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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,163,299. 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 an apparatus for adjustment of a shovel blade for a hand shovel including a guide plate repositionable along the shovel blade edge, however the current claims are broader than the patented claims.
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 7-8 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. Claim 7, which depends from claim 1, discloses a third movement, however there is never a “second” movement disclosed thereby rendering this claim unclear. As such, claims 7 and 8 have not been examined on the merits.
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)(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.
Claim(s) 1-2, 5-6, 11, 14, 17-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weingart (2,598,952).
Regarding claims 1, 11 and 17, Weingart discloses an apparatus and method for an adjustment of a shovel blade (18) for a hand shovel (10), the apparatus comprising:
A guide plate/wear assembly (38,39) abutting to a mount (23) with the mount (23) slidably/removably connected (via 35) with a shovel blade edge (16), with the shovel blade (18) having a leading edge (20) separate from the shovel blade edge (16)
The guide plate (38,39) having a movement, a reposition of the mount along the shovel blade edge (16) provides for the movement of the guide plate (38,39) along the shovel blade edge (16) (via repositioning of the connector (35) In various mounting apertures (26, 27, 28, 29)
The guide plate (38,39) having a plurality of positions (26,27,28,29; Figure 5) with respect to the shovel blade (18)
Regarding claim 2, the movement is between the plurality of positions (Figure 5) (Column 2 lines 19-35).
Regarding claim 5, the one or more through passages are extending substantially orthogonal or acute to the shovel blade edge (Figure 5).
Regarding claims 6 and 14, the guide plate (38,39) comprises a base edge (outer circumference).
Regarding claim 18, the adjustment allows for a position manipulation of the plate with respect to the length (Figure 5).
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) 9-10, 15-16 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weingart (2,598,952) in view of Raftery (8,191,289).
Regarding claims 9, 10, 15-16 and 20, Weingart discloses the invention as described above but fails to disclose both a guide wheel and a plate in layered extension from the shovel blade edge. Like Weingart, Raftery discloses a guide mechanism for protecting a shovel blade edge. Unlike Weingart, Raftery discloses both a plate/skid mechanism (58) and a wheel (6) in combination with an extension/adapter (80)) for increased maneuverability around ground irregularities. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize a layered approach for the guide mechanism with both a plate/skid and a wheel in Weingart as taught by Raftery to enable the shovel to navigate surface irregularities with greater ease and to utilize extension/adapters to allow for attachment to different shovels as it would be combining prior art elements according to known methods to obtain predictable results (KSR International Co. v. Teleflex Inc., 550 USPQ2d 1385 (2007)).
Allowable Subject Matter
Claims 3-4, 12-13 and 19 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. Cote (5,297,351) discloses a shovel guide member with an angle adjustment but does not disclose repositioning along the blade edge.
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.
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, 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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