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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 22 April 2026 has been entered.
Response to Arguments
Applicant's arguments filed 22 April 2026 have been fully considered but they are not persuasive. Applicant argues that Riedel et al. do not disclose the limitations “wherein the cutting shoe defines one or more serrations along the peripheral cutting edge.” The Examiner respectfully disagrees. Riedel et al. clearly disclose in col. 1, lines 50-55: “The cutting surface 14 which can utilize many different features, such as sharp cutting edges, cutting teeth, carbide buttons, diamond cutters, and many others,” and, as such, discloses employment of one, or a multiple of features including a plurality of cutting edges/teeth which are equivalent to the broadly recited term “serrations” along the peripheral cutting edge (14). In addition, Fig. 1 of Riedel et al. clearly indicates element (14) as a “peripheral cutting edge” thus meeting the limitations recited in instant independent claims 1 and 20.
Applicant then argues that Riedel et al. do not disclose the limitations: “wherein the coring sampler is configured to be driven into soil by linear pressing without rotational motion of the cutting shoe relative to the soil,” and that Riedel et al. statement that “percussion” and/or “static push” may be employed, and allegedly includes rotation, and thus does not disclose a coring sampler that is configured for linear, non-rotational insertion required by the independent claims. The Examiner respectfully disagrees. The Applicant fails to make any arguments that the device/apparatus disclosed by Riedel et al. is incapable, or cannot be driven into soil by linear pressing without rotational motion of the cutting shoe relative to the soil. Additionally, the claimed invention(s) are also device/apparatus claims, and the manner of operating the apparatus/device does not differentiate an apparatus claim from the prior art. “Apparatus claims cover what a device is, not what the device does.” see Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). As such, apparatus/device disclosed by Riedel et al. is inherently capable, thus configured, to be driven in a linear, non-rotational insertion, as it is only a manner of intended use/employment. The very fact that “percussion” and/or “static push” may be employed, as clearly stated by Riedel et al., and Riedel et al. clearly differentiate between “rotation” type and “static push” type and/or “percussion” type, wherein only one type is employed, or a combination of types, thus the Riedel et al. apparatus/device is inherently configured to be driven in a linear, non-rotational insertion, as it is only a manner of intended use/employment.
Applicant then argus that Riedel et al. do not disclose “wherein the connection side of the cutting shoe has an outer connection diameter which is larger than an outer cutting diameter of the peripheral cutting edge, such that an outer surface of the engagement side is tapered towards the peripheral cutting edge,” and that specification of Ridel et al. is silent with respect this claimed tapering geometry and that the Examiner relied on unsupported inference from the figures. The Examiner respectfully disagrees. Figs. 1 and 7 (portions of which are reproduced and highlighted below) of Riedel et al. clearly disclose a tapering geometry and meet the limitations above. Applicant should note that the term “tapered” is broadly defined as: “to become progressively smaller toward one end,” which Figs. 1 and 7 clearly depicts a larger diameter connection side (12) than the outer cutting diameter of the peripheral cutting edge (14), thus becomes “progressively smaller” and thus “tapered,” meeting the aforementioned limitations. As such, all of Applicant’s arguments have been addressed and refuted.
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Specification.
The disclosure is object to because of the following. informalities: the instant filed specification does not have a reference number for the claim limitation of an “angle” recited in instant dependent claim 6 or the limitation “edge features” recited in instant dependent claim 21.
Appropriate correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “angle” recited in instant dependent claim 6 and “edge features” recited in instant dependent claim 21 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
Claim Rejections - 35 USC § 112
Claims 6 and 20 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.
