REISSUE OFFICE 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 .
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,842,070 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08-11-2025 has been entered.
Reissue Amendment of 08-11-2025
The amendment to the claims fails to meet the requirements of the proper manner in which to make amendments in reissue applications. MPEP 1453 and 37 CFR 1.173 detail that text deleted from the original patent claims must be marked by enclosing the text within single brackets; and text added to the original specification and claims must be underlined.
In amending the claims, reissue guidelines require that they must be amended relative to the original printed patent, not relative to any previous amendment. In claim 1 line 5 the word “range” is not underlined or bracketed but the word in the original patent claim is “rang”. Therefore, the proper annotation in reissue claim 1 would be [rang] range. In line 6, the word “position;” should be “positions;”. In claim 2 line 3, “wheel and/or” should be “wheel [and] and/or”.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation 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. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
An example is “means for securing the spindles in place relative to the tool bar” in claims 7 and 8.
Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a locking mechanism that is capable of locking, at any point of the range of pivoting, the relative position of the disc coulter and the tool bar at any of the pivoting position” in claim 1; and “a locking mechanism that is capable of locking, at any point in the range of pivoting, the relative position of the disc coulter and the tool bar at any of the pivoting positions” in claim 3.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Corresponding Structure
The corresponding structure for the locking mechanism and securing means is the disclosed locking pins, set screws, pins, plates, or the like, and may include the above combined with notches, grooves, or other indents on the spindles which are sized and configured to receive the locking pins, set screws, pins, plates, or the like-see col. 3 lines 31-55. However, as explained below the examiner contends that some other unknown and undisclosed structure is necessary to allow the locking pin to perform all the functions of the claimed locking mechanism, and therefore the corresponding structure is ultimately unclear.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. As shown below in the 112 1st rejection the following structure is not disclosed or shown in the drawing figures: the “means for securing the spindles in place relative to the tool bar”, “a locking mechanism that is capable of locking, at any point of the range of pivoting, the relative position of the disc coulter and the tool bar at any of the pivoting position” and positioning of the coulters at any angle in claim 1; and “a locking mechanism that is capable of locking, at any point in the range of pivoting, the relative position of the disc coulter and the tool bar at any of the pivoting positions” and positioning of the coulters at any angle in claim 3 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 be labeled as “Amended.” Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as “Replacement Sheet”. 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.
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 1-5, 7 and 8 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 claims 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 inventors, at the time the application was filed, had possession of the claimed invention.
With respect to (WRT) claims 1 and 3, there is no adequate written description support for a locking mechanism of a spindle that is capable of “locking at any point of the range of pivoting, the relative position of the disc coulter and the tool bar at any of the pivoting position” and the positioning of the coulters is lockable at any of the angles. There is no detail of the inside of the tool bar housing (the housing that receives locking pins 4130, 4131 and spindles 4135, 4136 (see Fig. 5 and 6)) such that a clear interaction of these components is discussed or shown in the Figures. According to the claim the spindles must be capable of pivoting unencumbered by any means of specific preset positions at specific discrete angles. It must have a free angular range of pivoting motion and then must be lockable at any angular position within this angular range, again meaning no pre-set positions. This is because of the claim language “locking at any point of the range of pivoting … at any of the pivoting positions”, along with “positioning of the disc coulters relative to the tool bar is lockable at any of the angles of the disc coulters relative to the tool bar”. Without any specific detail in the text or drawings it is unclear how this could be achieved given the structure that is shown or disclosed in the drawing Figures and specification. What structure is provided inside the housing that both provides a counterforce to the pin 4130 which is necessary for locking the spindle and coulter relative to the tool bar housing, and which also would not provide specific preset angular positions for the spindle? It is unclear, and in fact highly unlikely that the locking pin 4130 alone would be able to impinge upon a spindle 4135 which is at a non-perpendicular angle thereto as seen in Figures 5 and 6, such that the coulter can be locked in an angular position relative to the tool bar. The surfaces of the locking pin and a spindle would not be able to interact in such a manner that the two could lock the coulter relative to the tool bar because there is no evident counter-force from below the spindle opposite the pin 4130 to oppose the clamping force provided by the locking pin. This means further advancement of the pin after it contacts the spindle would simply continue to push the spindle further down and into another angle.
