Case 1:17-cv-00770-JDW Document 369-5 Filed 04/12/24 Page 1 of 10 PageID #: 33452
`Case 1:17-cv-00770-JDW Document 369-5 Filed 04/12/24 Page 1 of 10 PagelD #: 33452
`
`EXHIBIT 5
`EXHIBIT 5
`
`

`

`Case 1:17-cv-00770-JDW Document 369-5 Filed 04/12/24 Page 2 of 10 PageID #: 33453
`Application No.
`Applicant(s)
`
`Office Action Summary
`
`11/991,846
`
`Examiner
`
`BUSLEY ET AL.
`
`Art Unit
`
`3672
`Sunil Singh
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS 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 under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1)Z Responsive to communication(s) filed on 28 September 2010.
`2a)E This action is FINAL.
`2b)Z This action is non-final.
`3)O Since this 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)Z Claim(s) 20-41 is/are pending in the application.
`is/are withdrawn from consideration.
`4a) Of the above claim(s)
`5)O Claim(s)
`is/are allowed.
`6)Z Claim(s) 20-41 is/are rejected.
`7)O Claim(s)
`is/are objected to.
`8)O Claim(s)
`are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)O The specification is objected to by the Examiner.
`10)O The drawing(s) filed on
`is/are: a)O accepted or b)O 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)0 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)O Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)O All b)O Some * c)O None of:
`1.0 Certified copies of the priority documents have been received.
`.
`2.O Certified copies of the priority documents have been received in Application No.
`3.O Copies of the 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 for a list of the certified copies not received.
`
`Attachment(s)
`
`1) Z Notice of References Cited (PTO-892)
`2) q Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3) q Information Disclosure Statement(s) (PTO/SIB/08)
`Paper No(s)/Mail Date
`
`4) q Interview Summary (PTO-413)
`Paper No(s)/Mail Date.
`5) q Notice of Informal Patent Application
`6) q Other:
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20101219
`
`

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`Case 1:17-cv-00770-JDW Document 369-5 Filed 04/12/24 Page 3 of 10 PageID #: 33454
`
`Application/Control Number: 11/991,846
`Art Unit: 3672
`
`Page 2
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`DETAILED ACTION
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`Claim Rejections - 35 USC § 112
`
`1.
`
`The following is a quotation of the second paragraph of 35 U.S.C. 112:
`
`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 37,38 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.
`
`Claims 37 and 38, "the distance sensors" lack clear antecedent basis.
`
`Claim Rejections - 35 USC § 103
`
`2.
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections 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 this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to 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.
`
`3.
`
`Claims 20-34, 37-41 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over Swisher, Jr. et al. (US 4213719) in view of WO document (WO 02/057112).
`
`Swisher Jr. et al. discloses a road construction machine (10), comprising:
`
`a machine frame (18); a working drum (20) supported from the machine frame for
`
`working a ground surface or traffic surface; a plurality of ground engaging supports
`
`(34A,B, 33A,B) for supporting the construction machine on the ground surface or traffic
`
`surface; a plurality of lifting columns (34H,35H,33H), each one of the lifting columns
`
`

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`Case 1:17-cv-00770-JDW Document 369-5 Filed 04/12/24 Page 4 of 10 PageID #: 33455
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`Application/Control Number: 11/991,846
`Art Unit: 3672
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`Page 3
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`being connected between the machine frame and one of the ground engaging supports,
`
`each one of the lifting columns including two telescoping hollow cylinders and at least
`
`one piston-cylinder unit located within the telescoping hollow cylinders for adjusting a
`
`height of the lifting column so that each one of the lifting columns is individually
`
`adjustable in height relative to the machine frame, each lifting column having a lifting
`
`position corresponding to a position of one of the two telescoping hollow cylinders
`
`relative to the other of the two telescoping hollow cylinders; a plurality of measuring
`
`devices (22A,B) and a controller (see cols. 3-12) operably connected to the measuring
`
`devices to receive signals from the measuring devices, the controller being operable to
`
`regulate the lifting positions of the lifting columns in response to the signals detected by
`
`the measuring devices. Swisher Jr. et al. discloses the invention substantially as
`
`claimed. However, Swisher Jr. et al. is silent about the measuring device being coupled
`
`with elements of the lifting columns, which elements are capable of being displaced
`
`relative to one another in accordance with the lifting position of the lifting column in such
`
`a manner that a path signal pertaining to the lifting position of the lifting column is
`
`continuously detectable by the measuring device; and a controller operably connected
`
`to the lifting position measuring devices to receive the path signals from the lifting
`
`position measuring devices, the controller being operable to regulate the lifting positions
`
`of the lifting columns in response to the path signals detected by the lifting position
`
`measuring devices. WO document teaches measuring device (see abstract) being
`
`coupled with elements of the lifting columns, which elements are capable of being
`
`displaced relative to one another in accordance with the lifting position of the lifting
`
`

