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 .
Claim Objections
Claims 8, 15, 27 objected to because of the following informalities:
In claim 8, line 1, “the screen guided” should read ---the screen guide--- In claim 15, line 24 “the first and second modules” should read “the first screening module and the second screening module”
line 25, “removeable” should read “removable”
In claim 27 “passing undersized materials pass through the screening surface” should read “passing undersized materials through the screening surface”, and “screening module” should read “the screening module”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 12, 20, 28 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The claims contain subject matter which was not describe in the specification in such a way to reasonably convey to one skilled in the relevant are that the invention, at the time the application was filed, had possession of the claimed invention.
Each of claims 12, 20, and 28 recites a thermoplastic screening surface (or thermoplastic screen) having openings “in a range from approximately 35 microns to approximately 4,000 microns.” The specification describes thermoplastic screening openings “as small as approximately 43 microns and an opening width of approximately 35 microns to approximately 4000 microns.
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 3-4, 5-6, 8, 16-18, 22-29 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.
Regarding claim 3, the recitation “the screen assembly comprises: a plurality of screening assemblies” is internally inconsistent, because a single screening assembly cannot comprise a plurality of screening assemblies. Claim 4 is rejected for depending from claim 3.
Regarding claim 5, 16, the recitation “its upper edge” lacks antecedent basis in the claims. Claims 1 and 15 recite only lower edges of the sidewalls. Claim 6 is rejected for depending from claim 5.
Regarding claim 8, it is unclear whether the “first and second lips” include the “lip” recited in claim 7, and whether “first and second mating guide elements” include the “mating guide element” recited in claim 1.
Regarding claims 16-18, claim 15 recites first and second screening modules, each having its own first sidewall, second sidewall, and screen guide, and recites first and second removable screening assemblies. It is therefor unclear which module’s “the first sidewall”, “the second sidewall”, and “the screen guide,” and which of the screen assemblies, are referred to in claims 16-18. Claim 17 is rejected for depending from claim 16.
Regarding claim 22, the recitation “the concave thermoplastic screening surface” lacks antecedent basis in the claim. Claims 23-29 are rejected for depending from claim 22.
Regarding claim 25, it is unclear whether the “first and second mating guide elements” and “first and second screen guides” include the “mating guide element” and “screen guide” recited in claim 22.
Regarding claim 27, the recitations “the unscreened materials” and “the solid bottom surface” lack antecedent basis in the claims.
Regarding claim 29, the recitation “the synthetic screen” lacks antecedent basis in the claims.
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 1-6, 9-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-10, 12-17 of U.S. Patent No. 12226802. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of 12226802 recite every limitation of the rejected claims, or render them obvious, as follows.
Claim 9 of 12/226802 (“’802”) recites “A static screening system for separating oversized materials from undersized materials under the force of gravity, comprising: a screening module, wherein the screening module includes: a first sidewall and a second sidewall spaced from the first sidewall, the first and second sidewalls extending from an inlet end to an outlet end, wherein the inlet end is disposed above the outlet end and wherein at least one sidewall of the first sidewall and the second sidewall includes a screening bed access opening between its upper edge and its lower edge; a plurality of cross-support members disposed between opposing inside surfaces of first and second sidewalls and between upper and lower edges of the first and second sidewalls, the cross-support members defining a concave screening bed; guides disposed across at least a portion of a distance between opposing inside surfaces of first and second sidewalls; and a bottom surface extending between lower edges of the sidewalls; and a screening assembly configured for receipt on the concave screening bed, wherein the screening assembly includes: a screening surface; and at least one engagement element connected to the screening surface and configured for slidable engagement with at least one guide when the screen assembly is inserted through the screening bed access opening for disposition between the first and second sidewalls; and wherein undersized materials passing through the screening assembly are collected on the bottom surface of the screening module and exit though a discharge port proximate to a lower end of the bottom surface and oversized materials exit over a lower end of the screening assembly”.
Claim 1 is anticipated by ‘802 claim 9.
Claims 2, 5 are anticipated by ‘802 claim 9
Claim 3 is unpatentable over ‘802 claims 9-10, as claim 10 recites a plurality of individual screening assemblies and providing each with the engagement element.
Claim 4 is anticipated by ‘802 claim 10
Claim 6 is anticipated by ‘802 claim 17 which recites guide members positioned to be engaged through the screening bed access opening
Claim 9 is anticipated by ‘802 claim 9
Claim 10 is anticipated by ‘802 claim 16 which recites guide members integrally formed with a cross-support member.
Claims 11-14 are anticipated by ‘802 claims 12-15, which recite thermoplastic screening surface with openings approximately 35 to approximately 4000 microns; open screening area approximately 5% to approximately 35%; independent injection molded thermoplastic screen elements forming a continuous screening surface
Claims 15-17, 19-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-7 of U.S. Patent No. 12226802.
