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 .
DETAILED ACTION
Claim Objections
Claim 16 is objected to because of the following informalities:
In line 10 of claim 16, “the weight and the weight is suspended” should be changed to “the weight is suspended”, or something similar.
Appropriate correction is required.
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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,116,744. Although the claims at issue are not identical, they are not patentably distinct from each other because: Claim 14 of the '744 patent recites all of the structural limitations recited in independent claims 1, 6, and 16 of the present application. Although claim 14 of the '744 patent does recite a pair of elastomeric members as recited in claims 1 and 16 of the present application, claim 14 of the '744 patent recites "at least one elastomeric member", which obviously includes a pair of elastomeric members.
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 - 20 are rejected under 35 U.S.C. 103 as being unpatentable over White (US 5,263,544) in view of Tuenkers (US 9,567,192).
Regarding claim 1, White discloses a dampening assembly (shock absorbing apparatus 10), comprising: an upper connecting member (connecting section 26) configured to be coupled with a crane assembly (cable 12 which is in turn carried by boom 14 of a crane 15); a lower connecting member (base section 24) configured to be releasably connected to a vibratory pile driver (vibratory machine 16); an outer housing (outer wall 62; side walls 64, 66) coupled to the upper connecting member (26); an inner assembly (base shock mounting structures 36) coupled to the lower connecting member (24); and a pair of opposing elastomeric members (shock absorbing blocks 42) coupled between the outer housing (62) and the inner assembly (60) such that weight applied to the lower connecting member results in movement of the inner assembly relative to the outer housing and shearing of the pair of opposing elastomeric members to reduce vibration of the vibratory pile driver during operation (Figs. 1 - 4; col. 6, line 60 - col. 7, line 26; col. 8, lines 24 - 33; col. 9, lines 14 - 31; col. 9, line 54 - col. 10, line 8). White fails to disclose the lower connecting member comprises a shackle and the vibratory pile driver suspended below the dampening assembly. Tuenkers teaches the lower connecting member (load-bearing means 8) is a shackle (col. 3, lines 17 - 23) or a direct connection between the lower connecting member (8) and the vibration driver (using a direct attachment comprising support element 2 and bolts 12) (Figs. 1 and 2; col. 3, lines 17 - 23; col. 5, lines 13 - 43). It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have substituted the lower connecting member comprising a shackle as taught by Tuenkers for the lower connecting member comprising a base for direct attachment to the vibratory pile driver as disclosed above as a design consideration within the skill of the art. The substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art prior to the effective filing date of the invention. The substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art prior to the effective filing date of the invention. KSR International Co. V. Teleflex Inc., 550 U.S. 82 USPQ2d 1385(2007).
Regarding claims 2 and 3, White further discloses a safety member comprising a safety pin (cylindrical stop member 88) configured to prevent a failure of the pair of opposing elastomeric members (42) from causing the dampening assembly to release the vibratory pile driver (16) (Figs. 3 and 4; col. 9, line 54 - col. 10, line 8).
Regarding claim 4, White further discloses the safety pin (88) extends through an opening (slot 82), and wherein the safety pin is configured to contact a lower portion (lower end surface 86) of the opening to prevent disconnection of the inner assembly (36) and the outer housing (62, 64, 66) upon failure of the pair of opposing elastomeric members (42) (Figs. 3 and 4; col. 9, line 14 - col. 10, line 29).
Regarding claim 5, White discloses all of the claim limitation(s) except the shackle is positioned at 90 degrees relative to the upper connecting member. Tuenkers teaches the lower connecting member (load-bearing means 8) is a shackle (Figs. 1 and 2; col. 3, lines 17 - 23). It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have substituted the lower connecting member comprising a shackle as taught by Tuenkers for the lower connecting member as disclosed above as a design consideration within the skill of the art. The substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art prior to the effective filing date of the invention. The substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art prior to the effective filing date of the invention. KSR International Co. V. Teleflex Inc., 550 U.S. 82 USPQ2d 1385(2007). White in view of Tuenkers fails to disclose the shackle is positioned at 90 degrees relative to the upper connecting member. It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have positioned the shackle as taught by Tuenkers at 90 degrees relative to the upper connecting member (26) as disclosed by White as a design consideration within the skill of the art to optimize the support provided by the connecting members based upon the size and shape of the crane assembly and the vibratory pile driver.
