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 .
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.
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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 and generally centered about a longitudinal tooth axis, said shank being generally cylindrical and having opposite ends, a head attached to one end of said shank and screw threads formed in the other 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 a collision interceptor in the form of an atoll inset from said cutting edge, said atoll comprising an uninterrupted annular ridge, said tooth face further including an annular dish located concentrically between said outer cutting edge and said atoll.
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 1-20 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 “generally” in claims 1, 5, 10 and 19 is a relative term which renders the claim indefinite. The term “generally” 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.
Claims 2-9 are rejected because they depend from claim 1.
Claims 11-18 are rejected because they depend from claim 10.
Claim 20 is rejected because it depends from claim 19.
Claim 1 recites the limitation "the other" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the form" in line 8. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites the limitation " said crest" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation "said crest" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the position " in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the position " in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the position " in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the position " in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the position " in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the position " in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "the other" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "the form" in line 13. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation " said crest" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 15, the phrase “said atoll has a crest centered about said tooth axis” render the claim indefinite because it is unclear if “a crest” is the same as or different from “said crest” that recited in claim 13 which claim 15 depends from.
Regarding claim 16, the phrase “said atoll has a crest centered about said tooth axis” render the claim indefinite because it is unclear if “crest centered about said tooth axis” is the same as or different from “a crest centered about said tooth axis” that recited in claim 15 which claim 16 depends from.
Claim 16 recites the limitation "the position " in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "the position " in line 3. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 17, the phrase “said atoll has a crest centered about said tooth axis” render the claim indefinite because it is unclear if “crest centered about said tooth axis” is the same as or different from “a crest centered about said tooth axis” that recited in claim 15 which claim 17 depends from.
Claim 17 recites the limitation "the position " in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the position " in line 3. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 18, the phrase “said atoll has a crest centered about said tooth axis” render the claim indefinite because it is unclear if “crest centered about said tooth axis” is the same as or different from “a crest centered about said tooth axis” that recited in claim 15 which claim 17 depends from.
Claim 18 recites the limitation "the position " in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 18 recites the limitation "the position " in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation "the other" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation "the position " in line 19. There is insufficient antecedent basis for this limitation in the claim.
Claim 20 recites the limitation "the position " in line 1. There is insufficient antecedent basis for this limitation in the claim.
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 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Norstedt (US20140205387A1).
Regarding claim 1, Norstedt discloses a tree stump grinding tooth (figs.1 and 4: (2), the element (2) is capable to grind a tree stump) (abstract, paragraphs 0044-0052) comprising:
a shank (fig.4: (11)) extending along and generally centered about a longitudinal tooth axis (fig.4), said shank being generally cylindrical and having opposite ends,
a head (fig.4: the head of the element (2)) attached to one end of said shank and screw threads (fig.4: the thread of the element (11)) formed in the other end of said shank,
said head including a cutting tip (fig.4: the cutting tip of the element (2)), said cutting tip fabricated from a carbide material (paragraph 0017), said cutting tip having a circular periphery centered about said tooth axis and defining an outer cutting edge (figs.10-11: (28)),
said cutting tip having a tooth face (fig.11: (27a)) set inside said outer cutting edge, said tooth face including a collision interceptor (fig.11: (30)) in the form of an atoll inset from said cutting edge,
said atoll comprising an uninterrupted annular ridge (fig.11: the ridge of the element (30)), said tooth face including an annular dish (fig.11: (29)) located concentrically between said outer cutting edge (fig.11: (28)) and said atoll (fig.11: (30)).
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 (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 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 3-4 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Norstedt (US20140205387A1).
Regarding claim 3, Norstedt discloses wherein said cutting tip has a body thickness (IT), said dish having a depth (AD)
Norstedt does not disclose said dish having a depth (AD) between about 10-25% of said body thickness (IT).
However, choosing the dimensions of the tooth is very known in art and a matter of routine engineering design choice that depends on the general design of the grinding tooth and specific requirements of the grinding process as desired;
Therefore; it would have been obvious to one of ordinary skill in the art at the time of the invention to select the dimensions of the tooth, including said dish having a depth (AD) between about 10-25% of said body thickness (IT), in order to meet a specific requirement of the process of the grinding as desired.
Regarding claim 4, Norstedt discloses wherein said atoll has a radially inner flank running from said crest toward said tooth axis, said inner flank having a straight conical slope (fig.11: the inner flank of the element (30) having a straight conical slope).
Norstedt does not disclose of approximately 45 degrees relative to said tooth axis.
However, choosing the dimensions of the tooth is very known in art and a matter of routine engineering design choice that depends on the general design of the grinding tooth and specific requirements of the grinding process as desired;
Therefore; it would have been obvious to one of ordinary skill in the art at the time of the invention to select the dimensions of the tooth, including s the straight conical slope of approximately 45 degrees relative to said tooth axis, including a straight conical slope, in order to meet a specific requirement of the process of the grinding as desired.
