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.
Claim Objections
Claim 3 is objected to because of the following informalities: line 1 recites “…at least one enlarged out edge…” which should read “…at least one enlarged outer edge…”. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: the second to last line of the claimed recites “…a fastener extend through…” which should read “…a fastener extends through…”. Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-2, 4, 6-13 and 15-16 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-7 and 9 of prior U.S. Patent No. 12,129,615. This is a statutory double patenting rejection.
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 3 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,129,615 (hereinafter ‘615) in view of Drake (Pat. No.: 5,636,458). The difference between the instant claims and ‘615 is the claims recite “the enlarged outer edge extends beyond the plurality of protruding teeth from the plow guard wear surface.” Drake discloses a plow guard (10) having a plow guard wear surface (See Fig. 1 where the wear surface is depicted), the plow guard (10) includes at least one enlarged outer edge (30) that extends beyond the wear surface (as seen in Figs. 1-2). 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 plow guard of ‘615 to include the enlarged outer edge that extends beyond the surface of Drake, with a reasonable expectation of success, in order to extend the wear time of the plow blade (See col. 1, lns. 6-8).
Claims 5, 14, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,129,615 (hereinafter ‘615) in view of Manway (Pat. No.: 5,813,474). The difference between the instant claims and ‘615 is the claims recite “a consumable carbide matrix protruding away from the bottom face of the plow guard body and below the plow guard wear surface”. Manway discloses a plow blade (14) with a body (24), with an opening (36) extending from a bottom surface (38) of the body (24). More specifically, Manway teaches a consumable carbide insert (16, note the term consumable is being interpreted as being diminished through snowplow operations) within the opening (36) and protruding (See Fig. 2 and col. 5, lns. 39-45 where it discloses the “insert 16 will then protrude a distance ‘K’”) away from the bottom surface (38) and a wear surface (34). 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 carbide matrix of ‘615 to utilize the convex carbide insert of Manway, in order to provide a consumable carbide matrix with “improved impact and wear resistance” (See col. 2, lns. 65-67).
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,129,615 (hereinafter ‘615) in view of Tutschek et al. (Pub. No.: 2011/0232927; hereinafter Tutschek). The difference between the instant claims and ‘615 is the claim recites “a second plow guard having a same structure as the first plow guard, wherein the first plow guard is mounted proximate a first outer edge of the plow body, and wherein the second plow guard is mounted proximate a second outer edge of the plow body and spaced apart from the first plow guard.” Tutschek discloses a first plow segment (300) coupled to a moldboard (200), and a second plow segment (500) having the same structure as the first plow segment (300, same structure depicted in Fig. 8), wherein the first plow segment is mounted proximate a first outer edge of the plow body, and wherein the second plow segment is mounted proximate a second outer edge of the plow body and spaced apart from the first plow segment (See Fig. 8 where 300 is on the left edge of the plow body, and 500 is on the right edge of the plow body with segments 100 spaced between them). 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 plow guard of ‘615 to utilize the first and second segments of Tutschek, so that damaged or worn segments can be replaced individually (See para. [0081]).
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,129,615 (hereinafter ‘615) in view of Winter (U.S. PGPub.: 2017/0191236). The difference between the instant claims and ‘615 is the claims recite “wherein a bottommost surface of the consumable carbide matrix is arranged between a bottommost surface of the plow guard body and a bottommost surface of the plow blade.” Winter discloses a plow guard (152) and consumable portion (134) and further discloses that elements of the plow system can initially extend below the consumable portion until wear begins to occur during operation. It would have been obvious to one of ordinary skill in the art before the effective filing date of theclaimed invention to arrange the different elements of ‘615 assembly such that the consumable portion is positioned between the bottommost surface of the plow guard body and a bottommost surface of the plow blade initially until wear occurs as it would be combining prior art elements according to known methods to obtain predictable results (KSR International Co. v. Teleflex Inc., 550 USPQ2d 1385 (2007)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following references are directed to cutting edges of blade assemblies and are considered reasonably pertinent: Hahn (Pat. No.: 3,685,177); Amano (Pub. No.: 2001/0005949); and Michel et al. (Pub. No.: 2022/0018076). Additional references cited but not discussed here can be found in the attached 892.
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/JAMIE L MCGOWAN/Primary Examiner, Art Unit 3671
/A.L.L./Examiner, Art Unit 3671
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