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 .
Status of Claims
This action is in reply to the Amendments/Response filed on December 1, 2025. Claims 1 and 15 have been amended. New claims 23-25 have been added. Claims 4 and 9 were previously cancelled. Claims 1-3, 5-8, and 10-25 are currently pending and have been examined.
Response to Amendments
The examiner fully acknowledges the amendments to claims 1 and 15 filed on December 1, 2025.
The amendments to claims 1 and 15 addresses the indefinite claim language. As such, the previous 112(b) rejections no longer apply and have been withdrawn.
The amendments to claims 1 and 15 address the language creating the drawing objection. As such, the drawing rejection has been withdrawn.
The applicant’s amendments to claim 1 are sufficient to overcome the rejection of claims, as presented in the 35 U.S.C. 102 rejection applying Hall (US Patent No. 410414). However the amendment is not sufficient enough to overcome the art.
The applicant’s amendments to claim 15 are sufficient to overcome the rejection of claims, as presented in the 35 U.S.C. 103 rejection applying Hall in view of Hohwart (US Patent No. 3459433). However the amendment is not sufficient enough to overcome the art.
However, the amended claims are recited such that 112(b) indefinite, as well as drawing objections are incited. Please see the rejections set forth within the action below.
Response to Arguments
The applicant’s arguments, see pages 7-8, filed December 1, 2025 have been fully considered.
Drawing Objection: Examiner agrees with applicant. The drawing objections have been withdrawn.
112 (b) Rejections: Examiner agrees with the applicant. The amendments clarifies the claimed subject matter. The 112(b) rejections have been withdrawn.
102 and 103 Rejections: The examiner respectfully disagrees that the amendments are successful in overcome the art of record. Hall’s apparatus teaches that the mounting fixtures’ positions are adjustable and can be arranged and rearranged (col. 3 lines 23-42). So, while its initial configuration may not be radially about a single point, a skilled artisan would recognize that because of the versatility of Hall’s structure, choosing a reference point about which to arrange the mounting fixtures would be within the structural and operational capacity of Hall. Further, once that reference point/center point is established, a user can continue to use it for orienting the mounting fixtures, whether they are removed and/or added back to the mounting platform. The rejection set forth in the action relies upon the prior art of record, and includes further interpretation to address the amended limitations.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 6-8, 10, 13-14, and 21-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hall (US Patent No. 410414).
In regards to claim 1, Hall discloses
a system for mounting, comprising:
a platform (horizontal baseboard 1, fig. 1, 3) comprising one or more fasteners (securing bolts, fig. 1-3);
one or more mounting fixtures (at least adjustable brackets 2, 3, and 4; see fig. 1-3) arranged on and mounted to the platform (horizontal baseboard 1, fig. 1, 3), the one or more mounting fixtures configured to secure a sample holder, the one or more mounting fixtures comprising:
one or more non-adjustable mounting brackets (rigid jaw 27, fig. 1-2) and one or more adjustable mounting brackets (vertically adjustable clamp 25, fig. 1-3) to fix an orientation or position of the sample holder,
wherein the one or more non-adjustable mounting brackets (rigid jaw 27, fig. 1-2) and the one or more adjustable mounting brackets (vertically adjustable clamp 25, fig. 1-3) comprises one or more interfaces (binding plate 31, fig. 1-2) to contact and support the sample holder when the sample holder is arranged within the system;
and wherein the one or more mounting fixtures are distributed about the platform radially from a predetermined center point, and the predetermined center point remains stationary when the mounting fixtures are added or removed from the platform (Col. 3 lines 23-42; since the mounting fixtures are moveable within the base board to different positions, once a center point is established, the fixtures can be added and removed from the platform, keeping that reference point for part orienting purposes)
and one or more columns (vertical shank or standard 15, fig. 1-3); and one or more bracket locks (set-screw 28, fig. 1-3) configured to adjust a position and an orientation of the one or more adjustable mounting brackets (vertically adjustable clamp 25, fig. 1-3) by extending through the one or more adjustable mounting brackets (vertically adjustable clamp 25, fig. 1-3) and into the one or more columns (vertical shank or standard 15, fig. 1-3).
