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 .
Response to Amendments
The amendments filed August 20, 2025 have been entered. Accordingly, claims 1, 6-12, and 21-23 are currently pending and have been examined. Claims 2-5 and 13-20 are cancelled. The Examiner acknowledges the amendments of claim 21. The previous 112 rejection have been withdrawn due to applicant’s amendments. The previous 103 rejections are maintained and for the reasons set forth below, arguments are not found persuasive with respect to claim 1.
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.
Claim 21 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 21 recites the limitation " a container holding the non-Newtonian material” in lines 2-3. It is unclear if the applicant is attempting to claim multiple/different containers holding the non-Newtonian material or if the applicant is referring back to the container that encloses the non-Newtonian material as introduced in claim 1, lines 4-5, thus rendering the claim indefinite. For examining purposes, the Examiner is to interpret the claim limitation to be referring to a single container that holds/encloses the non-Newtonian material.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 7, 11-12, 21, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Burge (US Pub. No. 2012/0040590) in view of Jones (US Patent No. 4,128,968).
Regarding claim 1, Burge discloses: an apparatus (Figures 1-3 element 10 and see also paragraphs 0026/0028) for polishing an optical component having an aspheric or freeform surface (see paragraph 0020 and also, applicant is reminded, a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim (See MPEP 2114 (II)), comprising:
a solid back plate (element 16);
a container (element 30) coupled to the solid back plate (see figures 1-2 showing element 30 (container) operably coupled to element 16 (solid back plate) via element 21),
wherein the container encloses a non-Newtonian material (element 24 and see also paragraph 0027 where the prior art discloses element 24 as “a non-Newtonian substance”) that behaves as a solid material or as liquid material based on a stress frequency applicable to the non-Newtonian material (see paragraph 0027); and
a thin layer (see figures 1-2 element 31 and see also paragraph 0026 where the prior art discloses element 31 as a “finishing/polishing pad”) having a thickness in a range 0.1 mm to 5 mm (see paragraph 0016 where the prior art discloses a thickness of the polishing pad is in the range of from “about 0.5 mm to about 2mm”, thus having overlapping ranges of thickness in a range of 0.1mm to 5mm) attached or otherwise coupled to the container (see figures 1-2 showing element 31 (thin layer) being operably attached/coupled to the container (element 30)), the thin layer positioned to provide physical contact with the optical component for polishing the optical component (see paragraph 0028 and see also figure 3 showing element 31 (layer) in physical contact with a workpiece (element 6) in order to be polished, thus the layer is capable of being positioned to provide physical contact with the optical component for polishing the optical component), wherein the thin layer comprises one or more segments (see figures 1-2 showing the layer (element 31) as a single segment, thus comprising one segment).
Furthermore, Burge discloses that element 31 (thin layer) “may be in the form of a fibrous finishing pad without abrasives (e.g., a non-woven fabric, such as felt)” (see paragraph 0029). However, Burge appears to be silent wherein the thin layer is of pitch.
Jones is also concerned with providing an apparatus for polishing an optical component (see figure 1 and see also col. 3, ll. 32-35). Jones further teaches a pitch impregnated felt as a polishing element, i.e. a thin layer of pitch (element 10 and see also col. 3, ll. 42-43 where the prior art discloses that “a pitch impregnated felt” makes a suitable pad for element 10) used to polish an optical surface (element 12 see col. 3, ll. 32-48).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Burge to incorporate the teachings of Jones to provide the pitch impregnated felt element, defining a thin layer is of pitch. One of ordinary skill would recognize that having a pitch impregnated pad would effectively provide physical contact with the optical component for polishing during operations.
Regarding claim 7, Burge modified discloses all the limitations as stated in the rejection of claim 1, but appears to be silent wherein the one or more segments of the thin layer of pitch have random or pseudo-random boundaries.
However, would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Burge to provide wherein the one or more segments of the thin layer of pitch have random or pseudo-random boundaries, since rearranging parts of an invention involves only routine skill in the art. One of ordinary skill would recognize that having the claimed boundaries would necessarily provide the predictable result of polishing different portions of a workpiece at a desired form (See MPEP 2144.04(VI)(C)). Furthermore, the applicant has failed to place any criticality on the random or pseudo-random boundaries provides any unexpected result and simply states that the boundaries of the segments “can have” random or pseudo-random boundaries (see paragraph 0076 of specification).
Regarding claim 11, Burge modified discloses: the apparatus of claim 1, wherein the thin layer of pitch is adapted to polish a surface having an arbitrary surface profile (see paragraph 0028 and see also figure 3 showing element 31 (layer) in physical contact with a workpiece (element 6) in order to be polished and giving that Burge modified discloses the structure of the layer of pitch it would be capable of polishing a surface having an arbitrary surface profile).