Instant dependent claim 6 recites: “wherein the one or more recesses define an angle with a surface of the engagement side of the cutting shoe.” The instant filed specification and drawings fail to adequately depict and/or define the recited “angle,” thus rendering the claim indefinite. Instant Fig. 1 depicts recesses (8), but instant Fig. 2 does not depict or show the recesses, thus both fail to depict or clearly show the recited “angle.” While instant Fig. 1 and Fig. 2 depict element (41) as “an outer surface of the engagement side (4),” instant dependent claim 6 only employs “a surface,” not “an outer surface,” and, as such, it is unclear exactly which surface is being recited in the claim, regarding the recited “angle,” which could be an outer surface, an inner surface, or some other surface, rendering the claim indefinite. Furthermore, instant Fig. 2 allegedly depicts, based on the BRIEF DESCRIPTION OF THE DRAWINGS,” “a cross-sectional view of one implementation of the invention showing the cutting shoe,” however, there is no indication of the cross-sectional plane (i.e. exactly where the cutting shoe is cross-sectioned) to create instant Fig. 2, thus, overall, instant dependent claim 6 is unclear and rendered indefinite.
Instant independent claim 20 recites “a cutting shoe” in line 12, while the preamble of the claim recites: “A cutting shoe for use in a coring sampler.” It is unclear if an additional cutting shoe is being recited, or the same cutting shoe is being recited in line 12, rendering the claim indefinite.
Instant dependent claim 21 recites the limitations “edge features” which are not employed or defined within the instant filed specification, and/or depicted with a reference number in the instant drawings, thus it is unclear as to what exactly constitutes “edge features” in regards to the recited “edge features,” rendering instant dependent claim 21 indefinite.
Claim Rejections - 35 USC § 102/103
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 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.
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, 2, 4, 11 and 18-20 is/are rejected under 35 U.S.C. 102(a)(1)as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO 2021/105594 to Boisseau. Riedel et al. disclose a coring sampler for retrieving coring samples (see entire reference, in particular Figs. 1-3 and 7) including an elongated coring section (11, 15, 21), defining at least a hollow space extending between a proximal end and a distal end; and a cutting shoe (12, 23) comprising a connection side and an engagement side, the connection side being attached to the distal end of the elongated coring section, wherein the engagement side of the cutting shoe comprises a peripheral cutting edge (14) opposite the connection side, wherein the cutting shoe extends and defines a through-opening between the peripheral cutting edge/blade and the connection side such that material can move from the cutting edge, through the cutting shoe into the hollow space of the elongated coring section, and wherein the cutting shoe can define one or more serrations (i.e. sharp cutting edges, cutting teeth, carbide buttons, diamond cutters, and many others: see col. 1, lines 50-55 which states: “The cutting surface 14 can utilize many different features, such as sharp cutting edges, cutting teeth, carbide buttons, diamond cutters, and many others,” and, as such, inherently and/or obviously discloses to one of ordinary skill in the art as of the effective filing date of the instant invention, employment of one or a multiple of features including a plurality of cutting teeth/serrations) along the peripheral cutting edge (14) (as recited in instant independent claims 1 and 20); capable (thus configured) of performing a method of retrieving a soil sample with all of the steps recited in instant independent claim 19 and configuration of the coring sampler recited in instant independent claims 1 and 20), including the coring sampler being capable (thus configured) to be driven into soil by linear pressing without rotational motion (percussion, static push) (see Fig. 2 and col. 2, lines 3-45, which states: “The means for driving or advancing the soil sampler assembly 10 can be percussion, rotation, vibration, static push, or a combination thereof,” thus clearly differentiating between “rotation” type and “static push” type and/or “percussion” type, wherein only one type is employed, or a combination of types, thus inherently and/or obviously discloses to one of ordinary skill in the art as of the effective filing date the coring sample is configured to be driven into soil by linear pressing without rotational motion of the cutting shoe relative to the soil); wherein the cutting shoe comprises a substantially circular cross-section (as recited in instant dependent claim 2); wherein the connection side of the cutting shoe has an outer connection diameter which is larger than an outer cutting diameter of the peripheral cutting edge, such that an outer surface of the engagement side is tapered towards the peripheral cutting edge (see Figs. 1 and 7, note: the term “tapered” is broadly defined as: “to become progressively smaller toward one end,” which Figs. 1 and 7 clearly depicts a larger diameter connection side (12) than the outer cutting diameter of the peripheral cutting edge (14)), wherein an inner surface of the engagement side of the cutting shoe has a substantially circular cross-section and has an inner diameter which is substantially equal to an inner diameter of the hollow space of the elongated coring section (as recited in instant dependent claim 4); wherein the connection side of the cutting shoe and the distal end of the elongated coring section comprise a threaded section (see col. 1, lines 33-35; col. 5, lines 59-62) (as recited in instant dependent claim 11), and meeting all the limitations of instant independent claim 1, 19 and 20.
