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
1. Amendments filed 11/20/2025 have been entered, wherein claims 1-8 and 10-18 are pending. Accordingly, claims 1-8 and 10-18 have been examined herein. This action is Final.
Examiner’s Comments
2. The examiner notes the amendments to at least claims 16 and 18 filed 11/20/2025 were incorrectly marked up. However, in the interest of promoting compact prosecution, the claims have been examined as presented in the latest amendment.
Claim Objections
3. Claims 12, 13 and 18 are objected to because of the following informalities:
Claim 12, “a set of grinding variables” should read “[[a]] the set of grinding variables” to avoid the antecedent basis issue and promote increased clarity
Claim 13, line 7, “grinder is mounted” should read “grinder which is mounted” to promote increased clarity
Claim 18, line 4, “the spring assembly in” should read “the spring [[assembly]] in” to avoid the antecedent basis issue and promote increased clarity
Appropriate correction is required.
Claim Rejections - 35 USC § 103
4. 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 1-2, 4-8 and 10-18 are rejected under 35 U.S.C. 103 as being unpatentable over Singh et al. (US PGPUB 20200038904), hereinafter Singh, in view of Pack (US PGPUB 20190091825) and further in view of Offenbacher (US Patent 0497334).
Regarding claim 1, Singh teaches a coating apparatus (fig. 1), comprising:
a workpiece holder (vice 116) assembled for holding a tool material (workpiece 108), wherein the workpiece holder (vice 116) is assembled over a base (see annotated fig. 1 below) wherein the apparatus includes a fixture (see annotated fig. 1 below); and
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a grinding wheel (grinding wheel 110), the grinding wheel engaging the tool material (fig. 1) to enable a rotation of the grinding wheel at a predefined Rotations Per Minute (RPM) (Table 1 of Singh, located between paragraph 0028 and 0029. Singh teaches the RPM can be up to 5670 which enables a rotation of the grinding wheel at a predefined RPM):
wherein the rotation of the grinding wheel at the predefined RPM (paragraph 0006 of Singh) generates a stream of swarf particles from the tool material (fig. 1, swarf particles 112); and
wherein the stream of swarf particles (fig. 1, swarf particles 112) is deposited over a target surface (fig. 1, substrate 104 having a target surface) fixed at a pre-set standoff distance (fig. 1, stand off distance between the workpiece 108 and the substrate 104; [0024]) from the grind coating apparatus (fig. 1).
Singh does not explicitly teach an angle grind coating apparatus,
a base attached to a fixture;
wherein the workpiece holder has a spring assembly to apply an upward thrust force to the tool material;
a handheld angle grinder comprising a grinding wheel, the handheld angle grinder being mounted to the fixture by at least a link,
wherein the rotation of the grinding wheel by the handheld angle grinder.
However, Pack teaches a grinding apparatus which includes an angle grinder 40 (fig. 1), wherein the angle grinder grinds a workpiece 60, wherein the angle grinder is mounted to the workpiece holder through a frame (flex arm 30) (fig. 1). Specifically, Pack teaches
a base attached to a fixture (see annotated fig. 1 below);
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a handheld angle grinder (angle grinder 40) comprising a grinding wheel (42), the handheld angle grinder (40) being mounted to the fixture by at least a link (see annotated fig. 1 above) with the grinding wheel engaging the tool material (see annotated fig. 1 above),
wherein the rotation of the grinding wheel by the handheld angle grinder (fig. 1, [0024]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified Singh to incorporate the teachings of Pack to provide an angle grind coating apparatus, a base attached to a fixture; a handheld angle grinder comprising a grinding wheel, the handheld angle grinder being mounted to the fixture by at least a link with the grinding wheel engaging the tool material, wherein the rotation of the grinding wheel by the handheld angle grinder.
Specifically, it would have been obvious to incorporate the angle grinder of Pack for the grinding wheel of Singh, wherein the angle grinder is mounted to the base (of Singh) and workpiece holder (of Singh) via the link (of Pack) and the fixture (of Pack) such that the grinding wheel engages the tool material, wherein the angle grinder rotates the grinding wheel. Incorporating Pack’s angle grinder for Singh’s grinding wheel and wheel head would have been a simple substitution (MPEP 2143) of one known grinding mechanism for another known grinding mechanism in order to obtain the predictable results of grinding the workpiece of Singh. Providing the mounting structure as taught by Pack to mount the angle grinder of Pack to the apparatus of Singh would allow the angle grinder to be mounted and not floating as depicted in fig. 1 of Singh, wherein providing the mounting structure prevents the operator from having to support the weight of the angle grinder during operation and properly mounts the angle grinder to prevent operator injury.
