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 .
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
WHEN CLAIMS ARE DIRECTED TO MULTIPLE CATEGORIES OF INVENTIONS
As provided in 37 CFR 1.475(b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Species I, Figs 1-20, 29-32, drawn to a retaining device with upper, lower, and rear sections with the upper and lower sections having free ends that are joined at the support element.
Species II, Figs 21-28, drawn to a retaining device with upper, lower, rear and front sections with the body being a laminar body.
Species I-II encompass apparatuses drawn to retainer devices with two different body structures; therefore, the inventions do not comply to a specific structure category as provided in 37 CFR 1.475(b).
The groups lack unity of invention because even though the inventions of these groups require the technical features of a body with upper, lower, rear sections, a support element with elastic properties, these technical features do not contain a special technical feature as it does not make a contribution over the prior art in view of Ortiz Garcia et al. (US 20190024349). Ortiz Garcia comprises retainer device with a body having a upper, lower, and rear sections and elements that could be considered a support element with elastic properties.
Species I-II further lack unity of invention because the groups diverge from one another in view of their independent special technical features comprising specific limitations for how the free ends of the body connect to the support element or how the laminar body is structured. Each group comprises different special technical features for the basic structure of the body not found in one another. For example, the apparatus of species I requires the special technical feature of the body having free ends which is not required of the apparatus of the other species. Species II requires the special technical feature of a laminar body with at least one flexible flange.
As noted above, the claimed groups do not fall within a specific combination category as provided in 37 CFR 1.475(b) and each comprise differing special technical features as described above covering multiple inventive concepts of retainer devices for wear members; therefore, restriction is required as the application does not relate to one invention only and the groups of inventions are not linked as to form the single general inventive concept of retaining a wear member.
The examiner has required restriction between the two apparatus claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
During a telephone conversation with Raja Saliba on 3/13/2026 a provisional election was made without traverse to prosecute the invention of species I, claims 1-7, 9-25. Affirmation of this election must be made by applicant in replying to this Office action. Claim 8 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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, 5, 7, 9-15 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.
Claim 3 recites the limitation "the prismatic body" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "second base" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Claim 5 is dependent from claim 4 which does not introduce the first and second bases. Claim 7 is rejected due to its dependency on claim 5. For the purpose of compact prosecution, the claims have been examined as best understood.
Claim 9 recites the limitation "the second base" and "the first base" in lines 6-7. There is insufficient antecedent basis for these limitations in the claim. Claim 9 is dependent from claim 1 which does not introduce the first and second bases. Claims 10-15 are rejected due to their dependency on claim 9. For the purpose of compact prosecution, the claims have been examined as best understood.
Claim 10 recites the limitation "the first base" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 15 is rejected due to its dependency on claim 10. For the purpose of compact prosecution, the claims have been examined as best understood.
Claim 11 recites the limitation "first and second bases" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
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) 1-2, 4-7, 9, 11-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ortiz Garcia et al. (US 20190024349).
Regarding claim 1, Ortiz Garcia discloses a retaining device for a female part for excavators and the like, said female part having a cavity for receiving a nose of a male part, and said device comprising a body with a hollow space determined by an upper section, a lower section, opposite from the previous one, and a rear section characterised in that it has a support element with elastic properties joined to one end of said body for fastening the retaining device in the cavity of the female part (retaining device 6; female part 10 with cavity 11 for receiving nose 21 of male part 20; retaining device body with upper and lower sections 61, rear section 63, support element 64/65, and hollow space between the sections depicted in Fig 13; claim language is broad; the support element is considered to have elastic properties in the form of threads that allow the support element to be attached/detached; in addition, threads are known to be elastically deformed when torque is applied in assembly).
Ortiz Garcia discloses another embodiment of the retaining device in Fig 1 and Figs 4-12. The alternative embodiment of Ortiz Garcia discloses the retaining device may comprise retaining device 3 with body upper and lower sections 31, rear section 33, support element 50, and hollow space between the sections depicted in Fig 9.
Regarding claim 2, Ortiz Garcia discloses the device characterised in that the support element has a body with a first outer base and a second base opposite from the first base (Figs 13-14 depict the support elements 64/65 with first outer base 65 and second base being the inner side of 64).
Regarding claim 4, Ortiz Garcia discloses the device characterised in that the body is an elongated body wherein the upper section and the lower section are parallel and are separated by the rear section, this determining a first end substantially perpendicular to both upper and lower sections, and each of these two sections having a front section with a free end at a second end opposite from the rear section, such that both free ends are joined to the support element (Fig 13; rear section 63 is parallel to both sections 61 and second end 69 having a front section with free ends 62 joined at the support element 64).
In the alternative embodiment of Ortiz Garcia depicted in Fig 9 and Fig 12, rear section 33 is parallel to both sections 31 and second end 39 having a front section with free ends 36 joined at the support element 50 when assembled. The support element 50 is stated to guarantee the position of the free ends 36 of the retaining device; in this way, the free ends are considered to be joined at the support element when assembled (para [0077], lines 23-26).
Regarding claim 5, Ortiz Garcia discloses the device characterised in that the second base of the support element comprises an opening into which the ends of the elongated body are inserted for the joining thereof to the support element (Figs 13-14; free ends 62 are inserted into an opening in support element 64).
