The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Claim 20 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.
The recitations “one or more linkages” in lines 2, 4 and 6 lack antecedent basis (in claim 18). It appears the claim was intended to depend from claim 19.
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, 7, 8 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2/1, 3/2/1, 9/8 and 10/9/8, respectively, of copending Application No. 18/982880 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims of the instant application are fully encompassed within the claims of the reference application (i.e., they are merely broader).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9/1 of U.S. Patent No. 12,065,308. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims sought to be patented are fully encompassed within the scope of the patented claim (i.e., the pending claims are merely broader).
Claims 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7 and 9 of U.S. Patent No. 12,065,308 in view of Hachenberg (DE 102008013940, cited by applicant).
All limitations of pending claims 16/15, 17 and 18 are encompassed within the scope of patented claims 1, 7 and 9, respectively, except that the actuator as recited in pending claim 15 further includes a motor to which the transmission is coupled and which is configured to drive the transmission.
Hachenberg shows several embodiments of a tipper assembly comprising:
an actuator 34 including a motor and a transmission coupled to the motor (par. spanning pages 5-6 of the English translation as provided in the parent application); and
an implement 33/41 configured to engage with a container 6:
wherein the motor is configured to drive the transmission to pivot the container from a base position to a dump position to dump contents within the container.
It would have been obvious for one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified the apparatus recited in pending claim 15 by utilizing a motor coupled to the transmission to drive the transmission, as taught by Hachenberg, in order to effectively pivot the container between the base and dump positions in order to dump the contents thereof.
Claims 1 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8/7/1 of U.S. Patent No. 11,414,267. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims sought to be patented are fully encompassed within the scope of the patented claim (i.e., the pending claims are merely broader).
Claims 15, 16 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7/1 and 8/7/1 of U.S. Patent No. 11,414,267 in view of Hachenberg (DE 102008013940, cited by applicant).
All limitations of pending claims 16/15 and 18 are encompassed within the scope of patented claims 7/1 and 8/7/1, respectively, except that the actuator as recited in pending claim 15 further includes a motor to which the transmission is coupled and which is configured to drive the transmission.
The rejection utilizes the same obviousness rationale set forth above in par. 7.
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.
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 1, 2, 6-9, 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Hachenberg.
Re claims 1 and 8, Hachenberg shows several embodiments of a tipper assembly comprising:
a base (such as but not necessarily limited to 36; Figs. 14-22);
an actuator 34 coupled to the base;
an arm 35 coupled to the actuator; and
an implement 33/41 coupled to the arm, wherein the implement includes an upper retainer 33 and a lower retainer 41 that are configured to engage with a container 6 such that operation of the actuator facilitates pivoting the container from a base position to a dump position to (Figs. 18-22);
wherein the tipper assembly is configured to provide a shake function when the container is in the dump position (last full par. on page 5 of the above-noted English translation provided in the parent application).
Hachenberg does not explicitly disclose that there is a discrete shaker assembly coupled to the actuator which includes one or more linkages that facilitate providing the shake function.
However, since a transmission is disclosed as being between the rotation axis of an electric motor and the pivoting device (par. spanning pages 5 and 6 of the above-noted translation) and since the shaking function involves moving the waste container back and forth several times, it is believed that one of ordinary skill in the art would logically conclude that repeatedly reversing the output of the actuator through the use of the transmission rather than the actuator itself is implicit within the reference, or at the very least that utilizing the transmission as a shaker assembly coupled to the actuator would have been an obvious means for providing the shake function. As such, it would have been obvious for one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified the apparatus of Hachenberg such that a separate shaker assembly (i.e., the transmission) coupled to the actuator provided the shake function, as the examiner takes Official Notice that a transmission is a well-known means of converting rotary motion of an output from an actuator into an alternating rotary (i.e., "shaking) motion of a device or implement coupled to the actuator, and would preclude the necessity of repeatedly reversing the motion of the actuator itself, thus simplifying the movement operation and extending the life of the motor.
Hachenberg further discloses one or more linkages (i.e., the lower arm of 33) extending between the transmission and the lower retainer (at least indirectly), and wherein the transmission (shaker assembly) is configured to drive such linkage(s) when the implement is in the dump position to provide the shake function to assist in the dumping of the contents within the container, or at the very least, it would have been obvious to have configured the transmission to do so, as per above.
Re claims 2 and 9, the actuator includes the motor and transmission as noted above.
Re claims 6 and 13, Hachenberg further discloses in the above-noted passage of the translation that the transmission is positioned between the arm and the actuator along a pivot axis of the arm.
Re claims 7 and 14, Hachenberg discloses at least that the one or more linkages are coupled to the lower retainer.
Claims 4, 5, 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Hachenberg in view of Clergeau (EP 2457850, cited by applicant).
Re claims 4 and 11, Hachenberg does not disclose that the transmission includes a planetary gear set.
Clergeau shows a generally similar tipper assembly for dumping containers wherein “planetary gear motors” 17 are utilized for performing the dumping operation. Although the term transmission is not used with respect to the planetary gears, it is believed, based on what is shown in Fig. 3, that one of ordinary skill would understand that the planetary gears are part of a transmission assembly attached to the motors rather than being part of the motors themselves.
It would have been obvious for one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified the apparatus of Hachenberg by configuring the transmission to include a planetary gear set, as shown by Clergeau, as this would simply be one of a finite number of known types of transmissions from which to choose for the purpose of effectively and reliably transferring power from a motor to effect a tipping motion, the selection of which in the apparatus of Hachenberg would have neither required undue experimentation nor produced unexpected results.
Re claims 5 and 12, insofar as a ring gear is an inherent component of a planetary gear set, the one or more linkages of the modified shaker assembly of Hachenberg would obviously be coupled to such a ring gear to provide the shake function.
Claims 3 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Hachenberg in view of Heneveld, Jr. et al (US 10,610,429, cited by applicant).
Hachenberg does not disclose that the transmission includes a cycloidal drive.
Heneveld shows an actuator 48 for moving a member 56 (analogous to the claimed arm) relative to a patient support 20 (analogous to the claimed base), wherein the actuator includes a motor 64 and a cycloidal drive 72 (col. 4:25-57 and col. 5:32-59). This results in a compact mechanism and improved packaging within the apparatus.
Further, the cycloidal gear drive can be used as an alternative to a planetary gear set (col. 5:49-59).
It would have been obvious for one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified the apparatus of Hachenberg by providing a cycloidal drive as part of the actuator (e.g., the transmission thereof), as suggested by Heneveld, to provide a compact mechanism that would be easily packaged within the confines of the environment in which it operates.
Claim 19 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.
Claim 20 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James Keenan whose telephone number is (571)272-6925. The examiner can normally be reached Mon. - Thurs.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ernesto Suarez can be reached at 571-270-5565. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James Keenan/
Primary Examiner
Art Unit 3652
7/20/26
Prosecution Insights