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 elected Group 1 claims 21 – 31 & 37. Claims 32 - 36 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/03/2026. The restriction is made FINAL.
Prior art of Record
The prior art made of record in this office action shall be referred to as follows;
U.S. 2016/0158942 Augenbraun et al. (‘Augenbraun hereafter), App 14/963189 Filed 12/08/2015.
U.S. 2009/0127918 Yao et al. (‘Yao hereafter), App 12/233509 Filed 09/18/2008.
The above references will be referred to hereafter by the names or numbers indicated above.
Claim status:
Claims 21 - 37 are currently being examined.
Claims 32 - 36 have been withdrawn.
Claims 1 – 20 have been canceled.
Claims 29 & 31 are objected to for allowable subject matter.
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 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 21 – 26, 28, 30 & 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2009/0127918 Yao et al. (‘Yao hereafter).
Regarding Claim[s] 21, ‘Yao discloses all the claim limitations including: An attachment (‘Yao, Figs 1, 13 -15, #10 (vibratory milling machine/ attachment)) configured for material-removing processing or smoothing processing walls or ceilings (‘Yao, The term “smoothing processing” suggest a term of degree. However, applicant is not defining any finishes, roughness, surface peaks and valleys. ‘Yao is capable of processing wall or ceiling that would be considered smooth.)
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide a smooth wall and ceiling since it is a matter of design choice to finish the walls or celings to a desired amount. A change in shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 357 F2d 669, 149 USPQ 47 (CCPA 1966).
for a mobile handling device (‘Yao,, Fig 16, Para 0026, “is a schematic drawing of a vibratory milling machine removing layers of material from a formation.” Para 0028, “the skilled artisan would understand that the milling machine and methods of making and using the machine can be implemented and used without employing these specific details. Indeed, the milling machines and associated methods can be modified and used in conjunction with any apparatus, systems, components, and/or techniques conventionally used in the mining or construction industries. Additionally, while the description below focuses on implementing the milling machines and milling in horizontal and vertical directions, it could be implemented for milling in any desired direction.”),
that is arranged as a mobile work machine (‘Yao, Para 0032, “The vibratory milling machine 10, and thus the milling tool 16, may be moved by a support arm 18 of any known equipment that provides the desired support for the milling machine 10, including a backhoe, hydraulic excavator or other piece of excavating equipment that carries the milling machine. As well, support arm 18 may be a member of a conventional boom milling machine, or any other milling machine such as roadheaders, boom miners, tunnel boring machines (TBMs), bulldozers, boomtrucks, etc. The support arm may be part of the known equipment or could be added to equipment and, therefore, the milling machine can be adapted to a wide variety of equipment. While a single edged milling tool 16 is illustrated, it will be appreciated that multi-edged tools can be provided that oscillate substantially parallel to a milling axis.”),
the attachment (‘Yao, #10) comprising:
a mounting unit that is configured to be supported at a mounting interface of the handling device (‘Yao, Para 0011, “FIG. 1 illustrates FIG. 1 is an isometric view of a vibratory milling machine mounted to a support arm;”),
wherein the mounting unit provides at least two swivel positions for the attachment that are offset from one another (‘Yao, Fig 2, #100 (known connection points/ mounting interface), allows two swivel offset positions),
a processing head (‘Yao, #12 (milling head/ processing head)) that is configured to be equipped with at least one tool for material-removing processing or smoothing processing (‘Yao, #12 (milling head/ processing head)), and
a compensation arrangement arranged between the mounting unit and the processing head (‘Yao, #14 (base/ compensation arrangement)) and defines a longitudinal axis (‘Yao, #22 (milling axis)),
wherein the processing head is movable relative to the mounting unit (104) in a longitudinal direction along the longitudinal axis (‘Yao, Abst “A continuous mining method includes operating a vibratory milling machine having a milling head, a base, and a milling tool to oscillate the milling head in a substantially linear reciprocating fashion relative to the base to move the milling tool along a milling axis; and advancing the vibratory milling machine in a work piece in a cutting direction and wherein milling axis is oriented at an attack angle relative to the cutting direction, the attack angle being between about 0 and about 40 degrees.”),
