DETAILED CORRESPONDENCE
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 without traverse of Species I (figures 2-12 and claims 4-6) in the reply filed on August 7, 2026 is acknowledged.
Claims 7-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species II (figures 13-20), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 7, 2026.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7 and 12 of U.S. Patent No. 12,310,296 B2 in view of Fu (CN 112081382 A).
Regarding claim 3, claims 7 and 12 are obvious to all the claim limitations of claim 3 except the arrangement of the lifting and stick cylinder is disposed between the second limb and the first section of the first limb.
Fu discloses a similar an articulated boom (2, 3, 5, 6, 7, 8, and 9, see figure 10) comprising metal connection structure (2, see figure 10) and fiber composite beams (5 and 6, see figure 10), with a lifting and stick cylinder (9) disposed between a second limb (5) and the second section (considered the distal section of beam 6 closest to the pivotal connection between beams 5 and 6, see figure 10). Fu teaches that the lifting and stick cylinder (9) can be installed in any suitable location of the articulate boom (see paragraph 0146 of the attached machine translation).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the device of claims 7 and 12 by rearranging the location of the cylinder end of the lifting and stick cylinder of Lee so that the cylinder end is arranged on the first section of the first limb, so that the lifting stick cylinder arranged between the second limb and the first section of the first limb, to arrange a lifting and stick cylinder in any suitable location of an articulated boom as taught by Fu, to bending damage of the rod of the lifting and stick cylinder of Lee by arranging the cylinder end closer to the rod end, and/or as shifting the position of the cylinder end of the lifting stick cylinder to the first section of the first limb would not have modified the operation of the device In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
With the modification of Lee in view of Fu above, the second limb is electrically isolated from the superstructure of the machine.
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 1-6 and 9-10 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 pre-AIA the applicant regards as the invention.
Regarding claim 1, the limitation of “in particular a forest harvester” (line 1) renders the claim indefinite because the phrase “in particular” is optional language and leaves the claim unclear as to whether or not the machine is required to be a forest harvester. Thus, the scope of the claim is unclear. Is Applicant attempting to claim a particular structure of a forest harvester in claim 1?
For the purposes of examination, the claimed machine will be considered as not requiring the machine to be a forest harvester.
Regarding claims 2-6 and 9-10, these claims are rejected based on their dependency to claim 1.
Please review all claims before the formal response is submitted, as any new 112(b) rejections introduced in the response may be grounds for a Final Rejection.
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 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 1-2, 4-6, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR 100559237 B1) in view of Fu (CN 112081382 A).
Regarding claim 1, Lee discloses an Excavator having working device composed of complex material (see figures 1-2) comprising:
A machine (considered the excavator shown in figure 1), comprising a superstructure (see figure 1), an undercarriage (see figure 1) and an articulated boom (at least 7, 9, 11, 15, 17 and 19, see figure 1), which is pivotably connected to the superstructure (see figure 1) and which comprises a first limb (3, 7, 9, and 11, see figure 1), which is pivotably connected to the superstructure (see figure 1), and a second limb (15, 17, and 19), which is pivotably borne at the first limb (see figure 1), wherein the first limb comprises a first section (11, see figure 1), which is connected to the second limb, a second section (7 and 3, see figure 1), which is connected to the superstructure, and an electrically insulating connecting piece (9, see figure 1) which connects the first section to the second section (see figure 1) and which is rigidly connected to the first section and to the second section (see figure 1), and said connecting piece comprising glass fibers (see page 2 lines 22-24 and lines 38-40 of the previously attached machine translation in parent application 17/410,738 NPL of 12/05/2024 3 pages, for example see “it is particularly preferable that the fibers of the composite material are carbon or glass”) which are cast with a plastic matrix (see page 2 lines 24-25 and 38-40 of the previously attached machine translation in parent application 17/410,738 NPL of 12/05/2024 3 pages, for example see “it is preferable that the resin of the composite material be an epoxy resin …”). Lee further discloses a lifting and stick cylinder (29, see figure 1) disposed between the second limb and the second section of the first limb.
Lee does not explicitly disclose the arrangement of the lifting and stick cylinder is disposed between the second limb and the first section of the first limb.
Fu discloses a similar an articulated boom (2, 3, 5, 6, 7, 8, and 9, see figure 10) comprising metal connection structure (2, see figure 10) and fiber composite beams (5 and 6, see figure 10), with a lifting and stick cylinder (9) disposed between a second limb (5) and the second section (considered the distal section of beam 6 closest to the pivotal connection between beams 5 and 6, see figure 10). Fu teaches that the lifting and stick cylinder (9) can be installed in any suitable location of the articulate boom (see paragraph 0146 of the attached machine translation).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the working device of Lee by rearranging the location of the cylinder end of the lifting and stick cylinder of Lee so that the cylinder end is arranged on the first section (11, see figure 1 of Lee) of the first limb (instead of the second section), so that the lifting stick cylinder arranged between the second limb and the first section of the first limb, to arrange a lifting and stick cylinder in any suitable location of an articulated boom as taught by Fu, to bending damage of the rod of the lifting and stick cylinder of Lee by arranging the cylinder end closer to the rod end, and/or as shifting the position of the cylinder end of the lifting stick cylinder to the first section of the first limb would not have modified the operation of the device In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
With the modification of Lee in view of Fu above, the second limb is electrically isolated from the superstructure of the machine.
