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 Objections
Claim 1 is objected to because of the following informalities: each element of the claim is not separated by a line indentation as required by 37 CFR 1,75(i). See MPEP 608.01 (m) for further information. 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 1-20 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.
Regarding claim 1, it is unclear whether “two or more tool holders and two or more cutting elements” in line 4 are the same as or different than, and in addition to, “a plurality of tool holders and a plurality of cutting elements” in lines 1-2 because of the double positive recitation of “tool holders” and “cutting elements”. For purposes of examination, the examiner interprets “two or more tool holders and two or more cutting elements” to mean “two or more of the tool holders and two or more of the cutting elements”. Similarly, it is unclear whether “cutting elements” in lines 7-8 are the same as or different than, and in addition to, “a plurality of cutting elements” in lines 1-2 because of the double positive recitation of “cutting elements”. For purposes of examination, the examiner interprets “cutting elements” to mean “the cutting elements”. Claims 2-20 are rejected for depending from a rejected claim.
Regarding claim 2, it is unclear whether “multiple sets” in line 1 are the same as or different than, and in addition to, “at least one set” in claim 1 because of the double positive recitation of “sets”. For purposes of examination, the examiner interprets “comprising multiple sets” to mean “wherein the at least one set comprises multiple sets”.
Regarding claim 5, it is unclear whether “three or more tool holders in a set” in lines 1-2 are the same as or different than, and in addition to, “a plurality of tool holders” and “at least one set” in claim 1 because of the double positive recitation of “tool holders” and “set”. For purposes of examination, the examiner interprets “three or more tool holders in a set” to mean “three or more of the tool holders in each set”.
Regarding claim 6, it is unclear whether “four tool holders in a set” in line 1 are the same as or different than, and in addition to, “a plurality of tool holders” and “at least one set” in claim 1 because of the double positive recitation of “tool holders” and “set”. For purposes of examination, the examiner interprets “four tool holders in a set” to mean “four of the tool holders in each set”.
Regarding claim 7, the wording of “comprising a single cutting element in one or more of the tool holders” in lines 1-2 is confusing. It is unclear whether “single cutting element” is the same as or different than, and in addition to, “two or more cutting elements” in claim 1 because of the double positive recitation of “cutting element”. It is also unclear how the single cutting element can be “in” a tool holder since the cutting elements are previously recited as being “mounted to” a tool holder. For purposes of examination, the examiner interprets “comprising a single cutting element in one or more of the tool holders” to mean “wherein one or more of the tool holders comprises a single one of the cutting elements mounted thereto”.
Regarding claim 8, it is unclear which tool holder is meant by “the tool holder” in line 2 because a plurality of tool holders are previously recited. For purposes of examination, the examiner interprets “the tool holder” to mean “the respective tool holder”.
Regarding claim 9, the wording of “comprising two cutting elements in one or more of the tool holders” in lines 1-2 is confusing. It is unclear whether “two cutting elements” are the same as or different than, and in addition to, “two or more cutting elements” in claim 1 because of the double positive recitation of “cutting elements”. It is also unclear how the two cutting elements can be “in” a tool holder since the cutting elements are previously recited as being “mounted to” a tool holder. For purposes of examination, the examiner interprets “comprising two cutting elements in one or more of the tool holders” to mean “wherein one or more of the tool holders comprises two of the cutting elements mounted thereto”.
Regarding claim 10, it is unclear which tool holder is meant by “the tool holder” in line 2 because a plurality of tool holders are previously recited. For purposes of examination, the examiner interprets “the tool holder” to mean “the respective tool holder”.
Regarding claim 11, it is unclear which tool holder is meant by “the tool holder” in line 2 because a plurality of tool holders are previously recited. For purposes of examination, the examiner interprets “the tool holder” to mean “the respective tool holder”.
Regarding claim 13, it is unclear which cutting element is meant by “the cutting element” in line 1 because a plurality of cutting elements are previously recited. For purposes of examination, the examiner interprets “the cutting element” to mean “each of the cutting elements”.
Regarding claim 16, it is unclear which tool holder is meant by “the tool holder” in line 1 because a plurality of tool holders are previously recited. For purposes of examination, the examiner interprets “the tool holder” to mean “each of the tool holders”.
Regarding claim 17, it is unclear which tool holder is meant by “the tool holder” in line 1 because a plurality of tool holders are previously recited. For purposes of examination, the examiner interprets “the tool holder” to mean “each of the tool holders”.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,802,481. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the claims of the instant application is found in the claims of the patent.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,366,162. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the claims of the instant application is found in the claims of the patent.
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.
Claims 1-6, 9-11 and 13-20 (as best understood) are rejected under 35 U.S.C. 103 as being unpatentable over Ballinger (US 4,326,347) in view of Harden et al (US 2012/0183364).
