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 .
Response to Arguments
The amended claim language has overcome the anticipation rejection of the Livesay reference. However, Livesay is still present as a teaching reference in the rejection of claims 22, 24-27, 29-34, 36-40. Livesay is not relied upon for any teaching other than the adapter rail and wear tip rail receiving groove. The claimed through hole in the nose portion is disclosed by Gale.
Applicant’s arguments with respect to the anticipation rejections of Kovach and Gale have been considered but are moot because the new grounds of rejection does not rely on either reference for any teaching or matter specifically challenged in the argument.
Examiner understands Applicant’s invention to be related to the retaining assembly of the wear member and its related interior structure rather than the exterior ear structure of the wear member. For this reason and in view of the newly amended claim language, the reference Serrurier et al. (US 10494793) has been presented to teach the now claimed exterior ear structure. Serrurier clearly depicts a wear member with an identical exterior ear structure with an opening. Because the newly amended claim language is drawn entirely to the exterior ear structure and Serrurier teaches this exterior ear structure with an opening, the ear structure is not inventive. The claims are now considered obvious in view of Serrurier.
Further, the double patenting rejection is maintained. Examiner has included a list of the claims of the instant application that match the claim of the reference patent. The reference patent appears to be narrower in scope than the instant application. In other words, the scope of the instant claims are broader than the reference patent and, therefore, the reference patent anticipates the instant claim. The examiner fails to see how the inventive concepts of the reference patent and the current application are different.
Allowable Subject Matter
Claim 23, 35 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claims 23 and 35 are also rejected on the ground of nonstatutory double patenting detailed in this Office Action.
The reasons for allowance for claims 23 and 35 put forth in the previous Office Action are still valid.
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11879235. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed subject matter is drawn to a wear member with rail receiving grooves and counterbore. The inventive concepts in the current application are largely the same as the inventive concepts in the issued patent.
Instant Application
US 11879235
Claims 21+25+28
Claim 1+6
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) 21, 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gale (US 6092958) in view of Serrurier et al. (US 10494793).
Regarding claim 21, Gale discloses a wear member comprising:
a nose receiving portion extending along a longitudinal axis of the wear member and defining a nose receiving pocket having a rear opening, an interior surface, and an exterior surface (wear member 12; Fig 1 depicts nose receiving pocket 26 as the portion receiving nose 24; pocket 26 extends along the longitudinal axis of the wear member; see Annotated Figure 1); and
a cavity extending from the interior surface to the exterior surface, the cavity including a counterbore portion and a first opening extending from the counterbore portion to the exterior surface through the ear (Fig 4 depicts cavity with counterbore 140 and first opening 138; the first opening could also take the form of a constant diameter as depicted in Fig 1; also see Annotated Figure 1); and
a second opening disposed opposite the first opening, the second opening having a constant diameter and extending from the interior surface to the exterior surface (second opening is depicted in Fig 4 as opposite first opening 138 and having a constant diameter; col 3, lines 41-44).
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Annotated Figure 1
Gale fails to specifically disclose an ear protruding laterally outward from the exterior surface extending from the rear opening towards a closed end of the wear member. However, Serrurier discloses a similar wear member with a interior retaining assembly (wear member 14 with retaining assembly 50/36) and teaches the wear member having an identical exterior ear structure with an opening (Fig 8; exterior surface 57 with ear 126 protruding laterally outward from the exterior surface in a direction transverse to the longitudinal axis with an opening 36).
Gale and Serrurier and considered analogous to the claimed invention because they are in the same field of endeavor of securing a wear member tip to an earth working bucket. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the exterior of the wear member of Gale to incorporate the teachings of Serrurier and included the exterior ear structure with an opening. There are many different wear member designs and merely changing the exterior ear surface to a known, identical structure is considered obvious. The ear of the Serrurier accommodates the retaining assembly (Serrurier; col 8, lines 61-65). One also would have made this combination as a change in the shape of a prior art device is a design consideration within the skill of the art.
