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 .
Claim Rejections – 35 U.S.C. § 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.
Claim 29 is 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.
Claim 29 recites the limitation “the first surface” (line 3). There is insufficient antecedent basis for this limitation in the claim, which renders the claim unclear and ambiguous. For examination purposes, this limitation is interpreted as best understood.
Claim Rejections – 35 U.S.C. § 103
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 C.F.R. § 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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. § 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Kuether in view of Nadig and Moffat
Claims 1, 3-4, 6-9, 12-18, 21, 23-26, and 28-29 are rejected under 35 U.S.C. § 103 as being unpatentable over US 20140080387 A1 (“Kuether”) (note that for clarity, the Figure below is taken from the foreign priority application publication DE 102011005952 A1 instead of from US 20140080387 A1) in view of US 20130284551 A1 (“Nadig”) and US 3912411A (“Moffat”).
Kuether pertains to an angle grinder power tool (Fig.; ¶ 0002). Nadig pertains to an angle grinder power tool (Abstr.; Fig. 1). Moffat pertains to a grinding power tool (Abstr.; Figs. 1-28). These references are in the same field of endeavor.
Regarding claim 1, Kuether discloses a power tool (Fig.; ¶ 0002, angle grinder power tool) comprising:
a housing (Fig., housing 2);
an electric motor housed within the housing (Fig.; ¶ 0034, “the electric hand power-tool appliance, when first switched on or energized”, an electric motor is inherently disclosed and would be connected to shaft 8);
an output spindle rotatably driven by the electric motor, wherein the output spindle defines a longitudinal axis and includes a threaded portion near a distal end thereof and an annular rim extending radially therefrom at a distance from the threaded portion (Fig., spindle 3 driven by electric motor (via shaft 8), with longitudinal axis (near reference 3) and threaded portion at distal end (near reference 14) and annular rim 9 extending radially from the longitudinal axis);
a retention flange including a disc-shaped portion having a center through-hole through which the output spindle extends and a cylindrical wall peripherally extending from the disc-shaped portion around the output spindle (Fig., retention flange 11, with disc-shaped portion (bottom portion of 11) extending radially from the longitudinal axis, with a center through hole for spindle 3, and cylindrical wall (upper portion of 11) extending upward from the disc-shaped portion around spindle 3),
wherein the disc-shaped portion is located between the distal end and the annular rim, and the cylindrical wall extends around the annular rim (Fig., disc-shaped portion (bottom portion of 11 is between the distal end (near reference 14) and the annular rim 9, and the cylindrical wall (upper portion of 11) extends around annular rim 9);
at least one spring member engaging a first surface of the annular rim on one end and the disc-shaped portion on another end to bias the retention flange in a direction away from the annular rim (Fig., spring 10 engages a first surface of annular rim 9 on one end and the disc-shaped portion (bottom portion of 11) on the other end, biasing retention flange 11 downward away from the annular rim 9 (in the direction F)).
Kuether does not explicitly disclose:
wherein the annular rim extends radially from the longitudinal axis to a greater radial extent than the at least one spring member;
and a retainer engaging the retention flange and the annular rim and configured to restrain an axial displacement of the retention flange away from the annular rim due to a biasing force of the at least one spring member.
However, the Kuether/Nadig/Moffat combination makes obvious this claim.
Nadig discloses:
a retainer engaging the retention flange and the annular rim and configured to restrain an axial displacement of the retention flange away from the annular rim due to a biasing force of the at least one spring member (see annotated Fig. 2 below, the indicated retaining ring (installed in an annular recess in a cylindrical wall of retention flange 88a) is used to constrain the axial displacement of the annular rim of element 90a from the retention flange 88a; see discussion below regarding the recited function of the retainer).
