DETAILED ACTION
The amendment filed 12/15/2025 has been entered.
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 .
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) 1, 5-6, 8-10, and 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Knapp (9,315,955) in view of Pino, Jr. et al. (2019/0226603).
With regard to claim 1, Knapp discloses a roadway access drill configured to reduce damage to a utility buried under a roadway comprising: a four saw head comprising a first saw opposing a second saw and a third saw opposing a fourth saw (fig. 7, saws 82, col 14, lines 3-10, wherein a second set of saws results in four saws), wherein the four saw head is configured to cut a square or rectangular roadway access hole (fig. 2) having side of 4 inches to 16 inches (fig. 6; col. 9, lines 37-65), and wherein the first, second, third and fourth saws are configured to cut simultaneously (col. 4, lines 25-28); at least one motor (198) configured to drive the first, second, third and fourth saws; and a lifting device for lifting and lowering the roadway access drill (col. 9, lines 4-6).
Knapp discloses the invention substantially as claimed however is silent regarding a computer system configured to control movement of the four saw head; an under-roadway detection unit connected to the computer system and configured to measure in real time a distance between the four saw head and a buried utility under the roadway; and the computer system being configured to automatically at least one of providing warning to an operator of the roadway access drill or stopping movement of the four saw head towards a buried utility at a set distance between the four saw head and the buried utility to avoid damaging the buried utility; the computer system being configured to automatically stopping movement of the four saw head towards a buried utility at a set distance between the four saw head and the buried utility to avoid damaging the buried utility; and a debris containment collar comprising a vacuum attachment for attaching a source of vacuum to a hollow chamber configured to at least partially surround the roadway access drill.
Pino discloses Pino discloses a roadway saw comprising a computer system (para 0013) configured to control movement of the saw (para 0015); an under-roadway detection unit connected to the computer system and configured to measure in real time a distance between the saw head and a buried utility under the roadway (para 0013); and the computer system being configured to automatically at least one of providing warning to an operator of the roadway access drill or stopping movement of the saw head towards a buried utility at a set distance between the saw head and the buried utility to avoid damaging the buried utility (para 0015), the computer system being configured to automatically stopping movement of the four saw head towards a buried utility at a set distance between the four saw head and the buried utility to avoid damaging the buried utility (para 0015), and a debris containment collar (shroud of saw) comprising a vacuum attachment (111) for attaching a source of vacuum to a hollow chamber configured to at least partially surround the roadway access drill (fig. 5).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Knapp and utilize an under-roadway detection unit as taught in Pino, with a reasonable expectation of success, in order to avoid buried utilities as taught by Pino (para 0008).
With regard to claim 5, Knapp further discloses at least one of the first, second, third and fourth saws comprises a circular saw blade driven by an associated motor (col. 9, lines 52-53).
With regard to claim 6, Knapp further discloses each of the first, second, third and fourth saws comprises a circular saw blade driven by an associated motor (198; fig. 7).
With regard to claims 8-9, Knapp, as best understood, further discloses the set distance comprises 4-12 inches (col. 1, lines 19-35, where saw depth can be 4 inches).
With regard to claim 10, Knapp further discloses the first, second, third and fourth saws are configured to cut through asphalt or concrete (concrete slab 2).
With regard to claim 12, Knapp further discloses at least one of the first, second, third and fourth saws is mounted on an associated saw movable mount that allows a saw blade to move along a cutting plane (fig. 6, col. 9, lines 38-51).
With regard to claim 13, Knapp further discloses at least two of the first, second, third and fourth saws is mounted on an associated saw movable mount (fig. 6, col. 9, lines 38-51) that allows a first saw blade to move along a first cutting plane and a second saw blade to move along a second cutting plane (fig. 9, col 14, lines 3-10).
With regard to claim 14, Knapp further discloses at least one of the first, second, third and fourth saws is mounted on an associated saw rotatable mount that allows a saw blade to move along a cutting plane (col. 9, lines 52-65).
With regard to claim 15, Knapp further discloses at least two of the first, second, third and fourth saws is mounted on an associated saw rotatable mount that allows a saw blade to move along a cutting plane (col. 9, lines 52-65).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Knapp (9,315,955) in view of Pino, Jr. et al. (2019/0226603), as applied to claim 1 above, and further in view of Hatcher (3,007,688).
With regard to claim 7, Knapp, as modified, discloses the invention substantially as claimed however is silent regarding all of the first, second, third and fourth saws comprises a circular saw blade driven by one motor.
Hatcher discloses a roadway saw comprising multiple saws wherein all the saws are driven by one motor (63/67; col. 4, lines 1-2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to further modify Knapp and utilize a single motor as taught in Hatcher, with a reasonable expectation of success, in order to reduce the number of motors.
Response to Arguments
Applicant’s arguments filed 12/15/2025 with respect to the drawings have been fully considered and are persuasive. The objection of the drawings has been withdrawn.
Applicant's arguments filed 12/15/2025 with respect to Knapp and Pino have been fully considered but they are not persuasive.
Applicant’s invention is directed towards an apparatus. “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). Applicant has claim language stating “configured to” and performing a function; e.g. “configured to cut a square or rectangular roadway access hole having sides of 4 inches to 16 inches wide. One way this is achieved in applicant’s specification is by circular saws (36) mounted on a movable mount (45) (see paras 0060-0064). Knapp discloses similar structure of circular saws (32) mounted on a movable mount (e.g.179; fig. 6). In other words, Knapp has almost identical structure to applicant’s structure and therefore Knapp is “configured to” perform the function. See MPEP 2114, 2181.
In response to applicant’s argument regarding Knapp not discloses four cutting saws, the examiner disagrees. The examiner contends the disclose of col. 14, lines 3-10 is more than just a “catch-all phrase” and clearly describes how it’s possibly to have 4 saws and them being 90 degrees to each other in a similar fashion to applicant.
In response to applicant’s argument regarding the device of Knapp cannot cut a small access hole having from 4 to 16 inches in width, the examiner disagrees. This argument is not persuasive because it is a mere attorney argument without any supporting evidence or persuasive explanation. As discussed above, Knapp discloses circular saws movable mounted in similar fashion to applicant’s. The examiner contends Knapp is “configured to” cut realatively small or large portions based on the desirability of the operator.
In response to applicant’s argument that there is no motivation to add Pino to Knapp since there is no issue with buried utilities when removing the entire slab in Knapp, the examiner disagrees. As stated in applicant’s own specification, it is well known that conventional saws damage improperly placed buried utilities. Given that Knapp cuts into a roadway, there is a strong motivation to avoid damaging the utilities.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN F FIORELLO whose telephone number is (571)270-7012. The examiner can normally be reached Mon-Fri 8:00AM-4:30PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Anderson can be reached at (571)270-5281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN F FIORELLO/Primary Examiner, Art Unit 3678
BF
01/23/2026