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 1-23 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,268,249. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims to the current application are merely broader than the claims to US Patent No. 11,268,249 and are thus encompassed by said claims.
Claims 1-23 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 12,480,263. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims to the current application are merely broader than the claims to US Patent No. 12,480,263 and are thus encompassed by said claims.
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 1-23 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 2 of claim 1, the recitation of a “first piece of the mandrel” is confusing because a “second piece of the mandrel” is not recited in the claim.
In claim 1, the relationship is not clear between the “rotary drive” (line 2) and the “larger device” (lines 4-5).
Further in claim 1, it is not clear what disclosed features are meant by recited terms such as “first piece of the mandrel” (line 2), “inner shoulder” (line 3), “inner cylindrical surface” (line 3), “mandrel cylindrical surface” (line 8), “mandrel end piece” (line 15), “mandrel end pieces” (line 16), and “second interior shoulder” (line 15), because these terms are not used in applicant’s written specification in conjunction with drawing reference numerals.
In line 8 of claim 1, “the mandrel cylindrical surface” lacks proper antecedent basis in the claims. Because differing terminology is used, it is not clear whether this is intended to refer to the “inner cylindrical surface” previously recited in line 3, or to some other feature.
In line 11 of claim 1, “the plurality of shoulder portions” lacks proper antecedent basis in the claims.
In line 12 of claim 1, “the rotary motion” lacks proper antecedent basis in the claims.
In lines 12-13 of claim 1, “the abrasive portion” lacks proper antecedent basis in the claims.
In lines 1-2 of claim 2, “said at least one of plurality of blade elements and spacers” lacks proper antecedent basis in the claims. Further, this recitation does not appear to read properly such that its intended meaning cannot be discerned.
In line 2 of claim 2, the recitation “consistent with” is indefinite; it is not clear what relationship is being specified.
In line 2 of claim 2, “the perimeter of the core portion” lacks proper antecedent basis in the claims.
In line 3 of claim 2, “the mandrel cylindrical portion” lacks proper antecedent basis in the claims.
In line 1 of claim 3, “the plurality of shoulders” lacks proper antecedent basis in the claims.
In line 2 of claim 3, the recitation “a core portion” is indefinite; it is not clear whether this is intended to refer to the same “core portion” previously recited (see claim 1, line 9) or to some different/additional core portion.
In line 5 of claim 3, the recitation “interference zone” is indefinite; it is not clear what is meant by this term or in what way two adjacent shoulder portions abutting one another can reasonably be considered to constitute an “interference” zone.
In line 3 of claim 4 and in line 3 of claim 6, “the width of the system” lacks proper antecedent basis in the claims.
In line 2 of claim 5 and in line 2 of claim 7, “the centerline of the mandrel” lacks proper antecedent basis in the claims.
In line 2 of claim 10, “said corresponding respective blade element” lacks proper antecedent basis in the claims.
In line 5 of claim 10, “the mandrel centerline” lacks proper antecedent basis in the claims.
In line 3 of claim 11, the recitation “a first configuration and a second configuration” is indefinite; it is not clear whether this is intended to refer to the same “first configuration and a second configuration” previously recited (see claim 10, line 3) or to some different/additional configurations.
In line 7 of claim 11 and in line 7 of claim 13, “the single circular abrasive element” lacks proper antecedent basis in the claims.
In line 9 of claim 11 and in line 8 of claim 13, “the two circular abrasive elements” lacks proper antecedent basis in the claims.
In line 3 of claim 13, the recitation “a first configuration and a second configuration” is indefinite; it is not clear whether this is intended to refer to the same “first configuration and a second configuration” previously recited (see claim 10, line 3) or to some different/additional configurations.
In line 2 of claim 14, it is not clear what is meant by the recitation “operational”.
In line 6 of claim 15, the recitation of a “first shoulder portion” is confusing because a “second shoulder portion” is not recited in the claim.
In line 6 of claim 15, “the first end portion” lacks proper antecedent basis in the claims.
In line 6 of claim 15, the recitation of a “first shoulder portion” is further indefinite and confusing because a “second shoulder portion” is not recited in the claim.