Regarding claims 6 and 9, White discloses a dampening assembly (10), comprising: an upper connecting member (26) configured to releasably connect to a crane assembly (12, 14, 15); a lower connecting member (24) configured to releasably connect to a weight portion (16) of a pile driving system; an outer housing (64, 66, gusset plate 40); an inner assembly (36); and a plurality of elastomer shock absorbing members (shock absorbing blocks 42) connected between the inner assembly (36) and the outer housing (62, 64, 66), wherein in operation, weight results in movement of the outer housing with respect to the inner assembly, which movement results in a corresponding shearing of the at least one elastomer shock absorbing member (42), thereby reducing vibration of the weight portion (16) during operation (Figs. 1 - 4; col. 6, line 60 - col. 7, line 26; col. 8, lines 24 - 33; col. 9, lines 14 - 31; col. 9, line 54 - col. 10, line 8). White fails to disclose the vibratory pile driver and the weight of the weight portion suspended below the dampening assembly. Tuenkers teaches the lower connecting member (load-bearing means 8) is a shackle (col. 3, lines 17 - 23) or a direct connection between the lower connecting member (8) and the vibration driver (using a direct attachment comprising support element 2 and bolts 12) (Figs. 1 and 2; col. 3, lines 17 - 23; col. 5, lines 13 - 43). It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have substituted the lower connecting member comprising a shackle as taught by Tuenkers for the lower connecting member comprising a base for direct attachment to the vibratory pile driver as disclosed above as a design consideration within the skill of the art. The substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art prior to the effective filing date of the invention. The substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art prior to the effective filing date of the invention. KSR International Co. V. Teleflex Inc., 550 U.S. 82 USPQ2d 1385(2007). Examiner takes the position that substituting the shackle as taught by Tuenkers for the direct attachment as disclosed by White would obviously result in the vibratory pile driver and the weight of the weight portion being suspended below the dampening assembly.
Regarding claim 7, White further discloses the weight portion comprises a suspending weight portion comprising a vibratory pile driver (16), and wherein the shearing of the at least one elastomer shock absorbing member (42) is configured to reduce vibration of the pile driving system during operation (Figs. 1 - 4; col. 9, line 32 - col. 10, line 29). White fails to disclose the vibratory pile driver suspended below the dampening assembly. Tuenkers teaches the lower connecting member (load-bearing means 8) is a shackle (col. 3, lines 17 - 23) or a direct connection between the lower connecting member (8) and the vibration driver (using a direct attachment comprising support element 2 and bolts 12) (Figs. 1 and 2; col. 3, lines 17 - 23; col. 5, lines 13 - 43). It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have substituted the lower connecting member comprising a shackle as taught by Tuenkers for the lower connecting member comprising a base for direct attachment to the vibratory pile driver as disclosed above as a design consideration within the skill of the art. The substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art prior to the effective filing date of the invention. The substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art prior to the effective filing date of the invention. KSR International Co. V. Teleflex Inc., 550 U.S. 82 USPQ2d 1385(2007). Examiner takes the position that substituting the shackle as taught by Tuenkers for the direct attachment as disclosed by White would obviously result in the vibratory pile driver being suspended below the dampening assembly.
Regarding claim 8, White discloses all of the claim limitation(s) except the lower connecting member comprises a shackle member configured to be releasably connected to the vibratory pile driver. Tuenkers teaches the lower connecting member (load-bearing means 8) comprises a shackle member configured to be releasably connected to the vibratory pile driver (Figs. 1 and 2; col. 3, lines 17 - 23). It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have substituted the lower connecting member comprising a shackle member as taught by Tuenkers for the lower connecting member as disclosed above as a design consideration within the skill of the art. The substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art prior to the effective filing date of the invention. The substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art prior to the effective filing date of the invention. KSR International Co. V. Teleflex Inc., 550 U.S. 82 USPQ2d 1385(2007).
Regarding claim 10, White further discloses the plurality of elastomer shock absorbing members comprises a pair of opposing elastomer shock absorbing members (42) (Fig. 2).
