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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosures of the prior-filed applications, Application Nos. 18/314,511 and 17/469,389, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Claims 2-9 and 11-20 contain limitations (regarding the bag) not supported by the parent applications. Therefore, claims 2-9 and 11-20 are not entitled to the benefit of the prior application. Claims 1 and 10 are given an effective filing date of 09/08/2021 while claims 2-9 and 11-20 are given an effective filing date of 02/28/2025. See MPEP 211.05.
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 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,686,061. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims to the current application are merely broader than the claims to US Patent No. 11,686,061 and are thus encompassed by said claims.
Claims 1 and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,252,861. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims to the current application are merely broader than the claims to US Patent No. 12,252,861 and are thus encompassed by said claims.
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 11-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With regard to claims 11-13, the claims recite method steps within system claims. The metes and bounds of the claims cannot be ascertained. “[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). See MPEP 2114(II).
Claims 14-20 are dependent upon claims 11 or 12.
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.
Claim(s) 2-9 and 11-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Trout (2023/0272589) in view of Turzillo (3,099,911)
With regard to claim 2, Trout discloses a method of moving a ground coupled member (abstract, “pipeline”), comprising the steps of: driving at least one casing (16) into a soil proximate to the ground coupled member (abstract); deploying a pivoting wand (22) from the casing about a pivoting axis, the pivoting wand having a plurality of cutting nozzles (26) that are coupled to a fluid conduit (20) having a longitudinal extent in the casing relative to a longitudinal axis (fig. 1), the cutting nozzles being fixed to the wand and at least one of the cutting nozzles being directed parallel to the pivoting axis of the pivoting wand (fig. 1), at least one cutting nozzle being directed perpendicular to a direction of at least one other cutting nozzle on the pivoting wand; pressurizing the fluid conduit to thereby send fluid through the cutting nozzle to soften the soil in a direction in which the wand deploys (abstract); rotating the pivoting wand (abstract); conducting the softened soil up through the casing to form a cavity in the soil at least partially beneath the ground coupled member (abstract), the cavity in the soil having a shape reflective of the movement of the pivoting wand in the rotating step; positioning a portion of a grouting system in the cavity (abstract); and lifting the ground coupled member using the grouting system (abstract).
Trout is silent regarding the positioning step includes inserting a bag into the cavity, the grouting system inserting grout into the bag in the cavity.
Turzillo discloses a ground coupled member lifting (col. 2, lines 34-42) method which includes inserting a bag (11) into the cavity (fig. 2), the grouting system inserting grout into the bag in the cavity (fig. 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Trout to include a bag in order enhance the load bearing properties of the soil.
With regard to claim 3 Trout further discloses the driving, deploying, pressurizing, rotating and conducting steps are repeated along a length of the ground coupled member before the positioning and lifting steps are carried out (claim 3).
With regard to claim 4, Trout further discloses the positioning step includes the positioning of a plurality of grouting systems spaced along the length of the ground coupled member, before executing the lifting step (claim 4).
With regard to claim 5, Trout further discloses the lifting step is caried out with the plurality of grouting systems at the same time (claim 5).
With regard to claim 6, Trout, as modified, further discloses removing the pivoting wand from the casing (eg. Trout, figs. 5,8; Turzillo figs. 1-2); coupling a bag to a grout conduit (Turzillo; figs 2-3); inserting the bag and grout conduit (Turzillo 13) into the casing; and moving the bag to the cavity as part of the positioning step (Turzillo, figs. 2-3).
With regard to claim 7, Trout, as modified, further discloses a step of inserting grout into the bag by way of the grout conduit (Turzillo, figs. 2-3).
With regard to claim 8, Trout, as modified, further discloses a step of calculating a size of the cavity (Turzillo, col. 3, lines 15-27).
With regard to claims 9 and 14-15, Trout, as modified, discloses the invention substantially as claimed and appears to suggest utilizing different sized bags (eg. Turzillo, figs. 3-18) fails to explicitly state a step of making the bag the size of the cavity plus the amount of desired soil displacement under the ground coupled member.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to change the size of the bag to achieve desired results based on the design conditions at hand and an artisan of ordinary skill would have had a reasonable expectation of success. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claims 11-13, as best understood, Trout, discloses a ground coupled member lifting system (abstract), comprising: a casing (16) installable into the ground proximate to the ground coupled member (abstract); a grouting system including a grout conduit (eg. para 0068); and a cavity forming system (abstract) including at least one cutting nozzle (26) in fluid communication with a fluid conduit (18), the cavity forming system being movably extended at least partially within the casing (fig. 1).
Trout is silent regarding a bag coupled to an end of the grout conduit.
Turzillo discloses a ground coupled member lifting (col. 2, lines 34-42) system which includes a bag (11) coupled to an end of the grout conduit (13).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Trout to include a bag in order enhance the load bearing properties of the soil.
With regard to the method steps, a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Regardless, Trout, as modified by Turzillo, discloses the method steps as discussed above.
With regard to claim 16, Trout, as modified, further discloses the bag is somewhat permeable (col. 1, lines 66-70).
With regard to claim 17, Trout, as modified, further discloses a grout controller receiving the measured amount value and an additional amount value a total of which representing a total amount of grout for flowing into the bag in the flowing step (Trout; para 0100).
With regard to claim 18, Trout, as modified, further discloses a sacrificial point (14) is coupled to a bottom of an end of the casing prior to the driving step, the sacrificial point allowing for displacement of soil as the casing is forced into the soil, the sacrificial point is fitted to the bottom end of the casing such that the sacrificial point will separate from the end of the casing when the casing is moved in an upward direction (Trout, fig. 4).
With regard to claim 19, Trout, as modified, further discloses the bag is sized to contain the grout that flows into the bag (Turzillo; fig. 3).
With regard to claim 20, Trout, as modified, further discloses the fluid conduit is a high-pressure flexible hose (Turzillo, col. 1, line 65).
Allowable Subject Matter
Claims 1 and 10 would be allowable if the double patenting rejection(s) set forth in this Office action is/are overcome.
The following is a statement of reasons for the indication of allowable subject matter: the cited prior art, either alone or in any reasonable combination, fails to teach or suggest all the limitations of the independent claim(s). Methods for moving a ground coupled member are known such as those taught by Trout et al. (2019/0162353) and Turzillo (3,099,911). However, at the time of the effective filing date, the cited prior art lacks the specifics of the cutting nozzles in combination with the pivoting wand as required by the independent claim(s) and it would not have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the prior art to achieve applicant’s invention without the benefit of hindsight and applicant’s own disclosure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN F FIORELLO whose telephone number is (571)270-7012. The examiner can normally be reached Mon-Fri 8:00AM-4:30PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Anderson can be reached at (571)270-5281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN F FIORELLO/Primary Examiner, Art Unit 3678
BF
06/12/2026
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