The preamble recites “a grinder/polisher sample holder.” The recitation of “a grinder/polisher sample holder” is being examined as a term of intended use, see MPEP 2111.02-II, In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459. Hall discloses the structure of fasteners, mounting fixtures, adjustable brackets, non-adjustable brackets, interface, and columns. Therefore, the mounting device of Hall is hereinafter interpreted to be a “a system for mounting a grinder/polisher sample holder”, meeting therefore the claim limitations.
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In regards to claim 2, Hall discloses
the system of claim 1, wherein the one or more mounting fixtures (at least adjustable brackets 2, 3, and 4; see fig. 1-3) comprises three or more fixtures (at least adjustable brackets 2, 3 and 4; see fig. 1-3) capable of distributed about the platform (horizontal baseboard 1, fig. 1, 3; col. 3 lines 23-42) at an equal radial distance from the center point (Col. 3 lines 23-42; since the mounting fixtures are moveable within the base board to different positions, the apparatus disclosed by Hall would be capable of having the fixtures arranged at an equal distance from the center point).
Col. 3 lines 23-42: The longer slot 6 has its ends opening into transverse slots 8 9, formed near the ends of the board, and with the long slot communicate shorter transverse slots 10 11, which are located at suitable intervals between the transverse slots 8 9 and between one side edge of the board and the longer longitudinal slot. The longitudinal slot 6 and its intersecting transverse slots 8 to 11, inclusive, receive the securing-bolts 12 of two of the set of three brackets-namely, the two end brackets 2 3-while the shorter longitudinal slot 7 receives the bolt 12 of the intermediate bracket 4 of the set of brackets, and this intermediate bracket 4 is adjustable longitudinally on the baseboard in the slot 7, and it is also adjustable transversely on the base - board in either of series of transverse slots 13, which intersect the shorter longitudinal slot 7, as is obvious.
In regards to claim 3, Hall discloses
the system of claim 2, wherein each mounting fixture of the one or more mounting fixtures (at least adjustable brackets 2, 3, and 4; see fig. 1-3) is capable of being separated by an equal distance between axial positions (col. 3 lines 23-42; since the mounting fixtures are moveable within the base board to different positions, the apparatus disclosed by Hall would be capable of having the fixtures axially separated by an equal distance).
In regards to claim 4, Hall discloses
the system of claim 1, wherein the arrangement of the one or more mounting fixtures (at least adjustable brackets 2, 3, and 4; see fig. 1-3) on the platform (horizontal baseboard 1, fig. 1, 3) is adjustable based on a size or shape of the sample holder (as the adjustable brackets are adjustable, then a user would be capable of making adjustments based on the sample holder).
In regards to claim 6, Hall discloses
the system of claim 1, wherein each mounting fixture further comprises a base portion (flat horizontal base 14, fig. 1-3) to mate with the platform (horizontal baseboard 1, fig. 1, 3); and the column (vertical shank or standard 15, fig. 1-3) extends from the base portion (flat horizontal base 14, fig. 1-3) to support the one or more interface (through connection to the adjustable mounting bracket).
In regards to claim 7, Hall discloses
the system of claim 6, wherein the one or more interfaces (binding plate 31, fig. 1-2) are mounted to an extension post (adjusting screw 30, fig. 1-2) extending from the column (as the vertical clamp 25 is connected to the vertical shank or standard 15, fig. 1-3).
In regards to claim 8, Hall discloses
the system of claim 6, wherein the base portion (flat horizontal base 14, fig. 1-3) is configured to be secured to the platform (horizontal baseboard 1, fig. 1, 3) via the one or more fasteners (securing bolts, fig. 1-3).
