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.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 5, 8-10, 14, 17-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schantz US 5,362,178.
Schantz discloses a method of paving a roadway surface comprising the steps of:
Receiving a paving material, into an open top of a containment basin (14/44) via spigots
(28) extending over the containment basin (14).
Spreading the paving material the roadway surface using at least one brush assembly
(16, 48, 50) which are laterally adjustable to vary the width of the paving material
being spread.
Variably expanding the width of the containment basin by extending the at least one
broom laterally.
Removing at least one brush (16, 48, 50) by loosening a thumbscrew, ball & socket,
friction fit and the like from the dual channel track (46). Col. 3, lns. 30-54.
Spreading the paving material with a second row of brushes, having a softer stiffness
than and trails behind the 1st row of brushes via dual channel track (46, 47).
Using a lift (54) connected between the containment basin and a vehicle towing the
containment basin to selectively raise/lower the containment basin and adjust
the thickness of the paving material on the roadway surface by adjusting the
pressure applied by the brushes to the paving material/emulsion. Col. 3, ln. 55-
Col. 4, ln. 5; Figs. 8-11.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schantz US 5,362,178. Schantz discloses a method of paving a roadway comprising providing a spreading apparatus having a containment basin (14, 44) and a dual channel track (46) wherein brushes (16, 48, 50) having different bristle stiffnesses,
can be used with “Other spreading devices may be used as necessary, such as those having sponge material, soft bristles or other suitable medium”. Col. 3, lns. 35-54.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position a brush (16) and a finishing element in tandem using the front and rear tracks of the dual channel track (46), as reasonably suggested by Schantz, a matter of design choice.
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schantz US 5,362,178 in view of Monger et al. US 20110002736. Schantz discloses a method of paving a roadway comprising providing a spreading apparatus having a containment basin (14, 44) and a dual channel track (46) wherein brushes (16, 48, 50) having different bristle stiffnesses. But only discloses adjusting the width of the containment basin and brushes (16, 48, 50) manually. However, Monger et al. teaches a method of paving a roadway using a paving machine having a hopper (5), an outlet for dispensing paving material onto a roadway, a broom, coving tool or rotating pipe (620) for spreading and smoothing the paving material. [0123]. Wherein the frame may have an adjustable width, using a width actuator, transverse beams and locking pins so that the transverse distance between tracks or wheels and thus the broom assembly (620).
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 of Schantz with the steps of using a width actuator to adjust the width of the frame, as taught by Monger et al. in order to automate a manual task thereby improving paving efficiency.
Claim(s) 1, 5-7, 9-13, 17-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Davis et al. US 10,017,907 in view of Schantz US 5,362,178. Davis et al. disclose a method of paving a road surface comprising the steps of:
Adjusting a shoe (161) to vary a height of a containment basin (21) in order to contact
a plurality of brush assemblies (29) with a roadway.
Spreading a paving material, such as emulsion, on the road surface using at least one
brush (29, 111, 112, 120, 121) located within a containment basin (21) and
arranged in transverse and V-shaped assemblies (36, 37, 107, 113). See Fig. 1.
Variably expanding the containment base and the broom assembly rotating/folding end
extensions (100-103) of the containment basin (21). Col. 3.
Changing a size of the at least one brush as the width of the containment basin is
variably expanded.
Wherein the brushes can include more than one broom element or more than one finishing element, such as scrapers or other devices. Col. 1, lns. 15-45.
Wherein the paving material is provided by the towing vehicle having a spray assembly.
What Davis et al. do not disclose is discharging the emulsion into the containment
basin. However, Schantz teaches a method of paving a roadway comprising providing a paving machine having a hopper (12) and spigots (28) that apply a road sealant or the like into a containment basin (14) or directly onto the road surface directly in front of a brush assembly (16, 48, 50). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to spray the emulsion of Davis et al. within the front portion of containment basin (22) as reasonably suggested by Schantz in order to facilitate an even application and smooth surface of the emulsion.
Further, Schantz teaches it is known to use brush assemblies with different stiffness and the “sealant” applied to the roadway can include “Various liquid sealants are available for application to these (road) surfaces to repair and fill cracks, and provide preserving agents to help retard the weathering process”. Col. 1 {this is seen to include emulsions, slurries and rejuvenation agents such as maltenes and asphaltenes. 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 of Davis et al. with the steps of using different bristles stiffnesses and different layers of “sealants” as reasonably suggested by Schantz in order to crack repair and weather protection.
Response to Amendment
Applicant’s amendment filed 4/08/2026, with respect to the rejection(s) of claim(s) 1-3, 5-7, 14, 17 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Schantz and Davies et al.
Response to Arguments
Applicant’s arguments filed 4/08/2026, with respect to Bergkamp et al. have been fully considered and are persuasive. The 35 USC 102 and 103 rejection of 1-6, 8-22 has been withdrawn.
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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chris Sebesta can be reached on 571-272-0547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you need help from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RAYMOND W ADDIE/Primary Examiner, Art Unit 3671 6/13/2026
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