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 Arguments
Applicant's arguments filed July 15, 2026 have been fully considered but they are not persuasive.
Applicant’s argument that anticipation requires disclosure of the claimed limitation within the reference itself and Chandler fails to disclose forming a channel in soil, tamping or compacting earth, displacing soil to create a drainage channel, constructing a drainage system, or adapting the disclosed roller for any such purpose is noted but is not considered persuasive because while anticipation requires the disclosure of each and every limitation of the claim at issue in a single prior art reference, it does not require such disclosure in haec verba. In addition, it does not require that the prior art reference “teach” what the application at issue teaches. The tool of Chandler includes each and every structural limitation of the claim as mapped out below, and the tool of Chandler is capable of performing each and every functional limitation of the claim as explained below. It has been held that the recitation that an element is “adapted to” perform a function is not a positive limitation but only requires the ability to so perform. The function is not required to be explicitly disclosed in the prior art. Rather, the prior art must be “configured to” perform the function, i.e. capable of performing the function without any modifications required. The structure of the tool of Chandler allows the tool to be pressed into soil to form a channel in that soil, therefore the tool of Chandler is “adapted for use in forming a channel for constructing a drainage system” as claimed. Similarly, the structure of the tool of Chandler allows the tool to be repeatedly impacted against soil, therefore the tool of Chandler is capable of being a tamping tool.
Applicant’s argument that capability is not the same as anticipation and Chandler nowhere discloses placing ballast material within the roller or that the ballast material functions to absorb tamping energy is noted but is not considered persuasive because the ballast material is not positively claimed. The claimed invention requires that the cavity “is configured to receive a volume of ballast material”. There is nothing that prevents the hollow cavity of Chandler from receiving a volume of ballast material. Thus, the cavity of Chandler satisfies the limitation of being “configured to receive a volume of ballast material for providing ballast and energy absorption to the body”.
Applicant’s argument that the handle and roller of Chandler are independently connected to the U-shaped support structure therefore the handle does not depend from the cylindrical body as claimed is noted but is not considered persuasive because the claimed invention does not require that the handle depend “directly” from the body. Thus, the indirect connection of the handle to the roller via the U-shaped support structure satisfies the broad limitation of “depending from the body”.
Applicant’s argument that Chandler contains no disclosure of attachment to construction machinery, removal from construction machinery, mounting hardware for construction equipment, or interchangeable construction implements is noted but is not considered persuasive because the arguments are not commensurate with the scope of the claims. The claimed invention does not require any of these elements. The claimed invention only requires that the tool is removable for construction equipment. As previously explained, the electrical plug allows the tool of Chandler to be connected and disconnected to a construction equipment, therefore the tool of Chandler is considered removable.
Applicant’s argument that the opposite ends of a cylindrical roller are simply terminal portions of the roller itself, they are not projecting wing structures is noted but is not considered persuasive because the opposite ends of the roller are perpendicular to the lower handle and mutually opposed as claimed. The claimed invention requires the wings to be part of the body. There is no claim limitation that the wings must project to any specific extent or in a specific direction.
Applicant’s argument that Lu neither discloses the claimed tamping means, nor does Lu disclose the specific structural features of the tamping means recited throughout the pending claims, and the alleged rationale that Lu’s drainage channel is “capable of being formed” using Applicant’s tamping means is insufficient is noted but is not considered persuasive because Applicant has not addressed the 112(b) rejection associated with this rejection. Claims 1 and 10 appear to combine a tamping tool for preparing a site for a drainage channel, and a drainage channel that is already constructed. The conduit and aggregate are positively recited as being installed in a channel. The tamping tool is recited as being functional to form the channel. How is this possible when the channel is already formed and contains the conduit and aggregate? As explained in the 112(b) rejection, it appears that this is a product-by-process claim such that the tamping means is not positively claimed. Should Applicant intend to positively recite all of the structural elements, the final construction (i.e. aggregate “installed in” the channel, conduit “installed” superjacent the construction aggregate, mechanical fasteners “securing” the hemicylindrical conduit superjacent to the construction aggregate) must be changed to functional limitations (e.g. aggregate “for installing in” the channel, conduit “for installing” superjacent the construction aggregate, mechanical fasteners “for securing” the hemicylindrical conduit superjacent to the construction aggregate).
