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.
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.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-18 of U.S. Patent No. US 12251811 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to a linerbolt removal tool, including: a piston moveable within a housing/inertial body having receptacle, a gas charged accumulator, the piston moveable to strike a moil and a retracted position remote from the moil at which a rear portion of the piston is retracted within, whereby firing the piston from its retracted position to its striking position includes causing pressurized gas within the accumulator to accelerate the piston in a forward direction toward the moil (see specification and 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ) cross pin issues below).
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: In claim 7, the cross pins and bushes are oriented vertically” which the specification is unclear how this is achieved. The specification implies the cross pins are arranged vertically yet are shown horizontally. Also, it is not clear how “cross pins 420 may be restrained from falling through by a step 421 at a bottom of each cross pin 420” since they are shown horizontally arranged. Examiner suggest clarifying in the specification that this is an optional rather than required since it they are not shown vertically orientated and/or provide figures for the vertical orientation to match the specification. The mis-match of the specification to the drawings results in confusion as to what the cross pins are and if they are only optional. Also, since claim 1 recites “pins extending across the receptacle” then claim 7 is not supported to have the pins and bushings be vertical since the pins and bushings cannot be both horizontal and vertical. Claim 1 and/or 7 would have to recite optional language such as “either” “or” to support having both orientations. Claim 1 and/or 7 would have to recite optional language such as “either” “or” to support having both orientations.
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 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for having cross pins extending across the receptacle for limiting movement of the moil, forward movement of the moil is stopped by the cross pins, and wherein the cross pins are mounted in bushes formed from a resilient material does not reasonably provide enablement for the cross pins arranged vertically (specification, page 12, line 1 and page 25, lines 15-20). The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. The specification implies the cross pins are arranged vertically yet are shown horizontally. Also, it is not clear how “cross pins 420 may be restrained from falling through by a step 421 at a bottom of each cross pin 420” since they are shown horizontally arranged. Examiner suggest clarifying in the specification that this is an optional rather than required since it they are not shown vertically orientated and/or provide figures for the vertical orientation to match the specification. Also, since claim 1 recites “pins extending across the receptacle”; then claim 7 is not supported to have the pins and bushings be vertical since the pins and bushings cannot be both horizontal and vertical. Claim 1 and/or 7 would have to recite optional language such as “either” “or” to support having both orientations. The mis-match of the specification to the drawings results in confusion as to what the cross pins are and if they are only optional since the pins can be removed if desired as conventional lynch/stop pins are.
Claim 7 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for having cross pins extending across the receptacle for limiting movement of the moil, forward movement of the moil is stopped by the cross pins, and wherein the cross pins are mounted in bushes formed from a resilient material does not reasonably provide enablement for the cross pins arranged vertically (specification, page 12, line 1 and page 25, lines 15-20). The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. The specification implies the cross pins are arranged vertically yet are shown horizontally. Also, it is not clear how “cross pins 420 may be restrained from falling through by a step 421 at a bottom of each cross pin 420” since they are shown horizontally arranged. Examiner suggest clarifying in the specification that this is an optional rather than required since it they are not shown vertically orientated and/or provide figures for the vertical orientation to match the specification. Also, since claim 1 recites “pins extending across the receptacle”; then claim 7 is not supported to have the pins and bushings be vertical since the pins and bushings cannot be both horizontal and vertical. Claim 1 and/or 7 would have to recite optional language such as “either” “or” to support having both orientations.
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 cross pins and bushes are oriented vertically 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.
Potential Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), set forth in this Office action and if a Terminal Disclaimer is filed for US 11014224 B2. As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Reasons for Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance: the prior art of record fails to teach or render obvious a linerbolt removal tool comprising all the structural and functional limitations and further comprising, amongst other limitations/features, housing with a receptacle, moil for reciprocating in the housing by the receptacle, inertial body, gas charged accumulator, a piston moves in the rearward direction from the striking position towards the retracted position where the piston strikes the moil and cross pins extending across the receptacle for limiting movement of the moil, wherein when the moil impacts a linerbolt that is unable to absorb the striking energy imparted to the moil, forward movement of the moil is stopped by the cross pins, and wherein the cross pins are mounted in bushes formed from a resilient material. Though RUSSELL et al. WO 9726116 A1 teaches a the piston cap and piston accelerate together during firing until just before the piston strikes the moil whereby the piston cap separates from the piston RUSSELL et al. does not include cross pins extending across the receptacle for limiting movement of the moil, wherein when the moil impacts a linerbolt that is unable to absorb the striking energy imparted to the moil, forward movement of the moil is stopped by the cross pins, and wherein the cross pins are mounted in bushes formed from a resilient material.. Having the ledge on the piston reduces stress on the cap during the return and distributes the forces reducing wear and protects the piston from gas pressures during striking.
While various features of the claimed subject matter are found individually in the prior art, a skilled artisan would have to include knowledge gleaned only from the applicant's disclosure to combine or modify the teachings of the prior art to produce the claimed subject matter, and thus obviousness would not be proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). There is no teaching, suggestion, or motivation found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art to combine or modify the teachings of the prior art to produce the claimed invention, and thus obviousness would not be proper. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
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
Additional prior art considered pertinent: See references cited, form 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT LONG whose telephone number is (571)270-3864. The examiner can normally be reached M-F, 9am-5pm, 8-9pm (EST).
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/ROBERT F LONG/Primary Examiner, Art Unit 3731