Singh, as modified, does not explicitly teach
wherein the workpiece holder has a spring assembly to apply an upward thrust force to the tool material.
However, Offenbacher teaches a grinding machine including a grinding wheel (a) for grinding a workpiece, wherein the workpiece is positioned below the grinding wheel (fig. 1). Additionally, Offenbacher teaches wherein the workpiece holder (see annotated fig. 1 below, wherein the indicated structure is being interpreted as the workpiece holder of Offenbacher) has a spring assembly (including spring r, fig. 1) to apply an upward thrust force to the tool material (page 2, lines 48-61; Offenbacher teaches the yoke is provided with a roller which, under the influence of the spring r, is pressed against the periphery of a disk, and thus causes the end of the frame, which holds the plate to be ground, to be pressed up, or, in other words, the object c is thereby pressed against the grinding disk, wherein Offenbacher teaches in order to increase or diminish the grinding pressure in proportion to the toughness of the material, rod t is threaded at its lower portion, and the tension of the spring r can be more or less regulated by a nut t’ (page 2, lines 94-98 of Offenbacher)). Overall, Offenbacher teaches a spring assembly for applying an upward thrust force to the workpiece in order to bias the workpiece against the grinding wheel).
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It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Singh, as modified, to incorporate the teachings of Offenbacher to provide wherein the workpiece holder has a spring assembly to apply an upward thrust force to the tool material. Specifically, it would have been obvious to incorporate the teachings of Offenbacher to provide a spring biasing system (as taught by Offenbacher) as part of the workpiece holder (of Singh) to adjustably bias the workpiece (of Singh) towards the grinding wheel. Doing so would bias the workpiece to remain in contact with the grinding wheel in order to continuously grind the workpiece, wherein continuously grinding the workpiece promotes a uniform coating of the substrate as desired by Singh (fig. 1 of Singh). Additionally, incorporating the spring biasing system would prevent the operator from continuously having to manually adjust the distance between the grinding wheel (of Pack, as incorporated) and the workpiece (of Singh) as the grinding wheel abrades away the material of the workpiece.
Regarding claim 2, Singh, as modified, teaches the claimed invention as rejected above in claim 1. Additionally, Singh, as modified, teaches wherein the tool material comprises a cylindrical workpiece (fig. 1 of Singh, the tool material is capable of being a cylindrical workpiece and the vice 116 of Singh is capable of holding a cylindrical workpiece), wherein the cylindrical tool material workpiece comprises low carbon steel (The workpiece of Singh, as modified, is capable of comprising low carbon steel. Additionally, Singh, as modified, teaches low carbon steel swarf particles from the steel material 108 [0028 of Singh]).
Regarding claim 4, Singh, as modified, teaches the claimed invention as rejected above in claim 1. Additionally, Singh, as modified, teaches wherein the stream of swarf particles comprises swarf particles in micrometer size [0010 of Singh].
Regarding claim 5, Singh, as modified, teaches the claimed invention as rejected above in claim 1. Additionally, Singh, as modified, teaches wherein the target surface comprises a substrate selected as one of a metal substrate [0029 of Singh, Singh teaches an aluminum substrate], a polymer substrate (abstract of Singh. Additionally, the prior art is only required to teach metal, polymer, or ceramic because the claim language recites “selected as one of”) or a ceramic substrate (abstract of Singh. Additionally, the prior art is only required to teach metal, polymer, or ceramic because the claim language recites “selected as one of”).
Regarding claim 6, Singh, as modified, teaches the claimed invention as rejected above in claim 1. Additionally, Singh, as modified, teaches wherein the rotation of the grinding wheel is set at the predefined Rotations Per Minute (RPM) comprises in a range of operation up to 10,000 rpm (Table 1 of Singh, located between paragraph 0028 and 0029. Singh, as modified, teaches the RPM can be up to 5670 which is in a range of operation up to 10,000 rpm).
