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 Status
This Office action is in response to the filing of 2/4/2025. Claims 1-17 are currently pending.
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 1-10, 12-13, and 15-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 20, 18, 2-4, 6-7, 10, 1, 11-12, 15, 17, and 23 respectively of U.S. Patent No. 11,008,730 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite essentially the same subject matter.
Claims 1, 3-12, and 14-17 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-8, 10-13, 16, 14, and 18-20 respectively of U.S. Patent No. 11,613,869 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite essentially the same subject matter.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-20 of U.S. Patent No. 12,215,480 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite essentially the same subject matter.
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.
Claim 2 is 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.
Regarding claim 2, the limitation “at least one upper vacuum sealing” in line 1 is vague and indefinite because it is not clear if the limitation is referring to a new upper vacuum sealing or the upper vacuum sealing recited in claim 1. In order to further prosecution, the limitation has been interpreted to be referring to the “at least one upper vacuum sealing” recited in claim 1.
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 1-6, 8-9, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Oyama (US 4741404) in view of Pyatov (US 4932479).
Regarding claim 1, Oyama discloses an impact hammer for breaking a working surface, the impact hammer comprising: a housing (the assembly of 5 and 6 – Fig. 2) with at least one inner side wall (the inner wall of 6 – Fig. 2) forming at least part of a containment surface; a drive mechanism (19 – Fig. 1); a reciprocating hammer weight (13 – Fig. 2), at least partially located within the housing, with the reciprocating hammer weight capable of reciprocating along a reciprocation axis (the longitudinal axis of 13 – Fig. 2), wherein a reciprocation cycle of the reciprocating hammer weight, when the reciprocation axis is on an approximately vertical axis, comprises: an up-stroke, during which the drive mechanism moves the reciprocating hammer weight upwards along the reciprocation axis (col. 2, lines 62-67); and a down stroke, during which the reciprocating hammer weight moves downwards along the reciprocation axis (col. 2, lines 62-67); a striker pin (4 – Fig. 2) having a driven end (the left end of 3 – Fig. 2) and a working surface impact end (the right end of 2 – Fig. 2), the striker pin located within the housing such that the working surface impact end protrudes from the housing (see Fig. 2); and a variable volume vacuum chamber (14 – Fig. 2) comprising: at least a portion of the containment surface (see Fig. 2); and at least one down-stroke vent (17 – Fig. 2), operable to permit fluid egress from the variable volume vacuum chamber during at least part of the down-stroke (col. 5, lines 11-20), wherein the variable volume vacuum chamber is configured to have a sub-atmospheric pressure during at least part of the up-stroke such that the reciprocating hammer weight is driven toward the striker pin by a pressure differential between an atmosphere and the sub-atmospheric pressure during the down-stroke (col. 4, lines 36-62).
Oyama further teaches that the variable volume vacuum chamber is a fluid-tight chamber but does not expressly disclose at least one upper vacuum sealing and at least one lower vacuum sealing.
Pyatov teaches an impact hammer comprising a variable volume vacuum chamber (38 – Fig. 1) comprising: at least one upper vacuum sealing (40 – Fig. 1) coupled to a reciprocating hammer weight (16 – Fig. 1) and at least one lower vacuum sealing (28 and 30 – Fig. 1) in order to prevent leakage of air (col. 2, lines 57-60). One of ordinary skill in the art, upon reading the teaching of Pyatov, would have recognized that the variable volume vacuum chamber of Oyama can be modified to include at least one upper vacuum sealing and at least one lower vacuum sealing in order to improve the fluid-tightness of the variable volume vacuum chamber.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified the variable volume vacuum chamber of Oyama to include at least one upper vacuum sealing and at least one lower vacuum sealing as taught by Pyatov in order to improve the fluid-tightness of the variable volume vacuum chamber.
Oyama, as modified by Pyatov, further teaches:
Claim 2, the at least one upper vacuum sealing (40 – Fig. 1, Pyatov) is coupled to said reciprocated hammer by at least partial retention in a recess in the hammer weight. As can be seen in Fig. 1 of Pyatov, the upper vacuum sealing is in the form of a seal ring. Although Pyatov does not expressly disclose that there is a recess in the hammer weight in which the seal ring is disposed, one of ordinary skill in the art would have recognized that there is almost assuredly a recess there in which the seal is disposed since that is how seal rings are commonly connected to cylindrical objects like hammer weights. Hence, the examiner takes Official Notice that such recesses are old and well-known in the art and it would have been obvious to have connected the seal ring to the hammer weight via a recess.
