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 Rejections - 35 USC § 102
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 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, 4 & 14-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Horst (US 8,122,822) (aka Horst '822).
Interpretative note 1. As the method claims 14-20 provide for the use of the apparatus of claims 1-13 the method claiming limitations have not been specifically mapped to the cited prior art.
Horst '822 discloses-
a body assembly comprising an intake portion 84, a loading chamber 44 (FIG. 7A), and a compression chamber 24 (FIG. 3A, 7E-7G showing multiple columns) in fluid communication with a loading chamber, a loading chamber being formed to receive a predetermined number of bales in each column respectively;
a compression chamber being partially defined by a floor 26 thereof, and formed to receive a preselected number of columns of bales therein;
an intake assembly partially positioned in an intake portion, an intake assembly comprising a table 84 on which each a bale is individually positioned at an engagement location, in succession;
an injection assembly 62 partially positioned in an intake portion, an injection assembly comprising an injector and an injector controller 64, 66 for causing an injector 68 to move a predetermined number of bales individually in succession in a predetermined injection sequence from the engagement location into a chute wall 70 (FIG. 7A, 7B) that is in fluid communication with a loading chamber 44;
upon commencing a predetermined injection sequence, an injector controller causes an injector to move a preselected number of bales in a column into a chute, in which a preselected number of bales are receivable, a preselected number of bales being equal to predetermined number of bales in a column but one;
a plunger assembly 258 comprising a plunger 258 and a plunger controller 220 configured to cause a plunger to move a preselected number of bales into a compression chamber; and,
a knotter 82, during a predetermined time period, tying a preselected number of columns of bales together, to form a bale bundle in a compression chamber.
Claim(s) 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Horst (US 8,365,898) (aka Horst '898).
Horst '898 discloses a bale pick-up assembly comprising:
a pair of walls 75A, 75B defining a channel therebetween;
a pair of arms 99A, 99B formed for guiding each bale into a preselected orientation thereof and for guiding each bale into a channel as a pick-up assembly moves forward relative to a ground;
a plurality of rollers 42, 44 defining respective axes thereof about which rollers are rotatable, rollers being positioned opposite to each other and mounted on resilient mount assemblies 76, 78, 83, 84 (FIGS. 8B, 8C) in respective walls, each roller partially extending beyond a wall in which a roller is mounted for engagement with each bale to move each bale along a channel; and
each resilient mount assembly permitting outward movement of each roller and urging inward movement of each roller, wherein bales are individually engaged by rotating rollers and thereby propelled along a channel, in succession.
Claim(s) 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Horst (US 8,365,898) (aka Horst '898).
Horst '898 discloses a bale pick-up assembly comprising:
a pair of walls 75A, 75B defining a channel therebetween;
a pair of arms 99A, 99B formed for guiding each bale into a preselected orientation thereof and for guiding each bale into a channel as a pick-up assembly moves forward relative to a ground;
a plurality of rollers 42, 44 in each wall 75A, 75B (FIGS. 3 & 4) defining respective axes X1, X2 thereof about which rollers 42, 44 are rotatable, rollers being positioned opposite to each other and mounted on resilient mount assemblies 72, 74 76, 78, 83, 84 (FIGS. 8B, 8C) in respective walls, each roller partially extending beyond a wall in which a roller is mounted for engagement with each bale to move each bale along a channel; and
each resilient mount assembly permitting outward movement of each roller and urging inward movement of each roller, wherein bales are individually engaged by rotating rollers and thereby propelled along a channel, in succession.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Horst '822 in view of Horst (US 8,365,898) (aka Horst '898).
Horst '822 discloses a system for forming bale bundles that "may be towed in a field, with a device (e.g., a suitable conveyor) adapted to pick up bales directly in the field." (C13/L31-36). Aside from picking up bales with a conveyor Horst does not explicitly disclose walls, arms and rollers.
