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 .
Claim Objections
Claims 1-18 are objected to because of the following informalities:
(claim 1, line 1) “Diaphragm wall cutter” should be changed to “A diaphragm wall cutter”.
(claim 1, lines 11-12) “characterized in that” should be changed to “wherein”.
(claim 2, line 1) “Diaphragm wall cutter” should be changed to “The diaphragm wall cutter”.
(claim 2, line 5) “that the shut-off device” should be changed to “the shut-off device”.
(claim 3, line 1) “Diaphragm wall cutter” should be changed to “The diaphragm wall cutter”.
(claim 4, line 1) “Diaphragm wall cutter” should be changed to “The diaphragm wall cutter”.
(claim 5, line 1) “Diaphragm wall cutter” should be changed to “The diaphragm wall cutter”.
(claim 6, line 1) “Diaphragm wall cutter” should be changed to “The diaphragm wall cutter”.
(claim 7, line 1) “Diaphragm wall cutter” should be changed to “The diaphragm wall cutter”.
(claim 8, line 1) “Diaphragm wall cutter” should be changed to “The diaphragm wall cutter”.
(claim 9, line 1) “Diaphragm wall cutter” should be changed to “The diaphragm wall cutter”.
(claim 10, line 1) “Diaphragm wall cutter” should be changed to “The diaphragm wall cutter”.
(claim 10, line 1) “according to claim 1” should be changed to “according to claim 9” to provide proper antecedent basis for the limitation “the filling pump” in claim 12.
(claim 11, line 1) “Diaphragm wall cutter” should be changed to “The diaphragm wall cutter”.
(claim 12, line 1) “Diaphragm wall cutter” should be changed to “The diaphragm wall cutter”.
(claim 13, line 1) “Diaphragm wall cutter” should be changed to “The diaphragm wall cutter”.
(claim 14, line 1) “Method” should be changed to “A method”.
(claim 14, lines 3-4) “wherein that the suction pump” should be changed to “wherein the suction pump”.
(claim 15, line 1) “Method” should be changed to “The method”.
(claim 15, line 4) “that the diaphragm wall cutter” should be changed to “the diaphragm wall cutter”.
(claim 16, line 1) “Method” should be changed to “The method”.
(claim 16, line 3) “that the suction line” should be changed to “the suction line”.
(claim 16, line 5) “that the shut-off device” should be changed to “the shut-off device”.
(claim 17, line 1) “Method” should be changed to “The method”.
(claim 17, line 1) “according to claim 14” should be changed to “according to claim 16” to provide proper antecedent basis for the limitation “the shut-off device” in line 3.
(claim 17, line 3) “that the shut-off device” should be changed to “the shut-off device”.
(claim 18, line 1) “Method” should be changed to “The method”.
(claim 18, line 3) “that liquid is supplied” should be changed to “liquid is supplied”.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a locking element” in claim 2.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 applicant regards as his invention.
Claims 3 and 7 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.
Regarding claim 3, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 7, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claims 1, 8-12, 14, 15 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Barthelemy et al. (US 4,742,876).
As concerns claim 1, Barthelemy shows a diaphragm wall cutter (1) for cutting a cutting trench in the ground (Fig. 1), comprising a cutting frame (Fig. 2a & 2b: frame of drilling unit 1), at least one rotatably-drivable cutting wheel (26) which is mounted on a lower side of the cutting frame (Fig. 2b), a suction nozzle (opening of suction pipe 28) which is arranged in the region of the at least one cutting wheel and is provided with at least one suction opening (Fig. 2b), and a suction pump (29) which is configured for suctioning slurry out of the cutting trench during cutting via the suction nozzle (Fig. 2b), wherein the suction pump is connected to the suction nozzle via a suction line (28), wherein at least one filling port (78) for filling the suction pump and the suction line with a liquid (mud) is provided (Fig. 1 & 5), wherein the suction line and the suction pump are filled with liquid for starting the suction pump (Fig. 12c-12j; col 8, ln 18-24; col 10, ln 4-8; mud is to be injected into the drilling area through the pump and the suction line during the steps shown in Fig. 12c & 12h, then drilling proceeds during the steps shown in Fig. 12d, 12e & 12i where mud and cuttings are to be pumped out through the suction line and the pump to the mud evacuation pipe).
As concerns claim 8, Barthelemy shows wherein the filling port (78) is arranged at or above the suction pump (Fig. 1 & 5).
