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.
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.
Claim(s) 1-8, 10-13, 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN110158690 in view of Domanski et al. (11,236,480).
Regarding claim 1, Wang discloses a device for making a vertical retaining wall and/or foundation (background), comprising:
a cutting frame mounted close the outer end, wherein the cutting frame is provided with at least one pair of drums (2) (Background discloses it is a two wheel milling machine) which are each rotatable about a respective rotation axis, wherein an outer surface of each of the drums is provided along the periphery thereof with at least one row with at least five cutter holders (3) extending from the outer surface in the substantially radial direction, wherein each cutter holder is provided at least partially with a thickend portion at the position of a stop edge thereof, wherein the thickened portion has a width, as measured in a transverse direction, which is greater than a width of the cutter holder wherein each cardholder comprises at least one cutting element (5) extending away from the outer surface and having a stop surface which has an angle with the centerline which intersects the rotation axis of the corresponding drum and center of the corresponding cover holder of the position of the outer surface (Figure 2; alpha2); wherein the at least one pair of drums are rotating drivable for
the purpose of dislodging soil while the outer end is driven into the soil
[AltContent: arrow][AltContent: textbox (Stop surface)]
While Wang discloses the invention as described above, it fails to definitively disclose the arrangement of the two cutter drums and their rotation axes. Like Wang, Domanski also discloses a two wheeled foundation cutter. Unlike Wang, Domanski discloses two wheels arranged such that the drums are attached to a frame and lie parallel to and at a distance from each other such that the drums can rotate adjacently of each other as seen in a plane perpendicularly of the rotation axes. It would have been obvious to one of ordinary skill in the art to mount the two drums of Wang on a vertically moving frame such that the drums are arranged as taught by Domanski as it would be combining prior art elements according to known methods to obtain predictable results (KSR International Co. v. Teleflex Inc., 550 USPQ2d 1385 (2007)).
Regarding claim 2, the combination discloses that the angle is greater than 5° (angle formed between the stop surface shown in annotated figure above and the centre line that intersects the rotation axis of the drum is significantly greater than 5°).
Regarding claim 3, the combination discloses the at least five cutter holders (3) are distributed uniformly over the same peripheral line of the outer surface (Figure 1 shows 5 evenly distributed cutter holders in each of 4 rows).
Regarding claim 4, the combination discloses that the outer surface is provided with at least three rows (Figure 1) with five cutter holders (3) each, wherein the rows lie at a mutual distance as seen in a longitudinal direction of the drum and wherein the cutter holders of adjacent rows have a mutual angle at the center measured between a corresponding front edge of the cutter holders (Figure 2).
Regarding claim 5, the combination discloses that the angle at the center is greater than 10° (Figure 2).
Regarding claim 6, the combination discloses a proximal base of each cutter holder (3) whereby the cutter holder is connected to the outer surface extends along the outer surface over a minimum arc length so that a front edge of each cutter holder at least partially overlaps a rear edge of a cutter holder of an adjacent row, as seen in a plane perpendicularly of the rotation axis (Figure 2).
Regarding claim 7, the combination discloses that the frame includes clearing plates (50- Domanski).
Regarding claim 8, the combination discloses that the clearing plates are provided at the position of a stop edge thereof with one or more protrusions (46).
Regarding claim 10, the combination discloses the distal outer end of the cutter holder (3) includes a slot in which a cutting element (5) is arrangeable, wherein a wall of the slot is provided with at least one locking groove (6) and wherein the cutting element comprises a passage opening which when the cutting element is arranged in the slot, is provided to be aligned with the locking groove, wherein the cutter holder further comprises a fastening means (7) which is provided to extend through the passage opening and the at least one locking groove in order to fix the cutting element in the cutter holder.
Regarding claim 11, the combination discloses a width of the cutter holder (3 – at the front edge where it tapers to extend between the walls of cutter element 4) is smaller than a width of the stop surface on cutting element (5) (Figure 1).
Regarding claim 12, the combination discloses the cutter holders (3) lying adjacent of a base of the drum comprise cutting elements (5), the stop surface of which protrudes beyond the base.
Regarding claim 13, the combination discloses that the vertically movable outer end is a substantially vertical tube on which the cutting frame is mounted (Domanski – column 8 lines 8-10).
Regarding claim 15, the combination discloses that the drums are driven in opposite directions.
Regarding claim 16, the combination discloses the invention as described above, but fails to disclose that the thickened portion is at least 2 mm greater than the cutter holder (where the tooth is attached – see annotated figure above). It would have been an obvious matter of design choice to make the thickened portion 2 mm larger than the cutter holder attachment portion, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level or ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding claim 17, the combination discloses the thickened portion is provided over the whole stop edge.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN110158690) in view of Domanski et al. (11,236,480) as applied to claim 1 above and further in view of Hall et al. (7,942,605).
Regarding claim 9, the combination of Wang and Domanski discloses the invention as described above but fails to disclose protrusions/teeth on the outer surface of the drum between the rows of teeth. Like the combination, Hall also discloses a slot cutter with rotatable drums. Unlike the combination of Hall discloses protrusions (803) that aid in stopping the adherence of material to the drum. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize protrusions on the drama between the rows of teeth in the combination as taught by Hall as it would be combining prior art elements according to known methods to obtain predictable results (KSR International Co. v. Teleflex Inc., 550 USPQ2d 1385 (2007)).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN110158690) in view of Domanski et al. (11,236,480) as applied to claim 1 above and further in view of Kruse (2012/0308306).
