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 .
Examiner’s Comments
The examiner held a phone call with current attorney of record Martha Engel with the intention of proposing an examiner’s amendment to place the application in condition for allowance. Attorney Martha Engel communicated she did not have authority to authorize an examiner’s amendment and requested an office action be mailed. The examiner’s amendment was not proposed.
The examiner’s amendment which was not proposed included the following:
Cancel withdrawn claims 26-29, 36-37 and 40
Cancel claims 62-63 in light of below 35 USC 112(b) rejections
Response to Amendment
Amendments filed 3/25/2026 have been entered, wherein claims 1, 3-7, 26-29, 36-37, 40, and 59-63 are pending. Claims 26-29, 36-37 and 40 continue to be withdrawn. Accordingly, claims 1, 3-7 and 59-63 have been examined herein. This application is Final.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claim 1, “a first delivery feature configured to deliver the fluid to a first contact zone”. Additionally, proper corresponding structure is provided in the specification and fig. 2 as circular openings 250.
Claim 1, “a second initial feature configured to change the property of the fluid”. Additionally, proper corresponding structure is provided in the specification as “blades”.
Claim 1, “a second delivery feature configured to deliver the fluid to a second contact zone”. Additionally, proper corresponding structure is provided in the specification and fig. 2 as circular openings 250.
Claim 60, “the second initial feature is configured to change a second property of the fluid”. Additionally, proper corresponding structure is provided in the specification as “blades”.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 62-63 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.
Regarding claim 62, the language recites “the first initial feature comprising a plurality of twisted blades extending axially from a central bore” … “a first axial contact zone”. However, the terms “a plurality of twisted blades”, “a central bore”, and “a first axial contact zone” lack proper antecedent basis because these terms appear to be introduced in independent claim 1. Additionally, the language of claim 62 appears to be highly redundant of independent claim 1. The redundancy and antecedent basis issues causes confusion around what the claim is attempting to claim. For purposes of examination, as best understood by the examiner, the language will be interpreted as requiring wherein each of the blades of claim 1 follows a helical path.
Claim 63 is rejected for depending upon a rejected base claim.
Regarding claim 63, the language recites the term “a second axial contact zone”. However, the term “second axial contact zone” lacks proper antecedent basis because this term appears to be introduced in independent claim 1. Additionally, the language of claim 63 appears to be highly redundant of independent claim 1. The redundancy and antecedent basis issues causes confusion around what the claim is attempting to claim. For purposes of examination, as best understood by the examiner, the language will be interpreted as requiring wherein the second initial feature comprises a second plurality of blades.
Allowable Subject Matter
Claims 1, 3-7 and 59-61 are allowed.
Claims 62-63 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, Boaz (US Patent 5423717), hereinafter Boaz, is the closest prior art to the claimed invention but fails to teach or make obvious in combination with the additionally cited prior art the features of each of the plurality of blades has a length longer than a length of the bonded abrasive article, the length of the bonded abrasive article extending parallel to a longitudinal central axis of the bore, wherein the second internal reservoir is separate and distinct from the first internal reservoir along the length of the bonded abrasive article as particularly claimed in combination with all other elements of claim 1.
Claims 3-7 and 59-63 are indicated as allowable for depending from claim 1.
Response to Arguments
Applicant’s arguments, see pages 7-9, filed 3/25/2026, with respect to the prior art rejections have been fully considered and are persuasive. The prior art rejections of claims 1, 3-7, and 59-60 have been withdrawn in view of Applicant’s amendments and Applicant’s arguments.
See above action for more details.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 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 nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A GUMP whose telephone number is (571)272-2172. The examiner can normally be reached Monday- Friday 9:00-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Posigian can be reached at (313) 446-6546. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A GUMP/Primary Examiner, Art Unit 3723
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