As shown above, although Riedel et al. clearly disclose the limitations “wherein the connection side of the cutting shoe has an outer connection diameter which is larger than an outer cutting diameter of the peripheral cutting edge, such that an outer surface of the engagement side is tapered towards the peripheral cutting edge” and “wherein the coring sampler is configured to driven into soil by linear pressing without rotational motion of the cutting shoe relative to the soil” recited in instant independent claims 1, 19 and 20, these aforementioned limitations are clearly known to those of ordinary skill in the art of soil sampling as of the effective filing date of the instant invention. This is evidence by Boisseau. Boisseau (see entire reference including attached English translation) discloses a coring sampler (10) for retrieving coring samples of soil sharing many of the recited limitations and structural aspects disclosed by Riedel et al., including an elongated coring section (1) with a cutting shoe/end being tapered, with an engagement side attached to the elongated coring section, the cutting shoe extends and defines a through-opening/inlet (6) between a peripheral cutting edge such that material can move from the cutting edge, through the cutting shoe into a hollow space of the elongated coring section, wherein the cutting shoe defines one or more serrations/sharp teeth (2), the cutting shoe/end being tapered (i.e. becomes progressively smaller in diameter from an upper side to the peripheral cutting edge, see Fig. 1 and Figs. 2A-2C) and wherein Boisseau explicitly states: “said sharp teeth are present in a number equal to or greater than 2 and are regularly distributed over the end of the tubular body delimiting the entrance,” “the sharp teeth have a sharp bevel on the outer side of the tubular body to allow easy penetration, “sharp teeth are arranged at the longitudinal end delimiting the inlet 6,” and “The sharp teeth are steel and pre-machined. They have a height of between 6 and 15 centimeters (cm) and a sharp bevel on the outside of the tubular body. The height of the teeth can be adapted according to the diameter of the longitudinal end of the tubular body delimiting the entrance.” Boisseau further discloses that the coring device is configured to be driven into the soil by linear pressing without rotational motion and explicitly states: “the invention aims to obtain a tool intended for digging cavities in series without requiring the evacuation of the earth between each hollowed cavity and without having recourse to a rotation of all or part of the tool to dig an excavation (emphasis added)” and “cutting means facilitate the insertion of the tool into the ground, without the need to rotate the tool while driving (emphasis added). Also the cutting means facilitate the generally vertical driving of the tool, along the longitudinal axis, without the need to rotate at least part of the tool (emphasis added). Although Riedel et al. clearly disclose a coring sampler having all the structural elements recited, as well as being capable/configured of performing the aforementioned limitations, it would have been obvious to one having ordinary skill in the art of the effective filing date to employ the clearly known aforementioned limitations in soil sampling, allowing for digging sample cavities in series without requiring the evacuation of the earth/soil between each hollowed cavity and without having recourse to a rotation of all or part of the tool/sampler via the cutting means/teeth which facilitate the vertical/linear driving of the tool/sampler, without the need to rotate the tool/sampler.