Regarding claim 1, Ballinger discloses a disk cutter (e.g. 10, Fig. 1) comprising a cutter body (e.g. 31, Fig. 11, similar to Fig. 5), a plurality of tool holders (e.g. 71/81, Fig. 11) and a plurality of cutting elements mounted to the tool holders (e.g. 82/83, Fig. 11), wherein the tool holders and cutting elements are provided in at least one set about the cutter body, each set comprising two or more tool holders and two or more cutting elements arranged in a pre-determined sequence of configurations, each individual tool holder occupying a position within said pre-determined sequence of configurations (e.g. Fig. 11, similar to Fig. 1, wherein each set includes at least two adjacent assemblies 20), wherein within each set a quantity and/or relative lateral spacing of cutting elements on each tool holder varies according to the tool holder's position within the pre-determined sequence of configurations (e.g. Fig. 11, col. 8, lines 1-4, wherein one tool holder includes two cutting elements and the adjacent tool holder includes three cutting elements), and wherein in each set, the tool holders face the same forward direction (e.g. Fig. 11 shows 71/81 facing the same forward direction). Ballinger does not explicitly disclose that the cutting elements comprise diamond. Harden teaches a disk cutter comprising a cutter body (e.g. 600, Fig. 1), and a plurality of cutting elements mounted to the cutter body (e.g. 100, Fig. 1), wherein the cutting elements comprise diamond (e.g. PCD, paragraph 0038). It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to use diamond as taught by Harden for the cutter teeth of Ballinger because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use, and the diamond would provide the expected benefit of being a superhard material that provides enhanced tool life (e.g. Harden, paragraph 0010).
Regarding claim 2, the combination of Ballinger and Harden further discloses multiple sets around a circumferential surface of the cutter body (e.g. Ballinger, similar to Fig. 1).
Regarding claim 3, the combination of Ballinger and Harden further discloses that the multiple sets are identical (e.g. Ballinger, col. 8, lines 1-4, wherein each set of two tool holders is identical).
Regarding claim 4, the combination of Ballinger and Harden further discloses that the multiple sets are non-identical (e.g. Ballinger, col. 8, lines 1-4, wherein each set of three tool holders is non-identical).
Regarding claim 5, the combination of Ballinger and Harden further discloses three or more tool holders in a set (e.g. Ballinger, similar to Fig. 1).
Regarding claim 6, the combination of Ballinger and Harden further discloses four tool holders in a set (e.g. Ballinger, similar to Fig. 1).
Regarding claim 9, the combination of Ballinger and Harden further discloses two cutting elements in one or more of the tool holders (e.g. Ballinger, Fig. 11, col. 8, lines 1-4).
Regarding claim 10, the combination of Ballinger and Harden further discloses that the two cutting elements are arranged side-by-side adjacent to each other on the tool holder (e.g. Ballinger, Fig. 11, wherein Examiner notes that the term “adjacent” does not require contact and only requires the cutting elements to be near each other).
Regarding claim 11, the combination of Ballinger and Harden further discloses that the two cutting elements are arranged spaced apart from each other on the tool holder (e.g. Ballinger, Fig. 11 shows a space between the two cutting elements).
Regarding claim 13, the combination of Ballinger and Harden further discloses that the cutting element is a polycrystalline diamond compact (PDC) (e.g. Harden, paragraph 0038).
Regarding claim 14, the combination of Ballinger and Harden does not explicitly disclose that the PDC has a triple chamfer. It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to use a triple chamfer on the cutting elements of the combination of Ballinger and Harden because a change in the shape of a prior art device is a design consideration within the skill of the art, and the triple chamfer would provide the expected benefit of avoiding damage to the cutting elements.
Regarding claim 15, the combination of Ballinger and Harden further discloses that the cutter body comprises a series of slots (e.g. Ballinger, 70, similar to Fig. 8).
Regarding claim 16, the combination of Ballinger and Harden further discloses that the tool holder comprises a body portion (e.g. Ballinger, 71, Fig. 11) and a pair of spaced apart legs (e.g. Ballinger, opposing sides of 81, Fig. 11).
Regarding claim 17, the combination of Ballinger and Harden further discloses that the tool holder tapers inwardly from a first end, proximate the or each cutting element, towards a second end (e.g. Ballinger, Fig. 11, wherein 81 is wider at the first end near 82/83 and tapers inwardly toward the opposing end).
Regarding claim 18, the combination of Ballinger and Harden discloses a trench cutter (e.g. Ballinger, 10, Fig. 1, claim 1) comprising a disk cutter as claimed in claim 1 (e.g. as explained above).
Regarding claim 19, the combination of Ballinger and Harden further discloses that the cutter body has a diameter (e.g. Ballinger, Fig. 1) but does not explicitly disclose that the diameter is in a range of 900 to 1200 mm. It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to contrive any number of desirable ranges for the diameter limitation disclosed by Applicant, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Finally, Applicant has not disclosed that this diameter provides an advantage, is used for a particular purpose, or solves a stated problem.
Regarding claim 20, the combination of Ballinger and Harden further discloses that the cutter body has a thickness (e.g. Ballinger, Fig. 11, similar to Fig. 5) but does not explicitly disclose that the thickness is in a range of 20 to 30 mm. It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to contrive any number of desirable ranges for the thickness limitation disclosed by Applicant, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Finally, Applicant has not disclosed that this thickness provides an advantage, is used for a particular purpose, or solves a stated problem.
Allowable Subject Matter
Claims 7, 8 and 12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims, and if a terminal disclaimer is submitted and approved to overcome the double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STACY N LAWSON whose telephone number is (571)270-7515. The examiner can normally be reached Mon-Fri 9am-3pm.
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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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/S.N.L./Examiner, Art Unit 3678
/AMBER R ANDERSON/Supervisory Patent Examiner, Art Unit 3678
