DETAILED ACTION
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 4, 6-8 and 10 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.
The recitations of “a vehicle” in claims 4, 6 and 10 are indefinite, since parent claims 1, 1 and 9, respectively, each recites a “vehicle width.” The latter recitation makes antecedent basis unclear. Also, since there are no further recitations regarding this vehicle and this vehicle is intended use only and only with respect to an unclaimed, intended use area (“along a route”), the recitations are narrative and indefinite.
Claims 7 and 8 improperly recite processes in the product claims. The positive recitations of “performs” denotes a process. These recitations have been treated essentially as, is capable of performing.”
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 4 and 9-11 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Frelich et al. (U.S. Patent 11,694,581).
Frelich discloses an asphalt finisher (10) having a tractor (Figure 1, for example), hopper (20), conveyor (46), screw (28) and screed (22) arranged as claimed (Figure 2, for example). While not specifically discussed, because the machine is electrically powered, the actuators are naturally configured to use electric power. There is a power storage (external 214; and onboard batteries, not shown) configured as claimed (abstract, for example).
Frelich is configured in the manner of claim 2 (abstract, for example).
Regarding claim 4, see Figure 3, for example.
Regarding claim 10, while not specifically disclosed, the power supply would naturally be positioned on a route traveled by a vehicle, since the finisher is a vehicle and travels along a route, even if on a trailer, for example. And the vehicle towing the trailer could also be considered to be the vehicle in that instance. See the 112 rejection, above.
Regarding claim 11, because the charging station (200) is provided on the side of the machine (Figure 2), the natural arrangement is in the width direction.
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 3, 5-8, 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Frelich et al., as applied above.
Regarding claim 3, this is a duplication of existing parts which is not patentably distinguishing. It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have used additional connection part(s) as desired in order to suit a particular application.
Regarding claims 5 and 12, the examiner takes Official notice that it is known to use a vehicle to charge another vehicle. Because Frelich is capable of this operation, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have used a second, like vehicle, in order to maximize working operations.
Claim 6 is met for the reasons discussed with respect to claim 11, above.
Regarding claims 7 and 8, given the arrangement of claim 5, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have controlled the finishers as claimed in order to ensure proper connection, since not having the same speed and/or steering angle would result in a broken connection between the finishers.
Claim 11 is met. Further, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have extended the connection part from a side surface in order to optimally connect with the station shown in Figure 2.
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.
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 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application 18/891,306 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘306 application are generally broader versions of the current claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additional references teach electrically powered machines.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GARY S HARTMANN whose telephone number is (571)272-6989. The examiner can normally be reached 11-7:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Sebesta can be reached at 571 272-0547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GARY S. HARTMANN
Primary Examiner
Art Unit 3671
/GARY S HARTMANN/Primary Examiner, Art Unit 3671
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