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`Case 1:17-cv-00770-JDW Document 369-39 Filed 04/12/24 Page 1 of 12 PagelD #: 34369
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`EXHIBIT 39
`EXHIBIT 39
`
`

`

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` 5
`Kol ANDPR
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`8
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`
`
`
` FILING DATE
`
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
` CONFIRMATIONNO.
`
`
`11/991,846
`
`03/12/2008
`
`Peter Busley
`
`002287
`
`1881
`
`23456
`
`7590
`
`06/03/2010
`
`WADDEY& PATTERSON, P.C.
`1600 DIVISION STREET, SUITE 500
`NASHVILLE, TN 37203
`
`BOMAR, THOMAS S
`
`3676
`
`
`
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/03/2010
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`docket@ IPLAWGROUP.COM
`BFL @iplawgroup.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

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`
`Application No.
`Applicant(s)
`
`Office Action Summary
`
`11/991 ,846
`Examiner
`
`BUSLEYETAL.
`Art Unit
`
`3676
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a).
`In no event, however, may a reply be timelyfiled
`after SIX (6) MONTHSfrom the mailing date of this communication.
`If NO period forreply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for replywill, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three monthsafter the mailing date of this communication, even if timely filed, may reduce any
`eamed patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1)X] Responsive to communication(s) filed on 06 January 2010.
`2a)L] This action is FINAL.
`2b)X] This action is non-final.
`3)L] Sincethis application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`4)X] Claim(s) 1-19 is/are pending in the application.
`
`4a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`5)L] Claim(s)
`is/are allowed.
`6)X] Claim(s) 1-79 is/are rejected.
`7)L] Claim(s)__ is/are objectedto.
`8)L] Claim(s)____ are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)X] The specification is objected to by the Examiner.
`10)X] The drawing(s) filed on 12 March 2008is/are: a)[X] accepted or b)[_] objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`11)] The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`12)K] Acknowledgmentis made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or(f).
`a)XJ All
`b)L_] Some * c)] Noneof:
`1.L] Certified copies of the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3. Copies ofthe certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action foralist of the certified copies not received.
`
`Attachment(s)
`4) C] Interview Summary (PTO-413)
`1) Xx] Notice of References Cited (PTO-892)
`Paper No(s)/Mail Date. __
`2) [J Notice of Draftsperson’s Patent Drawing Review (PTO-948)
`5) L] Noticeof Informal Patent Application
`3) IX] Information Disclosure Statement(s) (PTO/SB/08)
`
`6) C] Other: U.S. Patent and Trademark OfficePaper No(s)/Mail Date_
`
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20100527
`
`

`

`Case 1:17-cv-00770-JDW Document 369-39 Filed 04/12/24 Page 4 of 12 PageID #: 34372
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`Application/Control Number: 11/991,846
`Art Unit: 3676
`
`Page 2
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`DETAILED ACTION
`
`Specification
`
`1.
`
`Theabstract of the disclosure is objected to because of undue length (should not be more
`
`than 150 words) andthe use of the implied phrase “Disclosedis...”. Correction is required. See
`
`MPEP§ 608.01(b).
`
`Claim Objections
`
`2.
`
`Claim 1 is objected to because of the following informalities:
`
`the recitation of “serve as
`
`guiding unit” should be --serve as a guiding unit--. Appropriate correction is required.
`
`Claim Rejections - 35 USC § 112
`
`3.
`
`The following is a quotation of the second paragraph of 35 U.S.C. 112:
`
`The specification shall conclude with one or more claimsparticularly pointing out and distinctly claiming the
`subject matter which the applicant regards as his invention.
`
`4.
`
`Claims 1-19 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for
`
`failing to particularly point out and distinctly claim the subject matter which applicant regards as
`
`the invention.
`
`5.
`
`In claim 1, the recitation of “are individually adjustable in height” is unclear and
`
`indefinite since it is not known whether the wheels or the lifting columnsare beingreferred to.
`
`6.
`
`Again in claim 1, the phrase "preferably in a" renders the claim indefinite becauseit is
`
`unclear whetherthe limitation(s) following the phrase are part of the claimed invention. See
`
`MPEP§ 2173.05(d).
`
`7.
`
`Lastly in claim 1, the recitation of “which are capable of being displaced” is unclear and
`
`indefinite since it is not known whether the measuring device (only one being referred to) or the
`
`lifting columnsare being referred to.
`
`

