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
Claims 7-13 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 30, 2026.
Applicant's election with traverse of Group I and Species B in the reply filed on January 30, 2026 is acknowledged. The traversal is on the ground(s) that the identified groupings are sufficiently related and overlap in scope and that there is no additional search and/or examination burden. This is not found persuasive because elected group I is directed to an apparatus for removing plant material, which is classified in A01B41/04, whereas, the method of removing plant material which requires at least a step of identifying plant material to be removed from the plant and raising and lower a tube assembly toward and away from a plant requires a different field of search in at least A01G3/085. Species A, B, and C are mutually exclusive (and the disclosure did not set forth the blades can be used in combination). Each angled blade requires a different text search in at least A01G3/88 and B26B25/002.
The requirement is still deemed proper and is therefore made FINAL.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “separate inner fastening member (Claim 1, line 6)” and “a separate outer fastening member (Claim 1, lines 9-10)” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 1-6 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. 10,583,577 to Hall et al. in view of US Patent Application Publication No. 20150273719 to Aikens et al.
In re claim 1, Hall teaches an apparatus for removing plant material comprising:
(a) an inner cutting tube (1500) disposed around a longitudinal axis of rotation;
(b) an outer cutting tube (1700) disposed around the inner cutting tube;
(c) a plurality of separate inner cutting blades (1550) disposed around a base section (see Annotated Figure 1) of the inner cutting tube; and
(d) a plurality of separate outer cutting blades (1738) disposed around a base section (see Annotated Figure 1, below) of the outer cutting tube and below the plurality of inner cutting blades;
wherein the inner cutting tube is adapted to rotate around the longitudinal axis of rotation and (capable of) allow for the severing of plant material positioned between an inner cutting blade and outer cutting blade (Col. 19, lines 61-67, Col. 20, lines 1-7).
Note, the BRI of term tube per Merriam Webster Dictionary is defined as “any of various usually cylindrical structures or devices. It has been interpreted, Hall teaches both an inner and outer tube cutter.
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In re claim 2, wherein the base section of the inner cutting tube (see Annotated Figure 1, above) comprises an inner cutting head (see Annotated Figure 1, above), and the base section of the outer cutting tube (see Annotated Figure 1, above) comprises an outer cutting head (see Annotated Figure 1, above).
In re claim 3, wherein at least a portion of each of the inner (1550) and outer cutting blades (1738) extends inward toward the longitudinal axis of rotation.
In re claim 4, wherein the inner (1550) and outer cutting blades (1738) are angled relative to planes defined by opposing edges of the inner and outer cutting tubes, respectively (Col. 22, lines 5-12, Col. 23, lines 24-49).
In re claim 5, wherein the outer cutting tube (1700) is coupled to a mechanical arm (212) that is adapted to move the apparatus along the longitudinal axis of rotation.
Note, the arm is capable of being moving the apparatus along the longitudinal axis via a user.
In re claim 6, wherein the outer cutting tube (1700) is coupled to a vacuum source (1900, Col. 17, lines 63-67, Col. 18, lines 1-18) couples the outer tube to a vacuum source that is adapted to lift plant material through the inner cutting tube.
In re claim 15, Hall teaches an apparatus for removing plant material comprising:
(a) an inner cutting tube (1500) disposed around a longitudinal axis of rotation;
(b) an outer cutting tube (1700) disposed around the inner cutting tube;
(c) a plurality of separate inner cutting blades (1550) disposed around a base section (see Annotated Figure 1) of the inner cutting tube comprises:
(i) an upper portion connected to the inner cutting tube and
(ii) a lower portion comprising a first blade edge (blade 1550 has a first blade edge) extending inward toward the longitudinal axis of rotation; and
(d) a plurality of outer cutting blades (1738) disposed around a base section of the outer cutting tube, wherein each outer cutting blade comprises:
(i) an upper portion connected to the outer cutting tube and
(ii) a lower portion comprising a second blade edge (blade 1738 has a second blade edge) extending inward toward the longitudinal axis of rotation;
wherein the inner cutting tube is adapted to rotate around the longitudinal axis of rotation and allow for the severing of plant material positioned between the first and second blade edges (Col. 19, lines 61-67, Col. 20, lines 1-7).