Regarding claim 12, Burge modified discloses: the apparatus of claim 1, wherein the thin layer of pitch causes a smaller displacement of the non-Newtonian material in polishing a surface protrusion as compared to a polishing arrangement that includes a polyurethane layer for contacting the surface protrusion (Giving that Burge modified discloses the same material/properties of the apparatus having the non-Newtonian material and layer of pitch (see rejection page 3-5 above) with no structural difference, therefore the apparatus would be capable of having the layer of pitch causes a smaller displacement of the non-Newtonian material and the polishing pad in polishing a surface protrusion as compared to a polishing arrangement that includes a polyurethane layer (it is noted that the polishing arrangement that includes the polyurethane layer has not been positively recited as part of the claimed invention) for contacting the surface protrusion).
Regarding claim 21, Burge modified discloses: the apparatus of claim 1, wherein the thin layer of pitch forms one side of the container and is in direct contact with a container holding the non-Newtonian material (see figure 1 showing the thin layer of pitch as modified (element 31) formed on one side (upper side) of the container (element 30) and being in direct contact with the container (element 30) holding the non-Newtonian material (element 24) via element 30).
Regarding claim 23, Burge modified discloses: the apparatus of claim 1, wherein the solid back plate comprises an aluminum back plate (see paragraph 026 where the prior art discloses element 16 (solid back plate) as a base plate and in paragraph 0017 where the prior art discloses “the engaging surface of base plate where the retained is attached is flat and constructed of aluminum”, thus comprising an aluminum back plate).
Claims 6 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Burge (US Pub. No. 2012/0040590) in view of Jones (US Patent No. 4,128,968) as applied to claim 1 above, and further in view of Nakamura (US Pub. No. 2017/0066099).
Regarding claim 6, Burge modified discloses all the limitations as stated in the rejection of claim 1, but appears to be silent wherein the one or more segments of the layer of pitch form multiple channels for facilitating uniform distribution of a polishing compound.
Nakamura teaches it was known in the art to have an apparatus (Figures 1-3 and see also paragraph 0019) comprising a thin layer (elements 12/15) having one or more segments (see figure 2 annotated below Detail A), and wherein the one or more segments of the layer of polymer form multiple channels (element 17) for facilitating uniform distribution of a polishing compound (Giving that the prior art discloses multiple channels (element 17), thus the apparatus’s channels is capable of facilitating uniform distribution of a polishing compound).
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It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Burge to incorporate the teachings of Nakamura to provide wherein the one or more segments of the layer of pitch form multiple channels for facilitating uniform distribution of a polishing compound. One of ordinary skill would recognize that having the one or more segments with multiple channels would necessarily allow abrading scraps, which are generated when abrading an object to be abraded, to be easily discharged from the apparatus, thus preventing clogs and a drop in abrading efficiency.
Regarding claim 9, Burge modified discloses all the limitations as stated in the rejection of claim 1, but appears to be silent wherein the one or more segments of the layer of pitch have a rectangular or square shape.
Nakamura teaches it was known in the art to have an apparatus (Figures 1-3 and see also paragraph 0019) comprising a layer (elements 12/15) having one or more segments (Detail A), and wherein the one or more segments of the layer have a rectangular (see figure 4D element 16d and see also paragraph 0059) or square shape (see figure 4E element 16e and see also paragraph 0059).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Burge to incorporate the teachings of Nakamura to provide wherein the one or more segments of the layer of pitch have a rectangular or square shape. One of ordinary skill would recognize that having the one or more segments with the claimed shape would necessarily have the predictable result of providing a plurality of different shape surfaces to polish different portions of a workpiece at a desired form.
Regarding claim 10, Burge modified discloses: the apparatus of claim 1, wherein the layer of pitch is adhered to the container using adhesive (see paragraph 0030 of Burge where the prior art discloses element 31 (layer) attached to element 30 (container) via “an adhesive”).
However, Burge modified appears to be silent wherein the adhesive is a pressure-sensitive adhesive.
Nakamura teaches it was known in the art to have an apparatus (Figures 1-3 and see also paragraph 0019) comprising a layer (elements 12/15) and further utilizes is a pressure-sensitive adhesive (see paragraph 0065 where the prior art discloses utilizing “a pressure sensitive type adhesive”).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Burge to incorporate the teachings of Nakamura to provide is a pressure-sensitive adhesive. One of ordinary skill would recognize that having a pressure-sensitive adhesive would necessarily have the predictable result of adhering the layer with the container in order to secure both components and prevent the apparatus from disassembling while also allowing for means for interchangeably, thus allowing the user to replace the layer from the container without replacing the entire apparatus during operations.
Claims 8 is rejected under 35 U.S.C. 103 as being unpatentable over Burge (US Pub. No. 2012/0040590) in view of Jones (US Patent No. 4,128,968) as applied to claim 1 above, and further in view of Ryan (US Pub. No. 2013/0324021).
Regarding claim 8, Burge modified discloses all the limitations as stated in the rejection of claim 1, but appears to be silent wherein the one or more segments of the layer of pitch include one or more slices or wedges to form a circular shape.