Claim(s) 13-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 9,863,199 Riedel et al. alone or with WO 2021/105594 to Boisseau as applied to claim 1 above, and further in view of U.S. 6,695,075 to Beeker, U.S. 2019/0344352 to Momeni et al. and U.S. 2003/0156965 to Ernst et al. Riedel et al. discloses a coring sampler having all of the elements stated previously. Riedel et al. further discloses that stainless steel may be employed for components of the coring sampler (see col. 2, line 2), Riedel et al. do not explicitly disclose the cutting shoe comprises steel, or of the other types of steels recited in instant dependent claims 13-17. Beeker discloses a coring sampler with a cutting shoe sharing many of the recited elements disclosed by Riedel et al., wherein the sampler (1) comprises a stainless steel sampling tube (2) and a cutting shoe (3) made of hardened metal (see col. 3, line 50-53). Momeni et al. disclose a cutting tool with one or more cutters (see entire reference) wherein the main body is made from a low-alloy steel, which may include common additives of nickel, chromium, molybdenum, manganese, tungsten. Ernst et al. disclose tools formed by ledeburitic chromium steels in tools and components requiring high wear resistance, and particular steels with carbon content, chromium content, additives of chromium, molybdenum, vanadium and tungsten (see para 0002) and also coatings of nitrogen-alloyed steels providing elevated wear resistance and/or improved tenacity relative to the respective application thus increasing service life of cutting tools and components, with improved edge-holding property and cutting edge stability, and resistance to cracking (para 0037). As such, it would have been obvious to one having ordinary skill in the art as of the effective filing date to employ any type of hardened metal, like stainless steel, or alloyed steel (as taught by Beeker, Momeni et al. and Ernst et al.) recited in instant dependent claim 13-17 to form the cutting shoe of the coring sampler disclosed by Riedel et al. alone or with WO 2021/105594 to Boisseau, based on desired wear properties of the cutting shoe, and associated material properties of these alloyed steels, such as hardness, fatigue strength, etc. Furthermore, would have been obvious to one having ordinary skill in the art as of the effective filing date of the instant invention to employ the recited steels in instant dependent claim 13-17, or any other type of alloyed steel, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
Claim(s) 12, 13 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 9,863,199 Riedel et al. alone or with WO 2021/105594 to Boisseau as applied to claim 1 above, and further in view of CN 111366406 A to Wang et al. Riedel et al. alone or with Boisseau disclose a coring sampler having all of the elements stated previously. Riedel et al. alone or with Boisseau do not explicitly disclose that a surface of the cutting shoe comprises a friction-reducing coating (as recited in instant dependent claim 12); wherein the cutting shoe comprises steel (as recited in instant dependent claim 13) or wherein the cutting shoe defines at least four serrations (as recited in instant dependent claim 18). Wang et al. disclose a coring sampler for retrieving coring samples (see entire reference, in particular Figs. 2 and 3, and English translation) sharing a majority of the elements of the coring sampler disclosed by Riedel et al. alone or with Boisseau, wherein the cutting shoe comprises stainless steel (meeting the limitations recited in instant dependent claim 13); wherein the cutting shoe defines at least four serrations (as recited in instant dependent claim 18) and employment of friction-reducing coating of Vaseline on elements to reduce friction forces which saves labor. It would have been obvious to one having ordinary skill in the art as of the effective filing date to modify the coring sampler disclosed by Ridel et al. alone or with Boisseau, to employ a cutting shoe with at least four serrations, comprises steel and employing a friction-reducing coating on a surface of the cutting shoe, as taught by Wang et al., the friction to reduce friction as the soil sample is collected, providing a cutting shoe material that does not oxidize or wear easily due to it comprising stainless steel, as well as employing at least four serrations, or any other desired amount of serrations, thus meeting the limitations recited in instant dependent claims 12, 13 and 18.
