DETAILED ACTION
Continuation Reissue Application
The instant reissue application is a continuation reissue of earlier reissue Application No. 17/091,656 and, thus, is a second application for reissue of US Patent No. 10,156,050 B1. See MPEP 1451, 35 USC 251(b), and 37 CFR 1.177.
Earlier reissue Application No. 17/091,656 was concluded with the issuance of US Reissued Patent No. RE49,588 E on July 25, 2023.
Maintenance Fees
MPEP 2504 explains that, for maintenance fees due on or after January 16, 2018, separate maintenance fees must be paid in:
Each reissued patent in force on (i.e., issued before) the maintenance fee due date. This includes all reissued patents that replace the same original patent.
An original patent that is not surrendered because one or more applications for reissue of that original patent are still pending on the maintenance fee due date.
USPTO records show that the four-year maintenance fee has been timely filed and, thus, maintenance fee payments are up to date for original US Patent No. 10,156,050 B1. No maintenance fee is yet due for US Reissued Patent No. RE49,588 E.
Status of Submission
This Office action is responsive to applicant’s response filed on October 21, 2025, which has been entered.
Claims Subject to Examination
New reissue claims 17-20, 22, 24, 25, 27, 28, 30-33, 35, 37, 38, 40, 41, 43-46, 48, 50, 51, 53, 54, 56-59, 61, 63, 64, 66 and 67 are subject to examination. Patent claims 1-16 and reissue claims 21, 23, 26, 29, 34, 36, 39, 42, 47, 49, 52, 55, 60, 62, 65 and 68 have been canceled.
Objections to Amendments – Formalities
The specification amendments filed on October 21, 2025 are objected to because they fail to comply with 37 CFR 1.173(b)(1), (d) and (g). Changes to the specification must be made by submission of the entire text of any new or rewritten paragraph, with all amendments made relative to the patent specification, which was in effect as of the date of filing the reissue application. Matter to be omitted must be enclosed in single brackets. Matter to be added must be underlined. The precise point in the specification where any new or rewritten paragraph is located must be identified.
The specification amendments are improper because:
The amendments are made relative to the prior amendment filed on February 28, 2025. All amendments must be made relative to the patent specification, which was in effect as of the date of filing the reissue application. That is, all bracketing and underlining must show changes made relative to the patent specification in effect on the filing date of the reissue application (not relative to a prior amendment).
The instruction given with respect to the new paragraphs added after the title is complete. Rather than simply stating “In col. 1, at l. 4, after the title”, the instruction should indicate that the text that follows is to be added to the specification.
The amendments must be placed into compliance with 37 CFR 1.173(b)-(g) in response to this Office action.
Original Disclosure – Definition
The instant application seeks reissue of US Patent No. 10,156,050 B1, which issued from US Application No. 16/120,239. The “original disclosure” is the disclosure of Application No. 16/120,239 as filed on September 1, 2018. Any subject matter added to the disclosure during either the prosecution of the instant reissue application or the earlier-concluded prosecution of Application No. 16/120,239 does not constitute part of the “original disclosure”.
Prohibition of New Matter
35 USC 132(a) prohibits any amendment that introduces new matter into the disclosure of the invention.
35 USC 251(a) prohibits the introduction of new matter into the application for reissue.
Objection to Amendment – New Matter
The amendment filed on October 21, 2025 is objected to under 35 USC 132(a) and 35 USC 251(a) because it improperly introduces new matter for the reasons given below.
New reissue claim 17 recites “wherein the coupling element comprises a curving configuration and provides a pressure-connective, a secure attachment or a coupling of the coupling element…” (ll. 11-12). According to the patent specification, the coupling element may be any number of elements having a curving or angular configuration integrated into the screed plate enabling a pressure-connective, secure attachment or coupling of the coupling element to the conductor front side. However, the new claim limitation differs from this disclosure by more broadly reciting “a pressure-connective, a secure attachment or a coupling”. For example, this new claim limitation defines (or at least implies) a distinction between “a pressure-connective” and “a secure attachment”, but such a distinction is not supported by the original disclosure. Further, this new claim limitation defines (or at least implies) a distinction between “a pressure-connective” and “a coupling”, but such a distinction is not supported by the original disclosure.
New reissue claim 17 recites “wherein the screed plate is configured to receive indirect heat from a heating element” (l. 16). The original disclosure describes (i) a heating element 151 located between a plate bottom 127 of a material matting apparatus 122 and a top side of a structural/conductor plate 121, (ii) the heating element 151 being immediately against the top side of the plate 121 so as to provide direct heat to the plate 121, and (iii) the plate 121 heat-conductively attaches at its bottom side to the screed plate top side 104 to provide indirect heat to the screed plate 101. Thus, the heating element 151 is disclosed as being located in a specific manner relative to the structural/conductor plate 121, and the plate 121 is disclosed as being attached in a particular fashion to the screed plate 101, such that the heating element 151 and the plate 121 function together to provide indirect heat to the screed plate. However, the original disclosure fails to describe the screed plate as being “configured to receive” (i.e., as being structured in some particular fashion so as to be equipped to receive) indirect heat from a heating element.