Applicant’s argument that nothing in Lu suggests replacing the disclosed configurations with a hemicylindrical conduit and Lu’s own arcuate embodiment already reduces stress concentrations is noted but is not considered persuasive because it has been held that a change in the shape of a prior art device is a design consideration within the skill of the art. Further, Lu specifically describes an arc shaped conduit but does not show such a conduit in the drawings. It is possible that the arc shaped conduit is a hemicylindrical shape. Even if the arc shaped conduit is different than a hemicylindrical conduit, the step of modifying an arc shape to a hemicylindrical shape is certainly within the scope of a person having ordinary skill in the art.
Applicant’s argument that Lu does not disclose intentionally installing construction aggregate within the drainage channel beneath the conduit as recited is noted but is not considered persuasive because the claimed invention does not require “intentionally installing construction aggregate”. Further, claims 1 and 10 are apparatus claims such that method steps are given little patentable weight. Finally, a step of installing construction aggregate would only require placement of the aggregate. The construction aggregate (i.e. soil) of Lu is present, and therefore installed, in the channel.
Applicant’s argument that the Office Action does not identify any disclosure within Lu corresponding to claims 2-9 and 11-18, or considering the claimed invention as a whole including the tamping means is noted but is not considered persuasive because, as explained above, the tamping tool is not positively recited as best understood.
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 are 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 1, the claim is a drainage construction system that recites both a “tamping tool for forming a channel” in line 3 and an “aggregate installed in the channel” in line 4 (emphasis added). How can the tamping tool be configured to form a channel that already exists? Said another way, claim 1 appears to combine a tamping tool for preparing a site for a drainage channel, and a drainage channel that is already constructed. The conduit and aggregate are positively recited as being installed in a channel. The tamping tool is recited as being functional to form the channel. How is this possible when the channel is already formed and contains the conduit and aggregate? It appears that this claim is meant to be a product-by-process claim or a method claim. For purposes of examination, the examiner interprets claim 1 to be a product-by-process claim such that determination of patentability is based on the product itself (i.e. the conduit and aggregate in the channel) and not the method of production (i.e. using a tamping tool to form the channel). Claims 2-9 are rejected for depending from a rejected claim.
Claim 6 recites the limitation “the volume of material” in line 1. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 10, the claim is a drainage construction system that recites both a “tamping tool for forming a channel” in line 3 and an “aggregate installed in the channel” in line 5 (emphasis added). How can the tamping tool be configured to form a channel that already exists? Said another way, claim 10 appears to combine a tamping tool for preparing a site for a drainage channel, and a drainage channel that is already constructed. The conduit and aggregate are positively recited as being installed in a channel. The tamping tool is recited as being functional to form the channel. How is this possible when the channel is already formed and contains the conduit and aggregate? It appears that this claim is meant to be a product-by-process claim or a method claim. For purposes of examination, the examiner interprets claim 10 to be a product-by-process claim such that determination of patentability is based on the product itself (i.e. the conduit and aggregate in the channel) and not the method of production (i.e. using a tamping tool to form the channel). Further, it remains unclear whether “the construction material” in the last line is the same as or different than, and in addition to, “construction aggregate” in line 5 because of the similar but different terminology. For purposes of examination, the examiner interprets “the construction material” to mean “the construction aggregate”. Claims 11-18 are rejected for depending from a rejected claim.
Claim 15 recites the limitation “the volume of material” in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation “the head” in the last line. There is insufficient antecedent basis for this limitation in the claim. Claim 20 is rejected for depending from a rejected claim.
Claim Rejections - 35 USC § 102
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 19 and 20 (as best understood) are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chandler et al (US 3,910,738).
Regarding claim 19, Chandler discloses a removable tool for construction equipment (e.g. 10, Fig. 1, wherein plug 52 results in the tool being removable), the tool adapted for use in forming a channel for constructing a drainage system (e.g. Fig. 1, wherein it has been held that the recitation that an element is “adapted to” perform a function is not a positive limitation but only requires the ability to so perform; it does not constitute a limitation in any patentable sense; and the tool of Chandler is capable of forming a channel by pressing the tool into soil), the tool comprising: a tamping tool (e.g. 14, Fig. 1), wherein the tamping tool comprises: a linearly elongated body comprising a cylindrical form (e.g. 60, Fig.’s 1 and 2), the body comprising a hollow interior cavity (e.g. Fig. 2) and a cap for enclosing the cavity (e.g. 56, Fig. 2), wherein the cavity is configured to receive a volume of ballast material for providing ballast and energy absorption to the body (e.g. Fig. 2 wherein the hollow nature of the cavity allows the cavity to receive a ballast material); and, a linearly elongated handle depending from the body (e.g. 20/22, Fig. 1), the handle having a lower handle (e.g. 20, Fig. 1) and an upper handle (e.g. 22, Fig. 1), the lower handle intermediately disposed between the head and the upper handle (e.g. Fig. 1).