In the alternative embodiment of Ortiz Garcia depicted in Figs 9-12, the support element comprises an opening into which the ends of the elongated body are inserted for the joining thereof to the support element (the openings in the corners of support element 50 are depicted in Fig 12; the support element is placed over the free ends 36 of the elongated body to guarantee the position of the free ends 36 of the retaining device; para [0077], lines 23-26).
Regarding claim 6, the alternative embodiment of Ortiz Garcia discloses the device characterised in that the support element comprises two slits for the insertion thereof by pressure of the free ends of the elongated body (support element 50 is depicted in Fig 12 as having two slits that allow the free ends of the body to be inserted in order to guarantee the position of the free ends 36 of the retaining device; para [0077], lines 23-26).
Regarding claim 7, the alternative embodiment of Ortiz Garcia discloses the device characterised in that the support element has an L-shaped longitudinal cross section (see Annotated Figure 1).
PNG
media_image1.png
284
231
media_image1.png
Greyscale
Annotated Figure 1
Regarding claim 9, Ortiz Garcia discloses a wear element, characterised in that it is a female part with a body with a cavity comprising an inner end, an open end and side walls, wherein at least one of said walls has a first through hole and a second through hole, located between the inner end of the cavity and the first hole, with a retaining device inside the aforementioned cavity, with the support element inserted into the second hole with the second base thereof inside the cavity and the first base thereof facing the outside through the second hole (Figs 15-16; side wall 110; first through hole 12; second through hole 13; second end of support element faces inside and first end faces outside through the second hole).
Regarding claim 11, Ortiz Garcia discloses the wear element characterised in that the thickness of the side wall is larger than the distance between the first and second bases of the support element (thickness of side wall 110 is depicted larger than the distance between the first and second bases of the support element; the distance between the first and second bases would have to be less than the thickness of the side wall, otherwise the support element would protrude from the hole and interfere with the adapter in the wear member cavity or be subject to unnecessary wear on the outside of the wear member during use).
Regarding claim 12, the alternative embodiment of Ortiz Garcia discloses the wear element characterised in that the cross section of the second hole is smaller than the cross section of the support element (see Annotated Figure 2; para [0089], lines 1-8; the cross section of the second hole is considered to be smaller than the cross section of the support element).
PNG
media_image2.png
393
689
media_image2.png
Greyscale
Annotated Figure 2
Regarding claim 13, Ortiz Garcia discloses the wear element characterised in that the support element is inserted by pressure into the second hole (claim language is broad; “pressure” is interpreted as “the application of force to something by something else in direct contact with it”; in this case, elements 64/65 are threaded into each other when assembled which is considered to be the application of force on each other).
Regarding claim 14, Ortiz Garcia discloses the wear element characterised in that the first hole is close to the second hole (claim language is broad; Figs 15-16 depict the first and second holes as being close to each other).
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) 3, 10, 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ortiz Garcia as applied to claims 2 and 9 above, and further in view of Clarke et al. (US 11015324).
Regarding claim 3, Ortiz Garcia fails to specifically disclose the device characterised in that it comprises a data storage code in the first base of the prismatic body of the support element.
However, Clarke discloses a similar excavator bucket with wear members (Figs 12-13) and teaches the use of a data storage code used in protected areas of the bucket to identify the type of wear part installed and to monitor the health of wear parts (data storage code 55; col 4, lines 45-63; col 13, 59-61).
Ortiz Garcia and Clarke are considered analogous to the claimed invention because they are in the same field of endeavor of tools to remove wear members of excavator buckets. 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 Ortiz Garcia to incorporate the teachings of Clarke and combined the use of a data storage code on the first base of the support element. The first base of the support element is considered to be a protected area as the base sits recessed from the outer surface. One would have made this combination to identify the type of wear part installed and to monitor the health of wear parts (col 4, lines 45-63).
Regarding claim 10, Ortiz Garcia fails to specifically disclose the wear element characterised in that the data storage code is arranged on the first base of the retaining device.
However, Clarke discloses a similar excavator bucket with wear members (Figs 12-13) and teaches the use of a data storage code used in protected areas of the bucket to identify the type of wear part installed and to monitor the health of wear parts (data storage code 55; col 4, lines 45-63; col 13, 59-61).
Ortiz Garcia and Clarke are considered analogous to the claimed invention because they are in the same field of endeavor of tools to remove wear members of excavator buckets. 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 Ortiz Garcia to incorporate the teachings of Clarke and combined the use of a data storage code on the first base of the support element. The first base of the support element is considered to be a protected area as the base sits recessed from the outer surface. One would have made this combination to identify the type of wear part installed and to monitor the health of wear parts (col 4, lines 45-63).
Regarding claim 15, the combination of Ortiz Garcia and Clarke discloses the wear element characterised in that it comprises a data storage code accessible from outside the female part (the first base 65 of Ortiz Garcia is accessible from the outside of the female part and so the data storage code located on the first base would also be accessible).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Rol Corredor et al. (MY 182332) discloses a retaining device with similar structure 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).
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BLAKE E SCOVILLE/ Examiner, Art Unit 3671
/CHRISTOPHER J SEBESTA/ Supervisory Patent Examiner, Art Unit 3671