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 .
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.
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Instant Application 18969347
US 12163307
Matching claims
13+14+16
2
Claim 13 of the instant application is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of issued U.S. Patent No. 12163307 (see the table below).
Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to a person having ordinary skill in the art at the time of filing to attach all the extension modules. Claim 2 of issued patent US 12163307 states “wherein the extension module includes at least one of a guard module, a pair of side bars, and an edge module” and Fig 2 of the issued patent depicts all the extension modules attached. Claim 13 of the instant application claims “an extension attached to the bucket core, including: a pair of side bars…a guard…and an edge portion”. Based on claim 2 of the issued patent and Fig 2 of the issued patent, claim 13 of the instant application is considered obvious. Claims 14-16 are rejected due to their dependency on claim 13. Nevertheless, the claims have still been examined as best understood.
Specification
The disclosure is objected to because of the following informalities:
Para [0026] states “Fig 6 is a rear perspective view of the bucket core shown in Fig 3”. Fig 3 is stated to depict bucket assembly (para [0023]). Fig 6 appears to depict the bucket core of Fig 5.
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 4 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.
Claim 4 recites “the brace is removably welded to the wrapper” in line 8. The examiner understands the bracing element to be “a temporary structure only” and used for a “storage phase or transportation phase of the bucket core” (Applicant’s specification; para [0050], lines 4-6). Claims 1 and 4 are apparatus claims that recite the “bucket assembly” with the “extension” attached to the bucket core and, therefore, the end product is not a bucket core. It appears the brace is attached the bucket core and then removed so that the bucket core can be finished with extension module(s) which is considered to be a product-by-process limitation for the “bucket assembly” of apparatus claim 4. It is noted that the patentability of an apparatus claim does not necessarily depend on its method of production. In this case, the “bracing element may be subsequently removed prior to attachment between the bucket core and the extension module” (Applicant’s specification para [0050], lines 8-10). The examiner understands the “bucket assembly” to include the extension (as claimed in claim 1) and exclude the removable bracing element in view of the specification. Applicant’s Figures 16-17 further support the bracing element as being removed prior to the attachment of any extension module(s). It is unclear to the examiner how the bucket assembly would function properly if the bracing element is extending across the concave surface of the wrapper (as depicted on the bucket core in Applicant’s Fig 7). Determination of patentability is based on the end product which, in this case, is the bucket assembly (MPEP 2113). Nevertheless, the claims have been examined as best understood.
The examiner notes that the “brace” can be properly included in an apparatus claim of “the bucket core” and in a method claim that details the process of “attaching the brace” and then “removing the brace” (clearly detailed in Applicant’s Figs 16-17); however, both of these instances were already considered patentable and included in the issued patent US 12163307 (detailed in the Double Patenting section above). The examiner suggests amending the claims to clearly distinguish how the end product of the claimed “bucket assembly” is inventive over the prior art.
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 1-3, 5-13 are rejected under 35 U.S.C. 103 as being unpatentable over Washbond (US 3243906) in further view of Oke et al. (US 3853232).
Regarding claim 1, Washbond discloses a bucket assembly for a work machine comprising:
a bucket core including:
a pair of side sections, the side sections being spaced apart to define a width of the bucket (21 and 22 define the width in Fig 2);
a wrapper extending between the pair of side sections, the wrapper including:
a substantially planar, upward sloping, upper section;
an arcuate middle section;
a substantially planar, downward sloping, first lower section;
an obtuse bend; and
a substantially planar, second lower section (see Annotated Figure 1);
wherein the wrapper forms a concave, even, continuous surface defined thereover between the upper section and the middle section, and between the middle section and the first lower section, with the obtuse bend demarking the first lower section and the second lower section and continuous therewith (see Annotated Figure 1; the wrapper is concave and continuous from the upper section to the second lower section), and
a support extending between the pair of side sections, the support being attached to a rear of the upper section (see Annotated Figure 1; support extends between the side sections and is attached to the rear of the upper section); and an extension module attached to the bucket core, including:
a pair of side bars operatively and respectively attached to the pair of side sections, the pair of side bars being spaced apart by the width of the bucket (27/28);
a guard extending between the pair of side sections and attached to the upper section of the wrapper (see Annotated Figure 2); and
an edge portion extending between the pair of side sections and rigidly attached to the bucket core solely at the second lower section of the wrapper (edge portion 26 extends between side sections in Fig 2 and are considered an edge portion of the bucket solely attached at the second lower section of the wrapper).
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Annotated Figure 1
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Washbond fails to specifically disclose the supporting element being fully contained within a boundary defined by an outward edge of the pair of side sections.
