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 .
Election/Restrictions
Group I. Claims 1-14, drawn to A stump grinding system, classified in 144/24.12.
Group II. Claims 15-20, drawn to a method of using, classified in 144/334.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the process as claimed can be practiced by another and materially different apparatus.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
Each invention requires a materially different search.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Ryan Zawada on 21 July 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-15. Affirmation of this election must be made by applicant in replying to this Office action. Claims 16-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,937,555. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims are narrower than the pending claims. For claim 1, both claim the vehicle, stump grinder, grinder wheel and chassis. The patented claim further claims a body engaged with the chassis and then the pending claims claim the grinder wheel having a visible portion that is disposed outside of the chassis and the patented claims claim the grinding wheel is partially disposed outside of the body. But as the body is part of the chassis the patented claim reads on the pending claim. Pending claim 2 is identical to patented claim 2.
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 14 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. For claim 14 there is no antecedent basis for “the first drive shaft” and “the second drive shaft”.
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.
(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.
Claim(s) 1-3, 5, 7-9 and 11-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 7,748,421 to Everett (Everett).
Concerning claim 1, Everett discloses a stump grinding system, comprising:
a vehicle (20) having a first end, a second end opposite to the first end, and a longitudinal axis defined therebetween; and a stump grinder (at 40) adapted to engage with the vehicle, the stump grinder comprises:
a chassis (40) operably engaged with the vehicle (20) at one of a first end and a second end of the vehicle and having an operative end; and
a grinder wheel (70) operably engaged with the chassis (40) at the operative end, the grinder wheel (70) having a visible portion that is disposed outside of the chassis (40) at the operative end and extends along a transverse axis of the stump grinder.
Concerning claim 2, Everett discloses an operator station (the cab) of the vehicle (20) that is adaptable to view the visible portion of the grinder wheel (70); wherein the operator station is positioned opposite to the stump grinder relative to the longitudinal axis (see figure 1).
Concerning claim 3, Everett discloses a line-of-sight axis extending from the operator station of the vehicle (20); wherein the visible portion of the grinder wheel (70) intersects the line-of-sight axis.
Concerning claim 5, Everett discloses the grinder wheel (70) is configured to rotate in a plane that is orthogonal to the longitudinal axis of the vehicle.
Concerning claim 7, Everett discloses in figure 1 the stump grinder is oriented at approximately ninety degrees relative to the longitudinal axis of the vehicle.
Concerning claim 8, Everett discloses the grinder wheel (70) is moveably mounted on a plane that is parallel to a longitudinal axis of the stump grinder.
Concerning claim 9, Everett discloses the plane intersects the line of sight from the operator’s station.
Concerning claim 11, Everett discloses the stump grinder further comprises: a direction of rotation defined by the grinder wheel, wherein the direction of rotation is parallel to the transverse axis of stump grinder.
Concerning claim 12, Everett discloses a direction of power applied to the stump grinder is approximately ninety degrees relative to a direction of travel of the vehicle.
Concerning claim 13, Everett discloses the stump grinder further comprises: a first driving axis defined by a PTO drive shaft (210) of a drive assembly of the stump grinder that is parallel with a direction of travel of the vehicle; and a second driving axis defined by a grinder drive shaft (250) of the drive assembly that is parallel with the first driving axis and the direction of travel of the vehicle.
Concerning claim 14, Everett discloses the stump grinder further comprises: a belt drive assembly (212) engaging with the first drive shaft (210) of the stump grinder and the second drive shaft (250) of the stump grinder; wherein the belt drive assembly (212) is oriented along a plane that is perpendicular to a direction of travel of the vehicle.
Claim(s) 1-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 7,150,300 to Peterson (Peterson).
Concerning claim 1, Peterson discloses a stump grinding system, comprising:
a vehicle (12) having a first end, a second end opposite to the first end, and a longitudinal axis defined therebetween; and a stump grinder (10) adapted to engage with the vehicle, the stump grinder comprises:
a chassis (30) operably engaged with the vehicle (12) at one of a first end and a second end of the vehicle and having an operative end; and
a grinder wheel (18) operably engaged with the chassis (30) at the operative end, the grinder wheel (18) having a visible portion that is disposed outside of the chassis (30) at the operative end and extends along a transverse axis of the stump grinder (see figure 4).
