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
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 24 March 2025 was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “28” has been used to designate both “pile driver” and “bolt assembly”.
The drawings are objected to because:
Regarding Fig. 1, it is unclear which structural element reference character “28” refers because the lead line associated with the aforementioned reference character is so short that it does not appear to be directed to a specific structural element.
Figs. 4A - 4C should each include at least one reference character to identify the various structural element(s) illustrated in each of the aforementioned figures.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 7 and 13 are objected to because of the following informalities:
In line 2 of claim 7, “the” should be inserted before “shearing”.
In line 3 of claim 13, “the inner plate” should be changed to “the inner end plate” for clarity.
Appropriate correction is required.
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.
Claim 13 is 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 use of the term “thereof” as recited in lines 3 and 6 of claim 13 renders the claim vague and indefinite because it is unclear as to which structural element or limitation the term is referring. Structural elements or limitations should always be referred to by name.
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 § 102
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 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 1 - 4, 6, 7, and 9 - 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by White (US 5,263,544).
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).
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 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); 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 on the dampening assembly (10) 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).
Regarding claim 7, White further discloses the weight portion comprises a suspending weight portion (16) of a pile driving system, and wherein 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).
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 thereof, wherein the inner 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 thereof 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 (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; 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 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).
Regarding claim 17, White further discloses the housing comprises an outer housing (62, 64, 66, 40), and wherein the upper connecting portion (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) configured to fall downwardly and contact a portion of the housing (40) when the opposing elastomer shock absorbing members (42) fail to prevent the weight (16) from being released upon failure of the opposing elastomer shock absorbing members (Figs. 3 and 4; col. 9, line 14 - col. 10, line 29).
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 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over White in view of Tuenkers (US 9,567,192).
Regarding claim 5, White discloses all of the claim limitation(s) except the lower connecting member comprises a shackle. 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).
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 pile driving system. Tuenkers teaches the lower connecting member (load-bearing means 8) comprises a shackle member configured to be releasably connected to the pile driving system (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).
Conclusion
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.
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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.
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/SEAN D ANDRISH/Primary Examiner, Art Unit 3678
SA
1/29/2026