[AltContent: textbox (Retaining ring held in annular recess of element 88a)][AltContent: arrow]
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Nadig Fig. 2 (annotated)
Moffat discloses:
a retention flange including a disc-shaped portion having a center through-hole through which the output spindle extends and a cylindrical wall peripherally extending from the disc-shaped portion around the output spindle (Figs. 1-5, retention flange 26 with disc-shaped portion (at reference 34) extending radially from the longitudinal axis of spindle 24, with a center through hole for spindle 24, and cylindrical wall 35 extending upward from the disc-shaped portion around spindle 24),
at least one spring member engaging a first surface of the annular rim on one end and the disc-shaped portion on another end to bias the retention flange in a direction away from the annular rim (Figs. 1-5, spring 30 engages a first surface of annular rim 28 of spindle 24 on one end and the disc-shaped portion (at reference 34) on the other end, biasing retention flange 26 downward away from the annular rim 28),
wherein the annular rim extends radially from the longitudinal axis to a greater radial extent than the at least one spring member (Figs. 1-5, annular rim 28 extends from the longitudinal axis to a greater extent than spring 30, fully supporting one end of spring 30).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Nadig with Kuether by modifying the Kuether device to include a retaining ring that is held by an annular recess in the cylindrical wall (as taught by Nadig Fig. 2) (and to increase the height of the cylindrical wall and removing housing material in that area as needed), where the retaining ring limits movement of the cylindrical wall of the retention flange 11 relative to the spindle 3 (by contacting against the top surface of annular rim 9) (see annotated Kuether Fig. below). This would have been obvious to a person of ordinary skill in the art because it would have been desirable to retain retention flange 11 relative to the spindle 3, such that when fastening nut 14 is removed from spindle 3 (e.g., to change the abrasive disc 1), retention flange 11 does not fall downward off the spindle (which would also result in spring 10 falling off the spindle), as it would be prevented from doing so by the added retaining ring (and modified cylindrical wall) (Kuether ¶¶ 0030, 0033, retention flange 11 freely moves relative to spindle 3 and annular rim 9 in its unmodified form). Examiner notes that the use of a retaining ring with an annular recess to limit movement of a structure relative to another structure is commonly known in the art (see US 20120282846 A1 (“Kuether2”) Figs. 3-5; ¶ 0026, “The bearing device 62 is secured axially against falling out by an axially acting securing element 66 in the form of a snap ring 68, which can be clipped into an inner circumferential groove 70 in the wall of the concentric portion 64.”; US 2830560 A (“Doeden”) Fig. 6, retaining ring under element 65; US 6979254 B1 (“Huber”) Figs. 1A, 17-18; 5:61-63, retaining ring 56; see also US 4637170 A (“Block”) Figs. 1-9, showing different designs pertaining to a cylindrical wall (at reference 34) and retainer 38 combination, Figs. 1-8 vs. Fig. 9).
[AltContent: textbox (Added retaining ring per Nadig)]
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[AltContent: textbox (Modified cylindrical wall of “retention flange”)][AltContent: rect][AltContent: rect][AltContent: connector][AltContent: connector][AltContent: arrow]
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Kuether Fig. (partially enlarged, annotated)
Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Moffat with the Kuether/Nadig combination by increasing the diameter of the annular rim 9 towards the cylindrical wall (as modified above by Nadig) for adding more contact/support for the retaining ring (fully contacting the top side of spring 10 which would prevent it from improperly bending or slipping into the recess above it (Kuether Fig.)), and to reduce the diameter of spring 10 to be less than the inner diameter of the cylindrical wall and annular rim 9 for tolerance purposes in order to prevent any binding of the spring 10 against the cylindrical wall between the compressed and relaxed positions (Moffat Figs. 1-5, spring 30 and cylindrical wall 35 are separated by a circumferential gap). Note that the diameter of spring 10 should be made smaller than the diameter of the annular rim 9 to account for the fact that spring 10 takes up more radial space (i.e., its diameter expands) when compressed (as compared to its uncompressed state). Examiner notes that the specification and evidence of record fail to attribute any significance (novel or unexpected results) to any particular arrangement of these features (see e.g., Spec. ¶ 0051). In re Kuhle, 526 F.2d 553, 555 (CCPA 1975); MPEP § 2144.04(VI)(C).
Regarding claim 3, the Kuether/Nadig/Moffat combination makes obvious the power tool of claim 1 as applied above. Kuether further discloses wherein the retainer engages a second surface of the annular rim facing away from the at least one spring member (see annotated Fig. for claim 1 above, retaining ring (as added by Nadig) engages the top surface of annular rim 9, which faces away from spring 10).
