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, see Applicant’s Arguments/Remarks Made in an Amendment, filed 05/04/2026, with respect to the rejection(s) of claim(s) 1, 10, and 17 under 35 USC 102(a)(2) have been fully considered and are persuasive. Therefore, in the light of the amendments made, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view Bernasinski under 35 USC 103.
In the interest of compact prosecution, examiner wishes to respond to specific arguments presented by Applicant.
Applicant posits that the requirement of a mounting means configured to allow a cutting disc to be removed from the cutting drum is sufficient to distinguish the claimed invention from the prior art rejections of record, which rely on a permanent integration or mounting without mention of removing the cutting disc from the drum. While examiner agrees that the prior art rejection of record under 35 USC 102(a)(2) is overcome by the explicit requirement that the drum be removable, after further consideration, a new grounds of rejection is being applied under 35 USC 103 as detailed below.
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.
Claims 1-2, 4-6, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Rechtsanwalte as part of DE 202019105230 U1, hereinafter referred to as Rechtsanwalte.
Regarding Claim 1: Rechtsanwalte teaches of an excavation machine (Fig. 1, civil engineering machine 1) including:
a vertical frame having a lower end (Fig. 1, milling frame 2);
a cutting head mounted at said lower end of the frame (Fig. 1, milling wheel 3), said cutting head comprising a first drum and a second drum positioned side by side (See Annotated Fig. 3, Fig 1, milling wheels 3 comprise drums A positioned side by side in proximity to one another), in proximity to one another, and configured to turn respectively around a first and a second axis of rotation (Fig. 1, drums A have two distinct axes of rotation), the first drum and the second drum comprising or being configured to receive excavation tools mounted on their periphery surface thereof for digging soil (annotated Fig. 3, Fig. 1, drums A are configured to receive tools 12 at their periphery via discs B), the first drum and the second drum including, according to their respective axis of rotation,
a proximal end connected to the cutting head, and a distal end opposite to the proximal end (Annotated Fig. 3, drums A have a distinct distal and proximal end with the distal end with respect to the radial direction of the drum),
wherein a first and second cutting discs disposed at the distal ends of the first and second drums respectively (Annotated Fig. 3, drums A comprise cutting discs B at their distal end),
said cutting first and second discs respectively have a diameter greater than or equal to that of said first and second drums (Annotated Fig. 3, the outer diameter of the discs B is greater than diameter of drums A),
and being configured to cut a metal element positioned therebetween (Paragraph 5, material such as reinforced concrete are cut by diaphragm cutters such as the machine described, reinforced concrete containing steel or metal as part of the reinforcement)
and wherein the first and second mounting means are configured to position the first and second cutting discs in the same plane (Fig. 1-3, the locations of discs B along the surface of drums A, as well as the relative positions of milling wheels 3, place the discs B in the same plane).
Rechtsanwalte discloses the claimed invention except for the inclusion of a mounting means which allows for removal of the cutting discs from the cutting drums. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to design the discs to be removed from the drums via a mounting means, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179.
Note that it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179. Further, MPEP § 2144.04 states: In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) (The claimed structure, a lipstick holder with a removable cap, was fully met by the prior art except that in the prior art the cap is "press fitted" and therefore not manually removable. The court held that "if it were considered desirable for any reason to obtain access to the end of [the prior art’s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose.").
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Rechtsanwalte, Annotated Fig. 3
Regarding Claim 2: Rechtsanwalte teaches of the apparatus described above in claim 1.
Rechtsanwalte further teaches wherein said first and second drums include said first and second mounting means, and wherein each of said first and second mounting means include: a bearing surface for the cutting disc (Annotated Fig. 3, discs B comprise an interior contact surface with drum A), and fasteners configured to attach the cutting disc (Paragraph 50, peripheral wall 11, which comprises drum A and discs B, is rigid with flange 13, implying a fastening connection of some kind between discs B and drum A).
Regarding Claim 4: Rechtsanwalte teaches of the apparatus described above in claim 1.
Rechtsanwalte further teaches wherein said first and second drums include said first and second mounting means, and wherein the excavation machine also comprises a first cutting disc mounted on said first drum and a second cutting disc mounted on said second drum (Paragraph 48, every milling wheel 3 is implied to be identical; Annotated Fig. 3, drum A is mounted to the civil engineering machine 1 via mounting flange 13 and screws 15; Annotated Fig. 3, cutting discs B are mounted on drums A).
Regarding Claim 5: Rechtsanwalte teaches of the apparatus described above in claim 4.
