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 .
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because the references numerals are indiscernible. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "95" and "9" have both been used to designate “central drum cutter holder” para [18]. 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. 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "80" and "90" have both been used to designate “muck boxes” para [32]. 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. 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.
Specification
The disclosure is objected to because of the following informalities: para [10] “boxe 80” appears incorrect. Para [27] “as as many as” appears incorrect. Appropriate correction is required.
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 21-37 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 21 line 7 calls for “front side”; claim 21 line 4 calls for “a front side”; it is unclear if and how they are related.
Claim 21 line 7 calls for “rear side”; claim 21 line 4 calls for “a rear side”; it is unclear if and how they are related.
Claim 21 line 9 calls for “frame”; claim 21 line 9 calls for “a main frame”; it is unclear if and how they are related.
Claim 21 line 13 calls for “the external frame”; claim 21 line 10 calls for “a plurality of external frames”; it is unclear if and how they are related.
Claim 21 line 15 calls for “the external frame”; claim 21 line 10 calls for “a plurality of external frames”; it is unclear if and how they are related.
Claim 21 line 15 calls for “the internal frames”; claim 21 line 13 calls for “a plurality of front internal frames”; it is unclear if and how they are related.
Claim 21 line 18 calls for “the external frame”; claim 21 line 10 calls for “a plurality of external frames”; it is unclear if and how they are related.
Claim 21 line 18 calls for “the internal frames”; claim 21 line 13 calls for “a plurality of front internal frames”; it is unclear if and how they are related.
In claim 21, the claim limitation “excavating means” has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the term “excavating means” is modified by a word, which is ambiguous regarding whether it conveys structure or function. The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
Claim 21 line 21 calls for “the external frame”; claim 21 line 10 calls for “a plurality of external frames”; it is unclear if and how they are related.
Claim 21 lines 23,30 call for “the open spaces”; claim 21 line 16 calls for “a plurality of open spaces”; it is unclear if and how they are related.
Claim 21 line 31, “of digging” is awkward and confusing.
Claim 21 is confusing because it is not clear how the internal frames (91) are configured to move transversely relative to the hollow shield, including upward, downward, lateral, rotational, or axial movements to reposition the excavating means.
Claims 22-27 are directed to canceled claim 1 directly or indirectly. Therefore, claims 22-27 cannot be treated on the merits.
Allowable Subject Matter
Claim 21 would be allowable if rewritten or amended 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.
The following is a statement of reasons for the indication of allowable subject matter: Japanese document ‘786 discloses a tunnel extraction machine (TEM) (see Figs. 1-10, 14-18) comprising: a hollow shield having a longitudinal central axis, an outer surface, an inner surface defining a cavity extending along the central axis (see Fig. 2), opposite end openings providing access to the cavity, a front side in a forward direction, and a rear side at opposite of the front side, the hollow shield comprising a plurality of shields including but not limited to a forward shield (3) at front side, a rear shield (16) at rear side of the hollow shield and a middle shield (2) between the forward shield and the rear shield:
a main frame (see Fig. 14) disposed within the hollow shield, the frame comprising: a plurality of external frames positioned adjacent to or spaced from the inner surface of the hollow shield, a plurality of open spaces (7) within the hollow shield through which material can pass into the interior of the hollow shield: wherein a front faces of the external frame are positioned in the forward direction of the hollow shield: a plurality of excavating means (13) mounted on the front side of the hollow shield, the external frame, the excavating means being configured to remove material as the hollow shield is thrust forward while permitting material located at the open spaces to enter into the interior of the hollow shield. However, the prior art fails to teach a central frame positioned within the hollow shield along the central axis or spaced from the central axis, a plurality of front internal frames arranged transversely between the external frame and the central frame: wherein the external frame, the central frame, and the internal frames collectively define a plurality of open spaces, wherein a front faces of the external frame, the central frame, and the internal frames are positioned in the forward direction of the hollow shield and wherein the internal frames are configured to move transversely relative to the hollow shield, including upward, downward, lateral, rotational, or axial movements to reposition the excavating means mounted thereon for removing material transversely and cutting material that has entered into the hollow shield through the whereby materials entered into [he open spaces are being extracted without requiring of digging or crushing them.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUNIL SINGH whose telephone number is (571)272-7051. The examiner can normally be reached M-Th 8-3, F 9-8 and 2nd Sat 11-7.
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/SUNIL SINGH/Primary Examiner, Art Unit 3678
SS 12/13/2025