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 .
Response to Amendment
This Final Rejection is in response to the Amendment dated July 25, 2025 filed in response to Non-final Rejection dated February 25, 2025.
The 35 U.S.C. 103 rejection in the previous Non-final Rejection is withdrawn in view of the amendments made to the claims. However, those claims continue to be rejected under 35 U.S.C. 103 as being unpatentable over the prior art based upon new grounds necessitated by the claim amendments.
Response to Arguments
Applicant argues, starting at the bottom of page 5 of the Amendment, the claims as amended are not unpatentable over the prior art reference combination cited in the previous Non-final Rejection. Examiner agrees. Therefore, that rejection is withdrawn. However, the amended claims are unpatentable over the prior art as explained in detail below.
Claim Rejections - 35 USC § 103
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.
Claims 1-4, 6-8 and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 5,727,995 to Harkins et al., hereinafter “Harkins”, in view of U.S. Patent No. 3,214,824 to Brown, hereinafter “Brown”.
Regarding claim 1, Harkins discloses a peening device (tool 10 in Fig. 1; col. 4, line 22) comprising:
a rotatable member rotatable about an axis (hub 42 rotates on axis of rotation 50 in Fig. 2; col. 5, line 55-60);
a flexible line that extends from the rotatable member (flexible strap 60 of flap 44 in Fig. 2; col. 5, line 56 and col. 6, line 6); and
a peening element that is provided on the flexible line, the peening element including an aperture therethrough, wherein the flexible line is arranged in a loop and threaded through the aperture (buttons with peening particles 64 in Fig. 2 have side opening apertures in which flexible strap 60 is captured. See “Side Opening Aperture” annotation to Fig. 3 of Harkins reproduced below; col. 6, line 7-11), and wherein the flexible line and peening element are operatively rotatable about the rotatable member axis to peen a surface in use (Fig. 3 shows flexible line peening flap 44 and peening element buttons with peening particles 64 are operatively rotated about axis of rotation 50 on hub 42 which peens work surface 74; col. 6, line 37-38).
Examiner does not consider Harkins’ cylindrically-shaped peening buttons as “ball-shaped peening beads”. Therefore, Harkins’ does not disclose “ball-shaped peening beads”. And, Harkins’ cylindrically-shaped peening buttons do not have apertures extending through a center of mass of the buttons through which the flexible line passes where the flexible line also passes through the center of mass of the buttons.
In the same field of surface treatment tools, Brown teaches a scaling device (10 in Figs. 1 and 3) for removing debris from the surface of cylindrical objects as shown in Fig. 3. See col. 2, line 32-58. Brown teaches flexible chain 28 and knurled spheres 24 in Figs. 1 and 3 may be constructed as shown in Fig. 5. See col. 2, line 70 through col. 3, line 12. In this embodiment, spheres 60 are solid with elongated passages 66 passing through their center of mass which receive cable 68.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to replace Harkins’ flexible flaps and peening buttons with Brown’s flexible cable and scaling spheres. A person of ordinary skill would have recognized applying the teaching of Brown to the disclosure of Harkins’ would achieve the predictable result of a rotating peening device where the peening elements are ball-shaped beads held on flexible lines passing in a loop through the center of mass of the beads.
Regarding claim 2, the prior art reference combination of Harkins in view of Brown renders the peening device as claimed in claim 1 unpatentable as explained above. Harkins further discloses, wherein the rotatable member is a spindle (hub 42 in Fig. 2 has the shape of a spindle).
Regarding claim 3, the prior art reference combination of Harkins in view of Brown renders the peening device as claimed in claim 1 unpatentable as explained above. When Brown’s flexible cable 68 replaces Harkins’ flexible flap 44 and Brown’s spheres 60 replace Harkins’ peening buttons, one or more of Brown’s spheres 60 will be operatively located at a part of flexible cable 68 furthest away from Harkins’ hub 42.
Regarding claim 4, the prior art reference combination of Harkins in view of Brown renders the peening device as claimed in claim 1 unpatentable as explained above. When Brown’s flexible cable 68 replaces Harkins’ flexible flap 44 and Brown’s spheres 60 replace Harkins’ peening buttons, flexible cable 68 has a plurality of spheres 60 provided thereon.
Regarding claim 6, the prior art reference combination of Harkins in view of Brown renders the peening device as claimed in claim 4 unpatentable as explained above. Brown further teaches the plurality of ball-shaped peening beads (60 in Fig. 5) are arranged in a cluster (Fig. 5 shows spacer collars 70 hold spheres 60 close together in a cluster to prevent large gaps between the spheres from forming).