Regarding claim 20, Chandler further discloses that the body further comprises a pair of wings disposed perpendicular to the lower handle, the pair of wings mutually opposed (e.g. opposing ends of 16, Fig.’s 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 1-18 (as best understood) are rejected under 35 U.S.C. 103 as being unpatentable over Li (CN 105714838) alone.
Regarding claim 1, Li discloses a drainage construction system (e.g. claim 1, Fig. 6), comprising: a channel in the ground (e.g. channel shaped space under 10, Fig. 6); a quantity of construction aggregate installed in the channel (e.g. soil in the channel shaped space under 10, Fig. 6, wherein soil is a construction aggregate); and, conduit installed superjacent the construction aggregate (e.g. 10, Fig. 6), the conduit comprising a first end and a second end (e.g. Fig. 4), wherein the first end comprises a first aperture formed adjacent the first end and the second end comprises a second aperture formed adjacent the second end (e.g. 9, Fig. 4), the first aperture receiving a first mechanical fastener and the second aperture receiving a second mechanical fastener (e.g. 13, Fig. 6), the first mechanical fastener and the second mechanical fastener securing the conduit superjacent to the construction aggregate (e.g. Fig. 6). Li further discloses that the conduit has various open shape options (e.g. U-shaped in Fig. 3 and trapezoidal shaped in Fig. 4) but does not explicitly disclose that the conduit is hemicylindrical. It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to form the conduit of Li with a hemicylindrical shape because a change in the shape of a prior art device is a design consideration within the skill of the art and the hemicylindrical shape would provide the expected benefit of avoiding higher stress point corners in the conduit. Examiner notes that Li does not explicitly disclose a tamping tool comprising a head with a handle upwardly depending from the head for forming the channel in the ground, however as explained above this is considered a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. Therefore, the channel formed by a tamping tool is not considered patentable over the channel of Li because the end product is the same.
Regarding claim 2, Li further discloses that the handle of the tamping tool comprises a lower handle and an upper handle, the lower handle intermediately disposed between the head and the upper handle (e.g. as explained above, the tamping tool is not required for patentability, and the channel of Li is capable of being formed with a tamping tool comprising a lower handle and an upper handle).
Regarding claim 3, Li further discloses that the head comprises a cylindrical body (e.g. as explained above, the tamping tool is not required for patentability, and the channel of Li is capable of being formed with a tamping tool comprising a head with a cylindrical body).
Regarding claim 4, Li further discloses that the cylindrical body comprises a hollow interior cavity (e.g. as explained above, the tamping tool is not required for patentability, and the channel of Li is capable of being formed with a tamping tool comprising a hollow interior cavity).
Regarding claim 5, Li further discloses that the interior cavity is configured to receive ballast material for providing ballast and energy absorption to the head (e.g. as explained above, the tamping tool is not required for patentability, and the channel of Li is capable of being formed with a tamping tool comprising an interior cavity that is configured to receive a volume of ballast material).
Regarding claim 6, Li further discloses that the volume of material comprises solid and/or fluid material (e.g. as explained above, the tamping tool is not required for patentability, and the channel of Li is capable of being formed with a tamping tool comprising an interior cavity that receives solid and/or fluid material).
Regarding claim 7, Li further discloses that the head comprises at least one removable end cap (e.g. as explained above, the tamping tool is not required for patentability, and the channel of Li is capable of being formed with a tamping tool comprising at least one removable end cap).
Regarding claim 8, Li further discloses that the head comprises a cylindrical body having a hemicylindrical form consistent with the hemicylindrical conduit (e.g. as explained above, the tamping tool is not required for patentability, and the channel of Li is capable of being formed with a tamping tool comprising a head with a cylindrical body having a hemicylindrical form).