In regards to claim 10, Hall discloses
the system of claim 1, wherein the one or more interfaces (binding plate 31, fig. 1-2) are arranged to contact a first surface of the sample holder to limit movement of the sample holder in a first direction (see fig. 2 – ann. 1), and the adjustable mounting brackets (vertically adjustable clamp 25, fig. 1-3) are configured to contact a second surface of the sample holder to limit movement of the sample holder in a second direction (see fig. 2 – ann. 1).
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In regards to claim 13, Hall discloses
the system of claim 1, wherein the one or more mounting fixtures (at least adjustable brackets 2, 3, and 4; see fig. 1-3) support the sample holder at a distance from a surface of the platform (horizontal baseboard 1, fig. 1, 3) that is greater than a length of a sample holder drive adapter.
Examiner’s Note: As the positioning device disclosed by Hall is capable of adjustable height positioning, the device would allow for clearance for the sample holder adapter. While Hall doesn’t disclose a sample holder drive adapter, this is considered functional language, and as Hall is adjustable, it would be capable of providing clearance beneath the sample holder.
In regards to claim 14, Hall discloses
the system of claim 1, wherein the system (disclosed by Hall) is configured to be incorporated in a hardness testing machine.
Examiner’s Note: The examiner is understanding “configured to be incorporated” as functional
language. Since the positioning device described by Hall has interfaces, adjustable fixtures, and a platform, it’s understood as being able to hold a piece during work during a hardness test.
In regards to claim 21, Hall discloses
the system of claim 1, wherein each of the one or more adjustable mounting brackets (vertically adjustable clamp 25, fig. 1-3) define an adjustable mounting bracket receiving hole (see fig. 2-3 – ann. 1) extending from an inwardly-facing mounting interface of the adjustable mounting bracket to an outwardly-facing locking interface of the adjustable mounting bracket (see fig. 2-3 – ann. 1).
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In regards to claim 22, Hall discloses
the system of claim 1, further comprising one or more second mounting fixtures (at least one of adjustable brackets 2, 3, and 4; see fig. 1-3) configured to secure the sample holder, each second mounting fixture comprises (at least one of adjustable brackets 2, 3, and 4; see fig. 1-3): one or more mounting brackets (at least vertically adjustable clamp 25, fig. 1-3) to fix the orientation or position of the sample holder; and one or more second interfaces (binding plate 31, fig. 1-3) configured to contact and support the sample holder within the system.
In regards to claim 23, Hall discloses
a system for mounting a grinder/polisher sample holder, comprising:
a platform (horizontal baseboard 1, fig. 1, 3) comprising one or more fasteners (securing bolts, fig. 1-3);
one or more mounting fixtures (at least adjustable brackets 2, 3, and 4; see fig. 1-3) arranged on and mounted to the platform (horizontal baseboard 1, fig. 1, 3), the one or more mounting fixtures configured to secure a sample holder, the one or more mounting fixtures comprising:
one or more non-adjustable mounting brackets (rigid jaw 27, fig. 1-2) and one or more adjustable mounting brackets (vertically adjustable clamp 25, fig. 1-3) to fix an orientation or position of the sample holder,
wherein the one or more non-adjustable mounting brackets (rigid jaw 27, fig. 1-2) and the one or more adjustable mounting brackets (vertically adjustable clamp 25, fig. 1-3) comprises one or more interfaces (binding plate 31, fig. 1-2) to contact and support the sample holder when the sample holder is arranged within the system
wherein the one or more mounting fixtures are arranged (Col. 3 lines 23-42) to evenly distribute a force exerted on the one or more non-adjustable mounting brackets and the one or more adjustable mounting brackets during a hardness test; and
one or more columns (vertical shank or standard 15, fig. 1-3); and one or more bracket locks (set-screw 28, fig. 1-3) configured to adjust a position and an orientation of the one or more adjustable mounting brackets (vertically adjustable clamp 25, fig. 1-3) by extending through the one or more adjustable mounting brackets (vertically adjustable clamp 25, fig. 1-3) and into the one or more columns (vertical shank or standard 15, fig. 1-3).
