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.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 23 June 2026 is acknowledged. The traversal is on the ground(s) that the identified invention Groups and not properly restrictable from one another due to closely related aspects of the same pavement testing apparatus and there would be no search burden on the Examiner, since a search for all Groups would be substantially coextensive. This is not found persuasive because since each of the identified Groups are classified separately, requiring individual search in each classification regarding specifically recited limitations not present in each of the Groups. Claim 12 of Group II clearly requires measuring of actual displacement velocity as functions of time and subsequent determinations of actual displacement and a desired displacement as functions of time and provided corrections based on difference signals, while Groups I and III have no such requirements, rendering Group II clearly patentably distinct from Groups I and II. Applicant then argues against the restriction by pointing to aspects of the instant filed specification, such as sinusoidal aspects. However, limitations of the filed specification are not recited in Grouped invention claims, and thus are not a factor in regards to the restriction requirement between the Groups. As such, the Grouped inventions clearly have different design, function and mode of operation. Applicant then argues Group III, requiring specific calculations of Fourier transform analysis, and again argues aspects of the instant filed specification. Group III invention thus clearly has a different mode of operation and function than of Groups I and II. Lastly, Applicant argues that there is no se4roius search burden, since, allegedly, the three classifications identified by the Examiner are all subclasses of G01N 2203, and since the Examiner did not identify any specific prior art search that would be required for one group but not the others, or other specific search inquiries that would be required. The Examiner respectfully disagrees. Each of the grouped inventions are classified separately, and each of the identified Groups have specific limitations not present in each other, resulting in the separately classification, and thus would be a search burden on the Examiner to search each separate classification and associated limitations with in each of the identified groups within each of the three separate classifications, thus there is no overlap as Applicant asserts.
The requirement is still deemed proper and is therefore made FINAL.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “mounted transducer that is magnetically coupled to the apparatus for detecting wheel location” recited in instant dependent claim 6, and the “light array” recited in instant dependent claim 7 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 and 6 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 sample testing area" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites that a mounted transducer is magnetically coupled to the apparatus for detecting wheel location, however, the instant filed specification fails to describe and/or define the transducer, and exactly what it constitutes and associated measurements to determine the wheel location, rendering the claim unclear and indefinite.
Claim Rejections - 35 USC § 102
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) 1-4 and 8-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 5,987,961 to Harris et al. Harris et al. disclose an apparatus (10) for testing paving samples (see entire reference) including a base/cabinet (12); a paving sample tray (18a,b) (see Fig. 2); a roller (68a,b) configured for imparting compressive forces to a sample carried by the sample tray; an arm (66a,b) configured for moving the roller from a stowed position to an in-use position where the roller contacts the sample (see Figs 1 and 3); a cylinder assembly including pneumatic cylinder and piston (106) therein for supplying pressure forces to the arm to move the arm from the stowed position to the in-use position (see col. 8, lines 8-25), wherein a depth of travel of the arm is inherently limited by the sample, whereby as the sample is compressed, the depth of travel inherently increases; a measurement device (98) in communication with the cylinder for determining an amount of travel of the arm to thus determine an amount of compression of the sample (see Fig. 4 and col. 7, lines 47-67); a control system (see Fig. 5) configured to alter a speed of the arm in order to adjust a movement profile of the roller to match a predetermined profile (see col. 1, lines 51-60) (as recited in instant independent claim 1); wherein the base defines a sample testing area for receiving sample tray (see Figs. 1 and 2) (as recited in instant dependent claim 2); wherein the sample testing area defines a water bath/tank (14) for submerging the sample (as recited in instant dependent claim 3); wherein the arm defines a pivot about the paving sample tray and the base, and the cylinder assembly extends between the respective pivot points between the sample tray and the base (see Fig. 3 and col. 7, lines 7-17) (as recited in instant dependent claim 4); wherein the arm is configured for receiving one or more weights (70a,b) for adding compressive forces to the roller (see col. 6, lines 27-56) (as recited in instant dependent claim 8); wherein compressive forces are selectively provided by the cylinder assembly, which can be engaged and disengaged (as recited in instant dependent claim 9); further communicating with a computing device (116) configured to receive input from an operator to control the device (see col. 8, line 47 to col. 9, line 59) (as recited in instant dependent claim 10); wherein the cylinder inherently limits a rate of decent/speed of motion of the arm from the stowed position to the in-use position, whereby the impact of the roller onto the sample is damped (as recited in instant dependent claim 11).