Regarding claim 7, the prior art reference combination of Harkins in view of Brown renders the peening device as claimed in claim 2 unpatentable as explained above. Harkins further discloses, wherein the spindle includes a proximal end and a distal end, and wherein the proximal end is configured to be attached to a rotary drive for rotating the spindle in use with the flexible line extending from the distal end of the spindle (spindle hub 42 has its proximal end attached to threaded arbor 36 of motor 22 in Fig. 5 and flexible line peening flaps 44 extend from its distal end). When applying the teaching of Brown to the peening device of Harkins as explained in the rejection of claim 1 above, Brown’s flexible cables 68 would be positioned in the same place as flaps 44 in Fig. 5.
Regarding claim 8, the prior art reference combination of Harkins in view of Fowlie renders the peening device as claimed in claim 1 unpatentable as explained above. Harkins further discloses, wherein the rotatable member is elongate and extends along a major axis, and wherein the rotatable member is operatively rotatable about its major axis so as to cause the flexible line to extend and the peening element to move in a generally circular path around the major axis of the rotatable member in use (rotatable member spindle hub 42 is elongate and extends along the axis of rotation of threaded arbor 36 driven by motor 22 as shown in Fig. 5). When applying the teaching of Brown to the peening device of Harkins as explained in the rejection of claim 1 above, Harkins’ peening elements would be ball-shaped peening beads.
Regarding claim 10, the prior art reference combination of Harkins in view of Brown renders the peening device as claimed in claim 1 unpatentable as explained above. Harkins further discloses, wherein the peening element is formed from a tough material selected from the group consisting of: tungsten, titanium, steel, glass, composite materials and ceramics (peening element buttons 64 in Fig. 2 have hard steel peening particles bonded to the button; col. 6, line 8-10). When applying the teaching of Brown to the peening device of Harkins as explained in the rejection of claim 1 above, Harkins’ peening elements would be ball-shaped peening beads.
Regarding claim 11, the prior art reference combination of Harkins in view of Brown discloses a method of peening a surface, the method comprising:
providing a peening device as claimed in claim 1, (see the rejection of claim 1 above); and
rotating the peening device such that when the peening element operatively comes into contact with the surface, the surface is peened (Rotatable member hub 42 is rotated such that peening element buttons 64 operatively contacts work surface 74 as shown in Fig. 3. When applying the teaching of Brown to the peening device of Harkins, Harkins’ peening elements would be ball-shaped peening bead spheres 60 of Brown.).
Regarding claim 12, the prior art reference combination of Harkins in view of Brown renders the method of peening a surface as claimed in claim 11 unpatentable as explained above. Harkins further discloses, wherein the method includes rotating the peening device such that the flexible line extends transversely relative to a major axis of the rotatable member, and such that the peening element rotates at an angular velocity relative to the major axis to peen the surface (Hub 42 is rotated such that flexible line peening flaps 44 extend transversely relative to rotation axis 50 in Fig. 3 such that peening element buttons 64 rotate at an angular velocity relative to rotation axis 50 peening work surface 74. When applying the teaching of Brown to the peening device of Harkins as explained in the rejection of claim 1 above, Brown’s cables 68 will extend transversely in relation to rotation axis 50 such that peening spheres 60 rotate at an angular velocity relative to axis 50 peening work surface 74.).
Regarding claim 13, the prior art reference combination of Harkins in view of Brown renders the method of peening a surface as claimed in claim 12 unpatentable as explained above. Harkins further discloses, wherein the flexible line performs a whipping action when the rotatable member is rotated about its major axis in use (flexible line peening flaps 44 perform a whipping action as shown in Fig. 3 when rotatable member hub 42 is rotated about rotation axis 50).
Regarding claim 14, the prior art reference combination of Harkins in view of Brown renders the method of peening a surface as claimed in claim 11 unpatentable as explained above. Harkins further discloses, wherein rotation of the rotatable member causes the flexible line to extend as result of a centrifugal force associated with the peening element on the flexible line, and wherein the surface is operatively peened as result of kinetic energy of the peening element when it comes into contact with the surface (Rotation of rotatable member hub 42 in Fig. 3 causes flexible line peening flaps 44 to extend as a result of centrifugal force associated with peening element buttons 64 on flexible line peening flaps 44 as can be appreciated by flexible strap 60 of the peening flap 44 which has peening element button 64 flat against work surface 74 being slightly buckled due to it impacting work surface 74 and flexible strap 60 of the flexible line peening flap 44 to its left being extended straight out to the left of rotation axis 50. When applying the teaching of Brown to the peening device of Harkins as explained in the rejection of claim 1 above, Brown’s cable 68 will take the place of flexible strap 60 and spheres 60 will take the place of Harkins’ peening buttons.).
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 PAUL DEREK PRESSLEY whose telephone number is (313)446-6658. The examiner can normally be reached 7:30am to 3:30pm Eastern.
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/P.D.P./ Examiner, Art Unit 3725
/Christopher L Templeton/Supervisory Patent Examiner, Art Unit 3725