Regarding claim 7, Singh, as modified, teaches the claimed invention as rejected above in claim 1. Additionally, Singh, as modified, teaches wherein the grinding of the tool material is controlled by adjusting at least one of a spring stiffness (The spring assembly of Offenbacher was incorporated into the assembly of Singh (see above rejection of claim 1 for more details), wherein Offenbacher teaches in order to increase or diminish the grinding pressure in proportion to the toughness of the material, rod t is threaded at its lower portion, and the tension of the spring r can be more or less regulated by a nut t’ (page 2, lines 94-98 of Offenbacher), wherein Offenbacher’s teaching of regulating the tension of the spring is interpreted as adjusting the spring stiffness), alignment of the fixture (The prior art is not required to teach this limitation because the claim language recites the phrase “at least one of”), and the predefined Rotations Per Minute (RPM) of the grinding wheel (The prior art is not required to teach this limitation because the claim language recites the phrase “at least one of”).
Regarding claim 8, Singh, as modified, teaches the claimed invention as rejected above in claim 1. Additionally, Singh, as modified, teaches wherein the handheld angle grinder comprising a handle for holding the apparatus (handle 46 of Pack, figs. 1-2 of Pack, wherein the angle grinder of Pack was previously incorporated. See above rejection of claim 1 for more details).
Regarding claim 10, Singh, as modified, teaches the claimed invention as rejected above in claim 1. Additionally, Singh, as modified, teaches wherein a coating of the stream of swarf particles is controlled by adjusting the pre-set standoff distance and an impact angle of the stream of swarf particles generated due to the grinding (fig. 1 of Singh; Singh teaches wherein the coating of the stream of swarf particles 112 is controlled by adjusting the stand-off distance (as seen in fig. 1 and in paragraph 0024 of Singh) and impact angle (as seen in fig. 1 of Singh, wherein adjusting the stand-off distance also adjusts the impact angle) of the stream of swarf particles generated due to grinding).
Regarding claim 11, Singh, as modified, teaches the claimed invention as rejected above in claim 1. Additionally, Singh, as modified, teaches wherein the swarf particles from the stream of swarf particles of shape comprising spherical, needle or platelet morphology are deposited (paragraph 0025 of Singh), and wherein the shape is based on a set of grinding variables (paragraph 0025 of Singh).
Regarding claim 12, Singh, as modified, teaches the claimed invention as rejected above in claim 11. Additionally, Singh, as modified, teaches wherein a set of grinding variables comprises the pre-set standoff distance between the tool material and the target surface (fig. 1 and paragraph 0024 of Singh), the predefined Rotations Per Minute (RPM) of the grinding wheel (paragraph 0024 of Singh), a spring stiffness of the spring assembly in the workpiece holder (The spring assembly of Offenbacher was incorporated into the assembly of Singh (see above rejection of claim 1 for more details), wherein Offenbacher teaches in order to increase or diminish the grinding pressure in proportion to the toughness of the material, rod t is threaded at its lower portion, and the tension of the spring r can be more or less regulated by a nut t’ (page 2, lines 94-98 of Offenbacher), wherein Offenbacher’s teaching of regulating the tension of the spring is interpreted as adjusting the spring stiffness), a feed rate of the tool material (Offenbacher’s teaching of regulating the tension of the spring is interpreted as also adjusting the feed rate of the tool material), a flow rate of the swarf particles (Offenbacher’s teaching of regulating the tension of the spring is interpreted as also adjusting the flow rate of the swarf particles), and a trajectory of the stream of swarf particles (Singh’s teaching of adjusting the stand off distance is also interpreted as adjusting the trajectory of the swarf particles stream).
Regarding claim 13, Singh teaches a method providing coating over a target surface (fig. 1), the method comprising:
wherein the tool material (workpiece 108) is fixed in a workpiece holder (vice 116) of an grind coating apparatus (fig. 1), wherein the workpiece holder (vice 116) is assembled over a base (see annotated fig. 1 below), wherein the apparatus includes a fixture (see annotated fig. 1 below); and
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grinding of the tool material by a rotation of a grinding wheel (fig. 1)
wherein the rotation of the grinding wheel generates a stream of swarf particles from the tool material (fig. 1, swarf particles 112), wherein the stream of swarf particles is to be deposited over the target surface (fig. 1, substrate 104 having a target surface) fixed at a pre-set standoff distance (fig. 1, stand off distance between the workpiece 108 and the substrate 104; [0024]) from the grind coating apparatus (fig. 1).
Singh does not explicitly teach an angle grind coating apparatus,
applying, through a spring, an upward thrust force over a tool material,
the base attached to a fixture;
grinding of the tool material by a rotation of a grinding wheel of a handheld angle grinder is mounted to the fixture by at least one link.