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) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 5,987,961 to Harris et al. as applied to claim 1 above, and further in view of U.S. 2008/0105317 to Litecky et al. Harris et al. disclose an apparatus for testing paving samples having all of the elements stated previously, including a linear variable differential transformer (LVDT) sensor as the measurement device. Harris et al. do not explicitly disclose the measurement device being a hall effect sensor. As a preliminary matter, an sensor which provides an electrical signal which changes in value in accordance with the position, such as LVDT sensors, hall effect sensors, optical encoders, etc. are well known to those of ordinary skill in the art as of the effective filing date, and suitable for application in the instant invention based on design choice, costs, desired accuracy and other engineering considerations, and obvious to one having ordinary skill in the art as of the effective filing date to employ hall effect sensor modifying the apparatus disclosed by Harris et al. The instant filed specification fails to disclose any specific engineering or scientific reasons for employing a hall effect sensor, as opposed to other types of well known position sensors, and it appears the instant invention would function equally well with any type of well known position sensor, such as the LVDT sensor disclosed by Harris et al., and, as such, it would have been obvious to one of ordinary skill in the art as of the effective filing date to employ a hall effect position sensor associated with the cylinder to measure position/displacement. Evidence of a hall effect sensor to measure position/displacement is given by Litecky et al. Litecky et al. disclose a testing system employing a positional sensor, being a hall effect sensor, to measure the position of a moveable element (14), as well as magnetostrictive, LVDT, optical encoder, or any other position determining device (see para 0083 and 0103) to measure the position of opening area and to subsequently employ with other measurements, and hall effect sensors, as well as other contactless position measurement sensors provide zero mechanical wear and an exceptionally long lifespan, and their solid-state design makes them immune to dust, dirt and moisture and reliable precision in extreme temperature and high-vibration, as is well known to those of ordinary skill in the art as of the effective filing date.
As best understood, claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 5,987,961 to Harris et al. as applied to claim 1 above, and further in view of U.S. 5,356,238 to Musil et al. Harris et al. disclose an apparatus for testing paving samples having all of the elements stated previously. Harris et al. do not explicitly disclose mounting a transducer that is magnetically coupled to the apparatus for detecting wheel location. Musil et al. disclose a pavement related system (see entire reference) employing a motion pickup device (48) to sense movement of wheels (37 and 38), which is a magnetic pickup device mounted adjacent a gear associated with the wheels (see col. 8, lines 50-68). It would have been obvious to one having ordinary skill in the art as of the effective filing date of the instant invention to modify the apparatus disclosed by Harris et al., employing the teachings of Musil et al., thus providing a magnetically coupled sensor to the wheel to provide electrical pulses which are processed and counted to an operator console, to measure revolutionary position of the wheel and determine potential slippage (see col. 9, lines 20-31).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 5,987,961 to Harris et al. as applied to claim 1 above, and further in view of U.S. 4,818,866 to Weber. Harris et al. disclose an apparatus for testing paving samples having all of the elements stated previously. Harris et al. do not explicitly disclose a light array configured for sending a light signal around the periphery of the apparatus, wherein, when the light signal is interrupted, the control system directs the apparatus to cease operations, as recited in instant dependent claim 7. However, Harris et al. do disclose ceasing operation of the apparatus, as an emergency shutoff (128), by the control system in the event of a serious problem (see col. 9, lines 30-40). As such, it would have been obvious to modify the apparatus disclosed by Harris et al., to employ some type of safety system employing light beams or other means to cease operations automatically in the event an unauthorized individual approaches the apparatus by breaking the light beam signal. Such types of light beam systems are well known to those of ordinary skill in the art, as evidenced by Weber. Weber discloses an optical detection system to enable and/or disable operations of an industrial machine/apparatus (see entire reference) employing light beams via transmitters (120A-L, 105) and receivers about the machine/apparatus (see col. 1, lines 17-53, col. 4, line 45-col. 5, line 15) to allow for a control system with a microprocessor (150) to determine an intrusion by the blocking/breaking of the light beams. It would have been obvious to one having ordinary skill in the art as of the effective filing date of the instant invention to modify the emergency shutoff system disclosed by Harris et al., employing the teachings of Weber, thus providing the apparatus to have a variable sensitivity based on a size of an object associated with the apparatus’ operation, as well as to trigger the device to stop operation of the apparatus to prevent operator injury (see col. 1, lines 48-53 and col. 14, lines 40-59).
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.
Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. U.S. 11,959,889. Although the claims at issue are not identical, they are not patentably distinct from each other because instant independent claim 1 is a broader recitation of claim 1 of the ‘889 patent’s measurement device further includes: “determining a difference between a movement profile of the roller and a predetermined profile” and instant independent claim 1 does not include these limitations. Instant dependent claims 2-11 identically match limitations 2-11 of the ‘889 patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure include US 2014/0293039 to Appleyard et al., U.S. 2005/0001573 to Miller et al. which discloses aspects of using light beams that are interrupted to control systems and U.S. 5,641,901 to Powell which discloses a pavement testing apparatus. Applicant is invited to review PTO form 892 accompanying this Office Action listing Prior Art relevant to the instant invention cited by the Examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner John Fitzgerald whose telephone number is (571) 272-2843. The examiner can normally be reached on Monday-Friday from 7:00 AM to 3:30 PM E.S.T. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor John Breene, can be reached at telephone number (571) 272-4107. 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. The central 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.
/JOHN FITZGERALD/Primary Examiner, Art Unit 2855
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