However, the supporting element of Washbond is considered to be a hollow piece and if it was not contained within a boundary defined by an outward edge of the pair of side sections, the supporting element would be exposed and could accumulate dirt, mud, or water which would lead to premature deterioration of the bucket and the supporting element. Therefore, it would have been an obvious matter of design choice to a person having ordinary skill in the art at the time of filing to make the supporting element be fully contained within a boundary defined by an outward edge of the pair of side sections in order to cover the ends of the supporting element, as Applicant has not disclosed that it solves any stated problem of the prior art or is for any particular purpose. It appears that the invention would perform equally well or better as the invention disclosed by covering the ends of the supporting element with the side sections.
For the sake of argument, Oke discloses a similar bucket with a supporting element (68, Fig 1) and teaches the supporting element being fully contained within a boundary defined by an outward edge of the pair of side section (supporting element is within the boundaries of side section 16 in Fig 1). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Washbond to incorporate the teachings of Oke and modified the side sections to fully contain the supporting element within the boundary defined by an outward edge of the pair of side sections. One would have made this modification to cover the ends of the hollow supporting element to avoid the accumulation of dirt, mud, or water that would lead to premature failure of the bucket.
Regarding claim 2, Washbond further discloses wherein inner surfaces of the wrapper and the side sections define a receptacle (Fig 1; receptacle for “loading rock”; col 1, lines 23-29), but the combination does not specifically disclose a contact face of the wrapper being exclusive of fasteners extending therethrough.
However, it has been held to be within the general skill of a worker in the art to make plural parts unitary as a matter of obvious engineering choice. Attaching parts using fasteners or by welding are considered to be equivalent, so having the wrapper be "exclusive of fasteners" does not affect the patentability of the claim because using fasteners can be replaced by welding.
Regarding claim 3, Washbond further discloses the bucket assembly wherein the extension is welded to the bucket core (col 2, lines 15-20).
Regarding claim 5, Washbond further discloses the bucket assembly wherein the guard of the extension is attached to the support and a distal end of the upper section of the wrapper (see Annotated Figure 1-2).
Regarding claim 6, Washbond further discloses the bucket assembly the extension includes a pair of side extension plates respectively attached to and between the pair of side sections and the pair of side bars (see Annotated Figure 3).
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Annotated Figure 3
Regarding claim 7, Washbond further discloses the bucket assembly the bucket core further including a paddle plate extending from a bottom of the first lower section of the wrapper, the paddle plate being substantially parallel to the second lower section of the wrapper (paddle plate 36 extends from the first lower section via member 42; the lower section is considered parallel to the second lower section; see Annotated Figure 4).
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Annotated Figure 4
Regarding claim 8, Washbond further discloses the bucket assembly wherein the edge module is operatively attached to a distal end of the second lower section of the wrapper and a distal end of the paddle plate (Fig 3 and Fig 5; 51 and 48 are considered attached to distal end of the second lower section and the distal end of the paddle plate 36 during operation).
Regarding claim 9, Washbond further discloses the bucket assembly wherein the extension further including:
a first edge extension plate attached to and between a distal end of the second lower section and the edge portion (Fig 3 and Fig 5; 26); and
a second edge extension plate attached to and between a distal end of the paddle plate and the edge portion (Fig 3 and Fig 5; 46).
Regarding claim 10, Washbond further discloses the bucket assembly wherein the bucket assembly is constructed to distribute stress on the bucket core away from a plurality of weld seams attaching the bucket core to the extension solely at the second lower section (the stress concentrations are considered to occur at the obtuse bend on the bucket core away from a plurality of weld seams attaching the core to the extension modules; structure is similar to claimed structure).
The claim language “distribute stress on the bucket core away from a plurality of weld seams” is considered to comprise functional limitations. Functional limitations do not impart any positively claimed structural limitations and therefore are not given any patentable weight in an apparatus claim. The claimed invention must comprise a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As the device of Washbond does have a similarly structured wrapper, it meets the structural limitations of the claim. The device is considered capable of functioning as claimed to distribute stress on the bucket core away from the plurality of weld seams.
Regarding claim 11, Washbond further discloses the bucket assembly wherein the stress occur(s) on the obtuse bend of the bucket core (the stress occurs at the obtuse bend on the bucket core; structure is similar to claimed structure).
The claim language “the stress occur(s) on the obtuse bend of the bucket core” is considered to comprise functional limitations. Functional limitations do not impart any positively claimed structural limitations and therefore are not given any patentable weight in an apparatus claim. The claimed invention must comprise a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As the device of Washbond does have an obtuse bend located on the wrapper, it meets the structural limitations of the claim. The device is considered capable of functioning as claimed to locate the stress on the obtuse bend.