Regarding claim 14, the combination discloses the combination as described above including a nozzle device for injecting fluid near the drums. Like the combination, Kruse also discloses a double wheel cutter with an injection device. Unlike the combination, Kruse discloses that a grout/mortar device could be used in combination with the cutter (Pgph 0118). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize a grout/mortar injection system in the combination as taught by Kruse as it would be combining prior art elements according to known methods to obtain predictable results (KSR International Co. v. Teleflex Inc., 550 USPQ2d 1385 (2007)).
Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN110158690) in view of Domanski et al. (11,236,480) as applied to claim 1 above and further in view of Jakob et al. (5,078,540).
Regarding claims 18-19, the combination discloses the combination as described above including a fastening device that connects the tooth to the tooth holder. Like the combination, Jakob also discloses a drum cutter with cutting teeth mounted to a tooth holder with a fastener. Unlike the combination, Jakob discloses that the fastener (66) protrudes outwardly from the sidewall. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize a fastener in the combination that protrudes from the sidewall near the stop surface as taught by Jakob as a simple substitution of one known element for another to obtain predictable results (KSR International Co. v. Teleflex Inc., 550 USPQ2d 1385 (2007)).
Response to Arguments
Applicant's arguments filed 8/18/26 have been fully considered but they are not persuasive. Applicant argues that the combination fails to disclose a thickened portion at a stop edge that is thicker than the cutter holder. The examiner disagrees. As can be seen in the annotated figure below, the cutter tooth is attached to the cutter holder at a location of decreased width such that the cutter holder slides between the outer walls of the cutter tooth. At the stop edge, the cutter holder has an increased width portion that is at least the same width as the outer walls of the cutter tooth as is shown in the Figure. Applicant points to the opposite edge as the “stop edge” but there is insufficient structure claimed to prevent the back edge cited by the examiner in the annotated figure as being the stop edge. As the drum rotates and the tooth encounters resistance there are forces against the tooth in the direction towards the edge cited by the examiner where the thickened portion can support the tooth and as such the examiner reads this as the stop edge. Further structure is required to clarify the stop edge and/or prevent the back/thickened portion from being read on as the stop edge.
[AltContent: arrow][AltContent: textbox (Stop surface)]
Regarding claim 2, the stop surface shown in the figure above makes an angle greater than 5° with the centre line. Applicant is arguing a different “stop surface” but said surface is insufficiently defined.
Regarding claims 3-5, applicant argues that Wang fails to disclose “in text” the distribution of the cutter holders and the claimed angles and the examiner improperly relies on the figures. The examiner maintains that the figures clearly disclose the claimed “at least 5 cutter holders” being evenly distributed over multiple rows. Drawings and pictures can anticipate claims if they clearly show the structure which is claimed. In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972). In this case, the drawings clearly show at least 5 cutter holders evenly distributed. Figure 1 specifically discloses 5 cutter holders evenly distributed along the same row/edge and being the same distance from the edge.
Regarding claim 8, applicant appears to be arguing that the cited protrusions (46) of Donanski are nozzles and therefore not protrusions. This is not persuasive. Elements 4o and 50 are both part of the clearing system. The nozzles “protrude” from the portion (40) of the clearing system and are therefore “protrusions”.
Regarding claim 10, applicant appears to be reading too much structure into the current claims. All of the elements claimed have been called out in the rejection of claim 10. There is insufficient structure claimed to prevent the cited elements from reading on the claims.
Regarding claim 13, in addition to the support system, the combination clearly discloses a tube on which the device is mounted for providing suction and removing spoils.
Regarding claim 15, Donanski was used in combination with Wang to show how the drums could be mounted. Based on the mounting arrangement of the teeth being facing in opposite directions, it is clear from figure 2 that the drums would be rotating in opposite directions.
Regarding claim 9, applicant argues that Hall doesn’t described the protrusions as “teeth” and that they do not extend to a lesser extent than the cutter holders. This is not persuasive. First, there is insufficient structure claimed to prevent the elements of Hall from reading on “teeth.” Second, figure 8 of Hall clearly shows the ability for the elements (803) to extend to a lesser extent than the cutters.
Regarding claim 14, in response to applicant's argument that the combination fails to expressly disclose the claimed structural context of the injection mechanism, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Applicant fails to claim sufficient structure to read over the current combination. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize a grout/mortar injection system in the combination as taught by Kruse as it would be combining prior art elements according to known methods to obtain predictable results (KSR International Co. v. Teleflex Inc., 550 USPQ2d 1385 (2007)).
Regarding claims 18 and 19, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, the fastener of Wang is located near the stop edge. The combination with Jakob was used simply to show that the fastener could be a bolt instead of a recessed fastener. The head of the bolt would then be a protrusion. The head of the bolt reads on the current claim. The fact that applicant has a different type of element is not persuasive unless it results in a structural difference. Currently that structural difference is not properly claimed.
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 Jamie L McGowan whose telephone number is (571)272-5064. The examiner can normally be reached Monday through Friday 9:00-5:00 CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chris 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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/JAMIE L MCGOWAN/Primary Examiner, Art Unit 3671
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