`

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`Application/Control Number: 11/991,846
`Art Unit: 3676
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`Page 3
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`8.
`
`Regarding claim 6, the phrase "like, for instance," renders the claim indefinite becauseit
`
`is unclear whether the limitations following the phrase are part of the claimed invention. See
`
`MPEP§ 2173.05(d).
`
`9.
`
`Claim 8 recites the limitation "the mechanical limit stop" in the next to last line. There is
`
`insufficient antecedentbasis for this limitation in the claim.
`
`10.
`
`Claim 12 recites the limitation "the neighboring wheels"in line 2. Thereis insufficient
`
`antecedentbasis for this limitation in the claim.
`
`11.
`
`Claim 12 recites the limitation "the front wheels" in line 3. There is insufficient
`
`antecedentbasis for this limitation in the claim.
`
`12.
`
`Ineach of claims 15-18, the multiple recitations of “a controller” are confusing since a
`
`controller was already recited in claim 1, whereas these additional recitations of ‘“‘a controller”
`
`make it seem as though there are multiple controllers different than the one in claim (the
`
`specification and drawings only show one controller 23).
`
`13.
`
`Claims 16 and 17 recite the limitations "the working depth" and "the indicator device" in
`
`the last two lines of each claim. There is insufficient antecedent basis for these limitations in the
`
`claims.
`
`14.=‘In claim 18, the recitation of “which are capable of being displaced” is unclear and
`
`indefinite since it is not known whether the measuring device (only one being referred to) or the
`
`lifting column is beingreferredto.
`
`15.
`
`Claim 18 is further considered unclear and indefinite since the claim beginsas a single
`
`lifting column with a single measuring device, whereasthe last four lines of the claim then begin
`
`referring to multiple measuring devices and columnsthat are not a part of the claim.
`
`

`

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`Application/Control Number: 11/991,846
`Art Unit: 3676
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`Page 4
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`16.
`
`Claim 18 is objected to under 37 CFR 1.75(c), as being of improper dependent form for
`
`failing to further limit the subject matter of a previous claim. Applicant is required to cancel the
`
`claim(s), or amendthe claim(s) to place the claim(s) in proper dependent form, or rewrite the
`
`claim(s) in independent form. Claim 18 does not provide any newor different limitations as
`
`compared to whathas already been claimedin claim 1.
`
`Claim Rejections - 35 USC § 103
`
`17.
`
`The followingis a quotation of 35 U.S.C. 103(a) which formsthe basis forall
`
`obviousnessrejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of thistitle, if the differences between the subject matter sought to be patented and the priorart are
`such that the subject matter as a whole would have been obviousat the time the invention was madeto a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
`
`18.—This application currently namesjoint inventors. In considering patentability of the
`
`claims under 35 U.S.C. 103(a), the examiner presumesthat the subject matter of the various
`
`claims was commonly ownedat the time any inventions covered therein were made absent any
`
`evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out
`
`the inventor and invention dates of each claim that was not commonly ownedat the timealater
`
`invention was made in order for the examinerto consider the applicability of 35 U.S.C. 103(c)
`
`and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
`
`19.
`
`Claims 1-3 and 6-19 are rejected under 35 U.S.C. 103(a) as being unpatentable over US
`
`2002/0047301 of Davis in view of US 6,152,648 of Gfroereretal.
`
`Regarding claims | and 18, both as best understood, Davis teaches an automotive road
`
`construction machine (1), with a machine frame (2) supported by a chassis, a working drum (11)
`
`mounted at the machine frame (2) in an immovable and/or pivotable manner, and used for
`
`