New reissue claim 18 recites “further comprising two screed plate attaching means positioned at the screed backside”. According to the patent specification, the screed plate has at least two screed plate attaching means located on the screed top side. See col. 2, ll. 29-30; col. 5, ll. 41-43. However, there is no support in the original disclosure for the attaching means being “positioned at the screed backside”. The newly claimed “positioned at the screed backside” encompasses constructions in which the attaching means is at the screed backside such that (i) no space exists between the attaching means and the screed backside, and (ii) the attaching means is not located at and/or does not extend from the screed top side. There is no support in the original disclosure for such constructions. Thus, the scope of the claim exceeds the scope of the original disclosure.
New reissue claim 24 recites “wherein the screed plate is configured to receive indirect heat from a heating element” (l. 14). See the explanation above with respect to claim 17.
New reissue claim 27 recites “wherein the coupling element comprises a curving configuration and provides a pressure-connective, a secure attachment or a coupling of the coupling element…” See the explanation above with respect to claim 17.
New reissue claim 30 recites “a heating element configured to provide indirect heat to a screed plate” (l. 2). The original disclosure describes (i) a heating element 151 located between a plate bottom 127 of a material matting apparatus 122 and a top side of a structural/conductor plate 121, (ii) the heating element 151 being immediately against the top side of the plate 121 so as to provide direct heat to the plate 121, and (iii) the plate 121 heat-conductively attaches at its bottom side to the screed plate top side 104 to provide indirect heat to the screed plate 101. Thus, the heating element 151 is disclosed as being located in a specific manner relative to the structural/conductor plate 121, and the plate 121 is disclosed as being attached in a particular fashion to the screed plate 101, such that the heating element 151 and the plate 121 function together to provide indirect heat to the screed plate. However, the original disclosure fails to describe the heating element as being “configured to provide” (i.e., as being structured in some particular fashion so as to be equipped to provide) indirect heat to a screed plate. Instead, the disclosure describes a heating element that is located in order to function to provide heat to a structural/conductor plate, with the plate being attached to the screed plate in order to function to provide (conduct) the heat to a screed plate. The scope of the current claim language exceeds this supporting disclosure by allowing for the heating element to be structured in a specific way so as to deliver indirect heat to a screed plate in any and every possible manner, including apart from conducting the heat through an intermediate plate.
New reissue claim 30 recites “the screed plate engageable with the structural-conductor plate proximal to the conductor bottom side of the structural-conductor plate” (ll. 8-9). According to the patent specification, (i) the coupling element enables a pressure-connective coupling of the coupling element to the structural/conductor plate, (ii) the conductor front side securely and freely receives the appropriately matching and paired coupling element, and (iii) the coupling element may be any number of elements having a curving or angular configuration integrated into the screed plate enabling a pressure-connective, secure attachment or coupling of the coupling element to the conductor front side. See col. 2, ll. 47-49 and 58-60; col. 6, ll. 16-21 and 45-49. Further, according to the patent specification, (i) the screed plate has at least two screed plate attaching means located on the screed top side, (ii) the structural/conductor plate comprises at least two screed plate retaining means located on the conductor bottom side, and (iii) the at least two retaining means securely receive the appropriately matching and paired at least two attaching means. See col. 2, ll. 29-30, 43-45 and 56-58; col. 5, ll. 41-43; col. 6, ll. 7-9 and 41-45. However, there is no support in the original disclosure for the screed plate being engageable with the structural/conductor plate “proximal to the conductor bottom side”. The newly claimed “proximal to the conductor bottom side” encompasses constructions in which the screed plate is engageable with the structural/conductor plate at a location near the conductor bottom side but spaced some distance from the conductor bottom side. There is no support in the original disclosure for such a construction. Thus, the scope of the claim exceeds the scope of the original disclosure.
New reissue claim 30 recites “wherein the coupling element comprises a curving configuration and provides a pressure-connective, a secure attachment or a coupling of the coupling element…” (ll. 21-23). See the explanation above with respect to claim 17.
New reissue claim 31 recites “further comprising two screed plate attaching means positioned at the screed backside”. See the explanation above with respect to claim 18.
New reissue claim 37 recites “a heating element configured to provide indirect heat to a screed plate” (l. 2). See the explanation above with respect to claim 30.