Examiner’s Note:
The limitation of “to evenly distribute a force exerted on the one or more non-adjustable mounting brackets and the one or more adjustable mounting brackets during a hardness test” an intended use limitation. Pursuant MPEP 2114.II, "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). 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.
In regards to claim 24, Hall discloses
the system of claim 23, further comprising an alignment device (transverse battens 5, fig. 1 and 3) wherein the alignment device ensures consistent orientation of the platform in a hardness testing system (by providing a stable foundation for the platform and elevates giving clearance for the underside of the mounting fixtures, to not be bumped or moved when placed down in a hardness testing system).
Examiner’s Note:
The limitation of “ensures consistent orientation of the platform in a hardness testing system” is intended used. Pursuant MPEP 2114.II, the claim limitations are disclosed as Hall discloses the structural limitations of the claim.
In regards to claim 25, Hall discloses
the system of claim 23, wherein the one or more mounting fixtures are evenly distributed about the platform radially from a center point (Col. 3 lines 23-42; since the mounting fixtures are moveable within the base board to different positions, once a center point is established, the fixtures can be added and removed from the platform, keeping that reference point for part orienting purposes).
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.
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.
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 CFR 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.
Claim(s) 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Hall as applied to claim 1 above, and further in view of Hohwart (US Patent No. 3459433).
In regards to claim 11, Hall discloses
the system of claim 1, but fails to disclose that the one or more mounting fixtures are “formed of a metal such as stainless steel.”
However, Hohwart teaches “Each jaw 32 comprises a plain, solid block of metal formed with a dovetail rib or tenon which slidably fits in the dovetail groove of the respective jaw-mounting base 35 (col. 4 lines 8-11).” Hall and Hohwart are considered to be analogous to the claimed invention because they are in the same field of work holders with adjustable members for adapting to different sized pieces. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hall to incorporate the teachings of Hohwart and form the mounting fixture of metal, as metal is well known for its durable and sturdy construction, making it capable of surviving multiple uses when testing for hardness.
In regards to claim 12, Hall discloses
the system of claim 1, but fails to disclose that the one or more interfaces are “formed of a hardened material, such as carbide or steel.”
However, Hohwart teaches “Each jaw 32 comprises a plain, solid block of metal formed with a dovetail rib or tenon which slidably fits in the dovetail groove of the respective jaw-mounting base 35(col. 4 lines 8-11).”
Hall and Hohwart are considered to be analogous to the claimed invention because they are in the same field of work holders with adjustable members for adapting to different sized pieces. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hall to incorporate the teachings of Hohwart and provide mounting fixtures, which includes the interface, as formed of metal, as metal is well known for its durable and sturdy construction, making it capable of surviving multiple uses when testing for hardness.
Claims 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Saxton (US Patent No. 3754436) in view of Hall (US Patent No. 9839981).
In regards to claim 15, Saxton discloses
a hardness testing system (hardness testing apparatus A, fig. 1-2), comprising:
a grinder/polisher sample holder (worktable 50, fig. 1-2), and
a system for mounting a grinder/polisher sample holder (worktable 50, fig. 1-2).
Saxton fails to disclose the sample holder further comprises “a platform comprising one or more fasteners;
one or more mounting fixtures arranged on and mounted to the platform, the one or more mounting fixtures configured to secure a sample holder, the one or more mounting fixtures comprising:
one or more mounting brackets to fix an orientation or position of the sample holder, and
one or more interfaces to contact and support the sample holder when the sample holder is arranged within the system and wherein the one or more mounting fixtures are distributed about the platform radially from a predetermined center point, and the predetermined center point remains stationary when the mounting fixtures are added or removed from the platform.”