Claim(s) 5-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 9,863,199 Riedel et al. alone or with WO 2021/105594 to Boisseau as applied to claim 1 above, and further in view of U.S. 6,681,872 to Radtke et al. Riedel et al. alone or with Boisseau disclose a coring sampler having all of the elements stated previously. Riedel et al. alone or with Boisseau do not explicitly disclose that the one or more serrations are formed by one or more recesses along the engagement side of the cutting shoe towards the peripheral cutting edge (note: the term “formed” is a product-by-process limitation, which fails to structurally limit the apparatus of instant independent claim 1) (as recited in instant dependent claim 5); wherein the one or more recesses define an angle with a surface of the engagement side of the cutting shoe (as recited in instant dependent claim 6); wherein the one or more recesses have an increasing width moving from the connection side to the peripheral cutting edge (as recited in instant dependent claim 7); wherein the one or more recesses are provided on an outer surface of the engagement side of the cutting shoe (as recited in instant dependent claim 8); or wherein the one or more recesses are provided on an inner surface of the engagement side of the cutting shoe (as recited in instant dependent claim 9); wherein a length of one or more recesses is at least two times larger than a width of the one or more recesses (as recited in instant dependent claim 10). However, Boisseau does disclose that the “sharp teeth have a sharp bevel” to allow for easy penetration into the soil. Radtke et al. disclose a coring sampler (10) (see entire reference) for retrieving coring samples sharing many of the elements disclosed by Riedel et al., including a cutting shoe (40) having an engagement side and a connection side, the connection side including a threaded section to engage a threaded section of a distal end of an elongated coring section (see Figs. 1 and 2); wherein one or more recesses (62) to form serrations on the engagement side of the cutting shoe towards a peripheral cutting edge (61) (see Fig. 3) (meeting the limitations recited in instant dependent claim 5); wherein the one or more recesses define an angle with a surface of the engagement side of the cutting shoe (as recited in instant dependent claim 6); wherein the one or more serrations have an increasing width, moving from the connection side to the peripheral cutting edge (as recited in instant dependent claim 7); wherein the one or more recesses are provided on an outer surface of the engagement side of the cutting shoe (as recited in instant dependent claim 8). It would have been obvious to modify the coring sampler disclosed by Riedel et al., employing one or more recesses disclosed by Radtke et al., which further facilitates the movement of the coring sampler through the geological strata (see col. 6, lines 1-4). As to the limitations recited in instant dependent claims 9 and 10, forming additional recesses on the inner surface of the engagement side would further facilitate the movement of the coring sampler into the geological strata, and is simply a duplication of elements, and the modification of the one or more recesses being at least two times larger than a width of the one more recesses, would be an obvious design choice based on the type of soil/geological strata, i.e. hardness, moisture content, solid content, etc., providing motivation of one having ordinary skill in the art as of effective filing date to modify the combination of Riedel et al. alone or with Boisseau, and Radtke et al. through routine experimentation to provide the appropriate cutting aspects of the soil cutting shoe through particular soil/geological strata. Furthermore, the instant disclosure fails to provide or state any criticality in regards the dimensional related aspects of the one or more recesses or the further inclusion of the one or more recesses on an inner surface of the cutting edge of the cutting shoe. There is no disclosed particular design or engineering reason provided by the instant disclosure, thus it appears to be an obvious design choice to one having ordinary skill in the art, thus meeting all the limitations recited in instant dependent claims 5-10.
Claim(s) 18 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 9,863,199 Riedel et al. alone or with WO 2021/105594 to Boisseau as applied to claim 1. Riedel et al. alone or with Boisseau disclose a coring sampler having all of the elements stated previously. Boisseau further discloses the limitations recited in instant dependent claims 18 and 21, and clearly states: “said sharp teeth are present in a number equal to or greater than 2 and are regularly distributed over the end of the tubular body delimiting the entrance,” thus discloses at least four serrations/teeth (meeting the limitations recited in instant dependent claim 18) and that the one or more serrations/teeth are formed as a continuous series of edge features (bevels and/or pointed features) (i.e. regularly distributed, as well as clearly depicted in Figs. 1 and 2) extending circumferentially along the peripheral cutting edge (meeting the limitations recited in instant dependent claim 21.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant is invited to review PTO form 892 accompanying this Office Action listing Prior Art relevant to the instant invention cited by the Examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner John Fitzgerald whose telephone number is (571) 272-2843. The examiner can normally be reached on Monday-Friday from 7:00 AM to 3:30 PM E.S.T. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor John Breene, can be reached at telephone number (571) 272-4107. 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. The central fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN FITZGERALD/Primary Examiner, Art Unit 2855
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