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
Applicant’s election of Species I in the reply filed on August 15, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 3-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 15, 2025.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11 of copending Application No. 18/595,349. Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions have the features of a plurality of spans, a flexible juncture, an intermediate tower structure, a variable-speed drive assembly, at least one span motor, an alignment detector and a variable-speed drive controller.
Claims 1 and 10 correspond to the following copending application claims:
Application Claims
Copending application claims
1
1
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Furthermore, Claim 1 is rejected on the ground of nonstatutory double patenting over claim 1 of U.S. Patent No. 10,165,741; claim 1 of U.S. Patent No. 11,917,952; claim 1 of U.S. Patent No. 10,582,671 and claim 1 of U.S. Patent No. 10,130,054; and claim 1 of U.S. Patent No. 11,917,953; since the claims, if allowed, would improperly extend the “right to exclude” already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: a plurality of spans, a flexible juncture, an intermediate tower structure, a variable-speed drive assembly, at least one span motor, an alignment detector and a variable-speed drive controller.
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 10 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The disclosure, as originally filed, does not disclose that the variable-speed drive controller adjusts the speed of the span motor based solely on the detected state of alignment being lagging, leading, or neither lagging nor leading, without scaling a magnitude of the speed adjustment according to an amount of angular or linear misalignment between the plurality of span as amended in claim 10. In facts, the concept of “adjusts the speed of the span motor… without scaling a magnitude of the speed adjustment according to an amount of angular or linear misalignment between the plurality of span” cannot be found in the original disclosure. Clarification is respectfully requested.
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 1, 2 and 10 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.
The term “incrementally” in line 18 of claim 1 is a relative term which renders the claim indefinite. The term “incrementally” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “incrementally” is defined as “of, relating to, being, or occurring in especially small increments. https://www.merriam-webster.com/dictionary/incrementally. However, the amount or degree by which something changes overtime to meet the claim limitation is not known. In other words, the term “incrementally” refers to “one of a series of regular consecutive additions.” However, the size or degree of the “regular” to meet the claim limitation is not known. Clarification is respectfully requested. Same rejection applies to all pending claims.
The term “substantial” in line 22 of claim 1 is a relative term which renders the claim indefinite. The term “substantial” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The maximum allowable arch or curve on the alignment to meet the claim limitation is not known. Clarification is respectfully requested. Same rejection applies to all pending claims.
With respect to claim 10, the “state of alignment,” in this invention and the claims as a whole, refers to the “state of alignment” of the plurality of spans. The latter limitation “without scaling a magnitude of the speed adjustment according to an amount of angular or linear misalignment between the plurality of span,” in lines 8-9, appears to contradict the former limitation, in line 6-8, “the variable-speed drive controller adjusts the speed of the span motor based solely on the detected state of alignment (of the plurality of spans) being lagging, leading, or neither lagging nor leading.” It is unclear how to adjust the speed of the span motor based solely on the detected state of alignment of the plurality of spans without scaling…an amount of angular or linear misalignment between the plurality of span? In other words, without “scaling or measuring” the amount of angular or linear misalignment between the plurality of span, how can one “detect” the state of alignment of the plurality of spans? Clarification is respectfully requested.
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 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 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Krieger et al. (US 2003/0066912. Krieger hereafter).
With respect to claim 1, Krieger discloses an irrigation system (10) having a movement direction (around 50) over a ground surface of a field, the irrigation system comprising:
a plurality of spans (56), each having a longitudinal axis, said plurality of spans being connected at a flexible juncture (between 56 and 96) and having a state of alignment of the respective longitudinal axes of the plurality of spans (six state of alignment: 100 is leading, 100 is lagging, 100 is at speed, 60 is leading, 60 is lagging and 60 is at speed);
an intermediate tower structure (78) between the plurality of spans configured to (capable of) support the plurality of spans above the ground surface;
a variable-speed drive assembly (76) of the intermediate tower structure having a wheel (72 and 74) configured to (capable of) contact the ground surface below the irrigation system and a span motor (66) configured to (capable of) drive the wheel so as to propel the intermediate tower structure over the ground surface, a variable-speed drive controller (142) of the variable-speed drive assembly (configured for) controlling a speed of the intermediate tower structure (via the speed of the span motor) over the ground surface, and an alignment detector (138 in Figs. 2-5) to detect and output the state of alignment of the respective longitudinal axes of the plurality of spans indicating: (a) a lagging state of misalignment (60 is lagging); (b) a leading state of misalignment (60 is leading); or (c) a state of alignment that is neither lagging nor leading (60 is at speed); and
said variable-speed drive controller monitoring and processing the output of the alignment detector and based on the state of alignment detected by the alignment detector configured to (capable of): (a) incrementally increase the speed over time of the span motor while in the lagging state of misalignment (when the potentiometer 142 detected an increasing (a new fixed higher speed) magnitude of misalignment over time based on the distance detected by the potentiometer 142); (b) incrementally decrease the speed over time of the span motor while in the leading state of misalignment (when the potentiometer 142 detected a decreasing (a new fixed lower speed) magnitude of misalignment over time based on the distance detected by the potentiometer 142); and (c) maintain a current speed of the span motor while in the state of alignment that is neither lagging nor leading, to thereby maintain substantial straight alignment of the respective longitudinal axes of the plurality of spans (by comparing to the predetermined speed in the memory).
With respect to claim 2, Krieger discloses wherein the alignment detector comprises an analog sensor (sensing along the alignment bar 144 of alignment mechanism 138. Figs 2-5 and paragraphs [0031] and [0041]).
Response to Arguments
Applicant's arguments filed on February 3, 2026 have been fully considered but they are not persuasive. With respect to the non-statutory double patenting rejection, the Applicant argues that the claims, as amended, are now patentably distinct from the claims of the cited co-pending application and referenced patents. The non-statutory double patenting rejection for claim 10 has been withdrawn in view of the amendment in claim 10. The non-statutory double patenting rejection for claim 1 remain because even though 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).
With respect to the 35 U.S.C. §112(b) as indefinite based on the terms "incrementally" and "substantial," the Applicant argues that amended claim 10 further define the terms "incrementally" and "substantial." The Examiner respectfully disagrees. First, the amended limitations in claim 10 violate the 35 U.S.C. §112(a) and 35 U.S.C. §112(b) requirements as elaborated above. Second, the Applicant argues that the term "incrementally" denotes stepwise speed changes applied in response to changes in alignment state. However, the rejection, as elaborated above, is how big or small of a “step” in the “stepwise” is required to meet the claim limitation? The term “incrementally” is defined as “of, relating to, being, or occurring in especially small increments. https://www.merriam-webster.com/dictionary/incrementally. How small is small? In other words, the term “incrementally” refers to “one of a series of regular consecutive additions.” However, the size or degree of the “regular” to meet the claim limitation is not known. See detailed rejection elaborated above. As for the term "substantial," the maximum allowable arch or curve on the alignment to meet the claim limitation is not known. Clarification is respectfully requested.
With respect to the 35 U.S.C. §102(a)(1) rejection, the Applicant argues the limitation amended in claim 10 is not disclosed by Krieger. As elaborated above, the amended limitations in claim 10 violate the 35 U.S.C. §112(a) and 35 U.S.C. §112(b) requirements. Nevertheless, claims 1 and 2 remain rejected under 35 U.S.C. 102(a)(1) as being anticipated by Krieger.
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 CHEE-CHONG LEE whose telephone number is (571)270-1916. The examiner can normally be reached on Monday-Friday 8am -5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arthur O. Hall can be reached on (571)270-1814. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHEE-CHONG LEE/Primary Examiner, Art Unit 3752 April 3, 2026