DETAILED ACTION
Claim Objections
Claims 10, 13-15, and 17 objected to because of the following informalities:
It is noted that the Applicant has amended “moving means” to “means” in various locations in claim 10. To maintain consistency in claim terminology, “moving means” should also be amended to “means” in the entirety of claim 10 as well as in claims 13-15 and 17.
Appropriate correction is required.
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 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. 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.
In this case, Applicant’s use of the word “means” in claim 10 invokes 35 U.S.C. 112(f) and thus the claim is 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 this/these limitation(s) 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 it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 10-17 and 19 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Specifically, the recitation of “chosen and kept” in the last line of newly amended claim 10 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. The term “ideal resting plane” in the last line of claim 10 also renders the claim indefinite because “ideal resting plane” is undefined, in other words, there is no way to determine what an “ideal resting plane” is according to the claim, see also e.g., pg. 6, line 24 of Applicant’s disclosure. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 10-11, 13, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Merlo (EP0596498).
10: Merlo discloses (Figs. 1-3) a self-propelled work vehicle (2), comprising at least one vehicle (2), which can move over ground and supports at least one main telescopic arm (6), which is coupled, directly or indirectly, with a first end to said vehicle and supports a work apparatus (18) at an opposite end, characterized in that said apparatus comprises means for moving a work platform (17) adapted to accommodate at least one operator, said moving means being configured for a movement of said platform with respect to said main arm and for a support of said platform in a plurality of different work positions (Fig. 1), said moving means being supported rotatably by said main arm by way of an axial bearing (12, hinge pin 13), which is adapted to support said moving means in one configuration chosen among at least one first working configuration and one second working configuration (the moving means pivots about 13 such that it can move between two working configurations), which can be obtained from said first configuration with a rotation of said means with respect to said main arm equal to a predefined angle (col. 3, lines 17-20: “maintaining the angular position of member 12 in relation to the fixed axis 4 of turret 3 unchanged alongside a variation in the angular position of arm 6 in relation to tractor 2”), said main axis being chosen and kept parallel to an ideal resting plane and/or to the ground (the main axis is the main axis of the hinge pin 13).
11: Merlo discloses the vehicle according to claim 10, in that said axial bearing is a thrust bearing (note that the hinge between connecting member 12 and element 10 necessarily acts in thrust).
13: Merlo discloses the vehicle according to claim 10, characterized in that it comprises a hydraulic apparatus (15) for actuating the rotation of said moving means between said configurations.
17: Merlo discloses the vehicle according to claim 10, characterized in that said platform is associated with said moving means by way of a rotating stand (see 49 in Fig. 1 of Merlo), which is adapted to support said platform in at least one first orientation, which can be adopted in said first working configuration, and in a second orientation, which can be adopted in said second working configuration and can be obtained from said first orientation with a 180 degree rotation of said rotating stand (see col. 4, lines 41-45: “body 42 of cross element 41 is engaged positively by an appendix 49 formed on platform lift 18 by way of an alternative to appendix 43 and shown by the dotted line in Figure 2”).
Claim Rejections - 35 USC § 103
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 10-17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Merlo (EP0596498) in view of Wilson (US3809182).
Examiner notes that the application of Merlo above teaches all the limitations of the independent claim 10, however, below is an alternative interpretation such that the basic thrust of the rejection is different from the 102 rejection, therefore requiring a 103 rejection.
Merlo discloses (Figs. 1-3) a self-propelled work vehicle (2), comprising at least one vehicle (2), which can move over ground and supports at least one main telescopic arm (6), which is coupled, directly or indirectly, with a first end to said vehicle and supports a work apparatus (18) at an opposite end, characterized in that said apparatus comprises means for moving a work platform (17) adapted to accommodate at least one operator, said moving means being configured for a movement of said platform with respect to said main arm and for a support of said platform in a plurality of different work positions (Fig. 1), said means being supported rotatably by said main arm (col. 4, lines 34-36: “fixture 17 may alternatively be connected to member 12 in a position wherein it is rotated substantially 180 degrees”), which is adapted to support said means in one configuration chosen among at least one first working configuration and one second working configuration (see Fig. 1, solid lines and dashed lines), which can be obtained from said first configuration with a rotation, about a main axis, of said means with respect to said main arm equal to a predefined angle (180 degrees as shown in Fig. 1), said main axis being chosen and kept parallel to an ideal resting plane and/or to the ground (col. 3, lines 13-20: “Actuator 15 is connected in known manner (not shown) to both jack 8 and a known hydraulic control system (not shown) so as to define a compensating device 16 which, when desired, provides for maintaining the angular position of member 12 in relation to the fixed axis 4 of turret 3 unchanged alongside a variation in the angular position of arm 6 in relation to tractor 2”)
Merlo fails to disclose wherein the rotatable support of the means is by way of an axial bearing and wherein the rotation of the means is about a main axis of the axial bearing. Wilson teaches, in the context of means supported rotatably by a main arm, wherein the rotatable support of the means is by way of an axial bearing (74) and wherein the rotation of the means is about a main axis of the axial bearing (see Fig. 1 of Wilson). It 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 to have included wherein the rotatable support of the means is by way of an axial bearing and wherein the rotation of the means is about a main axis of the axial bearing in the self propelled work vehicle of Merlo according to the teachings of Wilson in order to remotely control the rotatable support of the means, see e.g., col. 1, lines 63-68 of Wilson.