Regarding claim 7, Norstedt discloses wherein said atoll has a crest centered about said tooth axis (fig.11: the crest of the element (30)), the position of said outer cutting edge being indicated by a radial measure (RCT) (fig.11: the position of the element (28) that defined by a radial measure between the axis of the element (2) and the element (28)), the position of said crest being indicated by radial measure (RA) (fig.11: the position of the element (28) that defined by a radial measure between the axis of the element (2) and the crest of the element (30)),
Norstedt does not disclose said radial measure (RA) of said crest being between about 30%-70% of said radial measure (RCT) of said outer cutting edge.
However, choosing the dimensions of the tooth is very known in art and a matter of routine engineering design choice that depends on the general design of the grinding tooth and specific requirements of the grinding process as desired;
Therefore; it would have been obvious to one of ordinary skill in the art at the time of the invention to select the dimensions of the tooth, including said radial measure (RA) of said crest being between about 30%-70% of said radial measure (RCT) of said outer cutting edge, in order to meet a specific requirement of the process of the grinding as desired.
Regarding claim 8, Norstedt discloses wherein said atoll has a crest centered about said tooth axis (fig.11: the crest of the element (30)), the position of said outer cutting edge being indicated by a radial measure (RCT) (fig.11: the position of the element (28) that defined by a radial measure between the axis of the element (2) and the element (28)), the position of said crest being indicated by radial measure (RA) (fig.11: the position of the element (28) that defined by a radial measure between the axis of the element (2) and the crest of the element (30)),
Norstedt does not disclose said radial measure (RA) of said crest being between about 40%-60% of said radial measure (RCT) of said outer cutting edge.
However, choosing the dimensions of the tooth is very known in art and a matter of routine engineering design choice that depends on the general design of the grinding tooth and specific requirements of the grinding process as desired;
Therefore; it would have been obvious to one of ordinary skill in the art at the time of the invention to select the dimensions of the tooth, including said radial measure (RA) of said crest being between about 40%-60% of said radial measure (RCT) of said outer cutting edge, in order to meet a specific requirement of the process of the grinding as desired.
Regarding claim 9, Norstedt discloses wherein said atoll has a crest centered about said tooth axis (fig.11: the crest of the element (30)) and inset concentrically with respect to said outer cutting edge (fig.11 the position of said outer cutting edge being indicated by a radial measure (RCT) (fig.11: the position of the element (28) that defined by a radial measure between the axis of the element (2) and the element (28)), the position of said crest being indicated by radial measure (RA) (fig.11: the position of the element (28) that defined by a radial measure between the axis of the element (2) and the crest of the element (30)),
Norstedt does not disclose said radial measure (RA) of said crest being between about 45%-55% of said radial measure (RCT) of said outer cutting edge.
However, choosing the dimensions of the tooth is very known in art and a matter of routine engineering design choice that depends on the general design of the grinding tooth and specific requirements of the grinding process as desired;
Therefore; it would have been obvious to one of ordinary skill in the art at the time of the invention to select the dimensions of the tooth, including said radial measure (RA) of said crest being between about 45%-55% of said radial measure (RCT) of said outer cutting edge, in order to meet a specific requirement of the process of the grinding as desired.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Norstedt (US20140205387A1) in view of Green (US20160270307A1).
Regarding claim 5, Norstedt does not disclose a basin inset from said atoll, said basin being generally flat and oriented perpendicular to said tooth axis.
Green teaches a grinding tooth (abstract, paragraph 0042-0046) comprising:
a basin (fig.4: (70)) being flat and oriented perpendicular to a tooth axis.
Both of the prior arts of Norstedt and Green are related to a grinding tooth;
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the tooth of Norstedt to have the configuration of a basin being flat as taught by Green, since it has been held that combining prior art elements according to known methods to yield predictable results requires only routine skill in the art. [KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)]. Thereby having a basin inset from said atoll, said basin being generally flat and oriented perpendicular to said tooth axis.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Norstedt (US20140205387A1) in view of Chen (TWM572274U attached NPL, English Machine translation).
Regarding claim 5, Norstedt does not disclose wherein said atoll has a crest centered about said tooth axis, said crest standing proud of said outer edge of said cutting tip.
Chen teaches a grinding tooth (pages 1 and 8) comprising:
a crest (fig.4: (44)) centered about a tooth axis, said crest standing proud of an outer edge (fig.4: (64)) of a cutting tip.
Both of the prior arts of Norstedt and Chen are related to a grinding tooth;
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the tooth of Norstedt to have the configuration of a crest as taught by Chen, since it has been held that combining prior art elements according to known methods to yield predictable results requires only routine skill in the art. [KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)]. Thereby having wherein said atoll has a crest centered about said tooth axis, said crest standing proud of said outer edge of said cutting tip.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 2, 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.
Claim 2 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
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” in combination with the other limitations of the claim.
Claims 11-18 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.
Claim 10 would be allowable if rewritten or amended to overcome the double patenting rejection 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 depended from claim 19.
Claim 19 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.
Conclusion
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