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 .
DETAILED ACTION
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/857,213, filed on 05 July 2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05 September 2025 was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “18” has been used to designate both “roller housing” and “drum box”.
The drawings are objected to because:
Regarding Figs. 3 - 6, 8 - 11, and 15 - 17, it is unclear how the various structural elements illustrated in each figure are connected to each other. For example, in Fig. 3, it is unclear how the drum 16 is connected to the milling machine 10.
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.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The title should to refer to both the claimed method and the claimed apparatus.
The following title is suggested: A GROUND MILLING ARRANGEMENT AND METHOD FOR OPERATING A GROUND MILLING MACHINE
The disclosure is objected to because of the following informalities:
In line 3 of paragraph 00162, “figures” should be changed to “Figures”.
Appropriate correction is required.
Claim Objections
Claim 43 is objected to because of the following informalities:
In line 5 of claim 43, the phrase “a respective a current state” should be changed to “a respective current state”.
Appropriate correction is required.
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 24 - 44 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.
In line 11 of claim 24, the use of the term “thereto” renders the claim vague and indefinite because it is unclear whether “thereto” refers to the signal or the characteristic feature. Structural elements and limitations should always be referred to by name. Claims 42 and 43 contain similar errors.
Regarding claim 35, it is unclear how many picks are recited in the claim because “the number of picks” as recited in line 4 indicates one or more picks while “the milling picks” as recited in line 5 indicates a plurality of picks.
Regarding claim 43, it is unclear whether “a respective a current state” as recited in line 5 refers to the “respective current state” recited in lines 3 - 4 or if they represent additional limitations.
There is insufficient antecedent basis for the following limitations in the claims:
Claim 28, line 4: “the data set”. It is unclear as to which of the “at least one data set” as recited in claim 24, from which claim 28 depends, the aforementioned limitation is referring.
Claim 30, line 1: “the storage unit”
Claim 31, line 2: “the data set”
Claim 32, line 3: “the material”
Claim 34, lines 6 - 7: “the scheduled milling assignment”
Claim 35, line 1: “the data set”
Claim 35, line 3: “the type” and “the state of wear”
Claim 35, lines 3 - 4: “the at least one milling tool”. It is unclear as to which of the plurality of milling tools as recited in claim 24, from which claim 35 depends, the aforementioned limitation is referring.
Claim 35, line 5: “the line spacing”
Claim 36, line 1: “the data set”
Claim 36, line 3: “the at least one milling tool”
Claim 36, line 4: “the at least one milling tool”
Claim 36, line 6: “the at least one milling tool”
Claim 36, line 7: “the at least one pick holder”
Claim 36, lines 7 - 8: “the at least one milling tool”
Claim 37, line 4: “the milling drum surface”
Claim 38, line 3: “the data set”
Claim 39, line 3: “the data set”
Claim 39, line 4: “the characteristic number”. It is unclear as to which of the “at least one characteristic number” recited in line 2 of claim 39 the aforementioned limitation is referring.
Claim 40, line 3: “the data set”
Claim 41, line 2: “the new current state”
Claim 42, line 7: “the current state of wear”
Claim 42, line 8: “the data set”
Claim 42, line 11: “the data set”
Claim 42, lines 11 - 12: “the data set”
Claim 43, line 19: “the data set”
Claim 44, line 2: “the data set”
Claim 44, line 4: “the milling drum”. It is unclear as to which of the “a plurality of interchangeable milling drums” recited in lines 2 - 3 the aforementioned limitation is referring.
Claim 44, line 5: “the milling drum”
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 24 - 44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 21, and 22 of U.S. Patent No. 12,320,079. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of the ‘079 patent recites all of the limitations recited in claim 24 of the present application except explicitly reciting “transmitting the data set to a control unit”. Claim 1 of the ‘079 recites “transmitting the data set to a processing device”. Since the control unit processes data from a data set, a “processing device” as recited in claim 1 of the ‘079 patent is functionally equivalent to a “control device” as recited in claim 24 of the present application.
Claim 21 of the ‘079 patent recites all of the claim limitations recited in claim 42 of the present application except explicitly reciting a database as part of a computing unit separate from “the milling machine”. Claim 21 of the ‘079 recites a database as part of a computing unit separate from “the milling drum”. Examiner takes the position that a “milling drum” is functionally equivalent to a “milling machine”.
Claim 22 of the ‘079 patent recites all of the claim limitations recited in claim 43 of the present application except “a control unit” and a “milling machine”. Since the control unit processes data from a data set, a “processing device” as recited in claim 22 of the ‘079 patent is functionally equivalent to a “control device” as recited in claim 24 of the present application. Regarding the “milling machine” as recited in claim 43 of the present application, Examiner takes the position that a “milling drum” is functionally equivalent to a “milling machine”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN D ANDRISH whose telephone number is (571)270-3098. The examiner can normally be reached Mon-Fri: 6:30 AM - 4:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/SEAN D ANDRISH/Primary Examiner, Art Unit 3678
SA
9/29/2026