Regarding claim 4, the Kuether/Nadig/Moffat combination makes obvious the power tool of claim 3 as applied above. Kuether further discloses wherein an inner surface of the cylindrical wall of the retention flange includes an annular recess, and wherein the retainer comprises a retaining ring received within the annular recess of the retention flange, the retaining ring coming into selective contact with the second surface of the annular rim of the output spindle to limit the displacement of the retention flange away from the annular rim (see annotated Fig. for claim 1 above, modified cylindrical wall (per Nadig) has annular recess for receiving retaining ring as recited).
Regarding claim 6, the Kuether/Nadig/Moffat combination makes obvious the power tool of claim 1 as applied above. Kuether further discloses:
a motor spindle rotatably driven directly by the motor (Fig.; ¶ 0034, “the electric hand power-tool appliance, when first switched on or energized”, an electric motor and its spindle are inherently disclosed and would be connected to shaft 8, or alternatively, the shaft 8 is the “motor spindle”),
a gear case mounted on the housing that receives an end of the motor spindle (Fig., gear case (front portion of housing 2)),
and a bearing supported by the gear case (Fig., bearing 5),
wherein the output spindle is received from a lower end of the gear case into the bearing and into engagement with the motor spindle (Fig., spindle 3 is received from below the open lower end of the gear case (front portion of housing 2) and is fitted into bearing and engages with the motor spindle 8 (via gears 6 and 7; Examiner notes that this limitation appears to be a product-by-process limitation, but the resulting structure remains the same even if Kuether is not actually assembled in this manner. In re Thorpe, 777 F.2d 695 (Fed. Cir 1985) (“The patentability of a product does not depend on its method of production.... If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”); MPEP § 2113(I)).
To the extent an obviousness rationale is needed for this limitation, it would have been obvious to one of ordinary skill in the art before the effective filing date of this application to assemble the spindle 3 to the housing in the manner claimed because the lower end of the Kuether gear case is open for assembly of the spindle to it. There does not appear to be another explicit method of assembly based on the Kuether disclosure (e.g., a two-piece housing where spindle 3 can be attached to the gear case portion in a different manner).
Regarding claim 7, the Kuether/Nadig/Moffat combination makes obvious the power tool of claim 6 as applied above. Kuether further discloses wherein the motor spindle is at a 90 degree angle relative to the output spindle (Fig., motor spindle 8 is at a 90 degree angle to spindle 3).
Regarding claim 8, the Kuether/Nadig/Moffat combination makes obvious the power tool of claim 1 as applied above. Kuether further discloses wherein the at least one spring member comprises one or more Belleville discs (Fig.; ¶ 0030, spring 10 is a disk spring).
Regarding claim 9, the Kuether/Nadig/Moffat combination makes obvious the power tool of claim 1 as applied above. Kuether further discloses wherein a diameter of the annular rim of the output spindle is...smaller than a diameter of the cylindrical wall of the retention flange (Fig., diameter of annular rim 9 is smaller than the diameter of cylindrical wall (upper portion of 11)). As modified in the Kuether/Nadig/Moffat combination of claim 1, a diameter of the annular rim of the output spindle is greater than a diameter of the at least one spring member. However, the Kuether/Nadig combination makes obvious this claim.
Regarding claim 12, Kuether discloses a power tool (Fig.; ¶ 0002, angle grinder power tool) comprising:
a housing (Fig., housing 2);
an electric motor housed within the housing and rotatably driving a motor spindle (Fig.; ¶ 0034, “the electric hand power-tool appliance, when first switched on or energized”, an electric motor and its spindle are inherently disclosed and would be connected to shaft 8, or alternatively, the shaft 8 is the “motor spindle”);
a gear case mounted on the housing (Fig., gear case (front portion of housing 2));
an output spindle received at least partially within the gear case, wherein the output spindle defines a longitudinal axis and includes a first distal end to which a tool accessory is secured, a second distal end configured to engage the motor spindle, and an annular rim extending radially from the output spindle between the first distal end and the second distal end (Fig., spindle 3 in gear case and driven by electric motor (via shaft 8), with longitudinal axis (near reference 3), and threaded portion at a first distal end (near reference 14) for securing a tool accessory 1, a second distal end (near reference 3) that engages shaft 8 (via gears 6 and 7), and annular rim 9 extending radially from the longitudinal axis between the first and second distal ends);
a bearing having an inner race secured to the output spindle above the annular rim and an outer race secured to the gear case (Fig., bearing 5 with inner race and outer race as shown);
a retention flange including a disc-shaped portion having a center through-hole through which the output spindle extends and a cylindrical wall peripherally extending from the disc-shaped portion around the output spindle (Fig., retention flange 11, with disc-shaped portion (bottom portion of 11) extending radially from the longitudinal axis, with a center through hole for spindle 3, and cylindrical wall (upper portion of 11) extending upward from the disc-shaped portion around spindle 3),
wherein the disc-shaped portion is located between the first distal end and the annular rim, and the cylindrical wall extends around the annular rim (Fig., disc-shaped portion (bottom portion of 11 is between the first distal end (near reference 14) and the annular rim 9, and the cylindrical wall (upper portion of 11) extends around annular rim 9);
and at least one spring member disposed between the annular rim and the retention flange to apply a downward biasing force to bias the retention flange away from the annular rim (Fig., spring 10 engages a first surface of annular rim 9 on one end and the disc-shaped portion (bottom portion of 11) on the other end, biasing retention flange 11 downward away from the annular rim 9 (in the direction F)).