wherein the compensation arrangement is arranged to provide a defined contact pressure force for the processing head in a defined operating range along the longitudinal axis towards the surface to be processed (‘Yao, Abst, Para 0036, “Vibrational forces are created by rotation of the rotors 20 due to the asymmetric weight distribution of each rotor about its primary axis 36. As illustrated in FIG. 4, each rotor has four length-wise openings 40 extending through it and arranged symmetrically about the axis 36 for reception of cylindrical weights 42. In the illustrated embodiments, two of the openings 40 of each rotor 20 are filled with cylindrical weights 42 and the other two openings are left empty. This causes each of the rotors 20 to be highly asymmetrical in mass, maximizing the vibrational force created by its rotation. The cylindrical weights 42 may be made of tungsten or other suitable material of high mass density.”),
wherein in the operating range of the compensation arrangement, compensating movements along the longitudinal axis of at least 200 mm,
in terms of absolute value,
are enabled (‘Yao, Para 0051, “ In some embodiments, milling head 12 may be wider or narrower, depending on the desired application. For example, as shown in FIG. 13, milling head 12 may occupy only a portion of the width of base 14, while in FIGS. 14 and 15, milling head 12 is substantially the same width as base 14. In some applications, such as in mining hard rock, a narrower milling head 12 and milling tool 16 may be desired to apply greater force to a smaller area being impacted by cutting tools 17. Similarly, selection of the number of pairs of rotors 20 may be made depending on the desired size of milling head 12, the formation to be cut, and for other engineering considerations, such as to achieve greater force without raising the center of mass, thereby maintaining a minimum bending moment on the milling machine 10. Additionally, additional pairs of rollers 20 may allow for greater force per unit cutter length along cutting tools 17.”), Except ‘Yao is silent regarding stating a specific size of: at least 200 mm, in terms of absolute value.
However, it has been held where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984); MPEP 2144.04(IV)(A).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify/optimize the dimension of the ports in ‘Yao to have at least 200 mm, in terms of absolute value, because it has been held where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984); MPEP 2144.04(IV)(A).
Further, the Examiner additionally notes that "[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions." In re Williams, 36 F.2d 436, 438 (CCPA 1929); MPEP 2144.05(II)(A).
wherein the compensation arrangement is operable in a first operating mode and at least one second operating mode (‘Yao, Para 0028, “The following description supplies specific details in order to provide a thorough understanding. Nevertheless, the skilled artisan would understand that the milling machine and methods of making and using the machine can be implemented and used without employing these specific details. Indeed, the milling machines and associated methods can be modified and used in conjunction with any apparatus, systems, components, and/or techniques conventionally used in the mining or construction industries. Additionally, while the description below focuses on implementing the milling machines and milling in horizontal and vertical directions, it could be implemented for milling in any desired direction.”),
wherein the first operating mode is adapted to a vertical orientation of the longitudinal axis, and
wherein the at least one second operating mode is adapted to a horizontal orientation of the longitudinal axis (‘Yao, Para 0061, “In some embodiments, any number of vibratory milling machines 10 may be used on a single piece of equipment (i.e., excavator) by using multiple support arms. Using multiple milling machines on a single piece of equipment allows multiple milling actions to occur in one work area, either synchronously or asynchronously. For example, one vibratory milling machine 10 on an excavator may cut horizontally on a floor or ceiling surface while another vibratory milling machine 10 on the same excavator may cut vertically on a facing wall. In other example, a large rotary array on a tunnel boring machine could contain multiple milling machines.”), and
wherein the attachment is operable and moveable along the surface to be processed independently of control commands from the handling device (‘Yao, Para 0046, “When it is desired to change the orientation of the milling machine relative to the support arm, the actuator 104 can be actuated. This places the operator in complete control of the orientation and use of milling machine 10. In some embodiments, connection points 100 may be in any location for effective coupling and manipulation by a milling machine or other machine used with vibratory milling machine 100.”).
