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 .
Response to Amendment
The amendment filed 8 July 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: Replacement Fig. 3.
Specifically, there is no support in the original disclosure for the top plate 28 of the lower frame 26 to also be a “friction material 32”, a “coating 34” and a “debris shield 36” as now shown in Fig. 3. Further, there is no support in the original disclosure that the structure now denoted by reference character 38 in Fig. 3 is a fastener that couples a debris shield to a portion of the lower frame 26.
Applicant is required to cancel the new matter in the reply to this Office Action.
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 following must be shown or the feature(s) canceled from the claim(s):
“a portion of the lower frame is coupled with a low coefficient of friction material” as set forth in claims 1 and 8. Specifically, the drawings do not show a friction material that is a separate element from the portion of the lower frame.
“a coating applied to the portion of the lower frame” as set forth in claims 3, 9 and 17. Specifically, the drawings do not show a coating that is a separate element from the portion of the lower frame.
“a debris shield coupled to the portion of the lower frame with one or more of (a) fasteners and (b) adhesive” as set forth in claims 4, 10 and 18. Specifically, the drawings do not show a debris shield that is a separate element from the portion of the lower frame. Nor do the drawings show fasteners or adhesive coupling this debris shield to the portion of the lower frame.
“a first top surface section and a second top surface section is coupled with a low coefficient of friction material” as set forth in claim 14. Specifically, the drawings do not show a friction material that is a separate element from the first top surface section and the second top surface section.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters 28, 32, 34 and 36 in Fig. 3 have all been used to designate what appears to be the same surfaces.
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. No new matter should be entered.
Claim Rejections - 35 USC § 112
4. 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.
Claims 1-18 are 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.
Regarding claims 1 and 8, the specification fails to adequately describe the limitation “a portion of the lower frame is coupled with a low coefficient of friction material” in such a way as to reasonably convey to one skill in the art that the inventor, at the time the application was filed, had possession of the claimed invention. Specifically, the specification fails to describe how the “friction material” is to be arranged and configured with respect to the “portion of the lower frame” so as to be coupled therewith in some manner. Moreover, the drawings fail to show any relationship between the “friction material” and the “portion of the lower frame” inasmuch as the drawings fail to show the claimed “friction material”.
Regarding claim 14, the specification fails to adequately describe the limitation “each of a first top surface section and a second top surface section is coupled with a low coefficient of friction material” in such a way as to reasonably convey to one skill in the art that the inventor, at the time the application was filed, had possession of the claimed invention. Specifically, the specification fails to describe how the “friction material” is to be arranged and configured with respect to “each of a first top surface section and a second top surface section” so as to be coupled therewith in some manner. Moreover, the drawings fail to show any relationship between the “friction material” and “a first top surface section and a second top surface section” inasmuch as the drawings fail to show the claimed “friction material”.
7. 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 15 are 18 is 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.
Regarding claim 15, the limitation “wherein the first top surface is further from a swing tower coupled than the second top surface is further from the swing tower” renders the claim indefinite because it is unclear what is being claimed.
Regarding claim 18, the limitation “a debris shield coupled directly to one or more of the first top surface section of the lower frame…” (emphasis added) renders the claim indefinite because only a single location for coupling is set forth in the claim (i.e., more of what?).
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.
Claims 1-5, 8-11, 14, 17 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sato et al. (JPH11-2682671 A; cited by Applicant; hereinafter “Sato”).
Regarding claim 1, Sato discloses a utility vehicle (paragraph [0002]) comprising: a ground engagement element (track undercarriage shown in Figs. 1 and 2) movably supported by a frame (unlabeled central frame that abuts fender 11 in Figs. 1 and 2) and implicitly driven by a motor to drive movement of the utility vehicle (evident from at least paragraph [0002]), wherein the ground engagement element comprises: a plurality of track shoes (implicit components of the track 10 as evident from at least paragraph [0002]; shown in Fig. 6(b)), a plurality of track links (implicit components of the track 10 as evident from at least paragraph [0002]; shown in Fig. 6(b)), a drive sprocket (implicit component of the undercarriage as evident from at least paragraph [0002]), an idler wheel (implicit component of the undercarriage as evident from at least paragraph [0002]), a roller (Figs. 1 and 2), and a lower frame 12, wherein a portion of the lower frame is coupled with a low coefficient of friction material (mudguard 3 is formed of “non-adhesive material” that is preferably “a polyolefin-based plastic” per paragraph [0010]) and shown in Figs. 1 and 2 OR the “TFEO (fluorinated Teflon oligomer) plating” described in paragraph [0005]), wherein the low coefficient friction material defines at least a portion of an exposed debris-contacting surface (i.e., an exposed debris-contacting surface of the mudguard 3) of the lower frame (Figs. 1 and 2) and has a static coefficient of friction of 0.25 or less (both the “polyolefin-based plastic” material described in paragraph [0010] and the “TFEO (fluorinated Teflon oligomer) plating” material described in paragraph [0005] have a static friction coefficient of 0.25 or less), the low coefficient of friction material implicitly being measured against a reference material.