Further in claim 15, it is not clear what disclosed features are meant by recited terms such as “first end portion” (line 6), “cylindrical surface portion” (line 9), “end piece” (line 16), and “inner shoulder portion” (lines 17-18), because these terms are not used in applicant’s written specification in conjunction with drawing reference numerals.
In line 12 of claim 15, “the mandrel cylindrical portion” lacks proper antecedent basis in the claims.
In line 13 of claim 15, the recitation “the at least one of plurality contacting the mandrel contact zone” does not read properly and/or lacks antecedent basis in the claims.
In line 18 of claim 15, “the outer lateral zone” lacks proper antecedent basis in the claims.
In lines 18-19 of claim 15, the recitation “of the at last successive selection least one of a plurality,” does not read properly; it is not clear what is intended by this language.
In line 20 of claim 15, “the axis of the cylindrical portion” lacks proper antecedent basis in the claims.
In line 4 of claim 16, “the rotary motion”, “the rotary drive”, and “the abrasive portion” lack proper antecedent basis in the claims.
In line 2 of claim 17, “the outer perimeter of the core zone” lacks proper antecedent basis in the claims.
In line 3 of claim 17, the recitation “successive item” is indefinite; it is not clear what is meant by this term.
In lines 3-4 of claim 17, “the predetermined selection” lacks proper antecedent basis in the claims.
In lines 1-2 of claim 18, the recitation “at least a subset of predetermined order and number” does not read properly.
In line 2 and in lines 9-10 of claim 18, the recitation “the at least blade elements or blade elements a and spacers” does not read properly.
In line 3 of claim 18, “the core portion” lacks proper antecedent basis in the claims.
In line 4 of claim 18, the recitation “interference zone” is indefinite; it is not clear what is meant by this term or in what way a larger thickness shoulder portion can reasonably be considered to constitute an “interference” zone.
In line 8 of claim 18, “the two blade elements” lacks proper antecedent basis in the claims.
In line 2 of claim 19, the recitation “the at least blade elements ...” does not read properly.
In line 5 of claim 20, “the blade element centerline” lacks proper antecedent basis in the claims.
In lines 9-10 of claim 20, “the single circular abrasive element” lacks proper antecedent basis in the claims.
In lines 11-12 of claim 20, “the two circular abrasive elements” lacks proper antecedent basis in the claims.
The wording of claim 21 is confusing; it is not clear what is meant by repeating verbatim, in the first two lines of the claim, language from the first two lines of independent claim 20. It would appear that this language is unnecessary in claim 21.
In line 1 of claim 22, the recitation “wherein each abrasive elements” does not read properly.
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, 6, 8-11, 13-17, 19-21, and 23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hughes et al., U.S. Patent No. 3,585,761.
Hughes discloses a milling system for material removal (see the rotary cutter assembly shown in Figs. 1 and 2) including a mandrel (e.g., mandrel 13) that engages a rotary drive (see col. 2, lines 35-42). The mandrel has a first piece (a combination of enlarged head 12, end plate 16, and mandrel 13) that provides an inner shoulder (e.g., the inner surface of end plate 16) and an inner cylindrical surface (e.g., the outer cylindrical surface of the mandrel 13). A labyrinth ring (e.g., the sheave or pulley described by Hughes at col. 2, lines 37-38) engages the mandrel and provides an attachment point to a larger device (see col. 2, lines 29-42). A plurality of blade elements (circular saw blades 27) and spacers 26 have an inner diameter that fits the mandrel cylindrical surface (see Fig. 4). Each of blade elements has a core portion (main body 29; see Figs. 3-4) and a plurality of shoulder portions (e.g., the plurality of sections of the outer rim 28 that are separated from one another by radial splits; see Figs. 3-4). Each of the shoulder portions has an abrasive element attached (the rim portion 28 may have a matrix of diamonds thereon; see col. 2, lines 70-72). Each blade element core portion provides a lateral contact surface (e.g., with one or more of the spacers; see Fig. 2). A mandrel end piece (e.g., end plate 40) provides a shoulder (e.g., inner face 31a) and a transverse force holds in place the blade elements and spacers (note the bolts 50; also see col. 3, lines 28-30).
