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 . 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.
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.
Claims 1-22 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.
Claims 1-22 recite the phrase “containment basin” but does not include any description of what is or is not a “containment basin”. Therefore, the claims are vague and indefinite because it is unclear how the method is performed when the feature receiving paving material is unknown.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-22 are rejected on the ground of nonstatutory double patenting over claims 1-29 of U.S. Patent No. 11,753,778 since the claims, if allowed, would improperly extend the “right to exclude” already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming
common subject matter, as follows: Everything claimed in the application is disclosed in the patent. Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
Claim(s) 1-6, 9, 13-18, 22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bergkamp et al. US 2021/0230811. Bergkamp et al. disclose a method of paving a road surface comprising the steps of:
Receiving a paving material such as emulsion or asphalt slurry into a containment basin
defined by truss (16) and barrier elements (48A) see Figs. 9-11, [0039].
Spreading the paving material on the road surface using at least one brush (18, 20) located within the containment basin.
Variably expanding the containment base and the broom assembly (18, 20) by
telescopically sliding the truss (16) via hydraulic cylinder (45) or by
rotating/folding end extensions of the truss (16). [0028], Fig. 5.
Changing a size of the at least one brush as the width of the containment basin is
variably expanded. [0028-29].
Wherein the at least one broom assembly (18) can include more than one broom element and the 2nd broom assembly (20) can also include more than one broom element or more than one finishing element. Fig. 7 [0030].
Wherein the paving material is provided by the towing vehicle (12) such as an asphalt emulsion or liquid asphalt slurry. [0027]. Therefore, it would be inherent to one of ordinary skill the towing vehicle could apply an emulsion to a 1st road surface and sequentially an asphalt slurry to a 2nd road surface.
With respect to claims 14, 15 Bergkamp et al. disclose using a lift (40, 42, 44) connected between the containment basin (16) and the towing vehicle (12) to selectively raise and lower the containment basin. Fig. 7. Bergkamp et al. further disclose selectively extending or retracting a control element (45) connecting the containment basing to the vehicle to offset the containment basin in a direction transverse to the direction of travel. Fig. 5; [0034]
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating
obviousness or nonobviousness.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bergkamp et al. US 2021/0230811 in view of Wilson et al. US 4,906,126.
Bergkamp et al. disclose a method of paving a road surface comprising the steps of:
Receiving a paving material such as emulsion or asphalt slurry into a containment basin
defined by truss (16) and barrier elements (48A) see Figs. 9-11, [0039].
Spreading the paving material on the road surface using at least one brush (18, 20) located within the containment basin.
Variably expanding the containment base and the broom assembly (18, 20) by
telescopically sliding the truss (16) via hydraulic cylinder (45) or by
rotating/folding end extensions of the truss (16). [0028], Fig. 5.
Changing a size of the at least one brush as the width of the containment basin is
variably expanded. [0028-29].
But does not disclose how to remove the broom heads when worn. However, Wilson et al. teach a method and apparatus for resurfacing paved surfaces, comprising:
A plurality of brush assemblies (123, 124) connected to a broom head channel (121, 122) with fasteners (125). See Fig. 12; Col. 10, lns. 3-26. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the method of paving a road of Bergkamp et al. with the removable brush assembly taught by Wilson et al. in order to replace worn bristles.
Claim(s) 10-12, 19-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bergkamp et al. US 2021/0230811 in view of Davis et al. US 10,017,907. Bergkamp et al. disclose a method of paving a road surface comprising the steps of:
Receiving a paving material such as emulsion or asphalt slurry into a containment basin
defined by truss (16) and barrier elements (48A) see Figs. 9-11, [0039].
Spreading the paving material on the road surface using at least one brush (18, 20) located within the containment basin.
Wherein the broom heads (18, 20) can comprise flexible bristles set in a base, the bristles comprise strands of plastic, metal even hair. [0030]. It would have been obvious, if not inherent broom heads (18) having bristles of hair or plastic, would have a different stiffness than a broom head (20) having plastic bristles. What Bergkamp et al. do not disclose is forming the rows of broom heads (18, 20) into a V shape. However,
Davis et al. teach a paving machine having rows of broom heads aligned in straight rows and in V shaped rows. See Figs. 1, 2, 4; Col. 3, lns. 19-26. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to align at least one row of broom heads of Bergkamp et al. in a V shape as taught by Davis et al. in order to direct excess paving material into the center of the containment basin.
Claim(s) 1-3, 5-7, 14, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ban et al. US 4,678,365 in view of Hightower US 4,747,174. Ban et al. discloses a method of paving a roadway comprising the steps of:
Receiving a paving material into a containment basin (103, 103’). Fig. 5.
Spreading the paving material on the roadway surface. Col. 3, ln. 21-Col. 4, ln. 21.
Expanding the width of the containment basin by activating linear actuators (15, 15’).
Although Ban et al. discloses “The apparatus is readily adapted so that different attachments can be added to suit particular requirements of the job”. Ban et al. do not disclose the use of a brush. However, Hightower teaches a grooming attachment for paved surfaces such as tennis courts, wherein an extendable brush assembly (11, 12) is configured to spread paving material over a paved surface in need of reconditioning.
See Figs. 1, 2; Col. 2. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the method of paving a roadway surface of Ban et al. with the step of providing a smoothing broom assembly as taught by Hightower, in order to ensure a desired degree of smoothness.
With respect to claims 2-3 Ban et al. discloses a main body (10) and linearly expandable wings (50, 50’) that are independently, variably, translatable to/from the main body (20) in order to vary the width of the containment basin (103, 103’). Figs. 2-3; Col. 4, lns. 6-21).
With respect to claims 5, 6 Ban et al. discloses the containment basin can be moved forwardly/reversely having finishing elements (56, 56’) see col. 4, lns. 39-45, Col. 5, lns. 9-27. What Ban et al. do not disclose the use of a brush. However, Hightower teaches a grooming attachment for paved surfaces such as tennis courts, wherein an extendable brush assembly (11, 12) is configured to spread paving material over a paved surface in need of reconditioning. See Figs. 1, 2; Col. 2. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the method of paving a roadway surface of Ban et al. with the step of providing a smoothing broom assembly as taught by Hightower, in order to ensure a desired degree of smoothness.
With respect to claim 7 Ban et al. disclose the step of adjusting the height of a shoe or ski (101) using a hydraulic piston (58, 58’). Col. 4, lns. 22-30, Col. 5, lns. 32-45.
With respect to claim 14 Ban et al. disclose a three point hitch (11) connectable to a lift arm mounted to the tow vehicle. Col. 3, lns. 49-60.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAYMOND W ADDIE whose telephone number is (571)272-6986. The examiner can normally be reached on m-f 7:30-12:30, then 6-9pm.
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/RAYMOND W ADDIE/Primary Examiner, Art Unit 3671 1/28/2026