New reissue claim 37 recites “a conductor front side extending from a first edge of the conductor top side to a first edge of the conductor bottom side; a conductor backside opposite the conductor front side, the conductor backside extending from a second edge of the conductor top side to a second edge of the conductor bottom side” (ll. 6-9). According to the patent specification, the structural/conductor plate comprises a conductor top side and an opposing conductor bottom side, and further comprises a conductor front side and an opposing conductor back side. See col. 6, ll. 3-6. However, there is no support in the original disclosure for the conductor front side “extending from a first edge of the conductor top side to a first edge of the conductor bottom side”, or for the conductor back side “extending from a second edge of the conductor top side to a second edge of the conductor bottom side”. The specification makes no mention of first and second edges of the conductor top side, or first and second edges of the conductor bottom side. The specification is silent as to the extent of the conductor front side and the extent of the conductor back side. Fig. 6 depicts the conductor front and back sides, but does not label edges of the conductor top and bottom sides and does not establish that the conductor front and back sides necessarily extend between such edges.
New reissue claim 37 recites “the screed plate selectively engageable with the structural-conductor plate” (l. 10). However, the patent specification makes no mention of the screed plate being “selectively engageable with” the structural/conductor plate. The “selectively engageable with” limitation indicates that, and encompasses constructions in which, the user or some other agency is able to make a selection as to how and/or when the screed plate is engaged with the structural/conductor plate. This subject matter does not find support in the original disclosure.
New reissue claim 37 recites “the screed plate selectively engageable with the structural-conductor plate proximal to the conductor bottom side of the structural-conductor plate” (ll. 10-11). As explained above with respect to claim 30, there is no support in the original disclosure for the screed plate being engageable with the structural/conductor plate “proximal to the conductor bottom side”. The newly claimed “proximal to the conductor bottom side” encompasses constructions in which the screed plate is engageable with the structural/conductor plate at a location near the conductor bottom side but spaced some distance from the conductor bottom side. There is no support in the original disclosure for such a construction. Thus, the scope of the claim exceeds the scope of the original disclosure.
New reissue claim 40 recites “wherein the coupling element comprises a curving configuration and provides a pressure-connective, a secure attachment or a coupling of the coupling element…” See the explanation above with respect to claim 17.
New reissue claim 43 recites “a heating element configured to provide indirect heat to a screed plate” (l. 2). See the explanation above with respect to claim 30.
New reissue claim 43 recites “the screed plate including: a paving surface side; and a plurality of mounds, hummocks or topographical highs extending from the paving surface side” (ll. 3-6). According to the patent specification, Fig. 7 shows diamond-shaped open spaces that represent mounds, moguls, hummocks or topographical highs of the crisscross pattern 133 in the plurality of corrugations 131. See col. 7, ll. 30-38. However, there is no support in the original disclosure for the mounds, hummocks or topographical highs “extending from” a paving surface side of the screed plate. It would appear from the patent specification and drawings that the mounds, hummocks or topographical highs define a paving surface side (rather than extend from a paving surface side) of the screed plate.
New reissue claim 43 recites “wherein the coupling element comprises a curving configuration and provides a pressure-connective, a secure attachment or a coupling of the coupling element…” (ll. 16-17). See the explanation above with respect to claim 17.
New reissue claim 44 recites “further comprising two screed plate attaching means positioned at the screed backside”. See the explanation above with respect to claim 18.
New reissue claim 50 recites “a heating element configured to provide indirect heat to a screed plate” (l. 2). See the explanation above with respect to claim 30.
New reissue claim 50 recites “the screed plate including: a paving surface side; and a plurality of mounds, hummocks or topographical highs extending from the paving surface side” (ll. 3-6). See the explanation above with respect to claim 43.
New reissue claim 53 recites “wherein the coupling element comprises a curving configuration and provides a pressure-connective, a secure attachment or a coupling of the coupling element…” See the explanation above with respect to claim 17.
New reissue claim 56 recites “a heating element configured to provide indirect heat to a screed plate” (l. 2). See the explanation above with respect to claim 30.
New reissue claim 56 recites “the screed plate including: a paving surface side; and a plurality of mounds, hummocks or topographical highs extending from the paving surface side” (ll. 3-6). See the explanation above with respect to claim 43.
New reissue claim 56 recites “wherein the coupling element comprises a curving configuration and provides a pressure-connective, a secure attachment or a coupling of the coupling element…” (ll. 15-16). See the explanation above with respect to claim 17.
New reissue claim 57 recites “further comprising two screed plate attaching means positioned at the screed backside”. See the explanation above with respect to claim 18.
New reissue claim 58 recites “at least two screed plate retaining means located on the screed plate”. There is no support in the original disclosure for the retaining means being “located on the screed plate”. Instead, the attaching means are disclosed as being located on the screed plate, and the retaining means are disclosed as being located on the bottom side of the structural/conductor plate.
New reissue claim 63 recites “a heating element configured to provide indirect heat to a screed plate” (l. 2). See the explanation above with respect to claim 30.
New reissue claim 63 recites “the screed plate including: a paving surface side; and a plurality of mounds, hummocks or topographical highs extending from the paving surface side” (ll. 3-6). See the explanation above with respect to claim 43.