Regarding Claim[s] 22, ‘Yao discloses all the claim limitations including: wherein in the operating range the compensation arrangement compensates for positional changes of the attachment interface of the handling device along the longitudinal axis (‘Yao, Abst).
Regarding Claim[s] 23, ‘Yao discloses all the claim limitations including: wherein in the operating range of the compensation arrangement, compensating movements along the longitudinal axis of at least 300 mm, in terms of absolute value, are enabled (‘Yao, Para 0051, “ In some embodiments, milling head 12 may be wider or narrower, depending on the desired application. For example, as shown in FIG. 13, milling head 12 may occupy only a portion of the width of base 14, while in FIGS. 14 and 15, milling head 12 is substantially the same width as base 14. In some applications, such as in mining hard rock, a narrower milling head 12 and milling tool 16 may be desired to apply greater force to a smaller area being impacted by cutting tools 17. Similarly, selection of the number of pairs of rotors 20 may be made depending on the desired size of milling head 12, the formation to be cut, and for other engineering considerations, such as to achieve greater force without raising the center of mass, thereby maintaining a minimum bending moment on the milling machine 10. Additionally, additional pairs of rollers 20 may allow for greater force per unit cutter length along cutting tools 17.”), Except ‘Yao is silent regarding stating a specific size of: at least 300 mm, in terms of absolute value.
However, it has been held where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984); MPEP 2144.04(IV)(A).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify/optimize the dimension of the ports in ‘Yao to have at least 300 mm, in terms of absolute value, because it has been held where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984); MPEP 2144.04(IV)(A).
Further, the Examiner additionally notes that "[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions." In re Williams, 36 F.2d 436, 438 (CCPA 1929); MPEP 2144.05(II)(A).
Regarding Claim[s] 24, ‘Yao discloses all the claim limitations including: wherein the compensation arrangement is controlled in such a way that a substantially constant contact pressure is available in the operating range, wherein a resulting contact pressure in the operating range varies by a maximum of 15% (‘Yao, Para 0046, “The structures of the support arm 18 and the base 14 are illustrated most clearly in FIGS. 1-3, wherein the base 14 is illustrated as a heavy weldment made of high-strength steel able to withstand the extremely high forces created in automated milling operations. As illustrated in FIGS. 2 and 3, the base 14 is provided with a connection points 100 that may be used to receive a pivot pin or bolt to pivotally attach the base 14 and support arm 18 of a milling machine, back hoe, or other piece of excavating equipment (not shown) with which milling machine 10 may be used. Connection points 100 may also be coupled to actuator 104 that may be anchored to support arm 18. Thus, as the support arm is moved, the vibratory milling machine 10 can be moved to any desired location so that the milling tool 16 contacts the rock or other workpiece being machined. When it is desired to change the orientation of the milling machine relative to the support arm, the actuator 104 can be actuated. This places the operator in complete control of the orientation and use of milling machine 10. In some embodiments, connection points 100 may be in any location for effective coupling and manipulation by a milling machine or other machine used with vibratory milling machine 100.” Changing the orientation of the milling machine allows an adjustment of contact pressure. Abst, “A continuous mining method includes operating a vibratory milling machine having a milling head, a base, and a milling tool to oscillate the milling head in a substantially linear reciprocating fashion relative to the base to move the milling tool along a milling axis; and advancing the vibratory milling machine in a work piece in a cutting direction and wherein milling axis is oriented at an attack angle relative to the cutting direction, the attack angle being between about 0 and about 40 degrees.” ).
Hence, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide ‘Yao with a contact pressure in the range to vary a maximum of 15% is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. ‘Yao allows an attack angle adjustment between 0 and 40 degrees, 11% over 360 degrees.