Claim 3, the upper vacuum sealing (40 – Fig. 1, Pyatov) forms at least one substantially uninterrupted sealing laterally encompassing the hammer weight (the upper vacuum sealing is in the form of a seal ring, col. 2, lines 57-60, which is described as sealing the periphery; a ring that seals the periphery of the hammer weight is necessarily uninterrupted).
Claim 4, that the at least one down-stroke vent (17 – Fig. 2, Oyama) is operable to at least restrict fluid ingress into the variable volume vacuum chamber (14 – Fig. 2, Oyama) during at least part of the up-stroke (col. 3, lines 15-20, Oyama).
Claim 5, that the at least one down-stroke vent (17 – Fig. 2, Oyama) includes at least one aperture in the containment surface (see Fig. 2, Oyama).
Claim 6, that the at least one down-stroke vent (17 – Fig. 2, Oyama) is formed in the containment surface (see Fig. 2, Oyama).
Claim 8, that the at least one down-stroke vent (17 – Fig. 2, Oyama) includes a valve (col. 3, lines 15-20, Oyama).
Claim 9, that the reciprocating hammer weight (13 – Fig. 2, Oyama) impacts directly on the driven end (the left end of 3 – Fig. 3, Oyama) of the striker pin (4 – Fig. 2, Oyama) during at least part of the downstroke (col. 2, lines 62-67, Oyama).
Claim 15, that the variable volume vacuum chamber (14 – Fig. 2, Oyama) forms an atmospheric up-stroke brake applying the pressure differential to a movement of the reciprocating hammer weight (13 – Fig. 2, Oyama) over an un-driven portion of the up-stroke to decelerate a reciprocating hammer weight up-stroke movement (col. 4, lines 56-62, Oyama).
Claim 16, that the reciprocating hammer weight (13 – Fig. 2, Oyama) comprises: a lower impact face (13b – Fig. 2, Oyama), at least a portion of the lower impact face forming a vacuum piston face, wherein the vacuum piston face is movable along a path co-axial to a reciprocation path and the vacuum piston face includes a hammer weight impact surface for impacting the driven end of the striker pin during at least a part of the down-stroke (see Fig. 2, Oyama); an upper face (13a – Fig. 2, Oyama); and at least one side face (the side of 13 – Fig. 2, Oyama), wherein at least a portion of the upper face (13a – Fig. 2, Oyama) of the reciprocating hammer weight is open to the atmosphere (see Fig. 1 and col. 3, lines 42-46, Oyama).
Claim 17, all of the structure in the preamble as set forth in the rejection of claim 1 above, wherein Oyama and Pyatov further teaches a method comprising: contacting the working surface impact end of the striker pin to a working surface to be broken (col. 4, lines 26-30, Oyama); operating the drive mechanism to begin lifting the reciprocating hammer weight such that a volume of the variable volume vacuum chamber increases and a pressure differential between an atmosphere and the variable volume vacuum chamber is created (col. 4, lines 36-43, Oyama); causing an upstroke stage, in which the reciprocating hammer weight is moved along the reciprocation axis for a distance equal to a hammer weight up-stroke length from a lower start initial position with a minimum hammer weight potential energy to an upper position at an upper distal end of the housing with a maximum hammer weight potential energy (col. 4, lines 36-43, Oyama); causing an upper stroke transition, in which hammer weight movement halts before reversing direction along the reciprocation axis (col. 4, lines 56-62, Oyama); releasing the reciprocating hammer weight, wherein the pressure differential and gravity acting on the reciprocating hammer weight drive the reciprocating hammer weight toward the driven end of the striker pin, and wherein the reciprocating hammer weight moves back along the reciprocation axis for a distance equal to a hammer weight down-stroke length form the upper position to the lower start position (col. 4, lines 56-62, Oyama); transmitting an impact force from the striker pin to the working surface to be broken (col. 4, lines 63-65, Oyama); and repeating (col. 1, lines 6-11, Oyama).
Allowable Subject Matter
Claims 7 and 10-14 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS M WITTENSCHLAEGER whose telephone number is (571)272-7012. The examiner can normally be reached MON-FRI: 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shelley Self can be reached at 571-272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS M WITTENSCHLAEGER/Primary Examiner, Art Unit 3731
12/5/2025