DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. This action is responsive to the following communication: a non-provisional Application filed on April 4, 2025, which is a divisional application of App. No. 17/390,023, with a filing date of July 30, 2021. Therefore, the effective filing date of the instant claims is presumably July 30, 2021.
Information Disclosure Statement
3. The examiner acknowledges four information disclosure statements (IDS) submitted on April 4, 2025, December 4, 2025, February 25, 2026, and April 9, 2026, respectively. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Status of the Claims
4. Claims 1-20 are pending in the case; Claims 1 and 14 are independent claims. Claims 14-20 are withdrawn from consideration. This action is made non-final.
Election/Restrictions
5. Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-13, drawn to an aerator (i.e., a product) for aerating a turf surface, classified in A01B 45/02.
II. Claims 14-20, drawn to a method of operating an aerator on a turf surface having a first boundary (i.e., a process of use), classified in G05D 1/243 or 244.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the product of Invention I can be used in a materially different process of Invention II such (for example, the product claims do not require detecting when a reference feature located on the aerator forward of the tine head, taken with respect to the forward direction motion, crosses over the first boundary and is located over or in contact with the selected turf surface).
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: the inventions require different fields of search, for example searching different classes/subclasses or electronic resources, or employing different search queries.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
6. During a telephone conversation with Applicant’s representative, T. Patrick Johnson (Reg. No. 70,043), on September 3, 2026, a provisional election was made without traverse to prosecute the invention I, claims 1-13. Affirmation of this election must be made by applicant in replying to this Office action. Claims 14-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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.
7. Claims 1-4, 9, 12, and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 6-9, 14, and 17 of U.S. Patent No. 12,268,110 (hereinafter ‘110).
Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1, 3, 6-9, 14, and 17 of ‘110 disclose, or at least render obvious, each limitation recited in instant Claims 1-4, 9, 12, and 13, respectively. For example, instant independent Claim 1 corresponds to Claims 1, 3, 6, and 14 of ‘110, as illustrated below (note the minor or obvious differences between the claims are underlined, the differences rendered obvious by later claims are bolded); instant dependent Claim 2 corresponds to Claim 8 od ‘110, instant Claim 3 corresponds to Claim 17 of ‘110, instant Claim 4 corresponds to Claim 7 of ‘110, instant Claim 9 corresponds to Claim 9 of ‘110, and instant Claims 12 and 13 correspond to Claim 7 of ‘110.
Instant Claim 1: (note that Claim 14 of ‘110 discloses “traction drive,” Claim 3 discloses “vertically reciprocal,” and Claim 6 discloses steps (c) and (d))
1. An aerator for aerating a turf surface, which comprises:
(a) a frame having a traction drive for self-propelling the frame at least in a forward direction over the turf surface;
(b) a tine head carried on the frame having a plurality of vertically reciprocal, side-by-side tines for punching aeration holes in the turf surface, the tine head being vertically movable on the frame between a raised non-operational position in which the tines are located above the turf surface and a lowered operational position in which the tines engage the turf surface to form aeration holes in the turf surface;
(c) an aeration control having a first state that allows an operator to establish a targeted aeration start location on the turf surface and a second state that allows an operator to establish a targeted aeration end location on the turf surface for each pass of the aerator across the turf surface; and
(d) a microprocessor based controller which:
(i) upon receipt of the targeted aeration start location, automatically initiates lowering of the tine head at a moment that permits at least some of the tines carried in the tine head to enter the turf surface to begin aerating the selected turf surface approximately at the targeted aeration start location; and
(ii) upon receipt of the targeted aeration end location, automatically initiates raising of the tine head at a moment that permits the tines carried in the tine head to exit the turf surface to end aerating the turf surface approximately at the targeted aeration end location.
Claims 1, 14, 3, and 6 of ‘110:
1. An aerator for a turf surface, which comprises:
(a) a frame capable of movement over the turf surface;
(b) a plurality of tine assemblies movable into and out of the turf surface at different times from one another during each cycle of operation in a plurality of repeating cycles of operation for creating aeration holes in the turf surface;
(c) a tine head mounted on the frame for carrying the tine assemblies, the tine head being vertically movable on the frame between a raised, non-operational position in which the tine assemblies are not aerating the turf surface and a lowered operational position in which the tine assemblies are aerating the turf surface; ….
14. The aerator of claim 1, wherein the microprocessor based controller: (i) stores a desired fore-and-aft hole spacing; and (ii) automatically adjusts an operational speed of a traction drive during each aeration pass of the aerator to achieve the desired hole spacing.
3. The aerator of claim 1, wherein the tine assemblies have generally vertical reciprocal motion in each cycle of operation produced by a rotatable crankshaft, ….
