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 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 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,305,359 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences between the subject matter claimed in the instant application and in the referenced patent would have been obvious. The obvious difference(s) is as follow: connecting a working fluid inlet to a hydraulic pump by a supply hose, a working fluid line formed through the body, and a lubricant line formed though the body.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,305,359 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences between the subject matter claimed in the instant application and in the referenced patent would have been obvious.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,305,359 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences between the subject matter claimed in the instant application and in the referenced patent would have been obvious.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,305,359 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences between the subject matter claimed in the instant application and in the referenced patent would have been obvious.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,305,359 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences between the subject matter claimed in the instant application and in the referenced patent would have been obvious.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,305,359 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences between the subject matter claimed in the instant application and in the referenced patent would have been obvious.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moore (US 2016/0046009 A1). Moore discloses a hydraulic breaker (fig. 1) comprising:
Re claim 1, a bracket (fig. 1 shows a bracket as the outer housing shell and for interfacing with the boom 12); a body (par [0016] describes dashed box as an integral unit, which is construed as the body, with no external hoses) coupled to an inside of the bracket; a piston (126) provided in the body and reciprocating by a working fluid (fluid from 142); a chisel (118) provided in the body and configured to be hit by the piston; a lubricant injection port (fig. 2: port of 124 interfacing with downstream end of 155) provided in the body; a cartridge coupler (214) to which a lubricant cartridge (fig. 2: 154, fig. 3: 212) is detachably directly coupled; a working fluid inlet (fig. 2: 144, fig. 3: 215) connected to a hydraulic pump (par [0015]: pump associated with 142) by a supply hose (fig. 2: hose shown extending away from 142 to 144), wherein a high-pressure working fluid (high pressure fluid from 142) provided from the hydraulic pump through the supply hose flows into the working fluid inlet; a working fluid outlet (fig. 2: outlet at interface between dashed box and 164) connected to a hydraulic tank (142) by a discharge hose (fig. 2: hose shown extending between towards 142 on 164), wherein a low-pressure working fluid (fluid spent by the system would have a lower pressure) discharged from the working fluid outlet through the discharge hose flows to the hydraulic tank; an automatic lubricant supply structure (150) configured to supply a lubricant from the lubricant cartridge using the working fluid; and a supply valve (fig. 2: 156,166; fig. 3: 210) configured to supply the lubricant to the lubricant injection port (port downstream of 155) in response to a pressure of the working fluid, wherein the automatic lubricant supply structure comprises: a working fluid line (146) formed through the body as an internal passage of the body (the line is shown as a passage within the dashed box), the working fluid line having one end directly communicating with the working fluid inlet and another end directly communicating with the supply valve (fig. 2); and a lubricant line (155) formed through the body as an internal passage of the body (the line is shown as a passage within the dashed box) and configured to supply the lubricant to the lubricant injection port, the lubricant line having one end directly communicating with the supply valve and another end directly communicating with the lubricant injection port (fig. 2).
Re claim 2, wherein the supply valve includes: a first chamber (228 portion of 222) having a first hole (242) that communicates with the working fluid line and filled with the working fluid through the first hole; a second chamber (230) communicating with a lubricant inlet (240) and filled with the lubricant of the lubricant cartridge through the lubricant inlet; a pumping spool (250) provided between the first chamber and the second chamber and moved in one direction (fig. 4: moving from left to right) by the pressure of the filled working fluid in the first chamber so that the pumping spool pushes the filled lubricant in the second chamber; and a check valve (236) provided on one side of the second chamber and having a second hole (238) that communicates with the lubricant line, and wherein the second chamber is provided between the pumping spool and the check valve (fig. 8), and the check valve is opened by a pressure of the filled lubricant in the second chamber (par [0033]).
Re claim 9, wherein the entire lubricant line is formed through the body as the internal passage of the body (155 is shown as a passage entirely within the dashed box; par [0016] describes dashed box as an integral unit, which is construed as the body, with no external hoses).