Note, the BRI of term tube per Merriam Webster Dictionary is defined as “any of various usually cylindrical structures or devices. It has been interpreted, Hall teaches both an inner and outer tube cutter.
In re claim 16, wherein the base section of the inner cutting tube (see Annotated Figure 1, Pg. 5, above) comprises an inner cutting head (see Annotated Figure 1, Pg. 5, above), and the base section of the outer cutting tube (see Annotated Figure 1, Pg. 5, above) comprises an outer cutting head (see Annotated Figure 1, Pg. 5, above).
In re claim 17, wherein the inner (1550) and outer cutting blades (1738) are angled relative to planes defined by opposing edges of the inner and outer cutting tubes, respectively (Col. 22, lines 5-12, Col. 23, lines 24-49).
In re claim 19, wherein the outer cutting tube (1700) is coupled to a mechanical arm (212) that is adapted to move the apparatus along the longitudinal axis of rotation.
Note, the arm is capable of being moving the apparatus along the longitudinal axis via a user.
In re claim 20, wherein the outer cutting tube (1700) is coupled to a vacuum source (1900, Col. 17, lines 63-67, Col. 18, lines 1-18) couples the outer tube to a vacuum source that is adapted to lift plant material through the inner cutting tube.
Regarding claims 1, 15, and 18, Hall teaches the inner and outer blades are disposed around the base section, but does not provide details to how the blades are connected to the inner and outer tubes. Hall does not teach wherein each inner cutting blade is connected to the inner cutting tube using a separate inner fastening member, wherein each outer cutting blade is connected to the outer cutting tube using a separate outer fastening member, and wherein the position of an inner cutting blade may be adjusted via the corresponding inner fastening member.
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Aikens teaches in the art of rotary cutters attaching a plurality of blades (104) to a tube (102) via fastening members (126).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to connect the inner and outer blades to the inner and outer tubes of Hall via fastening members as taught by Aikens to allow blades to be repaired or replaced due to damage or dulling (Para 0091). One having ordinary skill in the art would recognize that making something separable that was previously one piece is obvious. In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) See MPEP 2144.04, Section V, Part B.
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 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4 and 8 of U.S. Patent No. 11,737,395. Although the claims at issue are not identical, they are not patentably distinct from each other because application claims 1 and 6 are anticipated by claims 4 and 8 of ‘395.
Claim 4 to Ortega recites an apparatus comprising:
(a) an upper cutting ring (201) comprising a plurality of upper cutting blades (203), wherein the upper cutting ring extends from a rotatable inner cutting tube; and
(b) a lower cutting ring (202) that is dimensioned to fit below the upper cutting ring, the lower cutting ring comprising a plurality of lower cutting blades (204), wherein the lower cutting ring extends from a stationary outer cutting tube (113) positioned around the inner cutting tube (111);
wherein adjacent upper and lower cutting blades define an opening (208) dimensioned to allow the entry of plant material between the adjacent upper and lower cutting blades;
and further wherein the adjacent upper and lower cutting blades are adapted to converge to substantially close the opening and sever at least a portion of the plant material when at least one of the upper or lower cutting rings is rotated (Col. 13, lines 44-51). Here, the more specific patent claims encompass the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11,737,395. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 4 is anticipated by claim 7 of ‘395. Here, the more specific patent claims encompass the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. The chart below details the relationship between of the pending claims and Patent ‘395, which are being rejected under nonstatutory double patenting.
US Patent No. 11,737,395
App 19/007,407
1
4
4
7
1,6
8
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Patent No. 10343296 teaches an apparatus having an inner cutting tube and an outer cutting tube. US Patent No. 9943978 teaches a rotary cutting blade fastened to a ring using multiple fasteners.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER S MATTHEWS whose telephone number is (571)270-5843. The examiner can normally be reached Monday-Thursday 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached at 571-272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER S MATTHEWS/Primary Examiner, Art Unit 3724
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