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. 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. Specification Applicant is reminded of the proper language and format for an abstract of the disclosure. The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. 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 appl icant regards as his invention. Claim 1-15 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 1 recites the limitation "the transition" in line 10. There is insufficient antecedent basis for this limitation in the claim. Claim 3 recites the limitation " cutting mode " in line 2 . There is insufficient antecedent basis for this limitation in the claim. 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Claim(s) 1-9 and 12-14 is/are rejected under 35 U.S.C. 102 (a)(2) as being anticipated by Heindl et al. (2024/0035252) . Regarding claim 1, Heindle et al. discloses a trench cutter (10) comprising: At le a st one bearing shield (14) At least one cutting wheel ( 30 ) rotatably mounted on the bearing shield ( 14 ) for breaking up soil material A suction box (20) arranged radially adjacent to the cutting wheel ( 30 ) for sucking up liquid containing soil material Wherein at least one adjustable cutting tool ( 40) is arranged on th e cutting wheel ( 30 ) and is designed in such a way that as the cutting wheel rotates, it moves between a folded in position in which it is an axial distance from the bearing shield and can be moved past it and a folded out position in which it projects into an area radially adjacent to the bearing shield (pgphs 0039-0040) wherein, The suction box has a recess ( 26) which is designed in such a way that, in the folded out position or in the transition between the folded in position and the folded out position, the adjustable cutting tool moves through the recess (Figure 4) Regarding claim 2, as the cutting wheel rotates, an end of the adjustable cutting tool spaced radially apart from the cutting wheel describes a trajectory which passes through the recess and crosses a notional radial extension of the bearing shield (pgph 0040). Regarding claim 3, when the trench cutter is in cutting mode, the recess (26) is positioned ahead in the direction of rotation of the cutting wheel with respect to a first angular sector in which the adjustable cutting tool is in the folded in position (Figure 1-2). Regarding claim 4, the adjustable cutting tool (40) is pivotably mounted on the cutting wheel (30) (about pivot axis 32). Regarding claim 5, Heindle discloses the at least one adjustable cutting tool (40) and at least one non adjustable cutting tool ( pgph 0013), which is a greater axial distance from the bearing shield that the at least one adjustable cutting tool (Figure 1 shows the pivotal tooth adjacent the bearing shield, the fixed cutting teeth would therefore be on the part of the cutting wheel further from the bearing sh i eld) . Regarding claim 6, the at least one adjustable cutting tool is longer than the at least one non adjustable cutting tool ( pgph 0014). Regarding claim 7, the suction box (20) has a suction surface (24) which faces the outer circumference of the cutting wheel (30) and has at least one suction opening (28). Regarding claim 8, the recess (26) is arranged in the circumferential direction in the vicinity of the at least one suction opening (Figure 1). Regarding claim 9, the recess (26) is at the axial height of the bearing shield (14), wherein a notional median plane of the bearing shield divides the recess symmetrically (Figure 4). Regarding claim 12, Heindl discloses two bearing shields (14) each having at least one rotatably mounted cutting wheel (30), wherein the cutting wheels are arranged radially side by side, wherein the suction box is arranged between the cutting wheels and has at least two recesses each facing one of the cutting wheels (Figure 1). Regarding claim 13 the cutting wheel (30) is arranged on each opposing side of the bearing shield, wherein the cutting wheels are coaxially mounted and each have at least one adjustable cutting tool (Figure 1). Regarding claim 14, a common suction box is provided for the cutting wheels arranged on the bearing shield, wherein the suction box has a common recess for the adjustable cutting tools of the coaxial cutting wheels (Figures 1, 4). 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. Claim (s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heindl et al. (2024/0035252) as applied to claim 1 above and further in view of Sourice ( 3,894,587 ). Regarding claim 10, Heindl discloses the invention as described above including that the recess (26) is substantially rectangular in shape. Heindle fails to specifically disclose that at least two edges of the recess are beveled. Like Heindl , Sourice also discloses a trenching tool with a cutter wheel and cutting teeth that extend into a recess (16). Unlike Heindle , Sourice discloses that the recess into which the teeth extend can have beveled edges (Figures 3-4). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize beveled edges for the recess of Heindle as taught by Sourice as it would be combining prior art elements according to known methods to yield predictable results ( KSR International Co. v. Teleflex Inc., 550 USPQ2d 1385 (2007) ). Further, a change in the shape of a prior art device is a design consideration within the skill of the art. In re Dailey , 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Claim (s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heindl et al. (2024/0035252) as applied to claim 1 above and further in view of Bauer (EP0291027). Regarding claim 11, Heindl discloses an adjusting device with which the at least one adjustable cutting tool can be moved between the folded in position in the folded out position as the cutting wheel rotates. Heindl further discloses that it is known in the art to utilize cams to affect the pivoting adjustment (pgph 0003). Heindl fails to specifically disclose the details of the pivoting adjustment. Like Heindl , Bauer also discloses a pivoting tool on a cutting wheel of a trench excavator. Unlike Heindl , Bauer further discloses the use of a beveled cam ( 15 ) on the bearing shield (1) that makes contact with the tooth as it passes to move the tooth between its folded and unfolded position. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize a cam system in Heindl as taught by Bauer to move the cutting tool between its folded and unfolded positions as the use of a known technique to improve similar devices in the same way ( KSR International Co. v. Teleflex Inc., 550 USPQ2d 1385 (2007) ). Claim (s) 1 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heindl et al. (2024/0035252) as applied to claim 1 above and further in view of Cascarino et al. (10,844,570). Regarding claim 15, Heindl discloses the invention as described above but fails to specifically disclose that the trench cutter is mounted on a cable excavator. Like Heindl , Cascarino et al also discloses a trench cutter with cutter wheels and cutting teeth. Unlike Heindl . Cascarino discloses that the trench cutter can be mounted to a cable excavator. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize a cable excavator to operate the trench cutter of Heindl as taught by Cascarino as the use of a known technique to improve similar devices in the same way ( KSR International Co. v. Teleflex Inc., 550 USPQ2d 1385 (2007) ). Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Geiger (DE102021114947) also discloses a trench cutting wheel with bearing shield and suction box. Devic-Bassaget (EP1350893) also discloses a pivotable trench cutter tooth. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT Jamie L McGowan whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-5064 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday through Friday 9:00-5:00 CST . 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, FILLIN "SPE Name?" \* MERGEFORMAT Chris Sebesta can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 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 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. /JAMIE L MCGOWAN/ Primary Examiner, Art Unit 3671