With respect to claims 6 and 8, the blade elements and spacers of Hughes are configured such that material removal capability is provided across less than the width of the system (due to the spacers 26; see Fig. 2) and is provided at a plurality of predetermined widths (i.e., where the blade rims 28 are present; see Fig. 2) and predetermined gaps (i.e., where the spacers 26 are present) between the widths.
With respect to claims 10-11, 13, and 20-21 Hughes discloses a plurality of abrasive elements, all aligned at the same radial distance from the center of rotation. Any grouping of adjacent elements can be considered to constitute a “configuration”, as recited.
With respect to claim 14, the Hughes abrasive elements have a rectangular operational shape.
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) 3 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hughes et al., U.S. Patent No. 3,585,761 in view of Nishida, U.S. Patent Application Publication No. 2016/0237631.
As discussed above, Hughes discloses all of the limitations of claims 1 and 15. Although Hughes further discloses that the blade shoulder portions 28 have a larger thickness than the core portions 29 (see Fig. 2), Hughes does not specifically disclose an interference zone between shoulder portions, as recited in claims 3 and 18.
In the same field of endeavor, Nishida discloses a pavement grinding device having blade elements 14 (see Figs. 2A, 2B), each of which has shoulder portions (grinding pieces 16) that have a larger thickness than its core portions (i.e., the portions of plate 15 between the shoulder portions). Nishida teaches providing an interference zone between the larger thickness shoulder portions (see the overlap space 26 in Figs. 4A-4C).
It would have been obvious to a person of ordinary skill in the art at the time the present application was effectively filed, in view of the teaching in Nishida, to provide the Hughes system with interference zones, in order to ensure complete coverage of the surface being milled.
Claim(s) 4-5 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hughes et al., U.S. Patent No. 3,585,761 in view of Kennedy, U.S. Patent No. 4,463,989.
As discussed above, Hughes discloses all of the limitations of claims 1 and 6. Hughes does not, however, specifically disclose a configuration providing material removal across the width of the system, as recited in claim 4.
In the same field of endeavor, Kennedy discloses a pavement milling or grooving device (see Figs. 1-3) and teaches a blade element configuration providing material removal across the width of the system by omitting spacers (see Fig. 4).
It would have been obvious to a person of ordinary skill in the art at the time the present application was effectively filed, in view of the teaching in Kennedy, to configure the Hughes system without spacers in order to provide material removal across the width of the system.
With respect to claims 5 and 7, Kennedy further teaches providing material removal at a plurality of radial distances (compare the larger diameter outer cutting discs 22 with the smaller diameter inner cutting discs in Fig. 4) in order to form a groove or depression of a desired shape (see the receptacle area 79 in Fig. 6).
Claim(s) 12 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hughes et al., U.S. Patent No. 3,585,761 in view of Kappel et al., U.S. Patent Application Publication No. 2012/0012229 (“Kappel”).
As discussed above, Hughes discloses all of the limitations of claims 1 and 20. Hughes does not, however, specifically disclose that the abrasive elements are detachable, as recited in claim 12, or comprise PCD, as recited in claim 22.
In the same field of endeavor, Kappel discloses a cutting/grinding device (see, e.g., Figs. 1-3) having a cutting wheel 26 and teaches using detachable abrasive elements (see pocket member 360 which retains a cutter tooth 300 in Fig. 3). Kappel further teaches forming cutter inserts (e.g., the inserts 324A, 324B in Fig. 21) from a PCD material (see paragraph [0093]).
It would have been obvious to a person of ordinary skill in the art at the time the present application was effectively filed, in view of the teaching in Kappel, to provide the Hughes system with detachable abrasive elements, in order to allow replacement of worn elements. It would have been further obvious, in view of the teaching in Kappel, to provide the Hughes system with abrasive elements comprising PCD, in order to make the elements more wear-resistant.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN F FIORELLO whose telephone number is (571)270-7012. The examiner can normally be reached Mon-Fri 8:00AM-4:30PM EST.
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/BENJAMIN F FIORELLO/ Primary Examiner, Art Unit 3678
BF
09/24/2026