Concerning claim 2, Peterson discloses an operator station (12a) of the vehicle (12) that is adaptable to view the visible portion of the grinder wheel (18); wherein the operator station is positioned opposite to the stump grinder relative to the longitudinal axis (see figure 1).
Concerning claim 3, Peterson discloses a line-of-sight axis extending from the operator station of the vehicle (12); wherein the visible portion of the grinder wheel (18) intersects the line-of-sight axis.
Concerning claim 4, Peterson discloses in figure 1 the vehicle (12) further comprises: a set of front wheels provided at the first end of the vehicle; and a set of rear wheels provided at the second end of the vehicle; wherein the visible portion of the grinder wheel (18) extends transversely beyond at least one wheel of the set of front wheels or the set of rear wheels.
Concerning claim 5, Peterson discloses the grinder wheel (18) is configured to rotate in a plane that is orthogonal to the longitudinal axis of the vehicle.
Concerning claim 6, Peterson discloses in figures 4 and 5 a vertical axis that extends between a top end of the stump grinder (10) and a bottom end of the stump grinder (10);
a grinder wheel housing (16) of the body operably engaged with the chassis (30) and defining a chamber (between 44 and 48 as seen in figure 8);
wherein the visible portion of the grinder wheel (18) extends laterally outward from the chamber at a first position along the transverse axis of the stump grinder while still intersecting the line of sight; and
wherein a lower portion of the grinder wheel (18) extends vertically outward from the chamber at a second position along the vertical axis of the stump grinder.
Concerning claim 7, Peterson discloses the stump grinder (10) is oriented at approximately ninety degrees relative to the longitudinal axis of the vehicle (12).
Concerning claim 8, Peterson discloses the grinder wheel (16) is moveably mounted on a plane that is parallel to a longitudinal axis of the stump grinder (10).
Concerning claim 9, Peterson discloses the plane intersects the line of sight from the operator’s station.
Concerning claim 10, Peterson discloses the grinder wheel (16) comprises: a plate rotatably engaged with the chassis (30) at the operative end; a first set of teeth (26) operably engaged with a first surface of the plate (18a); and a second set of teeth (26) operably engaged with a second surface of the plate (18b); wherein the visible portion includes a section of the plate, at least one tooth of the first set of teeth, and at least one tooth of the of the second set of teeth viewable from an operator station of the vehicle.
Concerning claim 11, Peterson discloses the stump grinder further comprises: a direction of rotation defined by the grinder wheel, wherein the direction of rotation is parallel to the transverse axis of stump grinder.
Concerning claim 12, Peterson discloses a direction of power applied to the stump grinder is approximately ninety degrees relative to a direction of travel of the vehicle.
Allowable Subject Matter
Claim 15 is 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.
The following is a statement of reasons for the indication of allowable subject matter: The prior art does not disclose the stump grinder further comprises a first driving axis and a second driving axis and “wherein a power takeoff of the tractor is adapted to be positioned between the first and second driving axes of the stump grinder”. Instead while Peterson does disclose a power take off (20) of the tractor (12) it does not disclose the two driving axes as the power takeoff of the tractor is directedly connected to the grinding wheel (18). While Everett does disclose two driving axes, the tractor does not have a power takeoff that is adapted to be positioned between the first and second driving axes of the stump grinder. Instead the stump grinder is powered by a hydraulic motor (160) that is on the stump grinder chassis.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The other art cited shows other stump grinding systems that provide visibility to the operator.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Matthew Katcoff whose telephone number is (571)270-1415. The examiner can normally be reached M-Th: 8-4, Fri: Flex.
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 Templeton can be reached at (571) 270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew Katcoff/ Primary Examiner, Art Unit 3725
08/06/2026
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