Regarding claim 28, the combination of Gale and Serrurier discloses the wear member wherein the ear is a first ear, and the wear member further includes:
a second ear disposed opposite the first ear, the second ear protruding laterally outward from the exterior surface (Serrurier; second ear 126 protrudes laterally outward from the exterior surface), wherein
the second opening extends through the second ear (the second ear of the combination comprises the same second opening as disclosed by Gale), and
the first opening and the second opening are arranged coaxially (Gale; Fig 1 and Fig 4 depict the openings as coaxial).
Claim(s) 22, 24-27, 29-34, 36-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gale in view of Serrurier and Livesay (US 20040060207).
Regarding claim 22, the combination of Gale and Serrurier fails to specifically disclose the wear member further including a rail receiving groove on the interior surface, the rail receiving groove extending from the rear opening to the cavity.
However, Livesay discloses a similar wear member tip (Fig 1 and Figs 5-7) and teaches the use of a groove to receive a rail (groove 98); the groove extending from the rear opening into the cavity (Fig 6 depicts groove 98 extends from rear opening end 99 to cavity 108).
Gale and Livesay are considered analogous to the claimed invention because they are in the same field of endeavor of wear members for earth working machines. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Gale to incorporate the teachings of Livesay and combined the use of a rail receiving groove on the wear member. One would have made this combination to complement a rail or rib on an adaptor for the purpose of providing primary load transferring surfaces for the wear member and adaptor (Livesay; para [0034], lines 4-8).
Regarding claim 24, the combination of Gale, Serrurier, and Livesay discloses the wear member wherein the counterbore portion has a diameter that is greater than a maximum vertical height of the rail receiving groove (the groove 98 of Fig 6 of Livesay is depicted as matching the vertical height of the thru hole of the first opening; the diameter of the counterbore of Gale is larger than the first opening; the counterbore diameter would have to be greater than the vertical height of the groove in order for the combination to function).
Regarding claim 25, Gale fails to specifically disclose the wear member wherein a ratio of a diameter of the counterbore portion to a diameter of the first opening ranges from 1.8 to 2.2.
However, while Gale does not expressly disclose that the ratio of counterbore diameter to first opening diameter is between 1.8 and 2.2, it does disclose that the counterbore diameter could be adjusted in order for the retaining mechanism 160 to fit within the counterbore 140 (Col 3, Lines 49-50). As a result of the counterbore controlling the fit of the retaining mechanism, the diameter of the counterbore is considered to be a results effective variable in so far as the diameter of the counterbore may be adjusted in order to fit a retaining mechanism. Therefore, it would have been obvious for one having ordinary skill in the art at the time the invention was filed to optimize the ratio of the counterbore to first opening to be between 1.8 and 2.2, as it has been held that the optimization of a results effective variable would have been obvious so as to achieve an optimum or workable range (MPEP 2144.05, Subsection II, B).
Regarding claim 26, Gale further discloses the wear member further including a retaining mechanism that is disposed in the counterbore portion (Gale Fig 4; retaining mechanism 160), wherein the retaining mechanism includes:
a sleeve having a sleeve counterbore and a central opening configured to be aligned with the first opening of the cavity (sleeve 166; sleeve counterbore is depicted in Gale’s Fig 4 as the recess that houses snap ring 54; an analogous central opening is depicted in Fig 3 for sleeve 66);
a spring positioned in the sleeve counterbore (snap ring 54 is considered to be a spring); and
a pin configured to pass through the first opening and the central opening (pin 120 passes through first opening 138 and the central opening of the retaining assembly 166).
Regarding claim 27, Gale further discloses the wear member wherein the pin includes a notch configured to receive a portion of the spring (notch 122).