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`Application/Control Number: 11/991,846
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`Page 5
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`working a ground surface or traffic surface (12), where the chassis is provided with wheels or
`
`crawler track units (3, 6) that are connected to the machine framevialifting columns(7, 10) and
`
`are individually adjustable in height relative to the machine frame (paragraph 0033),
`
`characterized in that the lifting columns (7, 10) comprise two hollow cylinders capable of
`
`telescoping that serve as a guiding unit, each individually height-adjustable lifting column(7, 10)
`
`is provided with a measuring device (13, 14) for measuring the currentlifting state ofthe lifting
`
`column (7, 10), and a controller (20), which receives the measured path signals from the
`
`measuring devices (13, 14) ofall the lifting columns(7, 10), regulates thelifting state of the
`
`lifting columns(7, 10) in accordance with the measured path signals of the measuring devices
`
`(13, 14) and/or their alterations over time (Figs. 1-5; at least paragraphs 0032-0042).
`
`However,it is not specifically taught that the measuring device is coupled with elements
`
`ofthe lifting column,so that the measuring devices are capable of being displaced relative to one
`
`anotherin accordance with thelifting position, in such a mannerthat a path signal pertaining to
`
`the lifting position of each lifting column is continuously detectable by the measuring device.
`
`Noris it specifically taught that the hollow cylindersofthe lifting columns accommodateat least
`
`one piston cylinder unit for height adjustment.
`
`Gfroerer et al teach an automotive road construction machinesimilar to that of Davis. It
`
`is further taught that the hollow cylindersofthe lifting columns (16) accommodateat least one
`
`piston cylinder unit for height adjustment, as is notoriously knownin the art. Additionally,
`
`Gfroerer et al teach that a measuring device (93) is coupled directly with elements ofthe lifting
`
`column,so that the measuring devices are capable of being displaced relative to one another in
`
`accordancewith thelifting position (Fig. 1; col. 3, lines 27-40). Thus, at the time of the
`
`

`

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`Application/Control Number: 11/991,846
`Art Unit: 3676
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`Page 6
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`invention, it would have been obviousto one of ordinary skill in the art to try placing the
`
`measuring device of Gfroerer et al on the lifting columns of Davis, while keeping the measuring
`
`devices (13, 14) of Davis in place, to achieve the predictable result of sensing the relative
`
`extensionsif the lifting columns themselves, as taught by Gfroereretal.
`
`Regarding claims 2, 3, and 19, the measuring devices of Gfroereret al are path measuring
`
`devices and the signals from the devices are supplied to the indicator device (16 or 17) of Davis
`
`for the lifting position (Fig. 5 of Davis).
`
`Regarding claim 6, as best understood, the chassis with the machine frame (2) can be
`
`adjusted to a reference plane, and that a desired spatial position of the machine frame(2)to the
`
`reference plane can be adjusted as a referencelifting position of the chassis on the reference
`
`plane by storing the measured signals of the measuring devices in accordance with the current
`
`lifting position ofthe lifting columns (Fig. 5 of Davis and associated description).
`
`Regarding claims 7 and8, at least one limiting value for the height adjustment monitored
`
`by the measuring device can be adjusted for each lifting column,said limiting value limiting the
`
`lowest and/or highestlifting position ofa lifting columnto a pre-determined value (Fig. 5;
`
`paragraphs 0042-0045 of Davis); the lowest or highestlifting position in the direction of
`
`movementis positioned in front of the mechanical limit stop (91) of the piston against the
`
`cylinder of the piston cylinder unit (Fig. 1 of Gfroereret al).
`
`Regarding claim 9, the controller (20), which receives the measured path signals from the
`
`measuring devicesofall the lifting columns, regulates thelifting state of the lifting columnsin
`
`such a mannerthat the machine frame showsa pre-determined transverse inclination or a pre-
`
`

`

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`Application/Control Number: 11/991,846
`Art Unit: 3676
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`Page 7
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`determined path-dependenttransverse inclination sequence transverse to the direction of travel
`
`(Figs. 1 and 5; paragraphs 0042-0050 of Davis).
`
`Regarding claims 10 and 11, the neighboring track units (3, 6) are capable of being
`
`adjusted in height in an opposite mannersince they are each independently adjustable in height
`
`(paragraph 0033 of Davis).
`
`Regarding claim 12, the front track units (4, 5) are capable of being height-adjustable in
`
`the mannerofa full-floating axle (Figs. 2-4 of Davis).
`
`Regarding claim 13, the controller (20) receiving the measured signals from the
`
`measuring devicesofall the lifting columns adjusts a desired lifting position ofthe lifting
`
`column without overshooting or with as little overshooting as possible in accordance with the
`
`measured path signals of the measuring devices and/or their alterations over time due, at the very
`
`least, to the use of preset values (Fig. 5 of Davis).
`
`Regarding claim 14, the measuredsignals of the measuring devices are suitable for
`
`calibrating to a unit of length (emphasis added).
`
`Regarding claim 15, as best understood to refer to only one controller, the controller (20)
`
`regulates the working depth of the working drum (11), and that the controller (20) receives the
`
`measured path signals from the measuring devices and includes them into the regulation of the
`
`working depth of the working drum (paragraphs 0042-0050 of Davis).
`
`Regarding claims 16 and 17, each lifting column (7-10) is provided at the lower end with
`
`a support (not labeled but clearly seen in the figures of Davis) for the crawler track units (3-6),
`
`and that a distance sensor (13, 14) measures the distance of the support to the ground surface and
`
`traffic surface in a pre-determined distance in front of or next to the crawler track unit and
`
`