6. The aerator of claim 1, further comprising:
(a) an aeration control having a first state that allows an operator to establish a targeted aeration start location on the turf surface and a second state that allows the operator to establish a targeted aeration end location on the turf surface for each pass of the aerator across the turf surface; and
the microprocessor based controller, which:
(i) upon receipt of the targeted aeration start location, automatically initiates lowering of the tine head at a moment that permits at least some of the tine assemblies carried in the tine head to enter the turf surface to begin aerating the selected turf surface at the targeted aeration start location; and
(ii) upon receipt of the targeted aeration end location, automatically initiates raising of the tine head at a moment that permits the tine assemblies carried in the tine head to exit the turf surface to end aerating the turf surface approximately at the targeted aeration end location.
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.
8. Claims 1-13 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention. Independent Claim 1 recites “… to begin aerating the selected turf surface approximately at the targeted aeration start location …” (and similarly, ““… to end aerating the turf surface approximately at the targeted aeration end location…”), but the term “approximately at the targeted aeration start location” (and similarly, “approximately at the targeted aeration end location”) are relative terms which render the claim indefinite. This term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Paragraph 0087 of Specification (as published in US 2025/0228151 A1) recites “When this targeted start location is received by controller 118 and with tine head 14 lifted into a standard transport height, controller 118 begins rotation of tine assemblies A-F in tine head 14 and then releases tine head 14 for dropping at a moment in time that is determined by controller 118 to allow tine head 14 to reach its fully lowered height and to begin aerating the turf surface at substantially the start location targeted by the operator.” Paragraph 0100 of Specification, states that such approximate start location may be “within approximately plus or minus 2/3 of the desired hole spacing although this tolerance may be increased if so desired,” while Paragraph 0105 states that the accuracy or tine head hitting the targeted aeration start location may be “approximately plus or minus 1/3 of the desired hole spacing although this tolerance may be increased if so desired.” The dependent claims 2-13 do not appear to cure the above-noted deficiency of independent Claim 1, thus they are also rejected under the same rationale.
In addition, Claim 12 recites “closing the aeration bail against a handle,” but there does not appear to be a proper antecedent basis for “the aeration bail” in the claim (note that “aeration bail” is introduced in Claim 4, but Claim 12 is not dependent upon this claim).
Discussion of Prior Art
9. Claims 1-13 are not rejected under 35 U.S.C. §§ 102/103 (but see Double Patenting and § 112 rejections, above), because the prior art of record does not appear to disclose or suggest the combination of steps/features as recited in instant independent Claim 1, namely with respect to “an aeration control having a first state that allows an operator to establish a targeted aeration start location on the turf surface and a second state that allows an operator to establish a targeted aeration end location on the turf surface for each pass of the aerator across the turf surface; and … upon receipt of the targeted aeration start [/end] location, automatically initiates lowering [/raising] of the tine head at a moment that permits at least some of the tines carried in the tine head to enter [/exit] the turf surface to begin aerating the selected turf surface approximately at the targeted aeration start [/end] location.”
For example, the prior art of Georgoulias et al. (US 2015/0216102 A1) teaches an aerator for a turf surface, comprising a frame capable of movement over the turf surface, and having a tine head mounted on the frame with vertically moveable tines (see Figs. 1-3, ¶¶ 0013-15, 0017, 0021). While Georgoulias suggests an “aeration control and a microprocessor based controller” (see ¶ 0022), Georgoulias appears to suggest a variable delay that is determined by a “delay timer” that can be preset by the operator using the delay switch (see ¶ 0023). This is different from instant Claim 1 which requires “an aeration control having a first state that allows an operator to establish a targeted aeration start location on the turf surface and a second state that allows an operator to establish a targeted aeration end location on the turf surface for each pass of the aerator across the turf surface; and … upon receipt of the targeted aeration start [/end] location, automatically initiates lowering [/raising] of the tine head at a moment that permits at least some of the tines carried in the tine head to enter [/exit] the turf surface to begin aerating the selected turf surface approximately at the targeted aeration start [/end] location.”
The prior art of Hall et al. (US 2014/0116041 A1) is directed to a walk behind aerator hydrostatic traction drive system (see Abstract, ¶ 0001). Hall discloses the aerator comprising a frame, a tine head, and a control panel (see Fig. 1, ¶¶ 0009, 0012). Hall discloses that the operator may use the control panel to actuate raising or lowering of tines (see ¶¶ 0014-15), Hall does not appear to disclose or suggest “an aeration control having a first state that allows an operator to establish a targeted aeration start location on the turf surface and a second state that allows an operator to establish a targeted aeration end location on the turf surface for each pass of the aerator across the turf surface; and … upon receipt of the targeted aeration start [/end] location, automatically initiates lowering [/raising] of the tine head at a moment that permits at least some of the tines carried in the tine head to enter [/exit] the turf surface to begin aerating the selected turf surface approximately at the targeted aeration start [/end] location,” as required by Claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DINO KUJUNDZIC whose telephone number is (571)270-5188. The examiner can normally be reached M-F 8am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Worden, can be reached on 571-272-4876. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DINO KUJUNDZIC/Primary Examiner, Art Unit 3658
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