Regarding claim 2, Lee as modified by Fu further shows wherein the connecting piece (9, see figure 1) comprises a core (considered a core part of 9) which is wrapped by the glass fibers (see page 2 lines 22-24 and lines 38-40 of the previously attached machine translation in parent application 17/410,738 NPL of 12/05/2024 3 pages, for example see “it is particularly preferable that the fibers of the composite material are carbon or glass”). In addition, or alternatively, the connecting piece (9) is a core wrapped in glass fibers similar to connecting piece (17) shown in figure 2.
Regarding claim 4, Lee as modified by Fu further shows the connecting piece (9, as shown in figure 1) includes a first end region (considered the region next to section 11 as shown in figure 1) and a second end region (considered the region next to section 7 and 3 as shown in figure 1).
Lee as modified by Fu does not explicitly disclose the first end region of the connecting piece partially being introduced into the first section and said second end region of the connecting piece partially being introduced into the second section.
Lee teaches a limb (15, 17, and 19) of an articulated boom (at least 7, 9, 11, 15, 17 and 19, see figure 1) comprising a connecting piece (17, see figures 1-2) with the first end region (considered the end region with bolt holes 31 in figure 2) of the connecting piece (17) partially being introduced into the first section (19) and said second end region (considered the end region with bolt holes 35 in figure 2) of the connecting piece partially being introduced into the second section (15).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the working device of Lee as modified by Fu by providing the connecting piece (9) of Lee as modified by Fu with a first end region of the connecting piece partially being introduced into the first section and a second end region of the connecting piece partially being introduced into the second section, to provide a connecting piece partially inserted into first and second sections of a limb of an articulated boom as taught by Lee, and/or to combine prior art elements according to known methods to yield predictable results.
Regarding claim 5, Lee as modified by Fu as discussed above does not explicitly disclose the first end region and the second end region of the connecting piece which are introduced into the first section and into the second section respectively are connected to the first section and to the second section using connecting means.
Lee teaches a limb (15, 17, and 19) of an articulated boom (at least 7, 9, 11, 15, 17 and 19, see figure 1) comprising a connecting piece (17, see figures 1-2) connected to a first section (19) of the limb and to the second section of the limb by bolt holes (31, 33, 35, and 37, see figure 2) and bolts (see page 2 line 40 to page 3 line 2 of the previously attached machine translation in parent application 17/410,738 NPL of 12/05/2024 3 pages).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the working device of Lee as modified by Fu by providing bolt holes and bolts (as connecting means) between the connecting piece (9) of Lee as modified by Fu, the first section (11), and the second section (at least 7 of the second section), to provide bolt holes and bolts as connecting means between a connecting piece, a first section of a limb, and a second section of a limb as taught by Lee, and/or combine prior art elements according to known methods to yield predictable results.
Regarding claim 6, Lee as modified by Fu as discussed above does not explicitly disclose the first end region and the second end region of the connecting piece which are introduced into the first section and into the second section respectively are glued to the first section and to the second section respectively.
Lee teaches a limb (15, 17, and 19) of an articulated boom (at least 7, 9, 11, 15, 17 and 19, see figure 1) comprising a connecting piece (17, see figures 1-2) connected to a first section (19) of the limb and to the second section of the limb by an epoxy resin adhesive (see page 2 line 40 to page 3 line 2 of the previously attached machine translation in parent application 17/410,738 NPL of 12/05/2024 3 pages).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the working device of Lee as modified by Fu by providing an epoxy resin adhesive (as glue) between the connecting piece (9) of Lee as modified by Fu, the first section (11), and the second section (at least 7 of the second section), to provide an epoxy resin adhesive (as glue) between a connecting piece, a first section of a limb, and a second section of a limb as taught by Lee, and/or combine prior art elements according to known methods to yield predictable results.
Regarding claim 9, Lee as modified by Fu shows wherein the plastic matrix comprises thermosetting materials (as epoxy resin is a thermosetting material), thermoplastics (as epoxy resin is a thermoplastic) and/or elastomers (as epoxy resin is also known as polyepoxides which are a class of reactive prepolymers and polymers).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR 100559237 B1) in view of Fu (CN 112081382 A) as applied to claims 1-2, 4-6, and 9 above, and further in view of Breiml (EP 3656208 A1).
Regarding claim 10, Neither Lee nor Fu explicitly disclose a felling head, wherein the felling head is disposed at the articulated boom.
Breiml discloses a tool arm for work on poorly accessible positions (see figures 1-14, especially figure 12) comprising a vehicle (200), a tool arm (100) on the vehicle, and a tool (300) on the tool arm. Breiml teaches of providing the tool arm used in conjunction with a branch saw (i.e. a felling head) as a tool to trim trees (400, see paragraph 0050 of provided machine translation).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the articulated boom of Lee as modified Fu by providing a branch saw (i.e. a felling head) as a tool at the end of the articulated boom to trim trees disposed at the end of the boom of Lee as modified by Fu, to use a tool arm in conjunction with a branch saw as a tool to trim trees as taught by Breiml, to increase the variety of operations the machine of Lee conducts by enabling Lee to both operate as an excavator and a machine to trim trees, and/or to combine prior art elements according to known methods to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUAN J CAMPOS, JR whose telephone number is (571)270-5229. The examiner can normally be reached on Monday-Friday 9am-6pm.
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/JJC/
/ROBERT W HODGE/Supervisory Patent Examiner, Art Unit 3654
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