Further, it would be Obvious to try, choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
Regarding Claim[s] 25, ‘Yao discloses all the claim limitations including: wherein the compensation arrangement comprises at least one working cylinder extending in the longitudinal direction, wherein the working cylinder is arranged to be connected to a pressure medium supply of the handling device, wherein the regulation of an actual pressure in the working cylinder at a present supply pressure is effected by a pressure regulation, which is provided in the attachment itself (‘Yao, Fig 1, #104 (hydraulic actuator), Para 0033, “Vibratory milling machine 10 may be attached to support arm 18 through any known connection points 100. A hydraulic actuator 104 may be attached to one of connection points 100 and support arm 18 to allow manipulation of vibratory milling machine 10. Connection points 100 may be located on any portion and in any orientation of vibratory milling machine 10 to allow different attack angles and to maximize any intended mining operations. In some embodiments, support arm 18 may be telescoping to allow effective manipulation of vibratory milling machine 10 to allow for continuous cuts on a plane.”).
Regarding Claim[s] 26, ‘Yao discloses all the claim limitations including: wherein the compensation arrangement further comprises a longitudinal guide for the processing head, which guides a movement of the processing head in the longitudinal direction independently of an actual orientation of the attachment (‘Yao, Clm 17, “In a vibratory milling machine having a milling tool carried on a vibratory housing, the method of milling comprising: moving the milling tool in a substantially linear reciprocating manner along a milling axis by rotating at least two eccentrically weighted rotors within the housing to create vibratory forces, wherein the housing is resiliently secured to a supporting base; confining the housing to move in a substantially linear direction along a pair of channels of the supporting base; and advancing the vibratory milling machine in a cutting direction while moving the milling tool in a linear reciprocating manner along the milling axis in which the milling axis is disposed at an attack angle relative to the cutting direction, the attack angle being between about 0 degrees and about 40 degrees.”).
Regarding Claim[s] 28, ‘Yao discloses all the claim limitations including: wherein the longitudinal guide comprises a guide frame, in which a profile carriage is arranged that is movable relative to the guide frame and that is supported on the guide frame, and wherein the processing head is arranged at one end of the profile carriage (‘Yao, Abst, “A continuous mining method includes operating a vibratory milling machine having a milling head, a base, and a milling tool to oscillate the milling head in a substantially linear reciprocating fashion relative to the base to move the milling tool along a milling axis; and advancing the vibratory milling machine in a work piece in a cutting direction and wherein milling axis is oriented at an attack angle relative to the cutting direction, the attack angle being between about 0 and about 40 degrees.”).
Regarding Claim[s] 30, ‘Yao discloses all the claim limitations including: wherein the processing head (‘Yao, #12 (milling head/ processing head)) is connected to one end of the compensation arrangement (‘Yao, #14 (base/ compensation arrangement)) via a joint arrangement (‘Yao, the two connection points of #100 are a joint arrangement), and wherein at least one biasing element is provided, which urges the processing head towards a desired orientation (‘Yao, #104 (hydraulic actuator) biases the head to desired orientation).
Regarding Claim[s] 37, ‘Yao discloses all the claim limitations including: handling device for material-removing processing or smoothing processing walls or ceilings (‘Yao,, Fig 16, Para 0026, is capable of horizontal and vertical directions/ walls and ceilings. The term “smoothing processing” suggest a term of degree. However, applicant is not defining any finishes, roughness, surface peaks and valleys. ‘Yao is capable of processing wall or ceiling that would be considered smooth.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide a smooth wall and ceiling since it is a matter of design choice to finish the walls or celings to a desired amount. A change in shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 357 F2d 669, 149 USPQ 47 (CCPA 1966).
Claim 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2009/0127918 Yao et al. (‘Yao hereafter), and further in view of U.S. 2016/0158942 Augenbraun et al. (‘Augenbraun hereafter).
Regarding Claim[s] 29, ‘Yao discloses all the claim limitations except is silent regarding: wherein the compensation arrangement further comprises a visual indicator for visualization of a current working position of the processing head in the operating range.