Kuether does not explicitly disclose:
wherein the annular rim extends radially from the longitudinal axis to a greater radial extent than the at least one spring member;
and a retainer engaging the retention flange and the annular rim and configured to restrain a downward movement of the retention flange away relative to the annular rim along the longitudinal axis due to the biasing force of the at least one spring member.
However, the Kuether/Nadig/Moffat combination makes obvious this claim.
Nadig discloses:
a retainer engaging the retention flange and the annular rim and configured to restrain a downward movement of the retention flange away relative to the annular rim along the longitudinal axis due to the biasing force of the at least one spring member (see annotated Fig. 2 for claim 1 above; the indicated retaining ring (installed in an annular recess in a cylindrical wall of retention flange 88a) is used to constrain the axial displacement of the annular rim of element 90a from the retention flange 88a; see discussion regarding the recited function of the retainer).
Moffat discloses:
a retention flange including a disc-shaped portion having a center through-hole through which the output spindle extends and a cylindrical wall peripherally extending from the disc-shaped portion around the output spindle (Figs. 1-5, retention flange 26 with disc-shaped portion (at reference 34) extending radially from the longitudinal axis of spindle 24, with a center through hole for spindle 24, and cylindrical wall 35 extending upward from the disc-shaped portion around spindle 24),
and at least one spring member disposed between the annular rim and the retention flange to apply a downward biasing force to bias the retention flange away from the annular rim (Figs. 1-5, spring 30 engages a first surface of annular rim 28 of spindle 24 on one end and the disc-shaped portion (at reference 34) on the other end, biasing retention flange 26 downward away from the annular rim 28),
wherein the annular rim extends radially from the longitudinal axis to a greater radial extent than the at least one spring member (Figs. 1-5, annular rim 28 extends from the longitudinal axis to a greater extent than spring 30, fully supporting one end of spring 30).
The obviousness rationale for claim 12 is the same as for claim 1.
Regarding claim 13, the Kuether/Nadig/Moffat combination makes obvious the power tool of claim 12 as applied above. Kuether further discloses wherein the output spindle includes a threaded portion at the first distal end, and as the tool accessory is tightened on the threaded portion, the tool accessory applies an upward force to the retainer in the direction of the annular rim (see annotated Fig. for claim 1 above, as tool accessory 1 is tightened on the threaded portion of the spindle 3 at the first distal end using nut 14, the tool accessory 1 pushes retention flange 11 and the retaining ring (as added by Nadig) upwards (towards the annular rim from the threaded distal end) against the force of spring 11).
Regarding claim 14, the Kuether/Nadig/Moffat combination makes obvious the power tool of claim 12 as applied above. Kuether further discloses wherein an inner surface of the cylindrical wall of the retention flange includes an annular recess, and wherein the retainer comprises a retaining ring received within the annular recess of the retention flange, the retaining ring coming into selective contact with an upper surface of the annular rim of the output spindle to limit the downward movement of the retention flange (see annotated Fig. for claim 1 above, modified cylindrical wall (per Nadig) has annular recess for receiving retaining ring as recited).