`

`Case 1:17-cv-00770-JDW Document 369-5 Filed 04/12/24 Page 5 of 10 PageID #: 33456
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`Application/Control Number: 11/991,846
`Art Unit: 3672
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`Page 4
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`column in such a manner that a path signal pertaining to the lifting position of the lifting
`
`column is continuously detectable by the measuring device; and a controller (see
`
`pages 2-12) operably connected to the lifting position measuring devices to receive the
`
`path signals from the lifting position measuring devices, the controller being operable to
`
`regulate the lifting positions of the lifting columns in response to the path signals
`
`detected by the lifting position measuring devices. It would have been considered
`
`obvious to one of ordinary skill in the art to modify Swisher Jr. et al. to include the
`
`measuring device as taught by WO document in order to more accurately detect the
`
`surface area and thus provide more accurate cutting.
`
`4.
`
`Claims 20-34, 37-41 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over Swisher, Jr. et al. (US 4270801) in view of WO document (WO 02/057112).
`
`Swisher Jr. et al. discloses a road construction machine (30), comprising:
`
`a machine frame (32,34); a working drum (54) supported from the machine frame for
`
`working a ground surface or traffic surface; a plurality of ground engaging supports
`
`(44,46) for supporting the construction machine on the ground surface or traffic surface;
`
`a plurality of lifting columns (90,100,102,104), each one of the lifting columns being
`
`connected between the machine frame and one of the ground engaging supports, each
`
`one of the lifting columns including two telescoping hollow cylinders and at least one
`
`piston-cylinder unit located within the telescoping hollow cylinders (see Fig. 4) for
`
`adjusting a height of the lifting column so that each one of the lifting columns is
`
`individually adjustable in height relative to the machine frame, each lifting column
`
`

`

`Case 1:17-cv-00770-JDW Document 369-5 Filed 04/12/24 Page 6 of 10 PageID #: 33457
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`Application/Control Number: 11/991,846
`Art Unit: 3672
`
`Page 5
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`having a lifting position corresponding to a position of one of the two telescoping hollow
`
`cylinders relative to the other of the two telescoping hollow cylinders; a plurality of
`
`measuring devices (see cols. 5-6,35-42) and a controller (see cols. 5-42) operably
`
`connected to the measuring devices to receive signals from the measuring devices, the
`
`controller being operable to regulate the lifting positions of the lifting columns in
`
`response to the signals detected by the measuring devices. Swisher Jr. et al. discloses
`
`the invention substantially as claimed. However, Swisher Jr. et al. is silent about the
`
`measuring device being coupled with elements of the lifting columns, which elements
`
`are capable of being displaced relative to one another in accordance with the lifting
`
`position of the lifting column in such a manner that a path signal pertaining to the lifting
`
`position of the lifting column is continuously detectable by the measuring device; and a
`
`controller operably connected to the lifting position measuring devices to receive the
`
`path signals from the lifting position measuring devices, the controller being operable to
`
`regulate the lifting positions of the lifting columns in response to the path signals
`
`detected by the lifting position measuring devices. WO document teaches measuring
`
`device (see abstract) being coupled with elements of the lifting columns, which
`
`elements are capable of being displaced relative to one another in accordance with the
`
`lifting position of the lifting column in such a manner that a path signal pertaining to the
`
`lifting position of the lifting column is continuously detectable by the measuring device;
`
`and a controller (see pages 2-12) operably connected to the lifting position measuring
`
`devices to receive the path signals from the lifting position measuring devices, the
`
`controller being operable to regulate the lifting positions of the lifting columns in
`
`