Claim Rejections - 35 USC § 103
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) 3, 4, and 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moore (US 2016/0046009 A1) in view of (KR 200369452 Y1). Moore discloses the hydraulic breaker (as cited above):
Re claim 3, wherein the cartridge coupler is positioned in the same plane as the working fluid inlet of the cylinder (fig. 3: top plane of 210).
Moore does not clearly disclose:
Re claim 3, wherein the body includes a cylinder, a front head disposed under the cylinder, and a back head disposed over the cylinder, the cartridge coupler is disposed at the back head.
Re claim 4, wherein the bracket includes a housing and a cover coupled to the housing, wherein the working fluid inlet and a working fluid outlet of the body are accommodated in the housing, and wherein the cover covers the working fluid inlet and the working fluid outlet.
Re claim 6, wherein the cartridge coupler, the working fluid inlet, and the working fluid outlet are positioned on a rear surface of the body, and wherein the housing is positioned on a rear surface of the bracket to be positioned on the rear surface of the body when the bracket is coupled to the body.
Re claim 7, wherein a height of the housing is larger than or the same as protrusive heights of the cartridge coupler, the working fluid inlet, and the working fluid outlet.
Re claim 8, wherein the working fluid inlet, the working fluid outlet, and the cartridge coupler are positioned in the same plane.
However, However, KR’452 teaches a hydraulic breaker (fig. 1):
Re claim 3, wherein the body (120) includes a cylinder (middle portion that holds 122), a front head (bottom section that holds 126) disposed under the cylinder, and a back head (top section that holds 123) disposed over the cylinder, the cartridge coupler is disposed at the back head (the figures show lubricant supply valve 131 is at the back head, when modified with the body of KR’452 the cartridge coupler would be positioned at the back head as well), and the cartridge coupler is positioned in the same plane as the working fluid inlet of the cylinder (fig. 7).
Re claim 4, wherein the bracket includes a housing (110) and a cover (fig. 5: cover being the left panel accommodating 112) coupled to the housing, wherein the working fluid inlet and a working fluid outlet (123) of the body (120) are accommodated in the housing (fig. 5), and wherein the cover covers the working fluid inlet and the working fluid outlet (fig. 2-3).
Re claim 6, wherein the cartridge coupler, the working fluid inlet, and the working fluid outlet are positioned on a rear surface of the body (fig. 7 shows the hydraulic port 123 and lubricant supply 131 on the same side of the body; this side of the body is construed as the rear side), and wherein the housing is positioned on a rear surface of the bracket to be positioned on the rear surface of the body when the bracket is coupled to the body (fig. 5).
Re claim 7, wherein a height of the housing is larger than or the same as protrusive heights of the cartridge coupler, the working fluid inlet, and the working fluid outlet (fig. 3 shows all the connection ports are housed within the housing).
Re claim 8, wherein the working fluid inlet, the working fluid outlet, and the cartridge coupler are positioned in the same plane (fig. 3 shows the working fluid inlet/outlet 123s and lubricant inlet 131 being on the same plane, this modification is taught to Moore to have the same arrangement with the cartridge coupler being equivalent to the same location as the lubricant inlet).
It would have been obvious to person having ordinary skill in the art before the effective filing date of the claimed invention to employ the cylinder, front head, and back head, as taught by R’452, to house different components and have a modular assembly for easier assembly.
It would have been obvious to person having ordinary skill in the art before the effective filing date of the claimed invention to employ the housing and cover, as taught by R’452, to shield the body from projectile during operation.
It would have been obvious to person having ordinary skill in the art before the effective filing date of the claimed invention put the inlet, outlet, and cartridge coupler on the same plane, as taught by R’452, to provide easy access during assembly and maintenance.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-4 and 6-9 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Claim 5 remains rejected under Double Patenting.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MINH D TRUONG whose telephone number is (571)270-3014. The examiner can normally be reached M-F 9-5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Hodge can be reached at (571) 272-2097. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Minh Truong/Primary Examiner, Art Unit 3654
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