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 .
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11 of U.S. Patent No. US 11716941 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because it is obvious that the narrower method and apparatus claims 1 and 11 of U.S. Patent No. US 11716941 B2 covers the broader method and apparatus claims 1 and 11 of the instant application.
Claims 2-10 are rejected under the nonstatutory double patenting rejections, because of their dependency on rejected independent claim 1.
Claims 1-11 are further rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US 10117386 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because it is obvious that the narrower claim 1 of U.S. Patent No. US 10117386 B 1covers the broader claims 1 and 11 of the instant application.
Claims 2-10 are rejected under the nonstatutory double patenting rejections, because of their dependency on rejected independent claim 1.
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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Motz et al. (US 20130189057 A1) in view of Hager et al. (US 20070277985 A1).
Note Motz discloses two different attachments (90 in Figs. 1-4 and 240 in Figs. 8-10) relevant to turf removal, therefore two rejections under Motz are provided below.
First interpretation of Motz et al.
Regarding claim 1, Motz discloses a method of removing synthetic turf (t, Fig. 8), comprising the steps of:
attaching a synthetic turf removal attachment (240) to a vehicle (20), and
removing the synthetic turf (Figs. 8-10, para. [0080]), wherein the synthetic turf removal attachment comprises
(a) a frame (242), comprising:
(i) a transverse component (242);
(ii) a first arm (252) extending from a first distal end of the transverse component; and
(iii) a second arm (other of 252) extending from a second distal end of the transverse component, wherein the first distal end is on the opposite end of the transverse component from the second distal end (Fig. 8B);
(b) a first removable turf removal tool (262) connected to a distal end of the first arm (Figs. 8A-8B);
(c) a second removable turf removal tool (other of 262) connected to a distal end of the second arm (Figs. 8A-8B);
(d) a first motor (264) operably coupled to the first turf removal tool;
(e) a second motor (other of 264) operably coupled to the second turf removal tool; and
(f) a mounting arrangement (244) attached to the transverse component permitting attachment of the synthetic turf removal attachment to the vehicle (para. [0081].
Motz does not explicitly detail wherein the motors (264) are hydraulic motors. However, Motz in Figs. 1-3 discloses further rotating turf removal tools driven by similar motors (112), wherein the motors are hydraulic motors (para. [0058] motors 112 are operatively connected to a supply of hydraulic fluid).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to utilize hydraulic motors for the motors of Motz since there are a limited number of choices as to what motors to use to rotate such a tool, and it would have been an obvious design choice to use hydraulic motors as taught in similar turf removal tools disclosed by Motz.
Motz does not teach the mounting the synthetic turf removal attachment to a skid steer.
However, in the same area of removing turf, Hager discloses a similar turf cutting attachment (100) comprising a mounting plate (106) attached to a rear face of the attachment for attachment to a skid steer (para. [0020]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to attach the synthetic turf removal attachment to a skid steer utilizing a similar mounting arrangement, as taught by Hager, as this is a mere simple substitution of one known vehicle for carrying a turf removal attachment for another to yield predictable results.
Regarding claim 2, Motz in view of Hager discloses the method of claim 1. Motz further comprising the step of adjusting a distance between the first and second arms (252) by moving at least one of said first arm and second arm laterally with respect to a respective end of the transverse component (242) (para. [0081] adjustable position arms 246 adjust lateral distance between arms 252 with respect to transverse frame 242, see comparison of Figs. 8A-8B).
Regarding claim 3, Motz in view of Hager discloses the method of claim 2. Motz further discloses wherein the step of moving at least one of said first and second arms (252) laterally comprising telescoping the at least one of said first arm and second arm laterally (Figs. 8A-8B, para. [0081] arms 252 are connected to transverse frame 242 by means of slidable mounts 246 which telescope into the longitudinal ends of transverse frame 242).
Regarding claim 4, Motz in view of Hager discloses the method of claim 1. Motz further discloses wherein the first and second removable turf removal tools (262) comprise turf rolling tools (para. [0082] roller tines 262 rotate and thereby roll the synthetic turf up and into a roll as shown in Figs. 8B-8C).
Regarding claim 10, Motz in view of Hager discloses the method of claim 1, further comprising the step of rolling a strip of synthetic turf (Figs. 8A-8C, cut turf lines indicated by the letter c) using the first and second removable turf removal tools (262) (para. [0082] roller tines 262 are rotated thereby rolling synthetic turf up and into a roll).
Regarding independent claim 11, all the limitations have been analyzed in view of claim 1, and it has been determined that claim 11 does not teach or define any new limitations beyond those previously recited in claim 1; therefore, claim 11 is also rejected over the same rationale as claim 1.
Second interpretation of Motz et al.