Regarding claim 15, the Kuether/Nadig/Moffat combination makes obvious the power tool of claim 14 as applied above. Kuether further discloses wherein the retention flange further comprises an annular shoulder projecting from the inner surface of the cylindrical wall...the annular shoulder coming into selective contact with a lower surface of the annular rim of the output spindle to limit an upward movement of the retention flange (see annotated Fig. below, annular shoulder #2 is in “selective contact” with a lower surface of the annular rim 9 when annular shoulder #2 (as part of element 11) moves up and down, annular shoulder #2 limits the upward movement of retention flange 11).
[AltContent: textbox (Spring 10 is resized and moved to this location (location of “Shoulder” #2))]
[AltContent: textbox (“Shoulder” #1)]
[AltContent: textbox (Added retaining ring per Nadig)][AltContent: arrow][AltContent: arrow]
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[AltContent: textbox (Modified cylindrical wall of “retention flange”)][AltContent: textbox (“Shoulder” makes “selective contact” with this “lower surface” of the annular rim)][AltContent: arrow][AltContent: rect][AltContent: rect][AltContent: connector][AltContent: connector][AltContent: arrow]
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Kuether Fig. (partially enlarged, annotated)
Kuether does not explicitly disclose that the annular shoulder is radially in line with the at least one spring member.
However, the Kuether/Nadig/Moffat combination makes obvious this claim.
The obviousness rationale for claim 15 is the same as for claim 14, with the addition that it would have been obvious to one of ordinary skill in the art before the effective filing date of this application to rearrange the location of spring 10 with the recited annular shoulder (e.g., place a modified (smaller) spring 10 into the annular shoulder #2 location (i.e., “radially in line”), and modify the annular shoulder #1 to be taller to make selective contact with the indicated lower surface of the annular rim (see Kuether Fig. 1 annotated above). This would have been obvious because it is a simple design choice of where to place the spring 10 vs. the shoulder relative to the annular rim 9. The specification and evidence of record fail to attribute any significance (novel or unexpected results) to any particular arrangement of these features (see e.g., Spec. ¶ 0051). In re Kuhle, 526 F.2d 553, 555 (CCPA 1975); MPEP § 2144.04(VI)(C).
Claims 16-18 are rejected on the same basis as claims 7-9, except as depending from claim 12.
Regarding claim 21, the Kuether/Nadig/Moffat combination makes obvious the power tool of claim 1 as applied above. Kuether further discloses wherein the annular rim includes a second surface facing away from the distal end, and a peripheral edge having a first end meeting the first surface and a second end meeting the second surface; wherein the cylindrical wall extends around the peripheral edge of the annular rim and past the second end of the peripheral edge in a direction away from the distal end; and wherein the retainer engages the retention flange proximate the second end of the peripheral edge of the annular rim (see annotated Fig. for claim 1 above, annular rim 9 has second surface (upper surface of annular rim 9) facing away from the distal end (near reference 14), a peripheral edge (circumferential surface of annular rim 9) having a first end (lower end that contacts spring 10) and second end (upper end), the modified cylindrical wall (per Nadig) extends around the peripheral edge and past the second end in a direction away from the distal end, and the retainer (as added by Nadig) engages the retention flange (at the cylindrical wall) proximate the second end.
Regarding claim 23, the Kuether/Nadig/Moffat combination makes obvious the power tool of claim 1 as applied above. Kuether further discloses wherein the annular rim is formed integrally with the output spindle (Fig., annular rim 9 formed on spindle 3; Examiner notes that this limitation appears to be a product-by-process limitation, but the resulting structure remains the same even if the annular rim is not formed integrally with the output spindle. In re Thorpe, 777 F.2d 695 (Fed. Cir 1985) (“The patentability of a product does not depend on its method of production.... If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”); MPEP § 2113(I).
To the extent Kuether does not disclose this limitation, this claim would have been obvious to one of ordinary skill in the art before the effective filing date of this application because Applicant states no novel or unexpected result due to the “formed integrally” construction instead of a construction using two separate pieces that are later combined. In re Larson, 340 F.2d 965, 968 (CCPA 1965) (“the use of a one piece construction instead of the structure disclosed [several parts secured as a single unit] would be merely a matter of obvious engineering choice”); MPEP § 2144.04(V)(B)).
Claims 24 and 26 are rejected on the same basis as claims 21 and 23, except as depending from claim 12.