Regarding claim 11, White further discloses the upper connecting member (26) is connected to the outer housing (64, 66, 40) (Figs. 2 - 4).
Regarding claim 12, White further discloses the lower connecting member (24) is connected to the inner assembly (36) (Figs. 2 - 4).
Regarding claim 13, White further discloses each elastomer shock absorbing member (42) of the at least one elastomer shock absorbing member is coupled to an inner end plate (60) at one end of the elastomer shock absorbing member, wherein the inner end plate is connected to the inner assembly (36), and wherein each elastomer shock absorbing member (42) of the at least one elastomer shock absorbing member is coupled to an outer end plate (62) at the other end of the elastomer shock absorbing member, the outer end plate being connected to the outer housing (Figs. 2 - 4).
Regarding claim 14, White further discloses a safety member (88) configured to prevent a failure of the at least one elastomer shock absorbing member (42) from causing the dampening assembly (10) to release the weight (16) (Figs. 3 and 4; col. 9, line 54 - col. 10, line 8).
Regarding claim 15, White further discloses the outer housing (64, 66, 40) comprises an opening (82) comprising a lower end (lower end surface 86), and wherein, upon failure of the at least one elastomer shock absorbing member (42), the safety member (88) is configured to fall downwardly to and contact the lower end of the opening in the outer housing to prevent the weight portion (16) from being released (Figs. 3 and 4; col. 9, line 14 - col. 10, line 29).
Regarding claim 16, White discloses a dampening assembly (10) for use with a crane system (12, 14, 15) subject to vibration, the dampening assembly comprising: an upper connecting member (26) configured for connecting to a crane line portion (12) of the crane system, a housing (62, 64, 66, 40), wherein the upper connecting member (26) is coupled to the housing; a lower connecting member (24) for releasably connecting to a weight (16) which would otherwise be connected to the crane line portion of the crane system such that the dampening assembly is positioned between the crane line portion and the weight; an inner assembly (36); and opposing elastomer shock absorbing members (42) connected between the inner assembly (36) and the housing (62, 64, 66, 40), wherein the opposing elastomer shock absorbing members are configured to shear in response to the weight to move the inner assembly (36) relative to the housing to reduce vibration during operation (Figs. 1 - 4; col. 6, line 60 - col. 7, line 26; col. 8, lines 24 - 33; col. 9, lines 14 - 31; col. 9, line 54 - col. 10, line 8). White fails to disclose the weight is suspended below the dampening assembly. Tuenkers teaches the lower connecting member (load-bearing means 8) is a shackle (col. 3, lines 17 - 23) or a direct connection between the lower connecting member (8) and the vibration driver (using a direct attachment comprising support element 2 and bolts 12) (Figs. 1 and 2; col. 3, lines 17 - 23; col. 5, lines 13 - 43). It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have substituted the lower connecting member comprising a shackle as taught by Tuenkers for the lower connecting member comprising a base for direct attachment to the vibratory pile driver as disclosed above as a design consideration within the skill of the art. The substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art prior to the effective filing date of the invention. The substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art prior to the effective filing date of the invention. KSR International Co. V. Teleflex Inc., 550 U.S. 82 USPQ2d 1385(2007). Examiner takes the position that substituting the shackle as taught by Tuenkers for the direct attachment as disclosed by White would obviously result in the weight being suspended below the dampening assembly.
Regarding claim 17, White further discloses the housing comprises an outer housing (62, 64, 66, 40), and wherein the upper connecting member (26) is connected to the outer housing (Fig. 2).
Regarding claim 18, White further discloses the inner assembly (36) is connected to the lower connecting member (24) (Figs. 2 - 4).
Regarding claim 19, White further discloses the lower connecting member (24) is positioned at 90 degrees relative to the upper connecting member (26) (Figs. 2 - 4).
Regarding claim 20, White further discloses a safety pin (88) extending through an opening (82) in the housing (40), wherein the safety pin is configured to fall downwardly and contact a lower portion of the opening upon failure of the opposing elastomer shock absorbing members (42) to prevent the weight (16) from being released (Figs. 3 and 4; col. 9, line 14 - col. 10, line 29).
Response to Arguments
Applicant's arguments filed 14 June 2026 have been fully considered but they are not persuasive.
