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
Applicant's arguments filed 05/12/2026 with respect double patenting rejection have been fully considered but they are not persuasive.
The Applicant argued that “the amendments to Claim 10 overcome the double patenting rejection”.
In response to this argument, the amendments to claim 10 are narrowing claim 10, but claim 10 still be rejected under double patenting.
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 10 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No.12041888B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the present application (18701344) claim is narrower in at least one aspect and recites additional specific features not claimed in U.S. Patent No.12041888B2 claim.
For independent claim 10:
Regarding the narrowing aspect of the present application claims, the following comparison between the present application claims and the co-pending application claims highlights (see underlined features in the present application claims) what elements have been excluded in the presentation of the co-pending application claims.
U.S. Patent No.12041888B2, claim 3 depends from claim 1.
Present application (18701344) claim 10
Claim 1 An indexable cutting tooth assembly for tree stump grinding, said assembly comprising:
a shank and having first and second ends, a head attached to said first end of said shank, said head including cutting tip,
a retainer operatively secured to said second end of said shank, and a hermetic spring operatively disposed on said shank between said retainer and said head, said hermetic spring being fabricated from an elastomeric material, wherein said hermetic spring has a nose, said nose comprising a tapered point which forms a fluid tight seal with a holder
claim 3. The assembly of claim 1, wherein said hermetic spring has an annular foot, a bellows section disposed between said nose and said foot.
A tree stump grinding tooth assembly comprising:
a shank extending along a longitudinal tooth axis, said shank being having first and second ends, a head attached to said first end of said shank and screw threads formed in said second end of said shank, said head including a carbide cutting tip, said cutting tip having a circular periphery centered about said tooth axis and defining an outer cutting edge, said cutting tip having a tooth face set inside said outer cutting edge,
a nut operatively threaded onto said screw threads of said shank, a hermetic spring operatively disposed on said shank adjacent said nut, said hermetic spring being fabricated from an elastomeric material, said hermetic spring having a nose, said hermetic spring having a foot adapted to engage said nut, a bellows section disposed between said nose and said foot,
said tooth face of said cutting tip including an atoll inset from said cutting edge, said atoll comprising an uninterrupted annular ridge, said annular ridge defining a crest centered about said tooth axis, said tooth face further including an annular dish located concentrically between said outer cutting edge and said atoll, and herein said atoll has a radially outer flank extending from said crest to said dish, said outer flank having an ogee shape.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, the closet prior art is Norstedt (US20140205387A1), however in the opinion of the Examiner that the arts of record neither anticipates nor render obvious the limitation of “wherein said atoll has a radially outer flank extending from said crest to said dish, said outer flank having an ogee shape” in combination with the other limitations of the claim.
Claims 3-9 are allowed because they depend from claim 1.
Regarding claim 10, the closet prior art is Norstedt (US20140205387A1), however in the opinion of the Examiner that the arts of record neither anticipates nor render obvious the limitation of “a hermetic spring operatively disposed on said shank adjacent said nut, said hermetic spring being fabricated from an elastomeric material, said hermetic spring having a nose, said hermetic spring having a foot adapted to engage said nut, a bellows section disposed between said nose and said foot; and wherein said atoll has a radially outer flank extending from said crest to said dish, said outer flank having an ogee shape” in combination with the other limitations of the claim.
Claims 12-18 are depended from claim 10.
Claim 10 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Regarding claim 19, the closet prior art is Norstedt (US20140205387A1), however in the opinion of the Examiner that the arts of record neither anticipates nor render obvious the limitation of “said atoll having a radially inner flank running from said crest to said basin, said atoll having a radially outer flank extending from said crest to said dish, said inner flank having a straight conical slope of approximately 45 degrees relative to said tooth axis, said outer flank having an ogee shape” in combination with the other limitations of the claim.
Claim 20 is allowed because it depended from claim 19.
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 MOHAMMED S ALAWADI whose telephone number is (571)272-2224. The examiner can normally be reached 08:00 am- 05:00 pm.
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/MOHAMMED S. ALAWADI/Primary Examiner, Art Unit 3725
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