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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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. Therefore, the means configured to offset the compacting element to either the first side of the pipe or the second side of the pipe, when connected to an excavator arm such that the excavator arm remains aligned with the second axis (claim 10); wherein the means configured to offset the single elongate powered compacting element comprises a sliding rail (claim 11); and, wherein the single elongate powered compacting element is hingeable at one or more points along its length (claim 12) 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 not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). 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 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. 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: means configured to offset the compacting element in claim 10 and means configured to offset the single elongate powered compacting element in claim 11.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/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 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.
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.
Claim 1 (hence claims 2-12) and claim 21 (hence claim 22) 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.
Claim 1, lines 10-12, the recitation of “the compacting element simultaneously compacts the aggregate material to a pre-defined minimum density about the bed, about a first side of the pipe, and about a second side of the pipe” (emphasis added) appears to be incorrect and mis-leading, thus rendering the claims indefinite. The single compacting element would not be able to “simultaneously” compact the aggregate material about a first side and about a second side of the pipe. The single compacting element would only be able to compact a first side of the pipe, then afterwards a second side of the pipe, but not simultaneously.
As to claim 21, claim 21 appears to be redundant with respect to claim 20.
Claim Rejections - 35 USC § 102
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 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.
Insofar as understood, claim(s) 1, 7-9, and 19-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gately (US 2018/0371721).
As to claim 1, Gately discloses (see para [0053]) a compactor apparatus 3 for compacting aggregate
material about a pipe in a trench comprising:
a single elongated powered compacting element 7, wherein
the compacting element 7 is oriented along a first axis that is approximately
perpendicular to a second axis that runs through the center and along a length of a pipe
that is seated in a trench,
the compacting element 7 is configured to be moveable in a reciprocating
motion along the length of a pipe disposed on a bed of aggregate material,
the compacting element 7 simultaneously compacts the aggregate material
to a pre-defined minimum density about the bed, about a first side of the pipe, and
about a second side of the pipe, wherein the first side and the second side of the pipe
run along a length of the pipe, and wherein
compacting the aggregate material maintains a pipe gradient, wherein, in
use, the compacting element is submerged beneath the aggregate material at all times
when compacting the aggregate.
As to claim 7, Gately discloses (see para [0057]) wherein the compacting element has stroke reciprocating distance of about 50 mm.
As to claim 8, Gately discloses (see para [0055]) wherein compactor element reciprocates at a frequency that can be adjusted.
As to claim 9, Gately discloses (see para [0079]) wherein the pipe is at least 400 mm in diameter.
As to claim 19, Gately discloses (see para [0053] and [0078]) method for compacting aggregate about a pipe having a predetermined pipe gradient: the method comprising:
inserting a single elongated powered compacting element 7 beneath a surface of
an aggregate material that partially surrounds a first side, a bottom, and a second side
of a pipe having a gradient relative to surrounding ground;
providing a reciprocating motion to the single elongated powered compacting
element 7 to compact the aggregate material on the first side of the pipe. while
maintaining the single elongated powered compacting element submerged beneath the
surface of the aggregate material at all times when compacting the aggregate:
extracting the single elongated powered compacting element from beneath the
surface when the aggregate material is compacted to a pre-defined minimum density
about the bottom and the sides of the pipe along a length of the pipe to maintain the
pipe gradient.
As to claim 20, Gately discloses (see para [0053] and [0078]) moving the single elongate powered compacting element 7 along the length of the pipe about the first side of the pipe before extracting the single elongate powered compacting element from beneath the aggregate surface;
inserting a single elongated powered compacting element beneath the surface
of the aggregate material about the second side of the pipe; moving the single elongate powered compacting element along the length of the pipe about the second side of the pipe while providing a reciprocating motion to the single elongated powered compacting element to compact the aggregate material on the second side of the pipe, while maintaining the single elongated powered compacting element submerged beneath the surface of the aggregate material at all times when compacting the aggregate on the second side of the pipe.
As to claim 21, Gately discloses (see para [0053] and [0078]) moving the single elongate powered compacting element 7 along the length of the
pipe about the first side of the pipe before extracting the single elongate powered
compacting element from beneath the aggregate surface;
inserting a single elongated powered compacting element beneath the surface
of the aggregate material about the second side of the pipe;
moving the single elongate powered compacting element along the length of the
pipe about the second side of the pipe while providing a reciprocating motion to the
single elongated powered compacting element to compact the aggregate material on the second side of the pipe, while maintaining the single elongated powered compacting
element submerged beneath the surface of the aggregate material at all times when
compacting the aggregate on the second side of the pipe.
As to claim 22, Gately discloses (see para [0063] and [0079]) wherein the single elongated powered compacting element 7 is submerged beneath the depth of the aggregate at a depth of approximately 150 mm, and wherein the pipe has a diameter of at least 400 mm.
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.