As concerns claim 9, Barthelemy shows wherein a filling pump (8) is provided, through which a defined quantity of liquid can be supplied for filling (Fig. 1 & 5).
As concerns claim 10, Barthelemy shows wherein liquid can be supplied into the suction pump and the suction line prior to start-up of the suction pump, when the suction line is open downwards, in a quantity such that said line and pump are filled for starting the suction pump (Fig. 12c-12j; col 8, ln 18-24; col 10, ln 4-8).
As concerns claim 11, Barthelemy shows wherein a control device (83) is provided, which is configured to stop filling when the suction pump is started (Fig. 4).
As concerns claim 12, Barthelemy shows wherein the control device (83) directly controls a valve device (10) at the filling port (Fig. 4 & 5).
As concerns claim 14, Barthelemy shows a method of cutting a cutting trench in the ground (Fig. 1) by means of a diaphragm wall cutter (1) according to claim 1, wherein the suction pump and the suction line are filled with a liquid via the filling port before the suction pump is started (Fig. 12c-12j; col 8, ln 18-24; col 10, ln 4-8; mud is to be injected into the drilling area through the pump and the suction line during the steps shown in Fig. 12c & 12h, then drilling proceeds during the steps shown in Fig. 12d, 12e & 12i where mud and cuttings are to be pumped out through the suction line and the pump to the mud evacuation pipe).
As concerns claim 15, Barthelemy shows wherein a guide trench is created, which is filled with slurry (Fig. 12c & 12h), and that the diaphragm wall cutter is inserted into the guide trench for cutting, wherein the cutting operation is started even before the suction pump s completely immersed in the slurry (Fig. 12c-12j).
As concerns claim 18, Barthelemy shows wherein liquid is supplied into the suction pump and the suction line by means of a filling pump (8), when the suction line is open downwards, in a quantity such that the suction pump and the suction line are filled when the suction pump is started (Fig. 1 & 5).
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.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Barthelemy et al. alone.
As concerns claim 13, Barthelemy discloses the claimed invention except for wherein a display device is provided, which displays a filling state of the suction pump. The examiner takes official notice that it is old and well known in the art to use a display device to display information about an operation. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have utilized a display device for the expected benefit of displaying information about the diaphragm wall cutter to an operator during operation. Thus, one of ordinary skill in the art would have recognized that using a display device to display information about the diaphragm wall cutter would have provided predictable results and a reasonable expectation of success. Therefore, it would have been obvious to modify Barthelemy to obtain the invention as specified in the claim.
Allowable Subject Matter
Claims 2-7, 16 and 17 are 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.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record does not appear to anticipate and/or render obvious a diaphragm wall cutter for cutting a cutting trench in the ground, comprising a cutting frame, at least one rotatably-drivable cutting wheel which is mounted on a lower side of the cutting frame, a suction nozzle which is arranged in the region of the at least one cutting wheel and is provided with at least one suction opening, and a suction pump which is configured for suctioning slurry out of the cutting trench during cutting via the suction nozzle, wherein the suction pump is connected to the suction nozzle via a suction line, wherein at least one filling port for filling the suction pump and the suction line with a liquid is provided, wherein the suction line and the suction pump are filled with liquid for starting the suction pump, wherein a shut-off device is provided, by means of which the suction line can be shut-off downwards to the cutting trench, and the shut-off device comprises a locking element which is mounted in a manner adjustable between a shut-off position and a flow position.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Stetter et al. (US 2019/0323200) shows a diaphragm wall cutter (10) for cutting a cutting trench in the ground, comprising a cutting frame (12), at least one rotatably-drivable cutting wheel (14) which is mounted on a lower side of the cutting frame, a suction nozzle (24) which is arranged in the region of the at least one cutting wheel and is provided with at least one suction opening (25), and a suction pump (22) which is configured for suctioning slurry out of the cutting trench during cutting via the suction nozzle, wherein the suction pump is connected to the suction nozzle via a suction line (26a), wherein at least one filling port (44) for filling the suction pump and the suction line with a liquid is provided (Fig. 3), wherein the suction line and the suction pump are filled with liquid for starting the suction pump (Fig. 2).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R BUCK whose telephone number is (571)270-3653. The examiner can normally be reached Monday-Thursday 6:30-5.
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, Nicole Coy can be reached at (571)272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW R BUCK/Primary Examiner, Art Unit 3679