Applicant argues that a terminal disclaimer has been filed to obviate the double patenting rejection. Examiner replies that the terminal disclaimer has not been received.
Applicant argues that White fails to teach the vibratory machine is suspended below the shock absorbing apparatus by a lower shackle. Examiner replies that Tuenkers, not White, has been relied upon to teach a lower shackle. Tuenkers teaches the lower connecting member (load-bearing means 8) is a shackle (col. 3, lines 17 - 23) or a direct connection between the lower connecting member (8) and the vibration driver (using a direct attachment comprising support element 2 and bolts 12) (Figs. 1 and 2; col. 3, lines 17 - 23; col. 5, lines 13 - 43). It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have substituted the lower connecting member comprising a shackle as taught by Tuenkers for the lower connecting member comprising a base for direct attachment to the vibratory pile driver as disclosed above as a design consideration within the skill of the art. The substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art prior to the effective filing date of the invention. The substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art prior to the effective filing date of the invention. KSR International Co. V. Teleflex Inc., 550 U.S. 82 USPQ2d 1385(2007).
Applicant argues that White fails to teach a pile driving system suspended below the dampening assembly, wherein weight of the weight portion is suspended from the lower connecting member. Examiner replies that Tuenkers, not White, has been relied upon to teach suspending a pile driving system below a dampening assembly. Tuenkers teaches the lower connecting member (load-bearing means 8) is a shackle (col. 3, lines 17 - 23) or a direct connection between the lower connecting member (8) and the vibration driver (using a direct attachment comprising support element 2 and bolts 12) (Figs. 1 and 2; col. 3, lines 17 - 23; col. 5, lines 13 - 43). It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have substituted the lower connecting member comprising a shackle as taught by Tuenkers for the lower connecting member comprising a base for direct attachment to the vibratory pile driver as disclosed above as a design consideration within the skill of the art. The substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art prior to the effective filing date of the invention. The substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art prior to the effective filing date of the invention. KSR International Co. V. Teleflex Inc., 550 U.S. 82 USPQ2d 1385(2007). Examiner takes the position that substituting the shackle as taught by Tuenkers for the direct attachment as disclosed by White would obviously result in the vibratory pile driver and the weight of the weight portion being suspended below the dampening assembly.
Applicant argues that While fails to disclose an interposed dampening assembly positioned between a crane line portion and a suspended weight. Examiner replies that White teaches an interposed dampening assembly positioned between a crane line portion and a weight, as discussed above. Examiner takes the position that Tuenkers, not White, has been relied upon to teach suspending a weight below a dampening assembly. Tuenkers teaches the lower connecting member (load-bearing means 8) is a shackle (col. 3, lines 17 - 23) or a direct connection between the lower connecting member (8) and the vibration driver (using a direct attachment comprising support element 2 and bolts 12) (Figs. 1 and 2; col. 3, lines 17 - 23; col. 5, lines 13 - 43). It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have substituted the lower connecting member comprising a shackle as taught by Tuenkers for the lower connecting member comprising a base for direct attachment to the vibratory pile driver as disclosed above as a design consideration within the skill of the art. The substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art prior to the effective filing date of the invention. The substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art prior to the effective filing date of the invention. KSR International Co. V. Teleflex Inc., 550 U.S. 82 USPQ2d 1385(2007). Examiner takes the position that substituting the shackle as taught by Tuenkers for the direct attachment as disclosed by White would obviously result in the weight being suspended below the dampening assembly.
Applicant argues that Tuenkers fails to teach the lower connecting member is positioned at 90 degrees relative to the upper connecting member. Examiner replies that it would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have positioned the shackle as taught by Tuenkers at 90 degrees relative to the upper connecting member (26) as disclosed by White as a design consideration within the skill of the art to optimize the support provided by the connecting members based upon the size and shape of the crane assembly and the vibratory pile driver.
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 SEAN D ANDRISH whose telephone number is (571)270-3098. The examiner can normally be reached Mon-Fri: 6:30 AM - 4:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Anderson can be reached at 571-270-5281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SEAN D ANDRISH/Primary Examiner, Art Unit 3678
SA
7/1/2026
Prosecution Insights