Similarly, amended claim 5 adding that the spindle is capable of pivoting when the locking pin is in the unlocked position and is not capable of pivoting when the locking pin is in the locked position also is not adequately described in the specification or shown in the figures such that it is clear the inventor had possession of the claimed invention. Given the lack of disclosure as to how this locking pin or set screw could perform the claimed functions alone, the above cited claim text is not adequately supported by the written disclosure or the drawing figures. Applicant has already argued in the prosecution of the original patent application that serrations of Langley’s ribbed rose plate 17 produces preset angular positions which fail to meet the claim limitation of “at any point of the range of pivoting”. Therefore the disclosure lacks a sufficient written description such that it is clear the inventor had possession of the claimed invention.
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 1-5, 7 and 8 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.
With respect to (WRT) claim 1, there is no antecedent basis for “the range of pivoting”, “the pivoting position”, and “the angles”.
WRT claim 3, there is no antecedent basis for “the range of pivoting”, “the pivoting positions”, and “the angles”.
WRT claim 4, it is unclear if a second spindle is being claimed or should be referring to the one already recited in claim 3. Clarification and correction is required.
Response to Arguments
The examiner previously noted that the ADS in the application (16/154,946) that matured into the ‘070 patent was improper which caused the application to issue without the correct continuing data printed on the patent. Applicant filed a petition to accept an unintentionally delayed benefit claim in the underlying ‘946 application along with a corrected ADS and requested a new filing receipt, but the office has not acted on any of these submissions. Without this correction no reissuance of the ‘070 patent can take place. No maintenance fees are due at this time.
On page 6 of the response Applicant argues that Fig. 4-6 and col. 3 lines 31-55 show and explain how the spindles and coulters are locked in place. The examiner disagrees. There is absolutely no original disclosure that states that a locking mechanism of the spindles can lock the coulter at any point in the range of pivoting at any angle (argued by Applicant that these claim limitations specifically do not include specific discrete predetermined angles). And even if there were the examiner contends that the specification and drawings fail to adequately disclose sufficient structure in order to carry out these functions. The examiner sees no manner in which the disclosed and shown structure by itself is capable of achieving all of these functions. Applicant states that the specification shows and describes locking pins passing through a threaded portion of the tool bar to engage the spindles as seen in Fig. 5. Applicant also states that this is a clear and unambiguous disclosure understood by one of ordinary skill in the art. The examiner disagrees. The 112 1st rejection is not one of lack of enablement, it is one of an inadequate written description of the claimed invention. As MPEP 2163 I clearly points out the written description requirement of 112 1st is separate and distinct from the enablement requirement. An adequate written description of the invention requires that a person skilled in the art (POSITA) be able to clearly recognize that inventor had possession of the claimed invention. This is different than stating that a POSITA could figure out a way in which to make and use the claimed invention.
Point 1-what part of the spindle constitutes the locking mechanism? The only part of the spindle that in any way could be related to a locking mechanism is the disclosed but not shown notches, grooves or indents for receiving a locking pin. Nothing else is disclosed. However, these are not the claimed locking mechanism because the claim language calls for locking the spindle at any point of the range of pivoting the relative position of the coulter and the tool bar at any of the pivoting position, and coulters positioning is lockable at any of the angles of the coulter relative to the tool bar. The use of these notches, grooves or indents have been repeatedly stated and argued by Applicant as not allowing locking at any point of the pivoting range; but only in discrete, predefined angles. Additionally, the locking pin or set screw is not part of the spindle.
Point 2-While the examiner agrees that a POSITA knows what a set screw is and how it works, the examiner strongly disagrees that a POSITA looking at any of the Figures and reviewing all the written description would understand that locking pin or set screw 4130 may be tightened until they impinge on the spindle within the tool bar housing thereby locking the spindle in place relative to the tool bar. Without a figure showing how the pin or screw 4130 interacts with the spindle it is inconceivable how a conventional set screw, or locking pin, etc. could work in the manner claimed.
Consider the following: looking at FIG. 5, completely remove the set screw 4130 from housing and what happens? Given the lack of any disclosure of the structure inside of the housing the weight of the coulter would cause the spindle 4135 to pivot downward to its lowest position (most likely the point at which the spindle contacted the hole in the housing that the spindle is received within) meaning the bottom of the coulter would move toward the bottom of adjacent coulter 4115. The user could then insert screw 4130 and advance it until it contacts the spindle and it would lock it there in place. But then consider the user wanted a more upright angle so the user backed out screw 4130 a certain amount. The user could then manually pivot the coulter up to the point that the spindle contacted the end of the screw 4130 again, but without any force supporting the spindle or counteracting the force applied by screw 4130 the spindle would fall right back down to the lowest position. How would the structure shown allow for the spindle with its coulter to ever be able to be locked in every possible angle that the spindle can be pivoted to using a simple set crew or pin? It is impossible without some structure inside the housing interacting with at least the spindle to provide a supporting or counter force to that provided by the screw 4130. Clearly there is some critical structure missing from the Figures and the description and which must make up at least a portion of the claimed locking mechanism allowing it to perform all of the claimed functions.