Claim 1 of 12/226802 (“’802”) recites “A static screening apparatus for separating oversized materials from undersized materials under the force of gravity, comprising: a first screening module; a second screening module stacked vertically above the first screening module, wherein each screening module includes: a first sidewall and a second sidewall spaced from the first sidewall, the first and second sidewalls extending from an inlet end to an outlet end, wherein the outlet end is disposed below the inlet end and wherein at least one of the first sidewall and the second sidewall includes at least one screening bed access opening between its upper edge and its lower edge; cross-support members disposed between opposing inside surfaces of first and second sidewalls and between upper and lower edges of the first and second sidewalls the cross-support members defining a concave screening bed; guide members disposed across at least a portion of a distance between opposing inside surfaces of first and second sidewalls; and a plurality of removable screen assemblies each having a thermoplastic screening surface, wherein the plurality of screen assemblies collectively define a concave screening surface and wherein each screen assembly includes an engagement element to slidably engage at least one guide member when the screen assembly is inserted through the screening bed access opening for disposition between the first and second sidewalls; and a bottom surface extending between lower edges of the sidewalls, wherein undersized materials passing through the concave screening surface are collected on the bottom surface and exit though a discharge proximate to a lower end of the bottom surface and oversized materials exit over a lower end of the concave screening surface”.
Claims 15, 16, 19 are anticipated by ‘802 claim 1
Claim 17 is anticipated by ‘802 claim 5
Claims 20, 21 are anticipated by ‘802 claims 6-7
Claims 7-8, 18, 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9 of U.S. Patent No. 12226802 in view of Seyffert et al (WO2004/035232) (“Seyffert”). ‘802 discloses the above claim limitations but does not disclose that the guide comprises a lip under which the mating guide element is disposed, or that first and second guides and first and second mating guide elements prevent transverse movement. Seyffert discloses a “Vibratory Separator and Screen Assembly, For Screening Drilling Mud, Contains Holder Removably Holding Seal”. Seyffert further discloses an elongate holder extending across a separator, formed as a generally C-shaped channel whose participating parts extend over and into recesses of the element slidably received therein (holder 22a with projecting parts 29 received in recesses 32 of seal 30) (See Pg. 5, l. 19-29, Pg. 12 l. 9-14), including a holder whose top part projects downwardly over a portion of the received element to maintain it in a desired position (top part 41c of holder 40 projecting into recess 46) (See Pg. 13 l. 19-30, Pg. 14 l. 1-5). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to form the Colgrove (‘802) guides as lipped channels of the type taught by Seyffert, with the engagement elements disposed beneath the lips, as this would allow the overlying projection to maintain the slidably received element in the desired position.
Claims 22-24, 26-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9, 26-30 of U.S. Patent No. 12226802 in view of Seyffert et al (WO2004/035232) (“Seyffert”). ‘802 claim 26 recites “A method for screening oversized materials from undersized materials, comprising: providing a screening module, having: first and second spaced sidewalls with a plurality of support members extending between opposing inside surfaces of the first and second sidewalls; a concave thermoplastic screening surface supported by the support members, the concave thermoplastic screening surface extending between an inlet end and an outlet end; and a bottom surface extending between the first and second sidewalls at a location below the concave thermoplastic screening surface; introducing unscreened materials to an upper edge of the concave thermoplastic screening surface; allowing the unscreened materials to migrate down the concave thermoplastic screening surface under the force of gravity; passing undersized materials pass the concave thermoplastic screening surface while the unscreened materials migrate down a top surface of the concave thermoplastic screening surface; collecting the undersized materials passing through the thermoplastic screening surface on the solid bottom surface extending between the first and second sidewalls; diverting the undersized materials collected on the solid bottom surface of screening module to an undersized materials discharge; and diverting oversized materials passing over an outlet end of a top surface of the concave thermoplastic screening surface to an oversized materials discharge.”, while claim 30 recites “The method of claim 26, wherein providing the screening module further comprises: inserting a plurality of individual thermoplastic screening surfaces through an opening extending through one of the first and second sidewall surfaces, wherein the plurality of individual thermoplastic screening surface collectively define the concave thermoplastic screening surface.” ‘802 does not recited engaging a mating guide element with a screen guide and sliding the mating guide element along the screen guide as the screening assembly moves laterally across the screening bed. However, claim 9 recites “guides disposed across at least a portion of the distance between the opposing inside surfaces of the sidewalls, and a screening assembly whose engagement element is configured for slidable engagement with a guide when the assembly is inserted through the sidewall access opening for disposition between the sidewalls. Seyffert discloses installing a replaceable element from the side by sliding it along an elongate holder extending across the separator, through an opening in the separator side wall (Pg. 5 l. 16-29, Pg. 11 l. 21-29, Pg. 13 l. 3-6). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to perform the sidewall insertion step of Colgrove (‘802’) by engaging an engagement element of each screening assembly with a guide and sliding it along the guide as the assembly moves laterally across the screening bed from one sidewall toward the other until disposed between the sidewalls, as taught by Seyffert, as this would guide the screening assembly into its proper position between the sidewalls during insertion through the sidewall opening.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERRELL HOWARD MATTHEWS whose telephone number is (571)272-5929. The examiner can normally be reached Monday thru Friday; 8:00 AM - 4:30 PM EST.
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/TERRELL H MATTHEWS/Primary Examiner, Art Unit 3653
