DETAILED ACTION
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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: “311-1” and “919”. 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. 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: “551”. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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 disclosure is objected to because of the following informalities:
At paragraph 0060, in line 2, “us” should be changed to “up”, and in line 6, “hold” should be changed to “hole”.
Appropriate correction is required.
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.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 1,970,063 (Steinman) in view of US 10,309,160 B1 (Goren).
As concerns claim 1, Steinman discloses a belling auger apparatus for belling a hole of a given width in earth, the apparatus comprising: a rotatable shaft 1 with a lower end and an upper end; a belling assembly connected to the lower end of the rotatable shaft (figure 1); a rotational drive connector 14 connected to the upper end of the rotatable shaft, and a shovel 6, 8 with a distal end and a proximal end, the shovel including a J-shaped cutting edge; wherein in response to applying the downward force to the rotational drive connector the shovel pivots outward (from the position of figure 3 to the position of figure 1).
Steinman lacks to disclose the rotational drive connector being configured to removably connect to a hydraulic motor (although there would be no reason not to attach a motor to automate the apparatus); nevertheless Goren discloses an auger apparatus for belling a hole of a given width in the earth having a rotational drive connector configured to removably connect to a hydraulic motor (see figure 1, showing shovel at 110 and shaft driven by motor 130). One of ordinary skill in the art, prior to the effective filing, would have obviously considered incorporating a motor such as disclosed by Goren with a reasonable expectation of success, as this provides the desirable result of operating the auger apparatus automatically or mechanically and thus would not require manual input to operate the auger apparatus.
Claim(s) is/are rejected under 35 U.S.C. 103 as being unpatentable over Steinman, as modified above, and further in view of US 3,112,802 (Amann et al.).
As concerns claim 3, the combination discloses the apparatus of claim 1, the belling assembly further comprising: a base pan 19; a base shaft affixed to a center point of the base pan (the lower portion of the driving rod, see figure 3); wherein in response to applying downward force to the hydraulic motor (see figure 1 of Goren), the belling assembly bells the bottom of the hole to at least 50% greater than the given width (this certainly appears to be the case in figure 1); and wherein the rotational drive connector is configured with withstand a vertical force of 250 pounds or greater (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. In re Aller, 105 USPQ 233. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Refer to MPEP § 2144.05), but lacks to disclose an extension strap rotatably connected at a first pivot point to the base shaft.
Amann et al. discloses a belling auger apparatus including an extension strap 33 rotatably connected at a first pivot point to the base shaft. One of ordinary skill in the art, prior to the effective filing, would have obviously considered incorporating the strap of Amann et al. with a reasonable expectation of success, as this provides additional support for the shovel in the expanded configuration.
As concerns claim 4, Amann et al. discloses the apparatus of claim 3, wherein the shovel is rotatably connected at a second pivot point to the rotatable shaft (figure 1), the shovel being rotatably connected to the extension strap at a third pivot point located between the second pivot point and the distal end (note the additional pivot approximate 35 in figure 1).
As concerns claim 6, Steinman discloses the apparatus of claim 3, wherein the base shaft is rigidly affixed to a top side of the base pan, the apparatus further comprising: a stabilization spike 2 rigidly affixed to a bottom side of the base pan.
As concerns claim 7,the combination discloses the apparatus of claim 6, wherein the shovel rotates around the base shaft in response to a rotational force (Steinman) being applied to the rotatable shaft by the hydraulic motor (Goren).
As concerns claim 9, Amann et al. discloses the apparatus of claim 6, wherein the shovel digs into a side of the hole in response to the shovel rotating about the second pivot point away from the base shaft (figure 1).
As concerns claim 10, Amann et al. discloses the apparatus of claim 9, wherein the shovel throws dirt from the side of the hole into the base pan in response to rotating about the second pivot point away from the base shaft and in response to rotating around the base shaft (Id.).
As concerns claims 2, 5, 8 and 11, the combination lacks to specifically disclose the ranges for the weights for the downward and vertical forces, or the specific claimed values for the claimed torque, nevertheless it would have been obvious to one having ordinary skill in the art prior to the effective filing, to contrive any number of desirable ranges for the claimed forces and torques, 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. In re Aller, 105 USPQ 233. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Refer to MPEP § 2144.05.
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,442,151 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference patent, drawn more narrowly to the same subject matter, obviously encompass the limitations of the pending claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES G. SAYRE whose telephone number is (571)270-7045. The examiner can normally be reached from 9:30-6:00 Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at 571-272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES G. SAYRE
Primary Examiner
Art Unit 3672
/JAMES G SAYRE/ Primary Examiner, Art Unit 3672
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