However, ‘Augenbraun teaches: Para 0034, “In some embodiments, a robot 100 may comprise one or more distance sensors 37. A distance sensor 37 may include sensors such as fixed (single beam) or rotating (sweeping) Time-of-Flight (TOF) or structured light based laser rangefinders, 3D High Definition LiDAR, 3D Flash LIDAR, 2D or 3D sonar sensors and one or more 2D cameras. Further, a distance sensor 37 may also include Passive thermal infrared sensors, Photocell or reflective sensors, Radar sensors, Reflection of ionising radiation sensors, Sonar sensors, such as active or passive, Ultrasonic sensors, Fiber optics sensors, Capacitive sensors, Hall effect sensors, or any other sensor able to detect the presence of nearby objects and surfaces without any physical contact. Generally, a distance sensor 37 may comprise any type of sensor which is able to provide information which describes the distance between the distance sensor 37 and the detected object or surface.” Para 0067, “In preferred embodiments, one or more of the following exemplary sensor configurations may contribute to a single 3D obstacle probability map of the environment, with desired probability scaling factors: a depth camera distance sensor 37 mounted on the robotic arm 200; a set of arm touch sensors 36 mounted to the end of the robotic arm 200 that measure pressure applied to an accessory 300, such as a cleaning pad or other surface interface, mounted to an accessory mount 221; a set of arm touch sensors 36 along the arm 200, including one at one or more joints 201; a set of body touch sensors 35 on the periphery of the body 11; and/or a binary sensor that detects a drop off of the floor, such as would occur at a flight of stairs.”
Hence, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide ‘Yao with a visual indicator for visualization of a current working position of the processing head in the operating range as taught by ‘Augenbraun in order to provide a depth and distance sensor (‘Augenbraun, Para 0067).
Allowable Subject Matter
Claim 27 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art neither anticipates nor renders obvious the combination of limitations found in claim 27 with the limitations of claim 26 and 21. Specifically, the prior art does not teach the combination of limitations wherein "wherein the longitudinal guide is arranged as a roller guide.”
The closest prior art is as cited above (‘Yao and ‘Augenbraun).
‘Yao and ‘Augenbraun do not teach a longitudinal guide arranged as a roller guide. Neither of these references anticipates nor renders obvious the combinations of limitations mentioned above. To modify the prior art would require improper hindsight and furthermore would destroy the workability of the references cited.
Claim 31 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art neither anticipates nor renders obvious the combination of limitations found in claim 31 with the limitations of claim 30 and 21. Specifically, the prior art does not teach the combination of limitations wherein "wherein the joint arrangement is arranged as a gimbal joint arrangement and provides two pivot axes, which are oriented perpendicular to each other and perpendicular to the longitudinal axis.”
The closest prior art is as cited above (‘Yao and ‘Augenbraun).
‘Yao and ‘Augenbraun do not teach a gimbal joint. Neither of these references anticipates nor renders obvious the combinations of limitations mentioned above. To modify the prior art would require improper hindsight and furthermore would destroy the workability of the references cited.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
U.S. 2005/0064804 Cecil et al. (‘Cecil hereafter), teaches a surface preparation device, apparatus mounted, teaches cutting and milling, walls and ceilings.
U.S. 3,324,493 P. Kraft (‘Kraft hereafter), Filed 10/14/1965; teaches a brushing and polishing machine.
Examiner encourages Applicant to fill out and submit form PTO-SB-439 to allow internet communications in accordance with 37 CFR 1.33 (MPEP 02.03). Should the need arise to perfect applicant-proposed or examiner’s amendments, authorization for e-mail correspondence would have already been authorized and would save time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAWRENCE AVERICK whose telephone number is (571)270-7565. The examiner can normally be reached 8:00AM - 3:00PM M- F ET.
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/LAWRENCE AVERICK/ Primary Examiner, Art Unit 3799
08/14/2026
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