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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “tamping means” in claims 1-20.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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, it is unclear whether “tamping means” in line 3 and in lines 4-5 are the same as or different than, and in addition to, “tamping means” in line 2 because of the double positive recitation of “tamping means”. For purposes of examination, the examiner interprets “tamping means” to mean “the tamping means”. Further, it is unclear whether “the construction material” in the last line is the same as or different than, and in addition to, “construction aggregate” in line 4 because of the similar but different terminology. For purposes of examination, the examiner interprets “the construction material” to mean “the construction aggregate”. Finally, claim 1 is a drainage system that recites both a “tamping means for forming a channel” in line 3 and an “aggregate installed in the channel” in line 4. How can a drainage system include a tamping means? How can the tamping means be configured to form a channel that already exists? 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 tamping means to form the channel). Claims 2-9 are rejected for depending from a rejected claim.
Regarding claim 2, it is unclear whether “tamping means” in line 1 is the same as or different than, and in addition to, “tamping means” in claim 1 because of the double positive recitation of “tamping means”. For purposes of examination, the examiner interprets “tamping means” to mean “the tamping means”.
Regarding claim 5, the wording of “the interior cavity receives a volume of material” in line 1 is confusing. The term “receive” is a verb, however claim 5 is an apparatus claim. Does this limitation require that the interior cavity includes a volume of material, or that the interior cavity is configured to receive a volume of material? It is unclear whether the volume of material is positively claimed. For purposes of examination, the examiner interprets “the interior cavity receives a volume of material” to mean “the interior cavity is configured to receive a volume of material”.
Claim 9 recites the limitation “the lower handle” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 10, it is unclear whether “tamping means” in line 3 (both instances) and in lines 5-6 are the same as or different than, and in addition to, “tamping means” in line 2 because of the double positive recitation of “tamping means”. For purposes of examination, the examiner interprets “tamping means” to mean “the tamping means”. Further, it is 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”. Finally, claim 10 is a drainage system that recites both a “tamping means for forming a channel” in line 3 and an “aggregate installed in the channel” in line 5. How can a drainage system include a tamping means? How can the tamping means be configured to form a channel that already exists? 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 tamping means to form the channel). Claims 11-18 are rejected for depending from a rejected claim.
Regarding claim 11, it is unclear whether “tamping means” in line 1 is the same as or different than, and in addition to, “tamping means” in claim 10 because of the double positive recitation of “tamping means”. For purposes of examination, the examiner interprets “tamping means” to mean “the tamping means”.
Regarding claim 14, the wording of “the interior cavity receives a volume of material” in line 1 is confusing. The term “receive” is a verb, however claim 14 is an apparatus claim. Does this limitation require that the interior cavity includes a volume of material, or that the interior cavity is configured to receive a volume of material? It is unclear whether the volume of material is positively claimed. For purposes of examination, the examiner interprets “the interior cavity receives a volume of material” to mean “the interior cavity is configured to receive a volume of material”.
Claim 17 recites the limitation “the lower handle” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 19, it is unclear whether the second instance of “tamping means” in line 3 is the same as or different than, and in addition to, the first instance of “tamping means” in line 3 because of the double positive recitation of “tamping means”. For purposes of examination, the examiner interprets the second instance of “tamping means” to mean “the tamping means”. Further, the wording of “the cavity receives a volume of material” in lines 5-6 is confusing. The term “receive” is a verb, however claim 19 is an apparatus claim. Does this limitation require that the cavity includes a volume of material, or that the cavity is configured to receive a volume of material? It is unclear whether the volume of material is positively claimed. For purposes of examination, the examiner interprets “the cavity receives a volume of material” to mean “the cavity is configured to receive a volume of material”. Finally, 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: tamping means (e.g. 14, Fig. 1), wherein tamping means 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 receives a volume of material 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 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 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 means 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 means 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 tamping means 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 means is not required for patentability, and the channel of Li is capable of being formed with a tamping means 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 means is not required for patentability, and the channel of Li is capable of being formed with a tamping means 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 means is not required for patentability, and the channel of Li is capable of being formed with a tamping means comprising a hollow interior cavity).
Regarding claim 5, Li further discloses that the interior cavity receives a volume of material providing ballast and energy absorption to the head (e.g. as explained above, the tamping means is not required for patentability, and the channel of Li is capable of being formed with a tamping means comprising an interior cavity that receives a volume of 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 means is not required for patentability, and the channel of Li is capable of being formed with a tamping means 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 means is not required for patentability, and the channel of Li is capable of being formed with a tamping means 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 means is not required for patentability, and the channel of Li is capable of being formed with a tamping means 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 the lower handle, the pair of wings mutually opposed (e.g. as explained above, the tamping means is not required for patentability, and the channel of Li is capable of being formed with a tamping means comprising a head with a cylindrical body having a pair of wings).
Regarding claim 10, Li discloses a drainage 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 means comprising a head with a handle upwardly depending from the head for forming the channel in the ground, wherein tamping means 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 means 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 tamping means 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 means is not required for patentability, and the channel of Li is capable of being formed with a tamping means 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 means is not required for patentability, and the channel of Li is capable of being formed with a tamping means 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 means is not required for patentability, and the channel of Li is capable of being formed with a tamping means comprising a hollow interior cavity).
Regarding claim 14, Li further discloses that the interior cavity receives a volume of material providing ballast and energy absorption to the head (e.g. as explained above, the tamping means is not required for patentability, and the channel of Li is capable of being formed with a tamping means comprising an interior cavity that receives a volume of 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 means is not required for patentability, and the channel of Li is capable of being formed with a tamping means 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 means is not required for patentability, and the channel of Li is capable of being formed with a tamping means 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 means is not required for patentability, and the channel of Li is capable of being formed with a tamping means 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 the lower handle, the pair of wings mutually opposed (e.g. as explained above, the tamping means is not required for patentability, and the channel of Li is capable of being formed with a tamping means comprising a head with a cylindrical body having a pair of wings).
Conclusion
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