However, Pack teaches a grinding apparatus which includes an angle grinder 40 (fig. 1), wherein the angle grinder grinds a workpiece 60, wherein the angle grinder is mounted to the workpiece holder through a frame (flex arm 30) (fig. 1). Specifically, Pack teaches
the base attached to a fixture (see annotated fig. 1 below);
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grinding of the tool material by a rotation of a grinding wheel 42 of a handheld angle grinder (angle grinder 40) is mounted to the fixture by at least one link (see annotated fig. 1 above).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified Singh to incorporate the teachings of Pack to provide an angle grind coating apparatus, the base attached to a fixture; grinding of the tool material by a rotation of a grinding wheel of a handheld angle grinder is mounted to the fixture by at least one link.
Specifically, it would have been obvious to incorporate the angle grinder of Pack for the grinding wheel of Singh, wherein the angle grinder is mounted to the base (of Singh) and workpiece holder (of Singh) via the link (of Pack) and the fixture (of Pack) such that the grinding wheel engages the tool material, wherein the angle grinder rotates the grinding wheel. Incorporating Pack’s angle grinder for Singh’s grinding wheel and wheel head would have been a simple substitution (MPEP 2143) of one known grinding mechanism for another known grinding mechanism in order to obtain the predictable results of grinding the workpiece of Singh. Providing the mounting structure as taught by Pack to mount the angle grinder of Pack to the apparatus of Singh would allow the angle grinder to be mounted and not floating as depicted in fig. 1 of Singh, wherein providing the mounting structure prevents the operator from having to support the weight of the angle grinder during operation and properly mounts the angle grinder to prevent operator injury.
Singh, as modified, does not explicitly teach
applying, through a spring, an upward thrust force over a tool material,
However, Offenbacher teaches a grinding machine including a grinding wheel (a) for grinding a workpiece, wherein the workpiece is positioned below the grinding wheel (fig. 1). Additionally, Offenbacher teaches a workpiece holder (see annotated fig. 1 below, wherein the indicated structure is being interpreted as the workpiece holder of Offenbacher);
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applying, through a spring (spring r, fig. 1), an upward thrust force over a tool material (page 2, lines 48-61; Offenbacher teaches the yoke is provided with a roller which, under the influence of the spring r, is pressed against the periphery of a disk, and thus causes the end of the frame, which holds the plate to be ground, to be pressed up, or, in other words, the object c is thereby pressed against the grinding disk, wherein Offenbacher teaches in order to increase or diminish the grinding pressure in proportion to the toughness of the material, rod t is threaded at its lower portion, and the tension of the spring r can be more or less regulated by a nut t’ (page 2, lines 94-98 of Offenbacher)). Overall, Offenbacher teaches a spring for applying an upward thrust force to the workpiece in order to bias the workpiece against the grinding wheel).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Singh, as modified, to incorporate the teachings of Offenbacher to provide applying, through a spring, an upward thrust force over a tool material.
Specifically, it would have been obvious to incorporate the teachings of Offenbacher to provide a spring biasing system (as taught by Offenbacher) as part of the workpiece holder (of Singh) to adjustably bias the workpiece (of Singh) towards the grinding wheel. Doing so would bias the workpiece to remain in contact with the grinding wheel in order to continuously grind the workpiece, wherein continuously grinding the workpiece promotes a uniform coating of the substrate as desired by Singh (fig. 1 of Singh). Additionally, incorporating the spring biasing system would prevent the operator from continuously having to manually adjust the distance between the grinding wheel (of Pack, as incorporated) and the workpiece (of Singh) as the grinding wheel abrades away the material of the workpiece.
Regarding claim 14, Singh, as modified, teaches the claimed invention as rejected above in claim 13. Additionally, Singh, as modified, teaches wherein the rotation of the grinding wheel is set at a predefined Rotations Per Minute (RPM) in a range of up to 10,000 rpm (Table 1 of Singh, located between paragraph 0028 and 0029. Singh, as modified, teaches the RPM can be up to 5670 which is in a range of operation up to 10,000 rpm).
Regarding claim 15, Singh, as modified, teaches the claimed invention as rejected above in claim 13. Additionally, Singh, as modified, teaches wherein the grinding of the tool material is controlled by adjusting at least one of a spring stiffness (The spring assembly of Offenbacher was incorporated into the assembly of Singh (see above rejection of claim 13 for more details), wherein Offenbacher teaches in order to increase or diminish the grinding pressure in proportion to the toughness of the material, rod t is threaded at its lower portion, and the tension of the spring r can be more or less regulated by a nut t’ (page 2, lines 94-98 of Offenbacher), wherein Offenbacher’s teaching of regulating the tension of the spring is interpreted as adjusting the spring stiffness), alignment of the fixture (The prior art is not required to teach this limitation because the claim language recites the phrase “at least one of”), and/or a predefined Rotations Per Minute (RPM) of the grinding wheel (The prior art is not required to teach this limitation because the claim language recites the phrase “at least one of”).
