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 .
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 following is an examiner’s statement of reasons for allowance:
Regarding claims 23 and 35, the idea of wear member tip assemblies are known in the art. For example, Kovach, Gale, and Livesay (prior art of record) present different designs of wear members. These references render wear member assemblies with ears and rails in combination with a counterbore and retaining pin obvious. However, none of these references, nor any other reference, specifically teaches the cavity depth of the counterbore being smaller than the depth of the rail receiving groove as claimed in claims 23 and 35. Therefore, it cannot be considered obvious to further modify rail groove depth and/or counterbore depth. In view of the prior art of record, any obvious combination to further modify rail groove depth and/or counterbore depth would require improper hindsight reasoning. For this reason, the claims are allowable.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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.
Claim Rejections - 35 USC § 102
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.
Claim(s) 21, 28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kovach (US 10645853).
Regarding claim 21, Kovach discloses a wear member comprising:
a nose receiving portion defining a nose receiving pocket having a rear opening, an interior surface, and an exterior surface (nose receiving pocket 124 with interior and exterior surface depicted in Fig 4 and Annotated Figure 1); and
an ear protruding laterally outward from the exterior surface (claim language is broad; ear 120 is considered to protrude laterally outward from the exterior surface);
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 (cavity 150; counterbore surface 152; first opening 134); 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 136).
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Annotated Figure 1
Regarding claim 28, Kovach 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 (second ear 122 is considered to protrude laterally outward from the exterior surface), wherein
the second opening extends through the second ear (second opening 136 extends through second ear 122), and
the first opening and the second opening are arranged coaxially (Fig 5 depicts the openings as coaxial).
Claim(s) 21, 28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gale (US 6092958).
Regarding claim 21, Gale discloses a wear member comprising:
a nose receiving portion 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; see Annotated Figure 2); and
an ear protruding laterally outward from the exterior surface (ear 28 is considered to protrude laterally outward from the exterior surface);
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 2); 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 2
Regarding claim 28, Gale 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 (second ear 30 is considered to protrude laterally outward from the exterior surface), wherein
the second opening extends through the second ear (second opening in Fig 4 is considered to extend through the second ear 30), and
the first opening and the second opening are arranged coaxially (Fig 1 and Fig 4 depict the openings as coaxial).
Claim(s) 29 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Livesay et al. (US 20040060207).
Regarding claim 29, Livesay discloses a tip assembly, comprising:
an adapter including:
a nose portion extending along a longitudinal direction of the tip assembly (Figs 2-3; nose portion 30);
a rail protruding from the nose portion in a transverse direction perpendicular to the longitudinal direction (rail 58 protrudes transverse to longitudinal axis of the nose portion);
a tip including:
a working portion including a closed end (tip 76 with forward closed tip); 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 80 at open end and nose receiving cavity 84);
an ear protruding in the transverse direction from an exterior surface of the rear attachment portion (ear 82 protrudes in transverse direction from exterior surface 78);
a rail receiving groove on an interior surface of the nose receiving cavity, the rail receiving groove extending from the open end and configured to receive the rail (groove 98 on interior surface 94, 96, 88 and interior side surfaces; groove 98 receives rail 58); and
an opening extending through the ear from the interior surface to the exterior surface of the nose receiving cavity (opening 108); and
a pin extending in the transverse direction through the opening (retainer pin 20 extends through opening in Fig 11).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 22, 24-27, 29-34, 36-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gale in further view of Livesay.
Regarding claim 22, Gale 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 (para [0034], lines 4-8).
Regarding claim 24, the combination of Gale 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 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 (adapter 18 with nose portion 24);
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 2 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 wear tip assembly with the adapter having a rail and a wear tip having a rail receiving groove.
However, 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 (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 2 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, Gale further 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 (second ear 30 is considered to protrude 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 (second opening in Fig 4 is considered to extend through the second ear 30; second opening has a uniform diameter),
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 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 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 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 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 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Smith et al. (US 7762015) discloses a similar wear member assembly that has structure similar to the claimed invention.
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