Regarding claim 29, Gale discloses a tip assembly, comprising:
an adapter including:
a nose portion extending along a longitudinal direction of the tip assembly and including a through hole (adapter 18 with nose portion 24 with through hole 40);
a tip including:
a working portion including a closed end (tip 12 with working portion end 16); and
a rear attachment portion including an open end and a nose receiving cavity extending from the open end towards the closed end, the nose receiving cavity being configured to receive the nose portion (rear attachment portion of tip 12 has an open end in Fig 1; nose receiving cavity 26 receives nose portion 24);
an ear protruding in the transverse direction from an exterior surface of the rear attachment portion (ear 28 is considered to protrude in a transverse direction from the exterior surface);
an opening extending through the ear from the interior surface to the exterior surface of the nose receiving cavity (see Annotated Figure 1 for opening extending through the ear); and
a pin extending in the transverse direction through the opening (Fig 4; pin 120 extends in the transverse direction through opening).
Gale fails to specifically disclose the ear protruding outwards from the exterior surface extending from the open end as well as the wear tip assembly with the adapter having a rail and a wear tip having a rail receiving groove.
However, Serrurier discloses a similar wear member with a interior retaining assembly (wear member 14 with retaining assembly 50/36) and teaches the wear member having an identical exterior ear structure with an opening (Fig 8; exterior surface 57 with ear 126 protruding laterally outward from the exterior surface in a direction transverse to the longitudinal axis with an opening 36).
Gale and Serrurier and considered analogous to the claimed invention because they are in the same field of endeavor of securing a wear member tip to an earth working bucket. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the exterior of the wear member of Gale to incorporate the teachings of Serrurier and included the exterior ear structure with an opening. There are many different wear member designs and merely changing the exterior ear surface to a known, identical structure is considered obvious. The ear of the Serrurier accommodates the retaining assembly (Serrurier; col 8, lines 61-65). One also would have made this combination as a change in the shape of a prior art device is a design consideration within the skill of the art.
Further, Livesay discloses a similar wear member tip and adapter (Fig 1 and Figs 5-7; Figs 2-4) and teaches the wear tip comprising a groove to receive a rail (groove 98); the groove extending from the rear opening into the cavity (Fig 6 depicts groove 98 extends from rear opening end 99 to cavity 108). Livesay also teaches the adapter comprising a rail (58) protruding transverse to the longitudinal axis of the adapter. The rail is received within the rail receiving groove.
Gale and Livesay are considered analogous to the claimed invention because they are in the same field of endeavor of wear members for earth working machines. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Gale to incorporate the teachings of Livesay and combined the use of rail receiving grooves on the wear member and corresponding rails on the adapter. One would have made this combination to complement the rails or ribs on an adapter for the purpose of providing primary load transferring surfaces for the wear member and adaptor (Livesay; para [0034], lines 4-8).
Regarding claim 30, Gale further discloses the tip assembly wherein the opening includes:
a counterbore having a counterbore base disposed between the interior surface and the exterior surface (recess 140 is between the interior and exterior surfaces); and
a hole extending from the counterbore base to the exterior surface (see Annotated Figure 1 for first opening hole).
Regarding claim 31, Gale further discloses the tip assembly wherein the pin is sized to pass through the hole (Gale; Fig 4 with pin 120).
Regarding claim 32, Gale further discloses the tip assembly further including:
a sleeve disposed in the counterbore, the sleeve having a sleeve counterbore and a central opening configured to be aligned with the hole (sleeve 166; sleeve counterbore is depicted in Gale’s Fig 4 as the recess that houses snap ring 54; an analogous central opening is depicted in Fig 3 for sleeve 66); and
a spring positioned in the sleeve counterbore (spring 54).
Regarding claim 33, Gale discloses the tip assembly wherein the spring is a coil spring (claim language is broad; col 2, lines 56-58).
For the sake of argument, springs can take on multiple forms and a coiled spring is a well-known form of spring. Therefore, it would have been an obvious matter of design choice to a person having ordinary skill in the art at the time of filing to make the snap ring a coil spring, as Applicant has not disclosed that it solves any stated problem of the prior art or is for any particular purpose. It appears that the invention would perform equally well as the invention disclosed by using a coil spring in place of the snap ring so long as the spring fits within the ring groove and functions to prevent the pin from moving out of the pin opening. For example, a split washer is considered to create a coil spring, fit within the groove, and accomplish the same function as the snap ring.