Regarding claim 16, Singh, as modified, teaches the claimed invention as rejected above in claim 13. Additionally, Singh, as modified, teaches wherein the grinding is controlled by controlling at least one of the pre-set standoff distance (as seen in fig. 1 and in paragraph 0024 of Singh), an impact angle of the stream of swarf particles to be capable of manual adjustment (The prior art is not required to teach this limitation because the claim language recites the phrase “at least one of”), or both (The prior art is not required to teach this limitation because the claim language recites the phrase “at least one of”).
Regarding claim 17, Singh, as modified, teaches the claimed invention as rejected above in claim 13. Additionally, Singh, as modified, teaches wherein swarf particles from the stream of swarf particles of shape comprising spherical, needle or platelet are deposited (paragraph 0025 of Singh), and wherein the shape is based on a set of grinding variables (paragraph 0025 of Singh).
Regarding claim 18, Singh, as modified, teaches the claimed invention as rejected above in claim 17. Additionally, Singh, as modified, teaches wherein the set of grinding variables comprises the pre-set standoff distance between the tool material and the target surface (fig. 1 and paragraph 0024 of Singh), a predefined Rotations Per Minute (RPM) of the grinding wheel (paragraph 0024 of Singh), a spring stiffness of the spring assembly in the workpiece holder (The spring assembly of Offenbacher was incorporated into the assembly of Singh (see above rejection of claim 13 for more details), wherein Offenbacher teaches in order to increase or diminish the grinding pressure in proportion to the toughness of the material, rod t is threaded at its lower portion, and the tension of the spring r can be more or less regulated by a nut t’ (page 2, lines 94-98 of Offenbacher), wherein Offenbacher’s teaching of regulating the tension of the spring is interpreted as adjusting the spring stiffness), a feed rate of the tool material (Offenbacher’s teaching of regulating the tension of the spring is interpreted as also adjusting the feed rate of the tool material), a flow rate of swarf particles from the stream of swarf particles (Offenbacher’s teaching of regulating the tension of the spring is interpreted as also adjusting the flow rate of the swarf particles), and a trajectory of the stream of swarf particles (Singh’s teaching of adjusting the stand off distance is also interpreted as adjusting the trajectory of the swarf particles stream).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Singh et al. (US PGPUB 20200038904), hereinafter Singh, in view of Pack (US PGPUB 20190091825) and further in view of Offenbacher (US Patent 0497334), as applied to claim 1 above, and further in view of Tomonaga et al. (US PGPUB 20180281146), hereinafter Tomonaga.
Regarding claim 3, Singh, as modified, teaches the claimed invention as rejected above in claim 1. Singh, as modified, does not explicitly teach comprising: a safety plate located on top of the grinding wheel.
However, Tomonaga teaches an angle grinder which includes a tip end tool, including a grinding stone 36 [0075], and a wheel cover 10 (fig. 1), wherein the angle grinder includes a safety plate (inner flange 32, fig. 1) located on top of the grinding wheel (fig. 1). Additionally, Tomonaga teaches the inner flange 32 is configured to position and secure the tip end tool [0073].
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Singh, as modified, to incorporate the teachings of Tomonaga to provide a safety plate located on top of the grinding wheel. Specifically, it would have been obvious to incorporate the inner flange configuration of Tomonaga when mounting the grinding wheel of Pack onto the angle grinder of Pack (wherein the angle grinder of Pack was previously incorporated into Singh, as modified). Doing so would allow the inner flange to position and secure the grinding wheel [0073 of Tomonaga]. Additionally, doing so would properly mount the grinding wheel in order to promote safety and prevent harm to the operator due to an unsecured or improperly secured grinding wheel.