New reissue claim 63 recites “wherein the screed plate is releasably attachable to the
screed assembly” (1. 7). However, there is no support in the original disclosure for the screed
plate being broadly “releasably attachable to the screed assembly”. This newly claimed
limitation encompasses constructions in which the screed plate is capable of releasable
attachment to any and all possible components or portions of a screed assembly. In contrast, the
original disclosure only describes an embodiment in which the screed plate has (i) a coupling
element constructed to coupleably engage a front side of a structural/conductor plate, and (ii)
attaching means constructed to coupleably engage retaining means on a bottom side of the
structural/conductor plate. Thus, the scope of the claim greatly exceeds the scope of the original
disclosure.
New reissue claim 66 recites “wherein the coupling element comprises a curving configuration and provides a pressure-connective, a secure attachment or a coupling of the coupling element…” See the explanation above with respect to claim 17.
Applicant is required to cancel the new matter added to the claims.
Reissue Oath/Declaration
The reissue declaration filed on May 4, 2023 is defective because applicant used the wrong form. Form PTO/SB/51 was for use with reissue applications filed prior to September 16, 2012. Form PTO/AIA /05 needs to be used for reissue applications filed on or after September 16, 2012 in order to fully comply with all of the requirements of 37 CFR 1.175 (which also requires compliance with 37 CFR 1.63, 1.64 or 1.67). See MPEP 1414-1414.02.
The reissue declaration filed on May 4, 2023 is also defective because it fails to specifically and properly identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP 1414-1414.01.
As required by 37 CFR 1.175(a), the reissue oath/declaration must specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue. In identifying the error, it is sufficient that the reissue oath/declaration identify a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. It is not sufficient to merely state that applicant seeks to broaden or narrow the scope of a patent claim. Further, a statement in the reissue oath/declaration of “…failure to include a claim directed to…” and then reciting all the limitations of a newly added claim would not be considered a sufficient error statement because applicant has not pointed out what the other claims lacked that the newly added claim has, or vice versa.
The reissue declaration filed in the instant application on May 4, 2023 identifies the same error identified in the reissue declaration filed in parent reissue Application No. 17/091,656 on November 6, 2020.
Where a continuation reissue application is filed, and the parent reissue application is not abandoned, a copy of the reissue oath/declaration filed in the parent reissue application (or an essentially duplicate oath/declaration citing the same error) is improper under 35 U.S.C. 251 unless it is accompanied by a statement explaining compliance with 37 CFR 1.175(f)(2). If the same error corrected in the parent reissue application is also being corrected in the continuation reissue application, but the error is being corrected in a different way, a statement is needed to explain compliance with 37 CFR 1.175(f)(2). See MPEP 1414, subsection II(D). In this case, applicant has failed to explain why the filing of a reissue declaration citing the same error as the reissue declaration in the parent reissue application is sufficient to ensure that an error is correctly identified by the continuation reissue application. See MPEP 1451, subsection II(B).
Claim Construction
During examination, the pending claims are normally interpreted according to the broadest reasonable interpretation standard (hereinafter, the “BRI standard”). That is, claims are given their broadest reasonable interpretation consistent with the specification, and limitations in the specification are not read into the claims. See MPEP 2111 et seq.
An exception to the BRI standard occurs when the applicant acts as their own lexicographer. For this exception to apply, the applicant must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning it would otherwise possess. See MPEP 2111.01, subsection IV.
Another exception or special case occurs when a claim recites a means-plus-function limitation that must be interpreted in accordance with 35 USC 112 ¶ 6, or 35 USC 112(f). See MPEP 2181. According to the guidance provided by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc), 35 USC 112 ¶ 6 applies when the claim term fails to recite (i) sufficiently definite structure, and/or (ii) sufficient structure for performing the claimed function.
The following claim terms/limitations are construed by the examiner to aid in reexamination:
Claim Term:
Coupling element (claims 17, 24, 27, 30, 37, 40, 43, 50, 53, 56, 63 and 66)
Examiner’s Construction:
Any and all possible elements that (i) are integrated into a screed plate, (ii) have a curving or angular configuration that is appropriately matching and paired with a front side of a structural/conductor plate, and (iii) enable a pressure-connective, secure attachment or coupling of themselves to the front side of the structural/conductor plate
Examiner’s Explanation:
This term invokes 35 USC 112(f) because “element” is a generic placeholder for structure, and the claims do not recite sufficient structure for performing the claimed function. Thus, “coupling element” is synonymous with “means for coupling”.
According to the patent specification, (i) a coupling element is incorporated into the screed plate front side, (ii) the conductor front side securely and freely receives the appropriately matching and paired coupling element, and (iii) the coupling element may be any number of elements having a curving or angular configuration integrated into the screed plate enabling a pressure-connective, secure attachment or coupling of the coupling element to the conductor front side. See col. 2, ll. 28-29, 47-49 and 58-60; col. 5, ll. 40-41; col. 6, ll. 16-21 and 45-49.