Regarding claim 12, Washbond further discloses the bucket assembly wherein the support is attached to a rear of the upper section of the wrapper at distal and proximal edges thereof (claim language is broad; the support of Annotated Figure 1 extends between the side sections and is attached to the rear of the upper section).
Regarding claim 13, Washbond further discloses a method comprising:
providing a bucket assembly comprising:
a bucket core including:
a pair of side sections, the side sections being spaced apart to define a width of the bucket (21 and 22 define the width in Fig 2),
a wrapper extending between the pair of side sections, the wrapper including:
a substantially planar, upward sloping, upper section,
an arcuate middle section,
a substantially planar, downward sloping, first lower section,
an obtuse bend, and
a substantially planar, second lower section (see Annotated Figure 1),
wherein the wrapper forms a concave, even, continuous surface defined thereover between the upper section and the middle section, and between the middle section and the first lower section, with the obtuse bend demarking the first lower section and the second lower section and continuous therewith (see Annotated Figure 1; the wrapper is concave and continuous from the upper section to the second lower section), and
a support extending between the pair of side sections and the support being attached to a rear of the upper section (see Annotated Figure 1; support extends between the side sections and is attached to the rear of the upper section); and
an extension attached to the bucket core, including:
a pair of side bars operatively and respectively attached to the pair of side sections, the pair of side bars being spaced apart by the width of the bucket (27/28),
a guard extending between the pair of side sections and attached to the upper section of the wrapper (see Annotated Figure 2), and
an edge portion extending between the pair of side sections and rigidly attached to the bucket core solely at the second lower section of the wrapper (edge portion 26 extends between side sections in Fig 2 and are considered an edge portion of the bucket solely attached at the second lower section of the wrapper).
Washbond fails to specifically disclose the supporting element being fully contained within a boundary defined by an outward edge of the pair of side sections.
However, the supporting element of Washbond is considered to be a hollow piece and if it was not contained within a boundary defined by an outward edge of the pair of side sections, the supporting element would be exposed and could accumulate dirt, mud, or water which would lead to premature deterioration of the bucket and the supporting element. Therefore, it would have been an obvious matter of design choice to a person having ordinary skill in the art at the time of filing to make the supporting element be fully contained within a boundary defined by an outward edge of the pair of side sections in order to cover the ends of the supporting element, as Applicant has not disclosed that it solves any stated problem of the prior art or is for any particular purpose. It appears that the invention would perform equally well or better as the invention disclosed by covering the ends of the supporting element with the side sections.
For the sake of argument, Oke discloses a similar bucket with a supporting element (68, Fig 1) and teaches the supporting element being fully contained within a boundary defined by an outward edge of the pair of side section (supporting element is within the boundaries of side section 16 in Fig 1). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Washbond to incorporate the teachings of Oke and modified the side sections to fully contain the supporting element within the boundary defined by an outward edge of the pair of side sections. One would have made this modification to cover the ends of the hollow supporting element to avoid the accumulation of dirt, mud, or water that would lead to premature failure of the bucket.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Washbond and Oke as applied to claim 1 above, and further in view of Cantu et al. (US 20190316318).
Regarding claim 4, the combination of Washbond and Oke fails to disclose a brace as claimed; however, Cantu discloses a similar bucket and teaches a brace extending across the concave surface of the wrapper (Fig 15; 402) and including:
a frame attached to the upper section and at least one of the first lower section, the obtuse bend, and second lower section, and
a pair of side frames connecting the frame to the pair of side sections of the bucket core (Fig 15 depicts the brace 402 with a frame attached to the upper section, the side sections, and the first lower section. Even if it’s only mechanically attached to side sections, the bracing element is still rigid with bucket. The brace is formed fit into the bucket and non-mechanically attached to the other sections; therefore, the bracing element is considered to be attached to the noted sections).
The claim limitation “the brace is removably welded to the wrapper” is unclear for the reasons set forth in the 112 section above. Because claim 4 is an apparatus claim, temporary structures that are removed prior to the final “bucket assembly” cannot be considered as part of the apparatus. Determination of patentability is based on the end product. Further, the term “removably welded” is broad. It would have been an obvious matter of design choice to a person having ordinary skill in the art at the time of filing to weld the brace to the wrapper and cutting a weld is also considered obvious. It appears that the invention would perform equally well as the invention disclosed by attaching the bracing element in any reasonable way.
