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.
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 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,091,834. Although the claims at issue are not identical, they are not patentably distinct from each other because both the current claims and the patented claims disclose a convertible box blade with sidewalls, shank supports, blade supports, a moldboard support and pivot arms, but the current claims are broader than the patented claims.
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.
Claim(s) 1-7, 12-13, 15-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hale (2,566,562) in view of Seal (8,393,406).
Regarding claims 1 and 16, Hale discloses a box blade scraper apparatus comprising:
A frame assembly (7) having a front portion and a rear portion, the frame assembly comprising:
A first sidewall (16)
A second sidewall (17)
One or more shank support cross members (8) extending between and secured to the first sidewall (16) and second sidewall (17)
A moldboard support member (unnumbered pivot pin) extending between and secured to the first sidewall (16) and the second sidewall (17), the moldboard support cross member having a moldboard support longitudinal center axis (at pivot pin (Figures 1-4)
An elongated moldboard (13) having an arc shaped front surface that extends between a moldboard top edge and a moldboard bottom edge (Figure 2), the moldboard situated at least partially between the first sidewall (16) and the second sidewall (17) and secured to a first pivot arm (14) situated adjacent to the first sidewall and a second pivot arm (15) situated adjacent to the second sidewall, the first and second pivot arms rotatably coupled to the moldboard support cross member (unnumbered pivot pin) to provide the moldboard with a pivot axis, wherein the pivot axis is coincident with the moldboard support longitudinal center axis (Figures 1-4)
A hitch assembly (6,22) secured to the frame assembly
A moldboard pivot bar (21) coupled to the moldboard for raising or lowering the moldboard
While Hale discloses the invention as described above, it fails to disclose first and second blade support cross members extending between and secured to the first and second sidewalls having scrapers secured thereto. Like Hale, Seal also discloses a box blade scraper. Unlike Hale, Seal discloses that a plurality of scraper blades can be attached between the sidewalls and that the number of scrapers can vary (Figures 8-9). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include additional blade support cross members and scraper blades in Hale as taught by Seal to provide a finer grading finish as it would be the use of a known technique to improve similar devices in the same way (KSR International Co. v. Teleflex Inc., 550 USPQ2d 1385 (2007)).
Regarding claim 2, the moldboard is selectably pivotable between an up position (Figure 3) and a down position (Figure 2).
Regarding claim 3, the combination discloses that the first and second pivot arms (14,15) are secured to the moldboard and prevent movement therebetween.
Regarding claim 4, the combination discloses the invention as described above but fails to disclose how the pivot arms (14,15) are attached to the moldboard support member (pivot pin). It would have been an obvious matter of design choice to utilize welding to connect the pivot arms to the moldboard support member before the effective filing date of the claimed invention, as Applicant has not disclosed that it solves any stated problem of the prior art or is for any particular purpose. It appears that the invention would perform equally well as the invention disclosed by the combination of Hale and Seal.
Regarding claim 5, the combination discloses the first and second pivot arms extend from the front surface of the moldboard and wherein the front surface faces the pivot axis (Figure 2).
Regarding claim 6, the combination disclose that there could be a second blade support cross member extending between and secured to the first sidewall and the second sidewall, with a second scraper blade and a leveling blade to the second blade support cross member.
Regarding claim 7, the combination discloses that all of the blades have the same curvature.
Regarding claim 12, the combination discloses a moldboard pivot bar (21) secured to the moldboard and coupling the moldboard to the hitch assembly for raising or lowering the moldboard.
Regarding claim 13, the combination discloses the moldboard pivot bar can pivot the moldboard between positions but fails to specifically disclose notches. It would have been an obvious matter of art recognized equivalence to utilize notches for locking adjustment, as Applicant has not disclosed that it solves any stated problem of the prior art or is for any particular purpose. It appears that the invention would perform equally well as the invention disclosed by the combination of Hale and Seal.
Regarding claim 15, the combination disclose that the one or more shank support cross members (8) include a lower shank support cross member (bottom wall/opening of beam 8) and an upper shank support cross member (upper wall/opening), wherein the upper and lower cross members includes slots vertically aligned for the shanks to be inserted therein (Figure 5).
Regarding claim 17, the moldboard pivot bar (21) extends between and couples the moldboard to the hitch assembly.
Regarding claim 18, the combination discloses that the one or more pivot arms includes a first pivot arm (14) and a second pivot arm (15).
Regarding claim 19, the combination discloses that the moldboard has a longitudinal length extending between a first moldboard end and a second moldboard end, and wherein the first pivot arm (14) is secured at the first moldboard end and the second pivot arm (15) is secured at the second moldboard end.
Allowable Subject Matter
Claims 8-11, 14 and 20 are 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 and filed with the appropriate Terminal Disclaimer(s).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Richey (3,311,175) also discloses a convertible box scraper with shanks.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jamie L McGowan whose telephone number is (571)272-5064. The examiner can normally be reached Monday through Friday 9:00-5:00 CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chris 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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/JAMIE L MCGOWAN/Primary Examiner, Art Unit 3671
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