While the specification states that the coupling element can be any number of elements having a curving or angular configuration integrated into the screed plate enabling a pressure-connective, secure attachment or coupling of the coupling element to the conductor front side, the specification fails to identify any specific element suited for this purpose. Further, while Figs. 2A-2B, 4B, 5 and 7 of the drawings show a coupling element in the form of a curved edge/lip extending upward from or at the front side of the screed plate, the drawings do not show the front side of the structural/conductor plate as being “appropriately matching and paired” with this curved edge/lip. Rather, Fig. 6 appears to show the front side of the structural/ conductor plate as having a tapered, inclined, angular and/or pointed construction, which does not appear to constitute a structure that is “appropriately matching and paired” with the curved edge/lip defining the coupling element.1 In addition, the specification does not explain how the curved edge/lip (i.e., coupling element) and the tapered, inclined, angular and/or pointed front side (i) are “appropriately matching and paired”, and (ii) form a pressure-connective, secure attachment or coupling. Still further, the specification does not describe and the drawings do not show any coupling element having an angular configuration and being capable of forming a pressure-connective, secure attachment or coupling.
Claim Term:
Attaching means (claims 18, 19, 24, 31, 32, 37, 44, 45, 50, 57, 58 and 63)
Examiner’s Construction:
Any and all possible structures that are (i) located on a top side of a screed plate, (ii) appropriately matched and paired with retaining means located on a bottom side of a structural/conductor plate, and (iii) capable of being received by the retaining means so as to attach the screed plate to the structural/conductor plate
Examiner’s Explanation:
This term invokes 35 USC 112(f) because “means” is a generic placeholder for structure, and the claims do not recite sufficient structure for performing the claimed function. Thus, “attaching means” is synonymous with “means for attaching”.
According to the patent specification, (i) the screed plate has at least two screed plate attaching means located on the screed top side, (ii) the structural/conductor plate comprises at least two screed plate retaining means located on the conductor bottom side, and (iii) the at least two retaining means securely receive the appropriately matching and paired at least two attaching means. See col. 2, ll. 29-30, 43-45 and 56-58; col. 5, ll. 41-43; col. 6, ll. 7-9 and 41-45.
The specification fails to identify any specific element or structure suited to serve as the “attaching means”. Further, Fig. 4B of the drawings provides only a generally schematic illustration of the “attaching means”. No cross hatching appears in Fig. 4B, indicating that the “attaching means” is not shown in cross section. It is impossible to ascertain with any certainty what the interior lines of the element 109 represent. Further, it is impossible to ascertain what the three-dimensional structure of the element 109 is since Fig. 4B provides only a two-dimensional representation. No additional views are provided in the drawings, and no explanation of the structure of element 109 is found in the specification.
Claim Term:
Retaining means (claims 19, 32, 45 and 58)
Examiner’s Construction:
Any and all possible structures that are (i) located on a bottom side of a structural/conductor plate, (ii) appropriately matched and paired with attaching means located on a top side of a screed plate, and (iii) capable of receiving the attaching means so as to attach the screed plate to the structural/conductor plate
Examiner’s Explanation:
This term invokes 35 USC 112(f) because “means” is a generic placeholder for structure, and the claims do not recite sufficient structure for performing the claimed function. Thus, “retaining means” is synonymous with “means for retaining”.
According to the patent specification, (i) the screed plate has at least two screed plate attaching means located on the screed top side, (ii) the structural/conductor plate comprises at least two screed plate retaining means located on the conductor bottom side, and (iii) the at least two retaining means securely receive the appropriately matching and paired at least two attaching means. See col. 2, ll. 29-30, 43-45 and 56-58; col. 5, ll. 41-43; col. 6, ll. 7-9 and 41-45.
The specification fails to identify any specific element or structure suited to serve as the “retaining means”. Further, Fig. 6 of the drawings provides only a schematic illustration of the “retaining means” using a generic black box. It is impossible to ascertain what the structure of element 126 is since Fig. 6 shows only a generic black box. No additional views are provided in the drawings, and no explanation of the structure of element 126 is found in the specification.
Listing of Prior Art
The following is a listing of the prior art cited in this Office action together with the shorthand reference used for each document (listed alphabetically):
“Baker”
US Publication No. 2002/0106244 A1
“Barton”
US Patent No. 3,775,018
“Birtchet”
US Patent No. 5,417,516
“Frampton et al.”
US Patent No. 5,397,199
“Jackson ‘595”
US Patent No. 2,643,595
“Jackson ‘766”
US Patent No. 2,261,766
“Lutz”
US Patent No. 4,865,487
“Mosel”
US Patent No. 2,185,645
“Mullen”
US Patent No. 1,733,198
“Pilla”
US Patent No. 3,140,500
“Rahn et al.”