`

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`Application/Control Number: 11/991,846
`Art Unit: 3676
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`Page 8
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`transmits the measured signal to the controller (20) for thelifting position ofthe lifting columns
`
`(paragraphs 0035-0042 of Davis).
`
`20.
`
`Claims 4 and 5 are rejected under 35 U.S.C. 103(a) as being unpatentable over Davis in
`
`view of Gfroerer et al as applied to claim 1 above, and further in view of US 5,984,420 of
`
`Murrayetal.
`
`The combination of Davis and Gfroerer et al teaches the measuring devices (93 of
`
`Gfroerer et al) coupled to the lifting columns of Davis. However,it is not specifically taught that
`
`the measuring devices comprise wire ropes and wire rope sensors as currently claimed.
`
`Murrayet al teach a wheeled machine with height adjustable lifting columnssimilar to
`
`that of Davis and Gfroereret al. It is further taught that sensors 152 have wire ropes and rope
`
`sensors (Figs. 22-24; col. 9, lines 34-37). Thus, at the time of the invention, it would have been
`
`obviousto one of ordinary skill in the art to try using the rope sensors of Murrayetal in the
`
`combination of Davis and Gfroerer etal, thereby achieving the predictable result of a having a
`
`sensorthat senses actuation ofthe lifting rams, as taught by Murrayetal.
`
`Conclusion
`
`21.
`
`The prior art made of record on form 892 and not relied upon is considered pertinent to
`
`applicant's disclosure.
`
`22.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Shane Bomar whose telephone numberis (571)272-7026. The
`
`examiner can normally be reached on Monday-Thursday from 6:30am to 5:00pm.
`
`

`

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`Application/Control Number: 11/991,846
`Art Unit: 3676
`
`Page 9
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`If attempts to reach the examinerby telephoneare unsuccessful, the examiner’s
`
`supervisor, David Bagnell can be reached on 571-272-6999. The fax phone numberfor the
`
`organization where this application or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applicationsis available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR
`
`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would
`
`like assistance from a USPTO Customer Service Representative or access to the automated
`
`information system,call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/Shane Bomar/
`Primary Examiner, Art Unit 3676
`
`

`

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`Notice of References Cited Examiner
`
`Application/Control No.
`
`11/991,846
`
`Shane Bomar
`U.S. PATENT DOCUMENTS
`
`Applicant(s)/Patent Under
`Reexamination
`BUSLEYETAL.
`Art Unit
`3676
`
`Page 1 of 1
`
`@
`Classification
`
`Document Number
`Country Code-Number-Kind Code
`
`Date
`MM-YYYY
`
`Classification
`
`S-4,943,119 A
`
`S-5,893,677 A
`
`S-5,984,420 A
`
`US-6,152,648 A
`
`m
`
`US-2002/0047301 A1
`
`US-2006/0076821 A1
`
`07-1990
`
`04-1999
`
`11-1999
`
`11-2000
`
`04-2002
`
`04-2006
`
`Zarniko et al.
`
`Haehn etal.
`
`Murrayet al.
`Gfroerer etal.
`
`Davis, Danny Ray
`Troudtetal.
`
`US-2008/0246328 A1
`
`10-2008
`
`Mannebach etal.
`
`US-2008/0315666 A1
`
`12-2008
`
`Von Schonebecketal.
`
`US-2009/0108663 A1
`
`04-2009
`
`Berning et al.
`
`US-
`
`US-
`
`US-
`
`US-
`
`Document Number
`Country Code-Number-Kind Code
`
`Date
`MM-YYYY
`
`Country
`
`FOREIGN PATENT DOCUMENTS
`
`tp
`
`gs
`
`*A copyof this referenceis not being furnished with this Office action. (See MPEP § 707.05(a).)
`Dates in MM-YYYY format are publication dates. Classifications may be US orforeign.
`U.S. Patent and Trademark Office
`
`PTO-892 (Rev. 01-2001)
`
`Notice of References Cited
`
`Part of Paper No. 20100527
`
`