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 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:
“cutting device1” in independent claims 1 and claims 2-20 by dependency.
“lifting assembly2” in independent claim 1 and claims 2-20 by dependency.
“stabilizing assembly3” in independent claims 1 and claims 2-20 by dependency.
“blocking member4” in claims 8 and 10.
“transportation machine5” in independent claim 1 and claim 2-20 by dependency.
“ transfer machine6” in independent claim 1 and claims 2-20 by dependency.
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.
Examiner finds the term “bolt support device” to be a grouping of lifting assembly,
work platform, first drilling frame assembly, and stabilization assembly ; and--although it
uses the non-structural term “device”-- it is not understood to invoke 112f
Examiner finds that one of ordinary skill in the art would understand the “drilling
frame assembly… configured to perform a bolt support operation” to have sufficiently
definite meaning as the name for the structure (i.e. an anchor drill or bolter) that
performs the function.7
Claim Rejections - 35 USC § 112
Claim limitation “transportation machine” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The only corresponding to the transportation machine is the “crushing device” which is not sufficient to perform the entire claimed function. No other structure is clearly linked to the transportation machine. Therefore, claim 1—and 2-20 by dependency-- are indefinite and rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Also, claim limitation “transfer machine” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. At [0054] the transfer device is disclosed as including “a plurality of transport units”, however “transport unit” does not connote structure to one of ordinary skill in the art. No structure is clearly linked to the transfer machine. Therefore, claim 1—and 2-20 by dependency-- are indefinite and rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18/556,573 in view of US4957405 Roberts.
This is a provisional nonstatutory double patenting rejection.
The copending application claims much of the same material vis-à-vis the bolter mine with nearly identical language. The copending application does not require the transportation machine, transfer machine, and the belt conveyor. As noted above, the scope of the transportation machine and the transfer machine is indefinite because there is no clear disclosure of corresponding structure. Roberts-in the same field of endeavor- described a bolter miner 10/52 with transportation machine (including crusher 14) with self moving tail 50, transfer machine 16/18/20 and conveyor 15. The transportation machine, transfer machine, and conveyor would have been understood by one of ordinary skill in the art to be advantageous in order to remove the mined material to the surface. It would therefore have been obvious to have modified the invention claimed in the copending application to have included the transportation machine, transfer machine, and conveyor as called for in the instant application.
Allowable Subject Matter
The claims are not rejected over prior art. AU20122283438, as cited by the Australian Patent Office, describes a drilling and setting rig 10 which extends between the boom and the mine roof; US 5050934 describes a stabilizer which extends between the roof and floor. Examiner finds that the prior art fails to disclose or suggest the bolter miner including the stabilization assembly–as interpreted under 112f--configured to be supported between the cutting device and a tunnel roof to enhance stability of the first drilling frame assembly during the bolt support operation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Janine M KRECK whose telephone number is (571)272-7042. The examiner can normally be reached telework: M-F 0600-1530 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at 5712725405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Janine M Kreck/
Primary Examiner, Art Unit 3672
1 The non-structural term “device” is coupled with function of cutting/performing a cutting operation and is not modified by structure in any claim. This is described as a drum, and one of ordinary skill in the art would understand the drum to rotate and to be conventionally equipped with picks, bit, or chisels.
2 The non-structural term “assembly” is coupled with function of lifting/lift the work platform and is not modified by structure in any claim. This is described as a lifting platform and a lifting oil cylinder.
3 The non-structural term “assembly” is coupled with function of stabilization/ configured to be supported between the cutting device and a tunnel roof to enhance stability of the first drilling frame assembly during the bolt support operation and is not modified by structure in any claim. This is described in [0081]-[0096] and figures 15,16, 17,and 18 and includes elements 341,3411,3412,3413,342,3421,3422, 3423, and 3424. Examiner notes that claim 8 recites first and second support assemblies which are understood to correspond to the same structure, viz., 341,3411,3412,3413 (first) and 342,3421,3422,3423 (second)
4 The non-structural term “member” is coupled with the function blocking/ unfold to block coal rock without being modified by structure. The corresponding structure is understood to be a piece of rubber or chain curtain
5 Non-structural term “machine” coupled with function of transportation/transfer coal rock and not modified by structure. Examiner notes that claim 3 recites “crushing device” which one of ordinary skill in the art reading the specification understand the term “crushing device” to have a sufficiently definite meaning as the name for the structure that performs the function, viz., a crusher. Therefore crushing device is understood to refer to structure. Nonetheless, the structure (i.e. crusher) is not sufficient to perform the function of transportation./transfer coal rock so the 112f interpretation remains for claim 3..
6 Non-structural term “machine” coupled with functions of (a) move synchronously with the bolter-integrated transportation machine and (b) transfer the coal rock conveyed by the bolter-integrated transportation machine.
7 MPEP 2181 I A 1. If persons of ordinary skill in the art reading the specification understand the term
to have a sufficiently definite meaning as the name for the structure that performs the function, even when
the term covers a broad class of structures or identifies the structures by their function (e.g., "filters,"
"brakes," "clamp," "screwdriver," and "locks")