US Publication No. 2002/0061227 A1
“Schaffer ‘060”
US Publication No. 2018/0266060 A1
“Schaffer ‘705”
US Design Patent No. D727,705 S
“Sovik”
US Patent No. 6,884,000 B2
“Swearingen”
US Patent No. 6,318,928 B1
“Weller et al.”
US Patent No. 1,591,593
“Wisniewski”
US Patent No. 2,685,236
Claim Rejections – 35 USC § 251
The following is a quotation of 35 U.S.C. 251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
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(b) MULTIPLE REISSUED PATENTS.—The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
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(c) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
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(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS. No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
GROUND 1: Claims 17-20, 22, 24, 25, 27, 28, 30-33, 35, 37, 38, 40, 41, 43-46, 48, 50, 51, 53, 54, 56-59, 61, 63, 64, 66 and 67 are rejected under 35 U.S.C. 251 as being based upon a defective reissue oath/declaration. See 37 CFR 1.175. The nature of the defect(s) in the reissue oath/declaration is explained above.
GROUND 2: Claims 17-20, 22, 24, 25, 27, 28, 30-33, 35, 37, 38, 40, 41, 43-46, 48, 50, 51, 53, 54, 56-59, 61, 63, 64, 66 and 67 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is explained above. Dependent claims are included in this rejection at least because of their dependencies.
Claim Rejections - 35 USC § 112(a)
The following is a quotation 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.
GROUND 3: Claims 17-20, 22, 24, 25, 27, 28, 30-33, 35, 37, 38, 40, 41, 43-46, 48, 50, 51, 53, 54, 56-59, 61, 63, 64, 66 and 67 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement because these claims recite new matter. The added material which is not supported by the original disclosure is explained above. Dependent claims are included in this rejection at least because of their dependencies.
GROUND 4: Claims 17-20, 22, 24, 25, 27, 28, 30-33, 35, 37, 38, 40, 41, 43-46, 48, 50, 51, 53, 54, 56-59, 61, 63, 64, 66 and 67 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. These claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The Federal Circuit has repeatedly held that “the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation’.” Nevertheless, not everything necessary to practice the invention need be disclosed; all that is necessary is that one skilled in the art be able to practice the claimed invention, given the level of knowledge and skill in the art. With respect to the breadth of a claim, the relevant concern is whether the scope of enablement provided to one skilled in the art by the disclosure is commensurate with the scope of protection sought by the claims. In other words, the scope of the claims must be less than or equal to the scope of the enablement provided by the specification. See MPEP 2164.08.
Claims 17, 24, 43, 50, 56 and 63 recite “a coupling element positioned at the screed front side and constructed to coupleably engage the screed plate to a structural-conductor plate” (claim 17, ll. 9-10; claim 24, ll. 9-10; claim 43, ll. 14-15; claim 50, ll. 14-15; claim 56, ll. 13-14; claim 63, ll. 14-15). Claims 30 and 37 recite “a coupling element positioned at the screed front side and constructed to coupleably engage the screed plate to the structural-conductor plate” (claim 30, ll. 19-20; claim 37, ll. 21-22). Claims 17, 27, 30, 40, 43, 53, 56 and 66 recite “wherein the coupling element comprises a curving configuration and provides a pressure-connective, a secure attachment or a coupling of the coupling element with a front side of a structural-conductor plate” (claim 17, ll. 11-13; claim 30, ll. 21-23; claim 43, ll. 16-18; claim 56, ll. 15-17).
Claims 18, 31, 44 and 57 recite “further comprising two screed plate attaching means positioned at the screed backside.” Claims 24, 37, 50 and 63 recite “at least two screed plate attaching means” (claim 24, l. 11; claim 37, l. 23; claim 50, l. 16; claim 63, l. 16).
Claims 19, 32, 45 and 58 recite “wherein the two screed plate attaching means are configured to securely receive the at least two screed plate retaining means located on the road paver.”
Concerning the “coupling element” of claims 17, 24, 27, 30, 37, 40, 43, 50, 53, 56, 63 and 66:
The patent specification allows for this to be any and all possible elements that (i) are integrated into a screed plate, (ii) have a curving or angular configuration that is appropriately matching and paired with a front side of a structural/conductor plate, and (iii) enable a pressure-connective, secure attachment or coupling of themselves to the front side of the structural/ conductor plate. See the explanation in the Claim Construction section above.
