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 .
Claim Objections
Claims 2, 4 and 6-11 are objected to because of the following informalities:
(claim 2, line 1) “The milling tooth” should be changed to “The milling wheel”.
(claim 4, line 3) “at least one receiving hole” should be changed to either “at least one of the first receiving hole and the second receiving hole”, or “at least one of the first and second receiving holes”.
(claim 6, line 3) “two locking holes” should be changed to “wherein the at least one locking hole includes two locking holes”.
(claim 6, line 4) “the first bearing block” should be changed to “a first bearing block”.
(claim 6, line 5) “the second bearing block” should be changed to “a second bearing block”.
(claim 7, line 4) “a folding tooth” should be changed to “the folding tooth”.
(claim 8, line 4) “a folding tooth” should be changed to “the folding tooth”.
(claim 9, line 4) “a fixed tooth” should be changed to “the fixed tooth”.
(claim 10, line 5) “the at least one locking pin” should be changed to “the locking pin”.
(claim 11, line 5) “at least one cutting wheel” should be changed to “the at least one cutting wheel”.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a fixing device…configured to hold” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The specification describes wherein to form a fixing device (40), a locking pin (48) is inserted into two locking holes (41, 42) in bearing blocks (31, 32).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 7-10, 12 and 13 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.
Claims 7-10 and 12 recite the limitation "a cutting wheel". It is unclear, based on the claim language, whether applicant is referring to the milling wheel or introducing an additional wheel. Clarification is needed.
Claim 8 recites the limitation "the at least one locking hole" in line 3. There is insufficient antecedent basis for this limitation in the claim. It appears that claim 7 should be dependent upon claim 5 instead of claim 1 to provide proper antecedent basis for this limitation.
Claim 10 recites the limitation "the at least one locking hole" in line 3. There is insufficient antecedent basis for this limitation in the claim. It appears that claim 9 should be dependent upon claim 5 instead of claim 1 to provide proper antecedent basis for this limitation.
Claim 13 is rejected for being dependent upon a rejected base claim.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jann et al. (WO 2020/038750).
As concerns claim 1, Jann shows a wheel (10) having a drum-shaped hub (inner portion of wheel frame 18), on the outer circumference of which there are arranged receptacles (outer portion of wheel frame 18) for cutting teeth (12) and at least one holder (portion of wheel frame 18 that supports blades 12) for a folding tooth (12 [released position]), wherein the holder has a bearing pin (bearing [not shown] arranged in bores 36, 38 in order to enable blade 12 to rotate about pivot axis 16) for holding the folding tooth pivotably and releasably (Fig. 4 & 5) about a pivot axis (16), wherein a fixing device (20) is arranged on the holder and is configured to hold a fixed tooth (12 [holding position]) mounted on the bearing pin in a fixed position (Fig. 2 & 3).
As concerns claim 2, Jann shows wherein the holder has two bearing blocks (two portions of wheel frame 18) which are spaced apart from one another and between which the bearing pin extends and is releasably mounted thereon (Fig. 2-5).
As concerns claim 3, Jann shows wherein a first receiving hole (38) for receiving a first end of the bearing pin is designed on a first bearing block (first portion of wheel frame 18) and a second receiving hole (38) for receiving a second end of the bearing pin is designed on a second bearing block (second portion of wheel frame 18).
As concerns claim 4, Jann shows wherein at least one receiving hole is configured as a through-hole for inserting and/or sliding out the bearing pin (Fig. 3 & 5).
As concerns claim 5, Jann shows wherein the fixing device (20) has at least one locking hole (40) for receiving a locking pin (22) in the holder (Fig. 3).
As concerns claim 6, Jann shows wherein two locking holes (40) are provided, and a first locking hole (40) is designed on a first bearing block (first portion of wheel frame 18) and a second locking hole (40) is designed on a second bearing block (second portion of wheel frame 18).
As concerns claim 7, Jann shows wherein a folding tooth (12 [released position]) is pivotably mounted on the bearing pin, in order to form a cutting wheel with the folding tooth on the at least one holder (Fig. 1).
As concerns claim 8, Jann shows wherein a dummy plug (22) is inserted into the at least one locking hole (40) to form a cutting wheel with the folding tooth (Fig. 5).
As concerns claim 9, Jann shows wherein a fixed tooth (12 [holding position]) is mounted on the bearing pin to form a cutting wheel with the fixed tooth and is fixedly held by means of the fixing device (Fig. 1).
As concerns claim 10, Jann shows wherein for forming a cutting wheel with the fixed tooth, a locking pin (22) is inserted into the at least one locking hole (40) for fixedly holding the fixed tooth (Fig. 3), and the locking pin extends into a suitable recess (24) in the fixed tooth and thus fixes the fixed tooth on the bearing pin (Fig. 3).
As concerns claim 11, Jann shows a cutter with a cutter frame, on the underside of which at least one end shield is arranged for rotatably supporting at least one cutting wheel (structure of cutter not shown in Fig. 1), wherein the at least one cutting wheel (10) according to claim 1 is arranged (Fig. 1).
Allowable Subject Matter
Claims 12 and 13 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.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record does not appear to anticipate and/or render obvious a method for converting a cutting wheel for a diaphragm wall cutter, having a drum-shaped hub, on the outer circumference of which there are arranged receptacles for cutting teeth and at least one holder for a folding tooth, wherein the holder has a bearing pin for holding the folding tooth pivotably and releasably about a pivot axis, wherein a fixing device is arranged on the holder and is configured to hold a fixed tooth mounted on the bearing pin in a fixed position, and wherein a folding tooth is pivotably mounted on the bearing pin of the at least one holder of the cutting wheel and is released and removed, and a fixed tooth is arranged on the bearing pin and is held in a fixed position on the holder by the fixing device.
Jann shows a cutting wheel for a diaphragm wall cutter, having a drum-shaped hub, on the outer circumference of which there are arranged receptacles for cutting teeth and at least one holder for a folding tooth, wherein the holder has a bearing pin for holding the folding tooth pivotably and releasably about a pivot axis, wherein a fixing device is arranged on the holder and is configured to hold a fixed tooth mounted on the bearing pin in a fixed position. However, Jann does not show a method of converting the cutting wheel, wherein a folding tooth is pivotably mounted on the bearing pin of the at least one holder of the cutting wheel and is released and removed, and a fixed tooth is arranged on the bearing pin and is held in a fixed position on the holder by the fixing device. In other words, Jann teaches a folding tooth (blade 12 in the released position) and a fixed tooth (blade 12 in the holding position), but does not teach releasing and removing a folding tooth from the holder and arranging and holding a fixed tooth on the holder in a fixed position by the fixing device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Haker et al. (US 3,589,452) shows a pivoting tooth arranged on a holder (Fig. 4) and held in a fixed position by a fixing device (Fig. 5).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R BUCK whose telephone number is (571)270-3653. The examiner can normally be reached Monday-Thursday 6:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at (571)272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW R BUCK/Primary Examiner, Art Unit 3672
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