Horst '898 discloses a bale pick-up assembly comprising:
a pair of walls 75A, 75B defining a channel therebetween;
a pair of arms 99A, 99B formed for guiding each bale into a preselected orientation thereof and for guiding each bale into a channel as a pick-up assembly moves forward relative to a ground;
a plurality of rollers 42, 44 defining respective axes thereof about which rollers are rotatable, rollers being positioned opposite to each other and mounted on resilient mount assemblies 76, 78, 83, 84 (FIGS. 8B, 8C) in respective walls, each roller partially extending beyond a wall in which a roller is mounted for engagement with each bale to move each bale along a channel; and
each resilient mount assembly permitting outward movement of each roller and urging inward movement of each roller, wherein bales are individually engaged by rotating rollers and thereby propelled along a channel, in succession.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the invention of Horst '822 to include walls defining a channel, arms and resiliently mounted rollers, as taught by Horst '898, such that the bale is accurately picked up from the ground and propelled up a chute with a similar force to that of previously used toothed chains that otherwise harm or damage a bale.
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 & 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 8,122,822. Although the claims at issue are not identical, they are not patentably distinct from each other because although the claims at issue are not identical, they are not patentably distinct from each other because the breadth of the instant application is broad enough to anticipate the patent. Linguistic differences or elimination of an element(s)/function(s) is deemed to be obvious in light of prior art teachings of at least the recited element or its functions (see In re Karlson, 136 USPQ 184, 186; 311 F2d 581 (CCPA 1963)), thereby rendering the elimination of any elements recited in the claims of the related patent (that are not recited in the instant claims) obvious. Elements recited in the instant claims (but not recited in the claims of the related patent) are addressed by the art rejection(s) set forth above.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 8,122,822 in view of Horst (US 8,365,898) (aka Horst '898). (The full text of the rejection can be found in the 103 rejection for claim 12 above.)
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 8,365,898. Although the claims at issue are not identical, they are not patentably distinct from each other because the breadth of the instant application is broad enough to anticipate the patent. The instant application is identical to the patent except for the linguistic differences in element names. However, the functions of the elements in the instant application and the '898 patent are identical or nearly identical.
Allowable Subject Matter
Claims 3 & 5-11 is/are objected to as being dependent upon a rejected base claim, but would be allowable with successful traversal of the double patenting rejection contained within this office action and the claims rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed May 14, 2026 have been fully considered but they are not persuasive.
Claim 1. Applicant argues:
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Applicant does not argue and the claim does not quantify or further limit "preselected number of bales in a column". Thus, "preselected number" is arbitrary and can be any number as long as it is more than that which the injector/pusher of cited prior art injects. Horst explicitly discloses a column of 3 bales high, but there is no operational reason, restriction or limitation on Horst's apparatus (US 8,122,822) where a user could not select a column to have no more than two bales. And, if a column of bales is preselected to be two(2) then Horst's injector moving a single bale equals a "preselected number of the bales in a column but one", e.g. 2>1.
Claims 12 & 13. Applicant argues:
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Applicant alleges that resilient mounts are not structurally equivalent ot Horst's bracket. Applicant does not put forth evidence. Mount is defined as "to attach to a support". (https://www.merriam-webster.com/dictionary/mount.) Horst discloses that bracket 72, 72' connect to mounting portion 74, 74' (FIG. 8B, 8C) which rotatably supports rollers 42, 44. And, resilience means, e.g. spring 73, 73', allows mounting portion 74 to swing away from and back into the channel as shown in FIG. 8A. Thus, interpreting "resilient mount" under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph requires that any structure that is functionally equivalent will suffice.
Claim 13. Applicant argues that the Horst's rollers 42, 44 are not in walls 75A, 75B. However, Horst channel includes the elements identified as 75A, 75B as well as the portion that extends forwardly of the elements labeled 75A, 75B. (See FIG. 1B reproduced below.)
[AltContent: textbox (Portion of wall forward of element #75B, and in which rollers are mounted)][AltContent: textbox (Portion of wall forward of element #75A, and in which rollers are mounted)]
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Where Applicant interprets Horst's walls comprising only ref. char. 75A, 75B the annotated figure 1B above shows that the additional structure extending forward acts to extend and define the "channel therebetween" as recited in claim 13, line 5 as well as providing the structure by which rollers are mounted therein as recited in claim 13, line 10.
Double patenting rejections.
Applicants arguments have been addressed in this section.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 GREGORY W ADAMS whose telephone number is (571)272-8101. The examiner can normally be reached Mon - Fri, 8am-5pm.
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, Saul Rodriguez can be reached at (571)272-7097. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY W ADAMS/Primary Examiner, Art Unit 3652
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