Rechtsanwalte further teaches wherein the first and second cutting discs include, on their peripheral rim, a cutting material (Fig. 2, milling wheels 3 include peripheral wall 11, comprising milling tools 12).
Regarding Claim 6: Rechtsanwalte teaches of the apparatus described above in claim 4.
Rechtsanwalte further teaches wherein the first and second cutting discs also include first and second openings configured to cooperate with a lifter, and or include first and second openings for attachment to the first and second mounting means (Annotated Fig. 3, the discs B are configured to be contiguous with drums A, which comprise openings configured to receive screws 15 to place them in cooperation with carrier 5).
Regarding Claim 10: Rechtsanwalte teaches of the apparatus described above in claim 1.
Rechtsanwalte further teaches wherein the cutting head further comprises a third drum and a fourth drum positioned side by side (Fig. 5, each cutting drum 3 is shown to have a complementary and opposite drum),
In proximity to one another and configured to turn respectively around the first and the second axes of rotation, the third drum and the fourth drum including, according to their respective axis of rotation (Fig. 5, each pair of cutting drums 3 are shown to share a centerline axis of rotation), a proximal end connected to the cutting head, and a distal end opposite to the proximal end (Annotated Fig. 3, drums A have a distinct distal and proximal end with the distal end with respect to the radial direction of the drum); wherein:
said third drum includes, at its distal end, a third cutting disc, and said fourth drum includes, at its distal end, a fourth cutting disc (Annotated Fig. 3, drums A comprise cutting discs B at their distal end),
wherein said third and fourth cutting discs respectively have a diameter greater than or equal to that of said third and fourth drums (Annotated Fig. 3, the outer diameter of the discs B is greater than diameter of drums A),
and wherein the third and fourth cutting discs are positioned in the same plane (Fig. 1, milling discs 3 are shown to be in the same plane),
or the third and fourth mounting means are configured to position the third and fourth cutting discs in the same plane (Fig. 1-3, milling discs 3, and therefore the end faces 10 and 14, are shown to be in the same plane).
Claims 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Rechtsanwalte in view of Gilliard.
Regarding Claim 9: Rechtsanwalte teaches of the apparatus described above in claim 1.
Rechtsanwalte does not teach of any specific spacing between the first and second cutting discs’ radial spacing.
Gillard teaches of a hydromill cutting apparatus for excavating trenches in hard rocks comprising drums rotating about their axes (Gillard: Fig. 4, drums 4 rotate about axes A and B), wherein the drums comprise cutting heads aligned in a plane (Gilliard: Fig. 2, disc cutters 11 are aligned on the outside of hydromill wheels 5, which are aligned in a plane), wherein the spacing of the cutting heads is described as less than or equal to 30 mm (Gilliard: Paragraph 32, the lateral spacing of the disc traces are between 10 and 70 mm).
While it is noted that this spacing is lateral with respect to the axis of rotation of the drums, the disclosure of Gillard teaches wherein the spacing of the cutting heads ensures that the cracks formed in the material during excavation (in this case, granite) will join, allowing for more efficient excavation of the material (Gillard: paragraph 32), and would therefore be a results-effective variable. In light of such a determination, the specific spacing of the cutting heads to effectively break up the excavated material, such as that taught by Gillard, would be characterized by routine experimentation and obvious to try, such that the radial spacing between the cutting heads would be less than or equal to 30 mm in the interest of ensuring the joining of cracks formed in the material to allow for excavation (MPEP 2144.05, Subsection II, B).
Regarding Claim 11: Rechtsanwalte teaches of the apparatus described above in claim 1.
Rechtsanwalte does not teach of a at least one suction port attached to the cutting head between the first and second rums, and a suction device connected to the suction port for removing cuttings excavated by the first and second drums.
Gilliard teaches of a first and second drum for excavating trenches in hard rocks (Gillard: Fig. 4, drums 4), wherein the apparatus comprises at least one suction port attached to the cutting head between the first and second rums (Gilliard: Fig. 4, pumping means 7 acts as a suction box to extract soil and crushed rock, located between drums 4), and a suction device connected to the suction port for removing cuttings excavated by the first and second drums (Gilliard: Fig. 1, pump 9 provides suction to pumping means 7).
It would have been obvious to one of ordinary skill in the art at the time the invention was properly filed to combine the suction head of Gilliard with the excavating apparatus of Rechtsanwalte. Such a modification would not fundamentally alter the individual elements of the inventions, to the predictable result of providing a means of removing material during operation (Gilliard: Paragraph 26, pumping means 7 acts as a suction box to extract soil and crushed rock).
