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.
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.
Claims 4 (and 5 through dependency) and 7-9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 4 recites “a generally horizontal front member”. It is unclear whether this is a double positive recitation of the generally horizontal front member already recited in claim 1 or whether Applicant is claiming a different part. For purposes of examination, it will be assumed that “a” should be recited as “the” and the recitation is a double positive recitation of the horizontal front member already recited in claim 1.
Claims 7-9 are the same or substantially the same as claims 2-5 since they depend from claim 1. It is unclear whether Applicant intended claims 7-9 to depend from claim 6. For purposes of examination, it will be assumed that Applicant intended claims 7-9 to depend from claim 6.
Claim 9 recites “a generally horizontal front member” in line 3. It is unclear whether this is a double positive recitation of the generally horizontal front member already recited in claim 1 or whether Applicant is claiming a different part. For purposes of examination, it will be assumed that “a” should be recited as “the” and the recitation is a double positive recitation of the horizontal front member already recited in claim 1.
Correction for each rejection is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 6-9 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-4 of prior U.S. Patent No. 12,123,152 B2. This is a statutory double patenting rejection. As stated above in the 112(b) rejection, for purposes of examination, it will be assumed that claims 7-9 depend from claim 6 rather than from claim 1. The claims have practically the same verbiage, the difference being claim 1 of the patent including the limitation of the stabilization legs secured to the front end but this is claimed in claim 9 of the instant application.
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 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12,123,152 B2 in view of Pietila et al., US 10,190,268 B2.
Claims 1-4 of the patent include all of the limitations of claims 1-5 except for the limitation of the drive assembly rotatably secured to support the frame assembly. Pietila teaches an apparatus for screeding concrete to produce a level finished surface ([0016]) and discloses a frame of the apparatus having tracks wheels (Figure 26). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the patent to include a drive assembly (wheels) rotatably secured to support the frame to be able to move the apparatus.
Claims 6-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12,529,194 B2.
Claims 1-3 of the patent read on all of the limitations of claims 6-9 of the instant application. There are only minor differences in nomenclature, such as “first end” and “second end” pertaining to the extendable boom in the instant application versus “front end” and “rear end” pertaining to the extendable boom in the patent, and “side-step assembly” in the instant application versus “swing boom assembly”.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12,529,194 B2 in view of Pietila et al., US 10,190,268 B2.
Claims 1-3 of the patent include all of the limitations of claims 1-5 except for the limitation of the drive assembly rotatably secured to support the frame assembly. Pietila teaches an apparatus for screeding concrete to produce a level finished surface ([0016]) and discloses a frame of the apparatus having tracks wheels (Figure 26). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the patent to include a drive assembly (wheels) rotatably secured to support the frame to be able to move the apparatus.
Claims 6-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12,270,159 B2.
Claims 1-3 of the patent read on all of the limitations of claims 6-9 of the instant application. There are only minor differences in nomenclature and verbiage, such as “first end” and “second end” pertaining to the extendable boom in the instant application versus “front end” and “rear end” pertaining to the extendable boom in the patent, and “a side-step assembly having an actuator with an extendable arm thereon” in the instant application versus “an actuator”. Applicant’s specification discloses that the actuator is a hydraulic cylinder and the extendable arm is the rod of the hydraulic cylinder, which is present in any hydraulic cylinder.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12,270,159 B2 in view of Pietila et al., US 10,190,268 B2.
Claims 1-3 of the patent include all of the limitations of claims 1-5 except for the limitation of the drive assembly rotatably secured to support the frame assembly. Pietila teaches an apparatus for screeding concrete to produce a level finished surface ([0016]) and discloses a frame of the apparatus having tracks wheels (Figure 26). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the patent to include a drive assembly (wheels) rotatably secured to support the frame to be able to move the apparatus.
Drawings
The drawings are objected to because reference numeral 50 in Figure 1 is directed to the same bar as reference numeral 210 in Figure 3. 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.
Duplicate Claims, Warning
Applicant is advised that should claims 2-5 be found allowable, claims 7-9 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1-9 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Pietila et al., US 10,190,268 B2.
Regarding claim 1, Pietila teaches an apparatus for screeding concrete to produce a level finished surface comprising:
a frame assembly (Figures 3 and 26) having a front end and rear end, the frame assembly supporting a generally horizontal front member (panel on which boom is mounted as shown in Figure 3) therebetween;
a drive assembly (tracks on tractor as shown in Figure 26) rotatably secured to support the frame assembly;
an extendable boom (shown in Figure 26) assembly secured to the frame assembly at a first end and to a screed head (shown in Figure 26) at a second end, the extendable boom assembly adjustably disposed (it can rotate horizontally or pivot up and down) on (shown attached to, in Figure 3) the front member; and
a side-step assembly having an actuator (lower hydraulic cylinder shown in Figure 3) with an extendable arm (rod of hydraulic cylinder) thereon, the actuator secured at a point to the front member (via bracket as shown in Figure 3), and the extendable arm secured to the boom assembly (via chain and sprocket as shown in Figure 3) to impart generally lateral motion thereto.
Regarding claim 2, the actuator is a hydraulic cylinder.
Regarding claim 3, the actuator being a hydraulic cylinder is a linear actuator.
Regarding claim 4, as shown in Figure 26, the apparatus includes a pair of spaced vertically oriented stabilization legs (stabilizer legs) secured to the front end of the frame, the spaced legs supporting the generally horizontal front member therebetween.
Regarding claim 5, as shown in Figure 26, the apparatus includes a vertically oriented stabilization leg secured to the frame assembly at the rear end thereof, whereby the stabilization legs level the frame and the screed head.
Regarding claim 6, Pietila teaches an apparatus for screeding concrete to produce a level finished surface comprising:
a frame assembly (Figures 3 and 26) having a front end and rear end, the frame assembly supporting a generally horizontal front member (panel on which boom is mounted as shown in Figure 3) therebetween;
an extendable boom (shown in Figure 26) assembly secured to the frame assembly at a first end and to a screed head (shown in Figure 26) at a second end, the extendable boom assembly adjustably disposed (it can rotate horizontally or pivot up and down) on (shown attached to, in Figure 3) the front member; and
a side-step assembly having an actuator (lower hydraulic cylinder shown in Figure 3) with an extendable arm (rod of hydraulic cylinder) thereon, the actuator secured at a point to the front member (via bracket as shown in Figure 3), and the extendable arm secured to the boom assembly (via chain and sprocket as shown in Figure 3) to impart generally lateral motion thereto.
Regarding claim 7, the actuator is a hydraulic cylinder.
Regarding claim 8, the actuator being a hydraulic cylinder is a linear actuator.
Regarding claim 9, as shown in Figure 26, the apparatus includes a pair of spaced vertically oriented stabilization legs secured to the front end of the frame, the spaced legs supporting the generally horizontal front member therebetween and a vertically oriented stabilization leg secured to the frame assembly at the rear end thereof, whereby the stabilization legs level the frame and the screed head.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached Notice of References Cited sheet. Torvinen, US 2006/0008323 A1 teaches a very similar apparatus for screeding concrete with a frame, drive assembly, stabilizing legs, extendable boom, and screed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE J CHU whose telephone number is 571-272-7819. The examiner can normally be reached M-F generally 9:30-5:30.
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, 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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/KATHERINE J CHU/Examiner, Art Unit 3671
/CHRISTOPHER J SEBESTA/Supervisory Patent Examiner, Art Unit 3671
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