Ryan it was known in the art to have an apparatus (Figure 8) comprising one or more segments of a layer (element 816) and further include one or more slices or wedges (see paragraph 0030 where the prior art discloses element 816 as “wedged shaped”) to form a circular shape (see figure 8 showing one or more wedges (element 816) forming a circular shape).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Burge to incorporate the teachings of Ryan to provide wherein the one or more segments of the layer of pitch include one or more slices or wedges to form a circular shape. One of ordinary skill would recognize that having the one or more segments as one or more slices or wedges to form a circular shape would necessarily provide the predictable result of polishing different portions of a workpiece at a desired form.
Claims 22 is rejected under 35 U.S.C. 103 as being unpatentable over Burge (US Pub. No. 2012/0040590) in view of Jones (US Patent No. 4,128,968) as applied to claim 1 above, and further in view of Laliberte (US Patent No. 2,701,191).
Regarding claim 22, Burge modified discloses all the limitations as stated in the rejection of claim 1, but appears to be silent further comprising: a driver pin coupled to the solid back plate, wherein the driver pin is configured to apply a drive force to drive a movement of the apparatus.
Laliberte teaches it was known in the art to have an apparatus (Figures 1-3 and see also col. 3, ll. 10-29) comprising a solid back plate (element 7), a thin layer (element 3), and further comprising: a driver pin (element 17 and see col. 3, ll. 34 where the prior art discloses element 17 as “a pin member”) coupled to the solid back plate (see figure 1), wherein the driver pin is configured to drive a movement of the apparatus (see col. 3, ll. 40-53 where the prior art discloses a polishing operation including movement of element 3 (thin layer) being controlled by the eccentric relationship of element 17 (driver pin) in combination with other structure, thus driving a movement of portion of the apparatus during operation).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Burge to incorporate the teachings of Laliberte to provide wherein a driver pin coupled to the solid back plate, wherein the driver pin is configured to drive a movement of the apparatus. One of ordinary skill would recognize that providing a driver pin would necessarily provide the predictable result of precisely controlling movements of the apparatus during operations. Thus, given that the prior art discloses the driver pin configured to drive the movement of the apparatus, one of ordinary skill in the art would find it obvious that the driver pin of Laliberte would behave the same as recited, including being configured to apply a drive force, as recited.
Response to Arguments
Applicant's arguments filed 08/20/2025 have been fully considered but they are not persuasive.
On pages 5-7 of the “Remarks”, the applicant argues that it would not have been obvious to combine the prior art of Jone’s pads with Burge, specifically:
Burge's ¶[0029], reproduced more fully below, distinguishes the two different operations of "fining" and "polishing." It is for the "fining" operation that Burge describes using an abrasive material, but it expressly describes using a non-abrasive material for the "polishing" operation. The present claims are directed to a device for polishing an optical component, and the thin pitch layer implemented for polishing and not fining.
Furthermore, Burge’ s clear contrast and distinction between the use of an abrasive material for fining and, “on the other hand,” using a non-abrasive material for polishing is additional evidence that (1) Burge did not intend to use an abrasive material, such as a pitch layer, for the polishing operation, and (2) it would not have been obvious to remove the soft fibrous material in Burge and instead include a pitch layer for polishing. See also arguments under 3C below.
As stated above, Burge is clear that it is not using an abrasive thin layer for polishing but rather describes using a soft, non-woven fabric such as felt. In direct contradiction to Burge’s express teachings, the present invention requires using a thin pitch layer for polishing. The thick layer of pitch provide specific benefits, such its ability to deform slightly ( e.g., in a range of 10 to 20 microns) see paragraph [0052]), and can provide "both reasonable conformity to the workpiece and sufficient rigidity for efficient smoothing," in the claimed device. Id. This substitution would not have been obvious because it is NOT described in Burge (non-abrasive) or Jones (thick pad and a different polishing configuration), and is not described in any other references of record. The non-obviousness of this feature is abundantly clear from paragraph [0029] of Burge, which contrasts ("on the other hand") the polishing operation from the fining operation, and only discloses using a non-abrasive material such as felt for the polishing operation. In other words, if such a substitution in Burge' s device was obvious, Burge would not have advocated changing the abrasive pad with a soft, non-woven fabric.
The examiner respectfully disagrees. The examiner notes that the prior art of Burge discloses in paragraph 0029 that “for polishing, on the other hand, the pad 31 may be in the form of a fibrous finishing pad without abrasives (e.g., a non-woven fabric, such as felt)”. However, as stated in MPEP 2145 (X)(D)(1), "the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….". Therefore, giving that the prior art of Burge discloses an exemplary pad that “may be” a fibrous finishing pad without abrasives (e.g., a non-woven fabric, such as felt) utilized for polishing an optical component and there is no explicitly disclosure in the prior art that criticize, discredit, or otherwise discourage the use of any other pad material including a layer of pitch as disclosed by the prior art of Jones which is utilized for polishing an optical surface (see col. 3, ll. 42-48), thus one of ordinary skill would recognize that having a pitch impregnated pad would effectively provide physical contact with the optical component for polishing during operations. Thus, arguments have been found unpersuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 ALBERTO SAENZ whose telephone number is (313)446-6610. The examiner can normally be reached Monday-Friday 7:30-4:30PM EST.
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/A.S./Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723