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.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 5/22/2026 is acknowledged. The traversal is on the ground(s) that the embodiments of each group are not mutually exclusive, rather they may further define or enhance the embodiments of Group I and that claims 1 and 16 are generic groups that are readable across multiple identified groups. This is not found persuasive because the different embodiments are clearly comprised of different shapes and the invention relies on using characteristics of those shapes to help drain the lubricant. Evidence to Examiner’s position is the specification, for example when discussing Figures 10-11, “the geometry of the inner surface 34 can be such that it is essentially constant, i.e. cylindrical, over the entire axial extent of the circumferential wall 32” (page 11 lines 20-22), therefore it is mutually exclusive from an embodiment that has a radial distance that increases along the roller axis as shown in Figure 4.
Claims 5-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/22/2026.
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
Claim 1 recites “a lubricant receiving volume” and “a lubricant collecting volume”. There appears to be no discernible difference between the two volumes. As shown in Applicant’s Figure 4, lubricant receiving volume 36 and lubricant collecting volume 58 are both indicated to be the empty space within 32 bound by 28 and 30. Based on Applicant’s limitation in claim 1 reciting “at least one lubricant collecting volume is formed in the lubricant receiving volume”, this limitation will be interpreted as the lubricant receiving volume being the entirety of the empty space within 32 bound by 28 and 30, and the lubricant collecting volume being the volume of space that the lubricant would actually occupy. In the limitation “is formed”, “formed” is not given patentable weight since the limitation would read the same without it, and there are no physical or structural elements that “form”, that provide a physical delimiting of the at least one lubricant collecting volume from the lubricant receiving volume.
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.
Claims 1, 2, 4, 14, and 16 (and 3, 12, 13, and 15 through dependency) are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites in lines 1-2, “in particular a soil compactor”. This is indefinite because it is unclear whether it is required in the claim, therefore the metes and bounds of the claim are unclear.
Claim 1 recites “a lubricant drain opening” in lines 13-14. Claim 1 recited “at least one lubricant drain opening” in line 10. It is not clear whether this is a double positive recitation of the same drain opening or whether Applicant is claiming a different drain opening. For purposes of examination, it will be assumed that Applicant intended for the recitation in lines 13-14 to be “the at least one lubricant drain opening”.
Claim 1 recites “the circumferential wall has a radial distance from the roller from the axis of rotation that increases in the direction of the roller axis of rotation”. This is indefinite because an axis does not have a direction, it is not a vector. Additionally, the axis of rotation is horizontal while Applicant is claiming a radial distance from the axis, which would be measured along a vertical axis, so it is unclear what “increases in the direction of the roller axis of rotation” actually means. Based on Applicant’s specification and drawings, it will be assumed that Applicant intended “the circumferential wall has a radial distance from the roller from the axis of rotation that increases along the roller axis of rotation”.
Claim 2 recites, “wherein, when designing the inner surface…the inner surface of the circumferential wall is optionally…”. This claim is indefinite because if the limitations of the claim are optional and therefore not required, it is unclear how this claim further limits claim 1.
Claim 4 recites “with a radial distance from the roller axis of rotation which increases in the direction of the roller axis of rotation”. This is indefinite because an axis does not have a direction, it is not a vector. Additionally, the axis of rotation is horizontal while Applicant is claiming a radial distance from the axis, which would be measured along a vertical axis, so it is unclear what “increases in the direction of the roller axis of rotation” actually means. Based on Applicant’s specification and drawings, it will be assumed that Applicant intended “the circumferential wall has a radial distance from the roller from the axis of rotation that increases along the roller axis of rotation”. Additionally, in the second to last line, “in the direction of” will be interpreted as “along”.
Claim 14 recites “an unbalance axis of rotation”. This is not a conventional phrasing, and it is unclear how an axis can be unbalanced.
Claim 16 recites “in particular, a soil compactor” in lines 1-2. This is indefinite because it is unclear whether it is required in the claim, therefore the metes and bounds of the claim are unclear.
Correction is required for each rejection.
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.
Claims 1-4 and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Potts, US 6,561,729 B1 in view of Applicant’s admission in the specification and Evarts, US 9,227,225 B2.
Regarding claim 1, Potts teaches a soil processing roller for a soil processing machine, in particular a soil compactor (compacting drum for a soil compacting machine; title and column 1 lines 11-13), comprising a roller shell (44; Figure 2) which is elongated in the direction of a roller axis of rotation and surrounds the roller axis of rotation (center of roller, horizontally), two disk-like support elements (46, 46; Figure 2) arranged at a distance from one another in the direction of the roller axis of rotation and connected to an inner side of the roller shell (shown in Figure 2), and a circumferential wall (126; Figure 2) extending in the direction of the roller axis of rotation between the support elements (46, 46; Figure 2) and adjoining the same.