The specification fails to identify any specific element suited to serve as the “coupling element”. Further, while Figs. 2A-2B, 4B, 5 and 7 of the drawings show a coupling element in the form of a curved edge/lip extending upward from or at the front side of the screed plate, the drawings do not show the front side of the structural/conductor plate as being “appropriately matching and paired” with this curved edge/lip. Rather, Fig. 6 appears to show the front side of the structural/conductor plate as having a tapered, inclined, angular and/or pointed construction, which does not appear to constitute a structure that is “appropriately matching and paired” with the curved edge/lip defining the coupling element.2 In addition, the specification does not explain how the curved edge/lip (i.e., coupling element) and the tapered, inclined, angular and/or pointed front side (i) are “appropriately matching and paired”, and (ii) form a pressure-connective, secure attachment or coupling. Still further, the specification does not describe and the drawings do not show any coupling element having an angular configuration and being capable of forming a pressure-connective, secure attachment or coupling.
Thus, the scope of the claims (encompassing any and all possible structures integrated into a screed plate and having a curving or angular configuration that is appropriately matching and paired with a front side of a structural/conductor plate to enable a pressure-connective, secure attachment or coupling) is far greater than the scope of enablement provided by the specification (describing no specific embodiment, or, at best, only one embodiment in which the coupling element is in the form of a curved edge/lip extending upward from or at the front side of the screed plate).
Concerning the “attaching means” of claims 18, 19, 24, 31, 32, 37, 44, 45, 50, 57, 58 and 63:
The patent specification allows for this to be any and all possible structures that are (i) located on a top side of a screed plate, (ii) appropriately matched and paired with retaining means located on a bottom side of a structural/conductor plate, and (iii) capable of being received by the retaining means so as to attach the screed plate to the structural/conductor plate. See the explanation in the Claim Construction section above.
The specification fails to identify any specific element or structure suited to serve as the “attaching means”. Further, Fig. 4B of the drawings provides only a generally schematic illustration of the “attaching means”. No cross hatching appears in Fig. 4B, indicating that the “attaching means” is not shown in cross section. It is impossible to ascertain with any certainty what the interior lines of the element 109 represent. Further, it is impossible to ascertain what the three-dimensional structure of the element 109 is since Fig. 4B provides only a two-dimensional representation. No additional views are provided in the drawings, and no explanation of the structure of element 109 is found in the specification.
Thus, the scope of the claims (encompassing any and all possible structures located on a top side of a screed plate and appropriately matched and paired with retaining means located on a bottom side of a structural/conductor plate so as to be capable of being received by the retaining means) is far greater than the scope of enablement provided by the specification (describing no specific embodiment).
Concerning the “retaining means” of claims 19, 32, 45 and 58:
The patent specification allows for this to be any and all possible structures that are (i) located on a bottom side of a structural/conductor plate, (ii) appropriately matched and paired with attaching means located on a top side of a screed plate, and (iii) capable of receiving the attaching means so as to attach the screed plate to the structural/conductor plate. See the explanation in the Claim Construction section above.
The specification fails to identify any specific element or structure suited to serve as the “retaining means”. Further, Fig. 6 of the drawings provides only a schematic illustration of the “retaining means” using a generic black box. It is impossible to ascertain what the structure of element 126 is since Fig. 6 shows only a generic black box. No additional views are provided in the drawings, and no explanation of the structure of element 126 is found in the specification.
Thus, the scope of the claims (encompassing any and all possible structures located on a bottom side of a structural/conductor plate and appropriately matched and paired with attaching means located on a top side of a screed plate so as to be capable of receiving the attaching means) is far greater than the scope of enablement provided by the specification (describing no specific embodiment).
Concerning the Wands factors (see MPEP 2164.01(a)):
The scope of claims 17, 24, 27, 30, 37, 40, 43, 50, 53, 56, 63 and 66 is very broad because they cover any and all possible structures integrated into a screed plate and having a curving or angular configuration that is appropriately matching and paired with a front side of a structural/conductor plate to enable a pressure-connective, secure attachment or coupling. The scope of claims 18, 19, 24, 31, 32, 37, 44, 45, 50, 57, 58 and 63 is very broad because they cover any and all possible structures located on a top side of a screed plate and appropriately matched and paired with retaining means located on a bottom side of a structural/conductor plate so as to be capable of being received by the retaining means. The scope of claims 19, 32, 45 and 58 is very broad because they cover any and all possible structures located on a bottom side of a structural/conductor plate and appropriately matched and paired with attaching means located on a top side of a screed plate so as to be capable of receiving the attaching means.
(B) The nature of the invention has to do with (i) structures used to couple/attach a screed plate to a portion of a road paver, and (ii) surface textures/patterns incorporated into the working surface of a screed plate.
(C) The prior art considered by the examiner establishes that it was known in the art to:
Couple/attach a screed plate to a mounting frame on a road paver via coupling elements at a curved front end of the screed plate that mate with and couple to complementary coupling elements on the mounting frame. See Baker.
Couple/attach a screed plate to a mounting frame on a road paver via coupling elements at the front of the screed plate having threaded openings that receive threaded fasteners extending through openings in the mounting frame. See Birtchet.