Regarding claim 2, Sato further discloses the utility vehicle comprises an excavator, a crawler dozer, a crawler loader, a tractor, or a compact skid loader (paragraph [0002]).
Regarding claim 3, Sato further discloses the low coefficient of friction material comprises a coating applied directly to the portion of the lower frame (paragraph [0005] teaches the use of a “TFEO (fluorinated Teflon oligomer) plating”).
Regarding claim 4, Sato further discloses the low coefficient of friction material comprises a debris shield 3 directly coupled to the portion of the lower frame with fasteners 4 (Figs. 1 and 2).
Regarding claim 5, Sato further discloses the portion of the lower frame comprises a first top surface (radially extending outboard surface of 12), a second top surface (axially extending surface of 12), and a third top surface (angled surface of 12 between the “first top surface” and the “second top surface” as shown in Figs. 1 and 2).
Regarding claim 8, Sato discloses a ground engagement element (track undercarriage shown in Figs. 1 and 2) for a utility vehicle (paragraph [0002]) comprising: a plurality of track shoes (implicit components of the track 10 as evident from at least paragraph [0002]; shown in Fig. 6(b)), a plurality of track links (implicit components of the track 10 as evident from at least paragraph [0002]; shown in Fig. 6(b)), a drive sprocket (implicit component of the undercarriage as evident from at least paragraph [0002]), an idler wheel (implicit component of the undercarriage as evident from at least paragraph [0002]), a roller (Figs. 1 and 2), and a lower frame 12, wherein a surface portion of the lower frame is coupled with a low coefficient of friction material (mudguard 3 is formed of “non-adhesive material” that is preferably “a polyolefin-based plastic” per paragraph [0010]) and shown in Figs. 1 and 2 OR the “TFEO (fluorinated Teflon oligomer) plating” described in paragraph [0005]), and wherein the low coefficient friction material defines at least a portion of an exposed debris-contacting surface (i.e., an exposed debris-contacting surface of the mudguard 3) of the lower frame (Figs. 1 and 2) and has a static coefficient of friction of 0.25 or less (both the “polyolefin-based plastic” material described in paragraph [0010] and the “TFEO (fluorinated Teflon oligomer) plating” material described in paragraph [0005] have a static friction coefficient of 0.25 or less), the low coefficient of friction material implicitly being measured against a reference material.
Regarding claim 9, Sato further discloses the low coefficient of friction material comprises a coating applied directly to the surface portion of the lower frame (paragraph [0005] teaches the use of a “TFEO (fluorinated Teflon oligomer) plating”).
Regarding claim 10, Sato further discloses the low coefficient of friction material comprises a debris shield 3 coupled directly to the surface portion of the lower frame with fasteners 4 (Figs. 1 and 2).
Regarding claim 11, Sato further discloses the surface portion of the lower frame comprises a first top surface (axially extending surface of 12) and a second top surface (angled outboard surface of 12 adjacent to the axially extending surface of 12 as shown in Figs. 1 and 2).
Regarding claim 14, Sato discloses a tracked vehicle (paragraph [0002]) comprising: a lower frame 12, wherein the lower frame comprises: a first top surface (angled outboard facing surface of 12) and a second top surface (axially extending surface of 12 shown in Figs. 1 and 2) adjacent to the first top surface (Figs. 1 and 2), wherein each of a first top surface section of the first surface and a second top surface section of the second top surface is directly coupled with a low coefficient of friction material (mudguard 3 is formed of “non-adhesive material” that is preferably “a polyolefin-based plastic” per paragraph [0010]) and shown in Figs. 1 and 2 OR the “TFEO (fluorinated Teflon oligomer) plating” described in paragraph [0005]), and wherein the low coefficient friction material defines at least a portion of an exposed debris-contacting surface (i.e., an exposed debris-contacting surface of the mudguard 3) of the lower frame (Figs. 1 and 2) and has a static coefficient of friction of 0.25 or less (both the “polyolefin-based plastic” material described in paragraph [0010] and the “TFEO (fluorinated Teflon oligomer) plating” material described in paragraph [0005] have a static friction coefficient of 0.25 or less), the low coefficient of friction material implicitly being measured against a reference material.
Regarding claim 17, Sato further discloses the low coefficient of friction material comprises a coating applied directly to one or more of the first top surface section and the second top surface section of the lower frame (paragraph [0005] teaches the use of a “TFEO (fluorinated Teflon oligomer) plating”).
Regarding claim 18, Sato further discloses the low coefficient of friction material comprises a debris shield 3 coupled directly to the first top surface section of the lower frame with fasteners 4 (Figs. 1 and 2).
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.
Claims 7, 13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Sato.
Although Sato, as noted above, discloses the use of a low coefficient of friction material, Sato fails to expressly disclose the use of PTFE or nylon for the low coefficient friction material.
Nonetheless, to have used PTFE or nylon for the low coefficient friction material would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention as notoriously well-known alternative low coefficient friction materials that would have a reasonable expectation of success in providing desired material and physical properties that would help prevent the adhesion of mud. Official Notice is hereby given.