However, Hall discloses a platform (horizontal baseboard 1, fig. 1, 3) comprising one or more fasteners (securing bolts, fig. 1-3);
one or more mounting fixtures (at least adjustable brackets 2, 3, and 4; see fig. 1-3) arranged on and mounted to the platform (horizontal baseboard 1, fig. 1, 3), the one or more mounting fixtures configured to secure a sample holder, each mounting fixture comprising:
one or more non-adjustable mounting brackets (rigid jaw 27, fig. 1-2) and one or more adjustable mounting brackets (vertically adjustable clamp 25, fig. 1-3) to fix an orientation or position of the sample holder,
wherein the one or more non-adjustable mounting brackets (rigid jaw 27, fig. 1-2) and the one or more adjustable mounting brackets (vertically adjustable clamp 25, fig. 1-3) comprises one or more interfaces (binding plate 31, fig. 1-2) to contact and support the sample holder when the sample holder is arranged within the system and
wherein the one or more mounting fixtures are distributed about the platform radially from a predetermined center point, and the predetermined center point remains stationary when the mounting fixtures are added or removed from the platform (Col. 3 lines 23-42; since the mounting fixtures are moveable within the base board to different positions, once a center point is established, the fixtures can be added and removed from the platform, keeping that reference point for part orienting purposes)
and one or more columns (vertical shank or standard 15, fig. 1-3); and one or more bracket locks (set-screw 28, fig. 1-3) configured to adjust a position and an orientation of the one or more adjustable mounting brackets (vertically adjustable clamp 25, fig. 1-3) by extending through the one or more adjustable mounting brackets (vertically adjustable clamp 25, fig. 1-3) and into the one or more columns (vertical shank or standard 15, fig. 1-3).
Therefore, it would have been obvious to someone of ordinary skill in the art before the
effective filing date of the claimed invention to have modified Saxton to incorporate the teachings of
Hall and provide a sample holder to functionally ensure proper positioning on the sample holder, as
one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. The hardness tester of Saxton would be able to test a sample held in place by the work holder of Hall with predicable results.
In regards to claim 16, Rogers as modified discloses
the hardness testing system of claim 15, further comprising a platen (circular member 52, fig. 1-2) configured for mounting the system for mounting a grinder/polisher sample holder (worktable 50, fig. 1-2).
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In regards to claim 17, Rogers as modified discloses
the hardness testing system of claim 16, wherein the system for mounting a grinder/polisher sample holder (worktable 50, fig. 1-2) further comprises one or more alignment devices (see annotated fig. 2) configured to mate with one or more alignment devices at the platen (circular member 52, fig. 1-2).
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In regards to claim 18, Rogers as modified discloses
the hardness testing system of claim 15, further comprising an indenture device (indenter ball 36, fig. 1-2) to test hardness of a sample within the sample holder (worktable 50, fig. 1-2) by impacting the sample.
In regards to claim 19, Rogers as modified discloses
the hardness testing system of claim 18, further comprising a movable stage (see annotated fig. 2; col. 2 lines 44-48: Fluid is supplied to the double-acting motor to raise or lower the worktable 50 through conduits 110, 112 by a pump 114 driven by an electric motor 116 under the control of a solenoid operated, four-way valve 118)
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upon which the platen (circular member 52, fig. 1-2) is secured, the movable stage (see annotated fig. 2) configured to adjust a position (col. 2 lines 44-48) or orientation of the sample relative to the indenture device (indenter ball 36, fig. 1-2).
In regards to claim 20, Rogers as modified discloses
the hardness testing system of claim 16, wherein the platen (circular member 52, fig. 1-2) further comprises one or more alignment devices (plunger 54, fig. 1-2) to mate (col. 2 lines 12-20: An article to be tested, such as the article W, is positioned on the upper side of a worktable 50 detachably connected to a circular member 52 which member is in turn detachably connected to the upper end of a vertically extending plunger 54 formed integral with a piston 56 slidably supported in a counterbore 60 in the lower end of a vertically extending cylinder 62 detachably connected to the underside of the plate 20 of the base 16) with the platform (work piece fixture 20, fig. 1-8).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
GB 2484593 discloses an apparatus for mounting workpieces with structure appearing to anticipate claimed structure of the sample holder.
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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.
/JASON KHALIL HAWKINS/Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723