Provide a screed plate with an upwardly projecting front end that is curved or straight and that mates with or engages a portion of a mounting frame. See Frampton et al., Lutz, Mosel, Rahn et al., Sovik and Swearingen.
Couple/attach a screed plate to a mounting frame on a road paver via threaded fasteners extending from a top side of the screed plate and received in openings in the mounting frame. See Baker, Birtchet, Frampton et al., Lutz, Mosel and Rahn et al.
Couple/attach a screed plate to both a mounting frame on a road paver and a conductive plate (located between the screed plate and the mounting frame) via threaded fasteners extending from a top side of the screed plate and received in openings in both the mounting frame and the conductive plate. See Swearingen.
Incorporate surface textures/patterns into the working surface of a screed plate, with the surface textures/patterns being in the form of:
Mounds, hummocks or topographical highs arranged in a staggered or offset pattern. See Wisniewski.
Wavy teeth with points and beveled edges. See Mosel.
Corrugations forming alternating channels and ribs, with some sets of the corrugations angled relative to and intersecting other sets of the corrugations. See Weller et al.
Alternating parallel ribs/enlargements and recesses/pockets. See Barton and Jackson ‘766.
Alternating peaks and valleys. See Jackson ‘595.
Incorporate surface textures/patterns into the working surface of a compacting roller or plate, with the surface textures/patterns being in the form of mounds, hummocks or topographical highs arranged in a crisscross rhombic pattern. See Mullen.
Incorporate surface textures/patterns into the working surface of a spreading float, with the surface textures/patterns being in the form of mounds, hummocks or topographical highs arranged in a crisscross rhombic pattern. See Pilla, Schaffer ‘060 and Schaffer ‘705.
(D) The skilled artisan is familiar with prior art structures used to couple/attach a screed plate to a portion of a road paver, including those summarized above. Further, the skilled artisan is familiar with prior art surface textures/patterns incorporated into the working surface of a screed plate or similar implement, including those summarized above.
(E) On the one hand, the level of predictability in the art is considered to be relatively high given (i) the longstanding use of screed plates in implements and paving machines for the purpose of leveling, compacting and smoothing materials such as concrete and asphalt as such materials are applied to form a finished surface, (ii) the widespread use of threaded fasteners for attaching screed plates to a mounting frame on a road paver, and (iii) the well-known practice of incorporating surface textures/patterns into the working surface of a screed plate or similar implement. However, on the other hand, the level of predictability in the art is considered to be relatively low given the following facts:
Baker (i) is the only cited prior art document that teaches coupling elements at a curved front end of the screed plate that mate with and couple to complementary coupling elements on the mounting frame, and (ii) teaches only one example/type of coupling element that is suitable for this purpose.
While threaded fasteners are widely used for attaching screed plates to a mounting frame, the prior art fails to teach a wide range of other types of attaching means on a top side of a screed plate that are appropriately matched and paired (so as to form complementary structures) with retaining means located on a bottom side of a conductor plate.
(F) The amount of direction provided by the inventor is very limited in comparison to the scope of the claims. Concerning the claimed “coupling element”, the original disclosure provides a limited disclosure of one embodiment (i.e., the curved edge/lip extending upward from or at the front side of the screed plate, as shown in the drawings), but the drawings do not show the front side of the structural/conductor plate as being “appropriately matching and paired” with this curved edge/lip. Further, the specification does not explain how the curved edge/lip and the tapered, inclined, angular and/or pointed front side (i) are “appropriately matching and paired”, and (ii) form a pressure-connective, secure attachment or coupling. In contrast, the claims broadly cover any and all possible structures integrated into a screed plate and having a curving or angular configuration that is appropriately matching and paired with a front side of a structural/conductor plate to enable a pressure-connective, secure attachment or coupling. Concerning the claimed “attaching means”, the original disclosure does not describe any preferred embodiment. No example of such a structure is disclosed. In contrast, the claims cover any and all possible structures located on a top side of a screed plate and appropriately matched and paired with retaining means located on a bottom side of a structural/conductor plate so as to be capable of being received by the retaining means. Concerning the claimed “retaining means”, the original disclosure does not describe any preferred embodiment. No example of such a structure is disclosed. In contrast, the claims cover any and all possible structures located on a bottom side of a structural/conductor plate and appropriately matched and paired with attaching means located on a top side of a screed plate so as to be capable of receiving the attaching means. Thus, the scope of enablement provided to one skilled in the art by the disclosure is not commensurate with the scope of protection sought by the claims. Rather, the specification leaves the skilled artisan to develop his/her own solutions for achieving the any and all possible structures covered by the claims.
(G) As explained above, applicant’s specification fails to describe a complete working example of the claimed “coupling element”. Further, as explained above, applicant’s specification fails to describe any working example of either the claimed “attaching means” or the claimed “retaining means”. Thus, th