Washbond, Oke, and Cantu are all considered analogous to the claimed invention because they are in the same field of endeavor. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have further modified Washbond to incorporate the teachings of Cantu and combined the use of the brace removably attached to the wrapper. One would have done this in order to temporarily divide the receptacle into multiple compartments (any structure added to the wrapper is considered to add to the structural rigidity of the bucket).
Claim(s) 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Washbond and Oke as applied to claim 13 above, and further in view of Cantu and Weir (NPL reference 1).
Regarding claim 14, Washbond and Oke fail to specifically disclose the method further comprising prebuilding a bucket core and attaching a brace as claimed.
Cantu discloses a similar bucket and teaches a brace extending across the concave surface of the wrapper (Fig 15; 402) and including:
a frame attached to the upper section and at least one of the first lower section, the obtuse bend, and second lower section, and
a pair of side frames connecting the frame to the pair of side sections of the bucket core (Fig 15 depicts the brace 402 with a frame attached to the upper section, the side sections, and the first lower section. Even if it’s only mechanically attached to side sections, the bracing element is still rigid with bucket. The brace is formed to fit into the bucket and non-mechanically attached to the other sections; therefore, the bracing element is considered to be attached to the noted sections).
Weir further teaches the method comprising:
prebuilding a bucket core (see the Standard-duty plate lip bucket; the STDP is considered to be a bucket core);
attaching at least some of a plurality of parts of the extension to the standard bucket, the attaching being solely at the second lower section of the wrapper (the heavier duty excavator bucket options are considered to build upon the standard bucket with parts for an extension module; the edge module is considered to be at least some of the plurality of parts of the extension that is attached solely at the second lower section of the wrapper).
Washbond, Oke, Cantu, and Weir are all considered analogous to the claimed invention because they are in the same field of endeavor of earth-working buckets. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the combination of Washbond and Oke to incorporate the teachings of Cantu and Weir and combined the use of prebuilding a bucket core and removably attaching a brace to the bucket core. One would have made this combination to keep the bucket core rigid with the brace to prevent any warping.
Regarding claim 15, Washbond further discloses the bucket core being fully welded before said attaching the bucket core to said at least some of the plurality of parts of the extension (col 1 lines 68-70; the sections are considered integral or welded together), but fails to specifically disclose the supporting element also being welded to the wrapper and side sections.
However, it would be notoriously obvious to a person having ordinary skill in the art at the time of filing to fully weld the pair of sections, the wrapper, and the supporting element together.
Regarding claim 16, the combination of Washbond, Oke, Cantu, and Weir discloses the method further comprising, before said attaching at least some of the plurality of parts of the extension to the bucket core, receiving an order for said bucket assembly, the order reflecting at least one custom requirement, and the at least one custom requirement including the plurality of parts of the extension (Weir further teaches the heavier duty excavator bucket options building upon the standard bucket with parts for an extension module when an order reflecting at least one custom requirement is received).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have further modified the combination to incorporate the teachings of Weir and combined the use of an ordering and fabrication system with the bucket of the combination. One would have done this in order to provide a customer with a bucket to fit their specific needs or soil types.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Geith (Non-Patent Literature, https://www.youtube.com/watch?v=Nl7qHIbCIRU, May 2020) in further view of RSBM (Non-Patent Literature, https://www.youtube.com/watch?v=d-JSU1y2nkY, October 2018).
Regarding claims 1-16, Geith discloses the concept of fabricating partially completed buckets and attaching different components based on customer requirements. Based on the teachings of this reference, it would be obvious to fabricate any known bucket this way and attach any known modules or components to a partially completed bucket (see Annotated Figures 5-9)
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Geith is silent on any type of bracing element, however RSBM discloses building an excavator bucket and teaches the use of a bracing element that is used during fabrication (see Annotated Figure 10). The bracing element is considered to be rigid with the bucket and indirectly attached to any portion of the bucket. This is just one example of a bracing element and there are many more examples in the art. Attaching bracing elements to a structure for the purpose of keeping the structure rigid while welding is well-known in the art of welding. RSBM discloses a bracing element as a temporary element used during the fabrication of the excavator bucket. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Geith to incorporate the teachings of RSBM and used a bracing element during the fabrication of the excavator bucket to keep the structure rigid and prevent any warping.
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Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nardini (U.S. Patent No. 6,167,642) discloses a device with a similar structure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLAKE SCOVILLE whose telephone number is (571)270-7654. The examiner can normally be reached M-F 10:30-6 (ET).
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, Tom Will can be reached on (571) 272-6998. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLAKE E SCOVILLE/Examiner, Art Unit 3671
/CHRISTOPHER J SEBESTA/Supervisory Patent Examiner, Art Unit 3671
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