Regarding claim 34, Gale further discloses the tip assembly wherein the pin includes a notch configured to engage with the spring (notch 122).
Regarding claim 36, the combination of Gale, Serrurier, and Livesay discloses the tip assembly wherein the ear is a first ear, the opening is a first opening that includes a counterbore portion and a hole, and the tip further includes:
a second ear disposed opposite the first ear, the second ear protruding in the transverse direction from the exterior surface (Serrurier; second ear 126 protrudes laterally outward from the exterior surface); and
a second opening extending through the second ear from the interior surface to the exterior surface, the second opening having a uniform diameter (the second ear of the combination comprises the same second opening as disclosed by Gale),
wherein the hole of the first opening and the second opening are arranged coaxially (Fig 1 and Fig 4 depict the openings as coaxial).
Regarding claim 37, the combination of Gale, Serrurier, and Livesay discloses the tip assembly wherein the rail is a first rail disposed longitudinally adjacent to the counterbore portion and includes a first arcuate surface that defines a part of the counterbore portion (the rails taught by Livesay are disposed longitudinally adjacent to the hole on the adapter in Fig 3 of Livesay; the forward end is called out as an extension of the retainer pocket; Livesay, para [0023], lines 7-8; therefore, the rails of the combination include arcuate surfaces that at least partially define the counterbore).
Regarding claim 38, the combination of Gale and Livesay discloses the tip assembly wherein the adapter includes a second rail protruding in the transverse direction from an opposite side surface of the nose portion (the combination of Gale, Serrurier, and Livesay detailed in the rejection of claim 29 is considered to comprise a first and second rail on respective sides of the adapter).
Regarding claim 39, the combination of Gale, Serrurier, and Livesay discloses the tip assembly wherein
the second rail is disposed longitudinally adjacent to the second opening and includes a second arcuate surface, and
the first arcuate surface has a first radius of curvature that is larger than a second radius of curvature of the second arcuate surface (the rails taught by Livesay are disposed longitudinally adjacent to the hole on the adapter in Fig 3 of Livesay; the forward end is called out as an extension of the retainer pocket; Livesay, para [0023], lines 7-8; therefore, the rails of the combination include arcuate surfaces that at least partially define the counterbore and second opening; the radius of the arcuate surface adjacent the counterbore would have to be larger than the radius of the arcuate surface adjacent the second, smaller opening).
Regarding claim 40, the combination of Gale, Serrurier, and Livesay fails to specifically disclose the tip assembly wherein a ratio of the first radius of curvature and the second radius of curvature ranges from 1.72 to 2.08.
However, while Gale, Serrurier, and Livesay does not expressly disclose that the ratio of the first radius to the second radius is between 1.72 and 2.08, it does disclose that the counterbore diameter could be adjusted in order for the retaining mechanism 160 to fit within the counterbore 140 (Col 3, Lines 49-50). As a result of the counterbore directly controlling the radius of the first curvature, the diameter of the counterbore is considered to be a results effective variable in so far as the radius of the counterbore may be adjusted in order to fit a retaining mechanism. Therefore, it would have been obvious for one having ordinary skill in the art at the time the invention was filed to optimize the ratio of the first radius to the second radius to be between 1.72 and 2.08, as it has been held that the optimization of a results effective variable would have been obvious so as to achieve an optimum or workable range (MPEP 2144.05, Subsection II, B).
Conclusion
THIS ACTION IS MADE FINAL. 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 BLAKE SCOVILLE whose telephone number is (571)270-7654. The examiner can normally be reached M-F 10:30-6 (ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Sebesta can be reached at (571) 272-0547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLAKE E SCOVILLE/ Examiner, Art Unit 3671
/CHRISTOPHER J SEBESTA/ Supervisory Patent Examiner, Art Unit 3671
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