Claims 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Rechtsanwalte in view of Cox.
Regarding Claim 12: Rechtsanwalte teaches of the apparatus described above in claim 5.
Rechtsanwalte does not teach of any specific materials used as part of the cutting material.
Cox teaches of a rotary cutting tool system wherein the cutting material is tungsten carbide (Cox: Col. 4, Line 61 - Col. 5, Line 2, cutting elements 210 may be comprised of superhard or superabrasive materials such as tungsten carbide).
It would have been obvious to one of ordinary skill in the art at the time the invention was properly filed to utilize tungsten carbide tools taught by Cox in place of the unspecified material of Rechtsanwalte to provide a superhard material to improve the durability of the work tool. Such a substitution would not fundamentally alter the individual elements of the inventions, to the predictable result of utilizing tungsten carbide in a stone working cutting tool (MPEP 2143, Subsection I, B).
Regarding Claim 13: Rechtsanwalte teaches of the apparatus described above in claim 5.
Rechtsanwalte does not teach of any specific materials used as part of the cutting material.
Cox teaches of a rotary cutting tool system wherein the cutting material is diamond (Cox: Col. 4, Line 61 - Col. 5, Line 2, cutting elements 210 may be comprised of superhard or superabrasive materials such as polycrystalline diamond).
It would have been obvious to one of ordinary skill in the art at the time the invention was properly filed to utilize diamond tools taught by Cox in place of the unspecified material of Rechtsanwalte to provide a superhard material to improve the durability of the work tool. Such a substitution would not fundamentally alter the individual elements of the inventions, to the predictable result of utilizing tungsten carbide in a stone working cutting tool (MPEP 2143, Subsection I, B).
Regarding Claim 14: Rechtsanwalte teaches of the apparatus described above in claim 7.
Rechtsanwalte does not teach of any specific materials used as part of the cutting material.
Cox teaches of a rotary cutting tool system wherein the cutting material is tungsten carbide (Cox: Col. 4, Line 61 - Col. 5, Line 2, cutting elements 210 may be comprised of superhard or superabrasive materials such as tungsten carbide).
It would have been obvious to one of ordinary skill in the art at the time the invention was properly filed to utilize tungsten carbide tools taught by Cox in place of the unspecified material of Rechtsanwalte to provide a superhard material to improve the durability of the work tool. Such a substitution would not fundamentally alter the individual elements of the inventions, to the predictable result of utilizing tungsten carbide in a stone working cutting tool (MPEP 2143, Subsection I, B).
Regarding Claim 15: Rechtsanwalte teaches of the apparatus described above in claim 7.
Rechtsanwalte does not teach of any specific materials used as part of the cutting material.
Cox teaches of a rotary cutting tool system wherein the cutting material is diamond (Cox: Col. 4, Line 61 - Col. 5, Line 2, cutting elements 210 may be comprised of superhard or superabrasive materials such as polycrystalline diamond).
It would have been obvious to one of ordinary skill in the art at the time the invention was properly filed to utilize diamond tools taught by Cox in place of the unspecified material of Rechtsanwalte to provide a superhard material to improve the durability of the work tool. Such a substitution would not fundamentally alter the individual elements of the inventions, to the predictable result of utilizing tungsten carbide in a stone working cutting tool (MPEP 2143, Subsection I, B).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Rechtsanwalte in view of Bernasinski.
Regarding Claim 17: Rechtsanwalte teaches an apparatus capable of accomplishing a method for cutting a metal element with an excavation machine having a cutting head comprising a first drum and a second drum positioned side by side, the first drum and the second drum comprising or being configured to receive excavation tools mounted on their periphery surface thereof for digging soil (Rechtsanwalte: Fig. 1, milling discs 3 comprise a cutting head, and are arranged side by side),
said first drum includes, at its distal end, a first cutting disc,
said second drum includes, at its distal end, a second cutting disc (Annotated Fig. 3, drums A comprise cutting discs B at their distal end)
wherein said first and second cutting discs respectively have a diameter greater than or equal to that of said first and second drums and being configured to cut a metal element positioned therebetween (Annotated Fig. 3, the outer diameter of the discs B is greater than diameter of drums A; Paragraph 5, materials such as reinforced concrete are cut by diaphragm cutters such as the machine described, reinforced concrete containing steel or metal as part of said reinforcement)
the method comprising:
wherein the cutting head is translated downward when it is positioned above the metal element (Rechtsanwalte: Paragraph 6, the cutting tool is lowered into the work site from above; Paragraph 5, materials such as reinforced concrete are cut by diaphragm cutters such as the machine described, reinforced concrete containing steel or metal as part of said reinforcement).