Furthermore, the reference examples supposedly buttressing Applicant's position in fact point to the opposite. The 1st reference to Capon shows in Fig. 11 set screws 153,154,155 and 166, which work in tandem pairs (col. 9 lines 32-55). Loosening 153 and advancing screw 154 work together to fix the upper plow body 65A to lock its position relative to housing 140. They work because they each offer a force to that applied by its counter. The directions of the force of the two set screws are opposite each other and this allows for the pivotable locking of the top plow body relative to housing 140. The same can be said of set screw pair 155 and 166 for the bottom plow body. Completely removing set screw 154 from casting 143 would prevent the upper plow body 65A from being locked in any angle relative to the housing 140 until set screw 153 were advanced to the point that it pushed body 65A to the right until the right side of 65A were to engage the inside wall surface of housing 140. Thus it is only possible to lock the plow body at one angle relative to the housing 140 without the other set screw 154. This is because there is no counterforce to that applied by set screw 153 until the inner wall of 140 is engaged by right side wall of 65A. Van der Lely clearly shows a device with a set screw 36 having a conical tip 37 which can enter conduit 27 and thus seal it preventing fluid communication between conduits 27 and 28. The figures and description thereof clearly show what is claimed in claim 8 of that reference; namely that the conduit is closed in normal operation by a set screw. Applicant states that no figure shows any portion of the set screw 36 beyond head 38. Fig. 3 clearly and unequivocally shows conical tip 37 of the set screw 36 beyond head 38 and closing off conduit 27. Seal teaches two brace-spacers, each including two member pairs. The end of one of the pair has a female sleeve which receives the male end of the other member of the pair. A set screw 21 goes through the sleeve and contacts the outer surface of the inner male member and would push it so its outer surface contacts the inner surface of the female member and longitudinally locks the two members of the pair in a relative position. The inner surface of the outer tube serves to counter the force applied by the set screw and allows the set screw to lock the two members in a particular relative orientation. This is exactly how a POSITA would understand a common set screw to operate. There is a clear written description including the figures explaining how the set screw operates to perform its locking function. Applicant states Greenwell never explicitly shows or describes how set screws 51 secure the adapter 20 to lift arm 11. The examiner disagrees. It is clear from the figures and disclosure that the set screws 51 on both sides 23, 24 of sleeve 20 impinge on both sides of lift arm 11 when lift arm slides into sleeve 20 between sides 23,24. Set screws on both sides of sleeve 20 both impinge on opposite sides of lift arm 11. Again this is due to opposing forces by set screws on opposite sides of a member which is locked in place relative to another member via those set screws. Col. 2 lines 46-48 states the following: "The member includes a hole through each of the side wall which are axially aligned for receiving a hitch arm. At least one set screw is disposed in each of the side walls and extends there through to engage a side face of a hitch lift arm projecting into the cavity". There is a clear written description of how the set screw operates to perform its locking function.
Point 3. The difference between the references discussed by Applicant in this response and the '070 patent is that they clearly show a force counteracting the force applied by the set screw(s) which allows the set screw to perform a locking function. The examiner contends that the set screw can only lock the coulter in one position, not at any point of the range of pivoting at any of the pivoting positions and angles as recited in the claims. Given the figures and the disclosure it is the examiner's position that a POSITA would not clearly recognize that inventor had possession of the claimed invention. Therefore the 112 1st rejection is maintained.
Conclusion
Claims 1-5, 7 and 8 are rejected.
Claim 6 has been canceled.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GLENN K DAWSON whose telephone number is (571)272-4694. The examiner can normally be reached on M-F 8am-5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors Patricia Engle and Eileen Lillis can be reached at 571-272-6660 and 571-272-6928, respectively.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, please visit: https://patentcenter.uspto.gov. For more information about Patent Center, please visit https://www.uspto.gov/patents/apply/patent-center, and for information about filing in DOCX format, please visit https://www.uspto.gov/patents/docx. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Any general inquiry as to the status of this proceeding should be directed to the Central Reexamination Unit at telephone number (571) 272-7705.
Signed: /GLENN K DAWSON/
Glenn K. Dawson
Reexamination Specialist, Art Unit 3993
Conferees: /WILLIAM E DONDERO/ Reexamination Specialist, Art Unit 3993
/Patricia L Engle/ SPRS, Art Unit 3993