Applicant admits in the Specification (page 1 lines 15-32) that it is known in the art to have a soil processing roller that has openings to drain lubricant from a lubricant receiving volume within the roller. Potts discloses that the roller has a vibratory mechanism within a roller cavity to impart a vibratory force for compacting (column 2 lines 55-61; 26 in Figure 2). Evarts teaches vibratory devices and discloses delivering lubricant to lubricate internal components of the vibration device (Abstract) and discloses draining the lubricant from the vibratory assembly using drain portals so that the lubricant can be changed out, and that it is known to have the drain at the bottom of a lubricant reservoir (column 6 lines 57-63). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Potts knowing that it is known in the art to drain lubricant from a lubricant receiving volume within the roller in view of Evarts to have the lubricant drain at the bottom of a lubricant collecting volume to be able to change out the lubricant used with a vibratory mechanism within a roller. The resulting combination yields an inner surface of the circumferential wall together with the support elements delimiting a lubricant receiving volume. Since the lubricant drain opening would be at the bottom of the lubricant collecting volume, and the volume is bound by 126 and 46, it would have to be either on the right 46 (Figure 2) where the bottom of the circumferential wall 126 as shown in Potts’s Figure 2 meets that 46 or it would be at the bottom of wall 126. It has been held that choosing from a finite number of predictable solutions with a reasonable expectation of success supports a conclusion of obviousness. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination to have the lubricant drain opening on the right 46 where it meets bottom of 126 as shown in Potts’s Figure 2 since that would be a lubricant drain at the bottom of the lubricant reservoir as suggested by Evarts and would be an obvious choice of location for the drain. The resulting combination yields in at least one of the support elements, at least one lubricant drain opening is provided which is open to a lubricant receiving volume, wherein at least one lubricant collecting volume is formed in the lubricant receiving volume, wherein the at least one lubricant collecting volume is emptiable via a lubricant drain opening that is open to the same, wherein to provide the lubricant collecting volume, the inner surface of the circumferential wall has a radial distance from the roller axis of rotation that increases in the direction of the roller axis of rotation towards the lubricant drain opening (which would be at the right side of the bottom of the circumferential wall 126 as shown in Potts’s Figure 2) which is open to the at least one lubricant collecting volume.
Regarding claim 2, resulting combination meets the limitation claimed. Additionally, it is noted that since the claim recites “is optionally”, the limitation is not even required; see 112(b) rejection above.
Regarding claim 3, as shown in Potts’s Figure 2, the inner surface of the circumferential wall (frustoconical 126; column 3 lines 49-50) is essentially rotationally symmetrical over the entire axial extension region of the circumferential wall.
Regarding claim 4, the resulting combination includes the limitation of the claim since as shown in Potts’s Figure 2, the circumferential wall (126) has a radial distance from the roller axis of rotation that increases substantially in a constant manner in the direction of (along) the roller axis of rotation.
Regarding claim 12, while the resulting combination fails to disclose that the at least one support element (right 46 in Potts’s Figure 2) is connected to the circumferential wall by a weld which runs in the circumferential direction around the roller axis of rotation, the Examiner takes Official Notice that a weld to connect two elements is old and well-known. Since the resulting combination includes a frustoconical circumferential wall, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the connection between the at least one support element (right 46 in Potts’s Figure 2) is connected to the circumferential wall by a weld which runs in the circumferential direction around the roller axis of rotation since it is old and well-known to connect by welding.
Regarding claim 13, while the resulting combination fails to disclose the limitation claimed, it is an obvious modification to have the weld be arranged radially outside of the at least one lubricant drain opening, otherwise the weld would block the lubricant drain opening, and would therefore have a radial distance from the lubricant drain opening. While the resulting combination fails to explicitly disclose that the weld is formed at least one a radial inner side of the circumferential wall, since the circumferential wall is to be connected to a perpendicular flat wall, the only places to place a weld would be an inner side (inner surface), an outer side (outer surface), or both inner and outer sides. It has been held that choosing from a finite number of predictable solutions with a reasonable expectation of success supports a conclusion of obviousness. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination to have the weld on the inner side and the outer side for greater security. The resulting combination includes the limitations of the claim.
Regarding claim 14, the resulting combination includes an unbalance arrangement with at least one unbalance mass (eccentric weight 60; Potts’s Figure 2) rotatable about an unbalance axis of rotation is arranged in the lubricant receiving volume.
Regarding claim 15, the resulting combination includes the at least one unbalance mass being arranged on an unbalance shaft (64 as shown in Potts’s Figure 2).
Regarding claim 16, the resulting combination includes a soil processing machine, in particular a soil compactor, comprising at least one soil processing roller of claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached Notice of References Cited sheet. JP 2018150675 A is cited for teaching a compaction vehicle with a vibrating roller that has a lubricant chamber and a drain hole.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE J CHU whose telephone number is 571-272-7819. The examiner can normally be reached M-F generally 9:30-5:30.
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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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/KATHERINE J CHU/Examiner, Art Unit 3671
/CHRISTOPHER J SEBESTA/Supervisory Patent Examiner, Art Unit 3671
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