`

`Case 1:17-cv-00770-JDW Document 369-5 Filed 04/12/24 Page 7 of 10 PageID #: 33458
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`Application/Control Number: 11/991,846
`Art Unit: 3672
`
`Page 6
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`response to the path signals detected by the lifting position measuring devices. It would
`
`have been considered obvious to one of ordinary skill in the art to modify Swisher Jr. et
`
`al. to include the measuring device as taught by WO document in order to more
`
`accurately detect the surface area and thus provide more accurate cutting.
`
`5.
`
`Claims 35-36 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Swisher Jr. et al. `719 or `801 in view of WO document as applied to claim 20 above,
`
`and further in view of Japanese document (JP02279805).
`
`Swisher, Jr.et al. (as modified above) discloses the invention substantially as claimed.
`
`However, the (modified above) Swisher Jr, et al. lack distance sensors attached to the
`
`lifting column. Japanese document teaches distance sensors attached to lifting
`
`columns (see Figures). It would have been considered obvious to one of ordinary skill
`
`in the art to further modify the (once modified) Swisher Jr. et al. to include the distance
`
`sensors as taught by Japanese document in order to predict the surface ahead of the
`
`machine and therefore can adjust the cutter accordingly.
`
`Response to Arguments
`
`6.
`
`Applicant's arguments with respect to claim 20 have been considered but are
`
`moot in view of the new ground(s) of rejection.
`
`

`

`Case 1:17-cv-00770-JDW Document 369-5 Filed 04/12/24 Page 8 of 10 PageID #: 33459
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`Application/Control Number: 11/991,846
`Art Unit: 3672
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`Page 7
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`Conclusion
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`7.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Sunil Singh whose telephone number is (571) 272-7051.
`
`The examiner can normally be reached on Monday through Friday 10:30 AM - 7:00 PM.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, David Bagnell can be reached on (571) 272-6999. The fax phone number
`
`for the organization where this application or proceeding is 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 applications is 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.
`
`/Sunil Singh/
`Primary Examiner, Art Unit 3672
`
`Sunil Singh
`Primary Examiner
`Art Unit 3672
`
`SS
`12/18/10
`
`

`

`Case 1:17-cv-00770-JDW Document 369-5 Filed 04/12/24 Page 9 of 10 PageID #: 33460
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`Application/Control Number: 11/991,846
`Art Unit: 3672
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`Page 8
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`

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`*
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`*
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`*
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`*
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`*
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`Case 1:17-cv-00770-JDW Document 369-5 Filed 04/12/24 Page 10 of 10 PageID #: 33461
`
`Notice of References Cited
`
`Document Number
`Country Code-Number-Kind Code
`
`Date
`MM-YYYY
`
`Application/Control No.
`
`11/991,846
`
`Examiner
`
`Sunil Singh
`
`U.S. PATENT DOCUMENTS
`
`Name
`
`A US-4,213,719
`B US-4,270,801
`C US-
`
`07-1980
`
`Swisher et al.
`
`06-1981
`
`Swisher et al.
`
`Applicant(s)/Patent Under
`Reexamination
`BUSLEY ET AL.
`
`Art Unit
`
`3672
`
`Page 1 of 1
`
`Classification
`
`404/84.2
`
`299/1.5
`
`D US-
`
`E US-
`
`F US-
`
`G US-
`
`H US-
`
`I
`
`j
`
`US-
`
`US-
`
`K US-
`
`L US-
`
`M US-
`
`Document Number
`Country Code-Number-Kind Code
`
`Date
`MM-YYYY
`
`FOREIGN PATENT DOCUMENTS
` Country
`
`Name
`
`Classification
`
`JP 02279805 A
`N
`O WO 02057112 Al
`
`11-1990
`
`Japan
`
`KISHI et al.
`
`07-2002
`
`World Intellect
`
`HOUGHTON M J
`
`NON-PATENT DOCUMENTS
`
`Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)
`
`P
`
`O
`
`R
`
`S
`
`T
`
`U
`
`V
`
`W
`
`X
`
`*A copy of th's reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
`Dates in MM YYYY format are publication dates. Classifications may be US or foreign.
`
`U.S. Patent and Trademark Office
`PTO-892 (Rev. 01-2001)
`
`Notice of References Cited
`
`Part of Paper No. 20101219
`
`