Claim(s) 2-6, 10, and 15-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gately (US 2018/0371721) in view of Schrode (US 7,107,711).
As to claim 2, Gately discloses all that is claimed except a rotator mechanically coupled to the compacting element, wherein the rotator element is configured to rotate the compacting element from the first side of the pipe to the second side of the pipe. Schrode discloses a compactor apparatus comprising a rotator element 22. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a rotator element as disclosed by Schrode, since doing so provides the expected benefit of rotating the compacting element to compact a desired side of a pipeline in a trench.
As to claim 3, Gately discloses all that is claimed wherein the rotator element is configured to rotate from a central position through an angle of at least 90 degrees in a first direction for positioning the compacting element alongside the first side of the pipe and through an angle of at least 90 degrees in a second direction for positioning the single compacting element alongside the second side of the pipe. Schrode discloses a compactor apparatus comprising a rotator element 22 capable of rotating through an angle of 90 degrees. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a rotator element as disclosed by Schrode, since doing so provides the expected benefit of rotating the compacting element to compact a desired side of a pipeline in a trench.
As to claim 4, Schrode further discloses wherein the compactor apparatus is integrated into a quick hitch coupler 14.
As to claim 5, both Gately and Schrode disclose wherein the compactor apparatus is coupled to a hydraulic circuit of an excavator arm.
As to claim 6, Gately and Schrode disclose hose connections. However, Gately and Schrode disclose all that is claimed except for wherein (a) the compactor apparatus further comprises two-hose connections. and (b) the compactor apparatus is coupled to the hydraulic circuit of an excavator arm via the two hose connections. Again, Gately and Schrode are silent to the number of hose connections; however, Gately discloses (see para [0053]) the use of hydraulic, pneumatic, and electrical connections. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide two hose connections, since doing so provides the expected benefit of powering excavator tools via hydraulic, pneumatic, and/or electrical sources.
As to claim 10, Gately discloses all that is claimed except the compactor apparatus further comprising means configured to offset the compacting element to either the first side of the pipe or the second side of the pipe, when connected to an excavator arm such that the excavator arm remains aligned with the second axis. Schrode discloses a compactor apparatus comprising means 22 configured to offset the compacting element. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide means configured to offset the compacting element as disclosed by Schrode, since doing so provides the expected benefit of rotating the compacting element to compact a desired side of a pipeline in a trench.
As to claim 15, Gately discloses compactor apparatus 3 for compacting of aggregate material about a pipe in a trench comprising:
(a) a single compacting element 7, wherein
(i)the compacting element comprises a rod 7 with a rod length and a head 30 at a first end of the rod,
(ii)the rod length of the compacting element is oriented along a first axis that is
approximately perpendicular to a second axis that runs through the center and along a
length of a pipe that is seated in a trench,
(iii)an aggregate material (see para [0053]) at least partially surrounds a first side of the pipe, a bottom of the pipe, and a second side of the pipe, and wherein
(iv)the compacting element 3 is mechanically coupled to a power source (see para [0053]) that is configured to reciprocate the compacting element along the first axis while the compacting element is either submerged in the aggregate material on the first side of the pipe or submerged in the aggregate material second side of the pipe.
Gately does not disclose the rotator mechanically coupled to the compacting element, wherein the rotator element is configured to rotate the compacting element from the first side of the pipe to the second side of the pipe.
Schrode discloses a compactor apparatus comprising a rotator element 22. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a rotator element as disclosed by Schrode, since doing so provides the expected benefit of rotating the compacting element to compact a desired side of a pipeline in a trench.
As to claim 16, Gately discloses (see para [0053]) wherein the power source is selected from a hydraulic power source, an electrical power source, or a pneumatic power source.
As to claim 17, Schrode further discloses wherein the compacting element and rotator 22 are coupled to an excavator arm 12.
As to claim 18, Gately and Schrode disclose hose connections. However, Gately and Schrode disclose all that is claimed except for wherein (a) the compactor apparatus further comprises two-hose connections. and (b) the compactor apparatus is coupled to the hydraulic circuit of an excavator arm via the two hose connections. Again, Gately and Schrode are silent to the number of hose connections; however, Gately discloses (see para [0053]) the use of hydraulic, pneumatic, and electrical connections. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide two hose connections, since doing so provides the expected benefit of powering excavator tools via hydraulic, pneumatic, and/or electrical sources.
Allowable Subject Matter
Claims 11 and 12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
As to claim 11, the prior art of record fails to show or suggest wherein the means configured to offset the single elongate powered compacting element comprises a sliding rail.
As to claim 12, the prior art of record fails to show or suggest wherein the single elongate powered compacting element is hingeable at one or more points along its length.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FREDERICK L LAGMAN whose telephone number is (571)272-7043. The examiner can normally be reached Tuesday-Friday 8am-6:00pm.
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/FREDERICK L LAGMAN/Primary Examiner, Art Unit 3678