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
Applicant’s election of species 1, the drive motor operable to pivot, in the reply filed on 7/17/25 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-25 and 27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 21 has been amended to recite, “pivoting an elongate rail to directly engage the chain along a length of the elongated rail”. Applicant argues that support for this amendment is found in the explicit text of the specification, particularly when reading the definition of the structures shown in the drawings. There is no explicit text in the specification that states that the elongated rail directly engages the chain. Paragraph 60, of the printed publication, states a guide device (34, 35) engage the chain but nowhere states that the elongated rail directly engages the chain. Applicant points to figure 2b to show the elongated rail directly engages the chain. The figure is a side view of the apparatus but does not clearly show or teach how or if the elongated rail and the chain actually engage. For instance, the elongated rail may be located outside the width of the chain with the rollers (34, 35) extending from the elongated rail and the roller engage with the chain but the elongated rail would not and could not. Additionally, figure 2a shows a similar view of the apparatus and clearly shows the distal ends of the support arm (2) overlaps with the chain. However, it is clear that should the distal end of the support arm actually engage the chain, the chain’s movement would be hindered. Therefore, the figures cannot be relied upon to provide a definitive teaching that the elongated rail actually directly engages with the chain. The amendments to the claim constitute new matter as the written description is silent as to the elongated rail directly engaging with the chain and the figures do not provide a definitive teaching of the elongated rail directly engaging the chain.
The additional claims are rejected as depending from claim 21.
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 28-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 11,617,976.
Claim 28, the ‘976 patent recites a method of operating a rake system comprising providing a framework, a chain, an elongated rail connected to a first support arm, a second support arm pivotably connected to the elongated rail and connected to the framework, the second support art is located lower than the first support arm, and a plurality of engagement members (guide devices) configured to engage the chain and apply pressure to the chain, wherein at least one of the engagement members is located lower than the first support arm, as it is located on the second support arm and rotating the chain to discard debris (claims 1-4). The ‘976 patent does not specifically recite the elongated rail pivotably connected but does recite the elongated rail being connected at a point to the first support arm and the first support arm being pivotably connected at a point to the framework. Therefore, one of ordinary skill in the art would readily recognize that the elongated rail would likewise also be pivotably connected. Similarly, the ‘976 patent recites the second support arm located lower than the first support arm and the framework would inherently have an upper and lower portion. Claim 19 also recites moving debris upward, which would indicate the chain advances between the upper and lower portions of the framework.
The additional limitations of claims 29-31 are also recited in claims 1-25 of the ‘976 patent.
Claims 32-43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 11,617,976 in view of Duperon 5,425,875.
Claim 34, the ‘976 patent recites a method of operating a rake system comprising rotating a chain in a first direction, inherently between an upper and lower portion of the machine and inherently by some kind of a drive system, collecting debris and positioning the debris between the screen and the chain, moving debris in an upward discretion along the screen via a skimmer, configuring a first support arm connected to a frame in the lower portion of the machine such that the first support arm is operable to move the chain in an outward direction when debris is collected and when no debris is collected the first support arm moves to a normal position and discarding debris (claims 1-25). The ‘976 patent does not recite a drive system with a motor or swing arms.
Duperon teaches a method of operating a machine configured to collect debris comprising rotating a chain between a lower and upper portion of the machine by a drive system including a motor (30), collecting debris between the chain and a screen, a pair of downwardly extending swing arms (20) to pivot the drive system in an outward direction when debris is collected, and when no debris is collected, the swing arms pivot the drive system back to a normal position (fig. 1, 3, 6). The use of a motor would have obvious to one of ordinary skill in the art as this is a typical way to move a chain in such systems, as demonstrated by Duperon. It would have been obvious to one of ordinary skill in the art to use the swing arms of Duperon as it allows the drive system to move away from the screen to allow enough space for a larger object to be released from the system as it is raised (col. 4, line 48 – col. 5, line 10).
Claims 32 and 33, Duperon further teaches a drive motor at an upper portion of the system, the drive motor operable to rotate the chain without a sprocket at a lower portion of the system and pivoting drive motor outwardly relative to the framework when debris moves up the screen, when the debris is removed, the drive motor swings back toward the framework as stated above and would be obvious for the reasons stated above.
Claims 35-36, 39-41 and 43 are recited in claims 1-25 of the ‘976 patent.
Claims 37-38, Duperon further teaches the motor drives a sprocket located on an upper portion of the machine, the sprocket operable to pivot away from the screen and no drive sprocket is in a lower portion of the machine (fig. 1).
Claim 42, the ‘976 patent recites a frame but does not teach the frame oriented in a position that is not vertical to ground. The recitation of the relative orientation of the frame is a recitation of a change in the relative configuration of the system but does not provide a patentable distinction. The configuration of the apparatus is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration is significant, In re Dailey, 149 USPQ 47 (1966).
Response to Arguments
Applicant's arguments filed 2/11/26 have been fully considered but they are not persuasive.
Applicant arguments regarding the amendments to claim 21 being supported by the specification are addressed in the 112 rejection above.
Allowable Subject Matter
Claims 21-43 are allowed over the prior art.
The following is an examiner’s statement of reasons for allowance:
The claims are allowable over the prior art for the reasons stated in applicant’s reply filed 2/11/26.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN M KURTZ whose telephone number is (571)272-8211. The examiner can normally be reached Monday-Friday 8:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bobby Ramdhanie can be reached on 571-270-3240. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN M KURTZ/Primary Examiner, Art Unit 1779