Regarding claim 9, Li further discloses that the cylindrical body further comprises a pair of wings disposed perpendicular to a lower handle, the pair of wings mutually opposed (e.g. as explained above, the tamping tool is not required for patentability, and the channel of Li is capable of being formed with a tamping tool comprising a head with a cylindrical body having a pair of wings).
Regarding claim 10, Li discloses a drainage construction system (e.g. claim 1, Fig. 6), comprising: a channel in the ground (e.g. channel shaped space under 10, Fig. 6); a quantity of construction aggregate installed in the channel (e.g. soil in the channel shaped space under 10, Fig. 6, wherein soil is a construction aggregate); and, conduit installed superjacent the construction aggregate (e.g. 10, Fig. 6), the conduit comprising a first end and a second end (e.g. Fig. 4), wherein the first end comprises a first aperture formed adjacent the first end and the second end comprises a second aperture formed adjacent the second end (e.g. 9, Fig. 4), the first aperture receiving a first mechanical fastener and the second aperture receiving a second mechanical fastener (e.g. 13, Fig. 6), the first mechanical fastener and the second mechanical fastener securing the conduit superjacent to the construction material (e.g. Fig. 6). Li further discloses that the conduit has various open shape options (e.g. U-shaped in Fig. 3 and trapezoidal shaped in Fig. 4) but does not explicitly disclose that the conduit is hemicylindrical. It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to form the conduit of Li with a hemicylindrical shape because a change in the shape of a prior art device is a design consideration within the skill of the art and the hemicylindrical shape would provide the expected benefit of avoiding higher stress point corners in the conduit. Examiner notes that Li does not explicitly disclose a tamping tool comprising a head with a handle upwardly depending from the head for forming the channel in the ground, wherein the tamping tool is attachable and removable from construction machinery, however as explained above this is considered a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. Therefore, the channel formed by a tamping tool is not considered patentable over the channel of Li because the end product is the same.
Regarding claim 11, Li further discloses that the handle of the tamping tool comprises a lower handle and an upper handle, the lower handle intermediately disposed between the head and the upper handle (e.g. as explained above, the tamping tool is not required for patentability, and the channel of Li is capable of being formed with a tamping tool comprising a lower handle and an upper handle).
Regarding claim 12, Li further discloses that the head comprises a cylindrical body (e.g. as explained above, the tamping tool is not required for patentability, and the channel of Li is capable of being formed with a tamping tool comprising a head with a cylindrical body).
Regarding claim 13, Li further discloses that the cylindrical body comprises a hollow interior cavity (e.g. as explained above, the tamping tool is not required for patentability, and the channel of Li is capable of being formed with a tamping tool comprising a hollow interior cavity).
Regarding claim 14, Li further discloses that the interior cavity is configured to receive ballast material for providing ballast and energy absorption to the head (e.g. as explained above, the tamping tool is not required for patentability, and the channel of Li is capable of being formed with a tamping tool comprising an interior cavity that is configured to receive ballast material).
Regarding claim 15, Li further discloses that the volume of material comprises solid and/or fluid material (e.g. as explained above, the tamping tool is not required for patentability, and the channel of Li is capable of being formed with a tamping tool comprising an interior cavity that receives solid and/or fluid material).
Regarding claim 16, Li further discloses that the head comprises at least one removable end cap (e.g. as explained above, the tamping tool is not required for patentability, and the channel of Li is capable of being formed with a tamping tool comprising at least one removable end cap).
Regarding claim 17, Li further discloses that the head comprises a cylindrical body having a hemicylindrical form consistent with the hemicylindrical conduit (e.g. as explained above, the tamping tool is not required for patentability, and the channel of Li is capable of being formed with a tamping tool comprising a head with a cylindrical body having a hemicylindrical form).
Regarding claim 18, Li further discloses that the cylindrical body further comprises a pair of wings disposed perpendicular to a lower handle, the pair of wings mutually opposed (e.g. as explained above, the tamping tool is not required for patentability, and the channel of Li is capable of being formed with a tamping tool comprising a head with a cylindrical body having a pair of wings).
Conclusion
THIS ACTION IS MADE FINAL. 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 STACY N LAWSON whose telephone number is (571)270-7515. The examiner can normally be reached Mon-Fri 9am-3pm.
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/S.N.L./Examiner, Art Unit 3678
/AMBER R ANDERSON/Supervisory Patent Examiner, Art Unit 3678