Regarding claim 25, the Kuether/Nadig/Moffat combination makes obvious the power tool of claim 12 as applied above. Kuether further discloses wherein a portion of the gear case extends partially between the bearing and the annular rim to restrain a movement of the bearing towards the first distal end (see annotated Fig. below).
[AltContent: arrow][AltContent: textbox (Portion of gear case extends partially between bearing 5 and annular rim 9 to support bearing 5)]
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Kuether Fig. (partially enlarged, annotated)
Regarding claim 28, the Kuether/Nadig/Moffat combination makes obvious the power tool of claim 1 as applied above. Kuether further discloses wherein the retention flange further includes an annular shoulder projecting from an inner surface of the cylindrical wall, the annular shoulder coming into selective contact with...the annular rim to limit displacement of the retention flange toward the annular rim (see annotated Fig. for claim 15 above, annular shoulder #2 of retention flange is positioned to contact a surface of the annular rim (at reference 12) to limit displacement of the retention flange 11 towards the annular rim).
Kuether does not explicitly disclose the annular shoulder coming into selective contact with the first surface of the annular rim to limit displacement of the retention flange toward the annular rim.
However, the Kuether/Nadig/Moffat combination makes obvious this claim.
The modification and the obviousness rationale for claim 28 is the same as for claim 15, except as depending from claim 1.
Regarding claim 29, the Kuether/Nadig/Moffat combination makes obvious the power tool of claim 12 as applied above. Kuether further discloses wherein the retention flange further comprises an annular shoulder projecting from an inner surface of the cylindrical wall, the annular shoulder coming into selective contact with the first surface of the annular rim to limit displacement of the retention flange toward the annular rim (see annotated Fig. for claim 15 above, annular shoulder #2 of retention flange is positioned to contact a surface of the annular rim (at reference 12) to limit displacement of the retention flange 11 towards the annular rim; see § 112(b) rejection re “the first surface”).
Kuether in view of Nadig, Moffat, and Numata
Claims 10 and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over US 20140080387 A1 (“Kuether”) (note that for clarity, the Figure below is taken from the foreign priority application publication DE 102011005952 A1 instead of from US 20140080387 A1) in view of US 20130284551 A1 (“Nadig”), US 3912411A (“Moffat”), and US 20120244788 A1 (“Numata”).
Kuether pertains to an angle grinder power tool (Fig.; ¶ 0002). Nadig pertains to an angle grinder power tool (Abstr.; Fig. 1). Moffat pertains to a grinding power tool (Abstr.; Figs. 1-28). Numata pertains to an angle grinder power tool (Abstr.; Fig. 1). These references are in the same field of endeavor.
Regarding claim 10, the Kuether/Nadig/Moffat combination makes obvious the power tool of claim 1 as applied above. Kuether, Nadig, and Moffat do not explicitly disclose wherein the retention flange includes a flat wall protruding inwardly from the cylindrical wall that engages a corresponding flat wall of the annular rim of the output spindle to rotationally fix the retention flange to the output spindle. However, the Kuether/Nadig/Moffat/Numata combination makes obvious this claim.
Numata discloses wherein the retention flange includes a flat wall protruding inwardly from the cylindrical wall that engages a corresponding flat wall of the annular rim of the output spindle to rotationally fix the retention flange to the output spindle (Figs. 1-2, retention flange 20 has a flat wall (near reference 22) that engages a corresponding flat wall of the annular rim (between references 16A and 16B) that rotationally fixes retention flange 20 to the spindle 16).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Numata with the Kuether/Nadig/Moffat combination by modifying retention flange 11 and annular rim 9 with flat walls as taught by Numata. This would have been obvious because this would fix the retention flange 11 and annular rim 9 together rotationally and prevent any wear on the contacting surfaces between them (as well as with spring 10) as the spindle assembly rotates.
Claim 19 is rejected on the same basis as claim 10, except as depending from claim 12.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claim 27 is allowed.
As allowable subject matter has been indicated, Applicant’s reply must either comply with all formal requirements or specifically traverse each requirement not complied with. 37 C.F.R. § 1.111(b) and MPEP § 707.07(a).
The reasons for allowance for claims 5 and 27 are stated in the 06/24/2025 Office Action.