Claims 6, 12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Sato in view of Hayakawa et al. (JP 2000-135992 A; previously cited by Applicant; hereinafter “Hayakawa”).
Although Sato discloses the tracked utility vehicle can be an excavator (paragraph [0002]), Sato fails to expressly disclose such vehicle having the claimed swing tower coupled with the lower frame.
Hayakawa, however, teaches an excavator that has the claimed swing tower coupled with the lower frame (Fig. 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the tracked utility vehicle of Sato so that it includes a swing tower coupled with the lower frame, such as taught by Hayakawa, with a reasonable expectation of success in allowing the excavator’s boom to pivot side-to-side enabling it to reach and work on areas that would otherwise be difficult to access. Further, such a modification to Sato would result in the first top surface to be further from the swing tower than the second top surface, and the third top surface to be in between the first top surface and the second top surface per claim 6, the first top surface to be further from the swing tower than the second top surface wherein the first top surface is adjacent to the second top surface per claim 12, and the first top surface to be further from the swing tower coupled than the second top surface to be further from the swing tower per claim 15 (in the same manner that Applicant’s invention is considered to be meet this nonsensical limitation).
Response to Arguments
Applicant's arguments filed 8 July 2026 have been fully considered but they are not persuasive.
In response to Applicant’s argument that replacement Fig. 3 now shows the claimed “low coefficient of friction material” including embodiments in which the low coefficient of friction material is provided as a coating and/or debris shield, the Examiner respectfully disagrees and notes that Fig. 3 was merely amended to include references characters purporting to denote the claimed elements (i.e., low coefficient of friction material, coating, and the debris shield) which are still not shown.
In response to Applicant’s arguments that Applicant’s specification provides support for the claimed subject matter of claims 1, 8 and 14, the Examiner respectfully disagrees and again notes, with respect to claims 1 and 8, that the specification fails to describe how the “friction material” is to be arranged and configured with respect to the “portion of the lower frame” so as to be coupled therewith in some manner. Moreover, the drawings fail to show any relationship between the “friction material” and the “portion of the lower frame” inasmuch as the drawings fail to show the claimed “friction material”. Further, with respect to claim 14, the specification fails to describe how the “friction material” is to be arranged and configured with respect to “each of a first top surface section and a second top surface section” so as to be coupled therewith in some manner. Moreover, the drawings fail to show any relationship between the “friction material” and “a first top surface section and a second top surface section” inasmuch as the drawings fail to show the claimed “friction material”.
In response to Applicant’s argument that “Sato’s mudguard is a separate structural component”, it is noted that the independent claims do not preclude Sato’s mudguard from being considered the claimed “low coefficient friction material” that is coupled to a portion of the lower frame. In fact, it is clear that Applicant’s claimed “low coefficient friction material” (e.g., a “coating” per at least claim 3, a “debris shield” per at least claim 4) is also a separate structural component that is coupled to the lower frame.
In response to Applicant’s argument that “the invention therefore concerns treatment of selected lower-frame surfaces rather than installation of a separate mudguard component”, note that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Applicant is invited to explain how Applicant’s claimed “debris shield” is considered to be a “treatment of selected lower-frame surfaces rather than installation of a separate mudguard component”. Nonetheless, in addition to the use of a mudguard being a low coefficient of friction material coupled with a portion of the lower frame, Sato also expressly discloses a so-called “treatment” or coating applied directly to the portion of the lower frame (paragraph [0005] teaches the use of a “TFEO (fluorinated Teflon oligomer) plating”).
In response to Applicant’s argument that “Sato fails to disclose the claimed first and second top surface sections”, the Examiner respectfully disagrees. As noted above, Sato discloses a first top surface (angled outboard facing surface of 12) and a second top surface (axially extending surface of 12 shown in Figs. 1 and 2) adjacent to the first top surface (Figs. 1 and 2).
In response to Applicant’s argument that “The Office relies upon alternative disclosures rather than a single anticipatory embodiment”, it is unclear what Applicant is attempting to argue. As is clear from the rejection of the independent claims, either disclosed embodiment of Sato reads upon the independent claims. With respect to the dependent claims, it is further clear which of these disclosed embodiments reads upon the respective dependent claims. There is no requirement that a single embodiment read upon all of the claims.
In response to Applicant’s argument that “the amended coefficient-of-friction limitation is not disclosed”, the Examiner respectfully disagrees and notes that both the “polyolefin-based plastic” material described in paragraph [0010] and the “TFEO (fluorinated Teflon oligomer) plating” material described in paragraph [0005] have a static friction coefficient of 0.25 or less as would be understood by one of ordinary skill in the art. Further with respect to Applicant’s argument that Sato does not disclose the static friction coefficient being “measured against a reference material”, Applicant is reminded that such is implicit in determining the static coefficient of friction.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 KIP T KOTTER whose telephone number is (571)272-7953. The examiner can normally be reached 9:30-6 EST Monday-Friday.
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, Samuel (Joe) J Morano can be reached at (571)272-6684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kip T Kotter/Primary Examiner, Art Unit 3615
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