Response to Arguments
5. Applicant's arguments filed 11/20/2025 have been fully considered but they are not persuasive.
Applicant submits that the combination of Singh, Pack and Offenbacher does not render the claimed invention obvious. Specifically, Applicant submits that the reasoning set forth in the office action relies on hindsight and on combining fundamentally incompatible mechanisms that operate on different principles. Applicant submits that Singh does not teach a handheld angle grinder mounted by a link to a fixture and also does not teach a spring assembly (page 7 of Applicant’s remarks). The examiner respectfully disagrees.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, 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 the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant's argument that the combinations rely on combining fundamentally incompatible mechanisms, 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. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Specifically, Singh alone was not relied upon to teach the handheld angle grinder and the spring assembly. Rather Pack was relied upon to teach the handheld angle grinder features, wherein these teachings were incorporated into Singh through simple substitution (MPEP 2143) and in order to mount the grinding wheel so that it is not floating, which prevents the operator from having to support the weight during operation and promotes prevention of operator injury. Additionally, Singh was not relied upon to teach the spring assembly features. Rather, Offenbacher was relied upon to teach the spring assembly features, wherein these teachings were incorporated into Singh in order to continuously grind the workpiece, promote a uniform coating, and prevent the operator from having to continuously manually adjust the distance between the grinding wheel and the workpiece. Overall, Singh alone was not relied upon to teach the language of claim 1 but Singh in view of Pack and further in view of Offenbacher was relied upon. See above rejection for more details.
Applicant further submits that although Pack is relied upon to teach the missing grinder architecture, Pack does not teach a generation of a stream of swarf particles from the tool material and does not contemplate any preset standoff distance. Incorporating the angle grinder of Pack fundamentally alters the operational principle of Singh and introducing Pack’s constrained arm would interfere with the free swarf trajectory, thereby rendering Singh’s coating operation inoperative (page 8 of Applicant’s remarks). The examiner respectfully disagrees.
In response to applicant's argument that incorporating the angle grinder of Pack fundamentally alters the operational principle of Singh and introducing Pack’s constrained arm would interfere with the free swarf trajectory, thereby rendering Singh’s coating operation inoperative, 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. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Specifically, Pack was not relied upon to teach the generation of swarf particles or the standoff distance. Rather, Singh was relied upon to teach these features. The incorporation of Pack’s grinder features were not made through bodily incorporation. Singh was modified to incorporate the grinder features of Pack through simple substitution and in order to prevent the operator from having to support the weight of the grinding wheel. Singh, as modified, still relies on a grinding wheel to generate swarf particles, thereby rendering the device of Singh, as modified, operative for achieving its intended purpose. See above rejection for more details.
Applicant argues that Offenbacher fails to teach facilitating controlled erosion of a tool material to generate a stream of swarf particles (page 8 of Applicant’s remarks). The examiner respectfully disagrees. Offenbacher was not relied upon to teach the generation of a stream of swarf particles. Rather, Singh was relied upon to teach the generation of a stream of swarf particles. See above rejection for more details.
Applicant argues that the incorporation of Offenbacher’s spring mechanism would not produce a stream of swarf particles because the forcing of the tool material would directly contradict the coating operation of Singh. Applicant submits there is not teaching or suggestion that it could be adapted and incorporating the spring mechanism would destroy the functionality of Singh (page 8 of Applicant’s remarks). The examiner respectfully disagrees.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the spring assembly of Offenbacher was incorporated to promote a uniform coating by promoting continuous grinding by preventing the operator from having to manually adjust the grinding wheel and workpiece distance. This does not contradict the operation or destroy the functionality of Singh because Singh, as modified, continues to produces a stream of swarf particles for coating via grinding a tool stock material. See above rejection for more details.
Applicant argues that even when the features taught in the three cited references are combined as proposed, the resulting system does not teach the claimed arrangement required by claim 1. Applicant notes that Singh lacks both spring biasing and a link mounted handheld grinder. Pack fails to teach controlled swarf generation and Offenbacher teaches a spring system for forceful pressure grinding. Therefore, Applicant submits that the Office Action fails to provide a clear motivation for combining and instead relies on hindsight reasoning. For these reasons, Applicant submits that claim 1 is patentable. The examiner respectfully disagrees.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, 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 the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Overall, the combination of Singh in view of Pack and further in view of Offenbacher teaches each limitation of claim 1 and proper motivations were provided when incorporating the teachings of Pack and Offenbacher. See above rejection and response to arguments for more details.
Applicant submits claim 13 has similar limitations as amended claim 1 and thus claim 13 is patentable for the reasons presented above. The examiner respectfully disagrees. See above response to arguments for more details. Accordingly, both claims 1 and 13 have been rejected over Singh, as modified.
Applicant submits the dependent claims are allowable by virtue of their dependency. The examiner respectfully disagrees. Claims 1 and 13 have been rejected above over Singh, as modified. The dependent claims have been rejected accordingly. See above rejection for more details.
Conclusion
6. 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.
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/MICHAEL A GUMP/ Examiner, Art Unit 3723