Regarding claim 1, Motz discloses a method of removing synthetic turf (t), comprising the steps of:
attaching a synthetic turf removal attachment (90, Figs. 1-4) to a vehicle (20), and
removing the synthetic turf (para. [0087]), wherein the synthetic turf removal attachment comprises
(a) a frame, comprising:
(i) a transverse component (92);
(ii) a first arm (100) extending from a first distal end of the transverse component; and
(iii) a second arm (other of 100) extending from a second distal end of the transverse component, wherein the first distal end is on the opposite end of the transverse component from the second distal end (Fig. 1A);
(b) a first removable turf removal tool (108) connected to a distal end of the first arm;
(c) a second removable turf removal tool (other of 108) connected to a distal end of the second arm;
(d) a first hydraulic motor (112) operably coupled to the first turf removal tool;
(e) a second hydraulic motor (other of 112) operably coupled to the second turf removal tool; and
(f) a mounting arrangement (94) attached to and extending rearwardly from the transverse component permitting attachment of the synthetic turf removal attachment to the vehicle (para. [0058]).
Motz does not teach the mounting the synthetic turf removal attachment to a skid steer.
However, in the same area of removing turf, Hager discloses a similar turf cutting attachment (100) comprising a mounting plate (106) attached to a rear face of the attachment for attachment to a skid steer (para. [0020]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to attach the synthetic turf removal attachment to a skid steer utilizing a similar mounting arrangement, as taught by Hager, as this is a mere simple substitution of one known vehicle for carrying a turf removal attachment for another to yield predictable results.
Regarding claim 5, Motz in view of Hager discloses the method of claim 1, wherein each of the first and second removable turf removal tools (108) comprise a turf cutting tool (turf cutters 108).
Regarding claim 6, Motz in view of Hager discloses the method of claim 5. Motz further discloses wherein each of the turf cutting tools (108) comprises a turf cutting blade (110), a cutter shoe (102), and a blade guard (114), wherein the blade guard (114) covers the turf cutting blade when not in use, and wherein the turf cutting tools is configured to cut the synthetic turf into strips (Fig. 4, para. [0058] cut turf lines indicated by the letter c).
Motz does not explicitly detail wherein the blade guard is retractable, however, the Examiner takes official notice that it is old and well known to use utilize retractable guards, shrouds, or sheaths to selectively cover a blade. Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to design the blade shroud of Motz to be retractable to selectively cover the blade as desired for safety purposes. Furthermore, it has been held that the provision of adjustability involves only routine skill in the art. In re Stevens, 101 USPQ 284 (CCPA 1954).
Regarding claim 7, Motz in view of Hager discloses the method of claim 5. Motz further discloses the step of cutting a strip of synthetic turf via the turf cutting tools (108) (Fig. 4, para. [0058] cut turf lines indicated by the letter c)
Regarding claim 8, Motz in view of Hager discloses the method of claim 7. Motz further discloses the step of replacing the turf cutting tools (108) with turf rolling tools (para. [0087] since entirety of attachment 90 which includes turf cutting tools 108 is replaced with turf rolling attachment 240 which comprises turf rolling tools 258, it meets the claim).
Regarding claim 9, Motz in view of Hager discloses the method of claim 8. Motz further discloses the step of rolling a strip of synthetic turf using the turf rolling tools (para. [0082] strip of synthetic turf is rolled up using turf rolling assemblies 258 seen in Figs. 8A-8C).
Regarding independent claim 11, all the limitations have been analyzed in view of claim 1, and it has been determined that claim 11 does not teach or define any new limitations beyond those previously recited in claim 1; therefore, claim 11 is also rejected over the same rationale as claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. McDonnel (US 3481556 A) discloses a synthetic turf handling apparatus. Zamboni (US 4084763 A) discloses a machine for handling artificial turf. Evans (US 4354556 A) discloses a turf cutting and rolling apparatus. Houska (US 6131668 A) discloses a sod laying apparatus attached to a skid steer. James (US 6299094 B1) discloses an apparatus for applying and retrieving protective ground coverings. McPherson et al. (US 20030037984 A1) discloses a front end loader multiple implement attachment apparatus. Jonsson (US 20100001115 A1) discloses an apparatus and method for handling artificial turf. Gordon et al. (US 20100072315 A1) discloses a system and method for rolling and unrolling synthetic turf. Bearden (US 20100319510 A1) discloses an apparatus for collecting artificial turf. Owegeser (US 20140291433 A1) discloses a device for winding or unwinding artificial turf.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIA C TRAN whose telephone number is (571) 272-8758. The examiner can normally be reached M-F 9-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joesph Rocca, can be reached on (571) 272-8971. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JULIA C TRAN/Examiner, Art Unit 3671
/JOSEPH M ROCCA/Supervisory Patent Examiner, Art Unit 3671