Rechtsanwalte does not explicitly teach the first and second drum rotating in opposite directions.
Bernasinski teaches of a rotary cutting apparatus comprising a first drum and a second drum positioned side by side (Bernasinski: boring members 30 and 40 comprise a cutting head, and are arranged side by side), wherein the first drum and the second drum rotate in opposite directions, with their lower ends moving away from or approaching one another (Bernasinski: Col. 2, line 15-19, the first and second boring members can rotate in opposite directions relative to each other or in the same direction).
It would have been obvious to one of ordinary skill in the art at the time the invention was properly filed to modify the rotary milling discs of Rechtsanwalte to rotate in opposing directions as taught by Bernasinski. Such a modification would not fundamentally alter the individual elements of the inventions, to the predictable result of causing the rotating drums to rotate either towards or away from one another in addition to rotating in the same direction (Bernasinski: Col. 2, line 15-19, the first and second boring members can rotate in opposite directions relative to each other or in the same direction).
Rechtsanwalte in view of Bernasinski discloses the claimed invention except for the inclusion of a mounting means which allows for removal of the cutting discs from the cutting drums. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to design the discs to be removed from the drums via a mounting means, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179.
Note that it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179. Further, MPEP § 2144.04 states: In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) (The claimed structure, a lipstick holder with a removable cap, was fully met by the prior art except that in the prior art the cap is "press fitted" and therefore not manually removable. The court held that "if it were considered desirable for any reason to obtain access to the end of [the prior art’s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose.").
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Rechtsanwalte in view of Bernasinski, further in view of Hubber.
Regarding Claim 18: Rechtsanwalte in view of Bernasinski teaches of the apparatus described above in claim 17.
Rechtsanwalte further teaches wherein first and second cutting discs are attached to the first drum and the second drum of the excavation machine (Annotated Fig. 3, Fig. 1, drums A are configured to receive tools 12 at their periphery via discs B), the first and second cutting discs extending in the same plane (Rechtsanwalte: Fig. 1, milling discs 3 are shown to be in the same plane).
While Rechtsanwalte does teach of teeth arranged on the exterior of the cutting discs (Rechtsanwalte: Fig. 3, milling discs 3 comprise milling tools 12, such as milling chisels), it is not specified whether these teeth are removable by an operator.
Huber teaches of a cutting wheel for a trench cutter comprising a drum like body, on the exterior of which are teeth removable from the exterior of the drum (Huber: Paragraph 47, cutting or milling teeth 50 are inserted into sockets 32 for the purpose of mounting different teeth, such as chisels 40).
It would have been obvious to one of ordinary skill in the art at the time the invention was properly filed to substitute the milling tools of Rechtsanwalte with the removable teeth and sockets of Huber. Such a modification would not fundamentally alter the individual elements of the inventions, to the predictable result of removable and replicable teeth on the exterior of a rotary cutting machine (Huber: Paragraph 47, sockets allow for easier exchange of chisels and work tools).
Allowable Subject Matter
Claims 3 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
After a complete and thorough search of prior art, while examples of mounting means of cutting discs on the peripheral surface of diaphragm excavators was common, such as Rechtsanwalte and Hubber, no examples were found that specifically indicated openings upon the bearing surface of the cutting discs to allow access to fasteners, nor of the presence of tapped holes that facilitated connection of the drums and the cutting discs.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Arzberger et al as part of PL 2378002 T3 teaches of an excavation machine including a
vertical frame with a lower end, a cutting head mounted to the lower end of the frame, said cutting head comprising a first and second drum positioned side by side in proximity to one another, configured to turn respectively around a first and second axis of rotation, the first drum and second drum including a proximal end connected to the cutting head, and a distal end opposite the proximal end, said first drum incudes, at its distal end, a first mounting means configured to allow mounting a fist cutting disc, said second drum includes, at its distal end, a second cutting disc or a second mounting means configured to allow mounting a second cutting disc, wherein the first and second cutting discs are positioned in the same plane.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EVAN ANTHONY BREGEL whose telephone number is (571)272-0922. The examiner can normally be reached 8:30-5:30 Eastern, M-F.
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, Christopher J 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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/EVAN A BREGEL/Examiner, Art Unit 3671
/CHRISTOPHER J SEBESTA/Supervisory Patent Examiner, Art Unit 3671
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