11: Merlo in view of Wilson discloses the vehicle according to claim 10, in that said axial bearing is a thrust bearing (col. 3, line 24: “bearing means”, note that the bearing means necessarily function radially as well as axially due to the load on the bearing means, see e.g., col. 3, lines 36-43: “A suitable motive means 80 of the hydraulic type is carried by the elbow member and connected respectively between the parts thereof for the purpose of performing the limited tilting or translational movement of the part 64 with respect to the part 62 carried by the slidable bracket 70”).
12: Merlo in view of Wilson discloses the vehicle according to claim 10, characterized in that said predefined angle is equal to 180 degrees (see Fig. 1 of Merlo, solid lines and dashed lines).
13: Merlo in view of Wilson discloses the vehicle according to claim 10, characterized in that it comprises a hydraulic apparatus for actuating the rotation of said moving means between said configurations (see col. 3, line 23 of Wilson: “hydraulic motor”).
14: Merlo in view of Wilson discloses the vehicle according to claim 10, characterized in that said moving means comprise a post (Merlo, Fig. 1, 24) which is anchored with a first end portion to a supporting element (Merlo, Fig. 1, 12), which can rotate (see Fig. 1 of Merlo, solid lines and dashed lines) with respect to a second end of said main arm (Merlo, Fig. 1, 10), opposite to said first end. However, Merlo in view of Drews fail to disclose wherein the supporting element is integral with a first annular race of the axial bearing and wherein the second annular race of the axial bearing is integral with the second end of the main arm. Nonetheless, per MPEP 2144.04.V.B, making integral what was separate in the prior art is prima facie obvious. Here, it would have been obvious to integrate the supporting element of Merlo (12) with the first race of the bearing means of Wilson and to integrate the second race of the bearing means of Wilson with the main arm (10) of Merlo in order to reduce fastener count.
15: Merlo in view of Wilson discloses the vehicle according to claim 14, characterized in that said moving means comprise an auxiliary telescopic arm which is adapted for the movement and a direct or indirect support of said platform (see 25 in Fig. 1 of Merlo).
16: Merlo in view of Wilson discloses the vehicle according to claim 15, characterized in that said auxiliary arm is articulated to a footing (see 30 in Fig. 1 of Merlo) which is rotatably coupled to said post (see 24 in Fig. 1 of Merlo).
17: Merlo in view of Wilson discloses the vehicle according to claim 10, characterized in that said platform is associated with said moving means by way of a rotating stand (see 49 in Fig. 1 of Merlo), which is adapted to support said platform in at least one first orientation, which can be adopted in said first working configuration, and in a second orientation, which can be adopted in said second working configuration and can be obtained from said first orientation with a 180 degree rotation of said rotating stand (see col. 4, lines 41-45: “body 42 of cross element 41 is engaged positively by an appendix 49 formed on platform lift 18 by way of an alternative to appendix 43 and shown by the dotted line in Figure 2”).
19: Merlo in view of Wilson discloses the vehicle according to claim 16, characterized in that the footing is coaxially rotatable with respect to said post (see Merlo, col. 3, lines 41-54: ”Arm 19 comprises a first and second portion 24 and 25. Portion 24 presents a substantially vertical axis 26, and engages in rotary and axially fixed manner a hollow body 27 connected integral with plate 20, coaxial with axis 26, and forming part of a known hinge connecting device 28. In use, portion 24 extends upwards in relation to plate 20 and member 12, and is rotated in relation to plate 20 by a drive 29 comprising, as shown more clearly in Figure 3, a pinion 30 fitted to an intermediate portion of portion 24, and teeth 31 meshing with pinion 30 and moved in opposite directions, transversely in relation to axis 26, by a known hydraulic unit 32 not described in detail”).
Response to Arguments
Applicant’s arguments with respect to claim 10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Ben Pezzlo whose telephone number is (571)272-9656. The examiner can normally be reached M to Th 7 to 5.
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/BAP/Examiner, Art Unit 3634
/DANIEL P CAHN/Supervisory Patent Examiner, Art Unit 3634
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