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 .
Detailed Action
Applicant's election with traverse of Invention Species II, A’ (claims 13-16 readable) in the reply filed on 06/23/2026 is acknowledged. The traversal is on the ground(s) that the restriction between the apparatus and method claims is improper because the apparatus as claimed simply cannot be used for “loosening up or digging soil”. This is not found persuasive because there is no restriction to prevent the claimed apparatus to be used for loosening up or diffing soil. Applicant further argues that method claim 13 is generic to subgroups A’, B’ and C’, and should claim 13 found allowable, Applicant would be entitled to consideration of claims directed to these additional species. Examiner agrees with the Applicant that if claim 13 is found allowable, claims 21-25 will be examined.
The requirement is still deemed proper and is therefore made FINAL.
Objection to the Specification
The disclosure is objected to because of the following informalities:
(1) In paragraph [0001], line 2, after “2021, “, --now U.S. Patent No. 12,017,288-- should be added.
(2) In paragraph [0038], line 2, “h” should read --In--.
Appropriate correction is required.
Claim Objection
Claims 13-16 are objected to because of the following informalities:
(1) In claim 13, line 7, after “operation”, --,-- should be added.
Appropriate correction is required.
Claim Rejection - 35 U.S.C. 112(b)
1. 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.
2. Claims 13-16 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.
(1) In claim 13, line 10, it is not understood what it is meant by “which in response to causes the electromechanical drive to engage”. The phrase “to causes” does not make sense.
Claim Rejection - 35 U.S.C. 103
1. 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.
2. Claims 13, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over EP 0 812 044 in view of Ballard et al. (U.S. Patent Application Publication No. 2017/0358909, hereinafter “Ballard”).
Regarding claim 13, EP ‘044 discloses a method for operating a cutting tool, the method comprising:
positioning a cable (43, see Fig.2 and column 9, lines 23-28) between a moving blade (2) and a stationary blade (1) of the cutting tool; and
activating a cutting operation (e.g., by pressing switch lever 9 and lock knob 11 to turn on the switch 37, see column 9, lines 29-31) to activate an electromechanical drive (13,14,35, see Fig.6) of the cutting tool and causing the electromechanical drive (13,14,35) to engage the moving blade (2) such that the moving blade (2) interacts with the stationary blade (1) during the cutting operation to cut the cable (43) positioned between the moving blade (2) and the stationary blade (1) substantially as claimed except the cutting tool of EP ‘044 is not operated/controlled by a wireless remote control.
Ballad shows a method for operating a wireless remotely controller cutting tool (100) comprising positioning a cable between a pair of cutting jaws (211A,121B, see paragraph [0045], lines 11-2) of the wireless remotely controller cutting tool (100); pairing the cutting tool (100) to a wireless remote control (702, see paragraph [0099], lines 1-3), and activating, via the wireless remote control (702), a cutting operation (see paragraph [0033], lines 9-11), the activating causing the wireless remote control (702) to communicate with a communication module (see paragraph [0080], lines 1-3) of the cutting tool (100) to activate a drive (204,206,214,216,218, see Fig.2B) of the cutting tool (100) to perform the cutting operation.
Thus, it would have been obvious to one skilled in the art to modify EP ‘044 by having the cutting tool equipped with a communication module to pair and communicate with a wireless remote control so that the cutting tool can be operated remotely when cutting a live line so as to insulate workers from any electrical hazards as taught by Ballad (see paragraph [0033], lines 4-11).
Regarding claims 15 and 16, in Ballard’s method, completion of the cutting operation initiates a feedback signal from the wirelessly remotely controlled cutting tool (100) to the wireless remote control (702), the feedback signal causing one or more indicators of the remote control (702) to indicate a status of the cutting operation (e.g., “Cut Complete!”, see paragraph [0097], lines 1-8). EP ‘411 thus modified also processes such limitation.
3. Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over EP 0 812 044 in view of Ballard et al. (U.S. Patent Application Publication No. 2017/0358909) as applied to claim 13 above, and further in view of GB 2600139.
Regarding claim 14, the method of EP ‘044 as modified above shows all the claimed limitations except it lacks the step of securely positioning the tool with rigging by connecting the rigging to rigging points on the wirelessly remotely controlled cutting tool.
GB ‘139 shows a method of operating a cutting tool (1) comprising the step of securing the tool (1) with a tripod (80, see Fig.11 and paragraph [0062]) by connecting the tripod (80) to connecting points (15, note more than one or more connectors 15 can be provided, see paragraph [0087], lines 5-7) on the cutting tool (1).
Thus, it would have been obvious to one skilled in the art to further modify EP ‘044 by providing the cutting tool with connectors (15) for allowing the cutting tool to be connected to a tripod, robot, lanyard, suspend wire, or other device (see paragraph [0062], lines 1-3) as taught by GB ‘139. The exact device the cutting tool is to be attached depends more upon the choice of a user than on any inventive concept. It is further evidenced by the Applicants that rigging, tripod, eyebolts, hoist rings, T’s, handles, and the like may be connected to the rings 36,38 or to the female threads 40,42 of the cutting tool (see paragraph [0038], lines 5-7 of this instant application).
Claim Rejection - Nonstatutory Double Patenting
1. 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.
2. Claims 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15, 16 and 18 of U.S. Patent No. 12,017,288 in view of EP 0 812 044 and Ballard et al. (U.S. Patent Application Publication No. 2017/0358909, hereinafter “Ballard”).
Claims 15, 16 and 18 of the ‘288 patent shows the claimed method except it does not specify the first blade being movable and the second blade being stationary, and it fails to include a communication module in the wirelessly remotely controlled cutting tool for communicating with the wireless remote control.
EP ‘044 shows a cutting tool comprising a stationary blade (1, see Fig.2) and a moving blade (2) movable relative to the stationary blade (1) in response to an electromechanical drive () such that the moving blade (2) interacts with the stationary blade (1) during a cutting operation to cut a cable (43) positioned between the moving blade (2) and the stationary blade (1). Thus, it would have been obvious to one skilled in the art to have one of the blades stationary and the other blade movable of the ‘288 wirelessly remotely controlled cutting tool for the predictable result of cutting a cable as taught by EP ‘044.
Ballard shows a wirelessly remotely controlled cutting tool (100, see Fig.7) equipped with a communication module (see paragraph [0080], lines 1-3) for allowing the cutting tool (100) to communicate with a wireless remote control (702, see paragraph [0099], lines 1-3). Therefore, it would have been obvious to one of ordinary skill in the art to further modify the ‘288 wirelessly remotely controlled cutting tool by providing the cutting tool with a communication module to allow the wireless remote control to control, via the communication module, the wirelessly remotely controlled cutting tool as taught by Ballard.
Prior Art Citations
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent No. 10,799,962 and U.S. Patent Application Publication No. 2017/0157787 each shows a wirelessly remotely controlled cutting tool.
Point of Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HWEI-SIU PAYER whose telephone number is (571)272-4511. The examiner can normally be reached on Monday - Friday from 7:00 AM to 3:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley, can be reached at telephone number 571-272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HWEI-SIU C PAYER/ Primary Examiner, Art Unit 3724
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