Response to Amendment
Applicant’s Amendment and remarks have been considered. Claims 2 and 22 have been canceled. New claim 29 has been added. Claims 1-21 and 23-29 are pending. Claims 11 and 20 have been withdrawn from further consideration under 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention.
Claims 1, 3-4, 6-10, 12-19, 21, 23-26, and 28-29 are rejected. Claim 5 is objected to. Claim 27 is allowed.
Claims – In light of Applicant’s claim amendments, the § 112(b) rejection of claim 28 is hereby withdrawn.
Response to Arguments
Applicant’s arguments have been fully considered but are not persuasive.
Regarding claim 1, Examiner disagrees with Applicant’s characterization of the “retainer” of Nadig (Reply at 14-16). Even if the “retainer” identified in Nadig Fig. 2 (see claim 1 rejection above) is not explicitly discussed and identified as a “retainer” or a “retaining ring”, the cross-sectional view of Nadig Fig. 2 makes it clear to a person of ordinary skill in the art that the identified feature has a ringlike structure, is installed in an annular recess in a cylindrical wall of retention flange 88a, and is used to constrain the axial displacement of element 90a from the retention flange 88a. Examiner notes that the standard for unpatentability is the “preponderance of the evidence” test. That is, a claim should be rejected if, in view of the prior art and evidence of record, it is more likely than not that the claim is unpatentable. In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the evidence is the standard that must be met by the PTO in making rejections”); MPEP § 706(I). The ultimate determination of patentability is based on the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and evidence properly made of record by the applicant. In re Oetiker, 977 F.2d 1443, 1446 (Fed. Cir. 1992); MPEP § 2142. Examiner further notes that the additional references indicated in claim 1 all disclose a retaining ring or similar feature as that of Nadig, which is further evidence that a person of ordinary skill in the art would recognize that the indicated structure of Nadig Fig. 2 is a “retainer”.
Applicant’s remaining arguments regarding amended claim 1 are not persuasive. With respect to claim 1’s “a greater radial extent” new limitation, Applicant’s arguments (Reply at 12-14) are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the arguments. In response to Applicant’s argument that the combination of Nadig with Kuether is improper (Reply at 16-18), the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981); MPEP § 2145(III). The Kuether/Nadig combination (not accounting for Moffat’s contribution) discussed for claim 1 above relies on the use of the retaining ring of Nadig, together with its implementation in an annular recess of a cylindrical wall of a retention flange as taught by Nadig Fig. 2. Although other aspects of the configuration of Nadig are not identical to Kuether or the claimed invention, Nadig’s teachings regarding the use of a retaining ring would have been recognized by a person of ordinary skill in the art and implemented with Kuether, as discussed for claim 1. Similarly, Applicant’s assertion that it would be improper to modify the housing in order to accommodate the modified cylindrical wall (as discussed for claim 1 above) is not persuasive (Reply at 14). As modified in the Kuether/Nadig combination, the bearing 5 of Kuether remains supported (see annotated Kuether Fig. for claim 1 above). Further, even if Applicant is correct and the bearing cannot be supported based on the configuration drawn in Examiner’s annotated Kuether Fig., it remains obvious for a person of ordinary skill to make the necessarily minor modifications (e.g., use a smaller bearing 5, raise the bearing 5, or lower the upper surface of the annular rim 9, thereby lowering the modified cylindrical wall) in order to accommodate the proposed retention member and related modifications to the cylindrical wall. A person of ordinary skill could ascertain how the result could be accomplished based on the prior art in combination with the person’s logic, judgment, and common sense. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”); Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“an analysis of obviousness...also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion”).
In response to Applicant’s argument that the combination of Nadig with Kuether is based on hindsight (Reply at 18), it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from Applicant’s disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); MPEP § 2145(X)(A).
Regarding claims 23 and 12, Applicant’s arguments are unpersuasive for the reasons stated above in their respective § 103 rejections.
Applicant does not present any further arguments concerning the remaining claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure:
US 2028648 A (“Connor”) discloses a honing tool with a retainer, spring, and annular rim construction in association with the output shaft (Figs. 1-2).
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 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 extension fee pursuant to 37 C.F.R. § 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENT N SHUM whose telephone number is (703)756-1435. The examiner can normally be reached 1230-2230 EASTERN TIME M-TH.
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/KENT N SHUM/Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723
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