unclear how “first, second, and third filler blades” can constitute less than three filler blades. Given that the claim requires three separate filler blades, the “one or more filler blades” must include at least three blades. Therefore, Examiner has interpreted the “one or more filler blades” as “three or more filler blades”, as best understood.
Applicant argues that there is no question that the first and second packing wheels constitute the at least one packing wheel. Examiner agrees with Applicant that the “first and second packing wheels” constitute the “at least one packing wheel”. However, Examiner maintains that it is unclear how “first and second packing wheels” can constitute less than two packing wheels. Given that the claim requires two separate packing wheels, the “at least one packing wheel” must include at least two packing wheels. Therefore, Examiner has interpreted the “at least one packing wheel” as “two or more packing wheels”, as best understood.
The terminal disclaimer filed 12 December 2025 has been disapproved because the applicant name should be exactly as it is on the ADS (uppercase/lowercase letters).
Conclusion
THIS ACTION IS MADE FINAL. 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 SEAN D ANDRISH whose telephone number is (571)270-3098. The examiner can normally be reached Mon-Fri: 6:30 AM - 4:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Anderson can be reached at 571-270-5281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN D ANDRISH/Primary Examiner, Art Unit 3678
SA
12/30/2025
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