Detailed Office Action
Notice of Pre-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
Request to Continue Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/25/26 has been entered.
Response to Amendments
The amendment filed on 03/12/26 has been entered. 7 – 25 are pending. Claims 13 – 21 remain withdrawn. Claims 7 – 12 and 22 – 25 are under examination. The claims 24 – 25 find support in at least [0100] and the amendment to claim 7 finds support in at least [0072, 0101].
Claim Rejections – U.S.C. § 112
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections – U.S.C. §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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 7, 9, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (CN101239334, using espacenet translation, cited with OA of 05/02/25) in view of Baan (“Grinding Media”, NPL, 2012)
Regarding claim 7, Chen teaches a high – energy roller ball milling device [0002]. Chen teaches a drum body [Fig 1, 0020] with grinding balls inside [0022], meeting the claimed limitation of an apparatus with a plurality of milling media and a bin configured to house the plurality of milling media.
Chen teaches that the device has a power supply [Fig 1, “13”, 0020] that produces a corona or glow discharge between an electrode and grinding balls [0022, 0020, Fig 1]] (wherein the formation of an electric field is implied by the formation of corona and/or glow discharge), meeting the claimed limitation of a generator with glow discharge mode that generates an electric field inside the bin.
Chen teaches that the power supply has two wires [Fig 1, “13”]. The first wire is connected to the end of an electrode [Fig 1, “7”] and the power supply (i.e. one of the terminals of the power supply [0009]). Wherein the electrode and the grinding balls form a discharge which reduces the powder size [0004] (i.e. by increasing energy input) and the balls and electrode also make contact [0014], therefore the electrode meets the broadest reasonable interpretation of a “milling medium”. As such, Chen also meets the claimed limitation of the first wire affixed to the milling medium and electrically coupled to a first terminal of the generator.
Chen teaches/shows that the second wire is connected to the bearing seat and is grounded, and is also connected to a negative pole of the power supply [0009, Fig 1]. Wherein the contact of the bearing seat and the drum would meet the limitation of electrically coupled and therefore, Chen meets the claimed limitation of a second wire with a first end electrically coupled to the bin and the second end electrically coupled to the terminal of the generator.
Chen shows that the drum is horizontally disposed [Fig 1] and that the motor [Fig 1, “7”] rotates the drum about its horizontal axis. Wherein the drum is supported by the bearing seat [Fig 1, “6”], meeting the claimed limitation of a support structure configured to support the bin and a means for rotating the bin about an axis of the bins.
Chen does not explicitly teach that the milling media is a plurality of stainless steel elongated bars between about 5 mm and about 50 mm.
However, Baan discloses commercially available grinding media for purchase. Baan discloses that the grinding media can take the form of spheres/balls and cylinders, meeting the broadest reasonable interpretation of “elongated bar” [Page 1]. Additionally, Baan discloses that stainless steel is a commercially available material for grinding media [page 1, 2].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken Chen and used milling media of a cylindrical shape and of stainless steel material, as disclosed by Baan, to achieve predictable results. Chen and Baan are directed to the same field of endeavor of grinding and Baan shows they are both common characteristics of grinding media used in the field. As such, an ordinarily skilled artisan would have a reasonable expectation of success.
Further still, “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)” (MPEP 2144.07). Wherein the cylindrical shapes and stainless steel are known materials used for grinding.
Differences in the shape and width of the elongated bars as well as their relative proportions to the diameter of the bin/drum is a prima facie case of obviousness because changes to size, shape, and/or proportion is a prima facie case of obviousness, absent evidence of criticality or unexpected results (MPEP 2144.04 IV A, C)
In regards to the aspect ratio of the particles in the milling apparatus, these are directed to limitations of the material being worked upon. "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)(MPEP 2115)
Regarding claim 9, Chen in view of Baan teaches the invention as applied in claim 7. Chen shows that the motor [Fig 1, “7”] rotates the drum about its horizontal axis while supported by the bearing seat [0010, Fig 1], meeting the claimed limitation of a means for the support and bin to be rotatably coupled to each other.
Regarding claim 24, Chen in view of Baan teaches the invention as applied in claim 7. In regards to the shape of the particles in the milling apparatus, these are directed to limitations of the material being worked upon. "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)(MPEP 2115)
Claims 22 – 23 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (CN101239334, using espacenet translation, cited with the OA of 05/02/25) in view of Baan (“Grinding Media”, NPL, 2012), as applied to claim 7, in further view of Binczyk (NPL, cited with the OA on 05/02/25) and Calka (NPL, cited with the OA on 05/02/25).
Regarding claim 22 – 23, Chen in view of Baan teach the invention as applied in claim 7. Chen alone or in combination does not explicitly teach a means for generating a magnetic field within the bin or that it is an electromagnet.
Binczyk teaches the grinding of powders via an electromagnetic mechanical mill (EMM). Binczyk teaches that using a magnetic field for moving the grinding leads to faster grinding/milling times [Page 1, Section 2 and page 3, left column, top], meeting the claimed limitation of generating a magnetic field within the bin (claim 22). Binczyk further teaches that the magnetic field can be generated by a rotating electromagnetic field (claim 23) [page 2, left col., top], meeting the claimed limitation of “electromagnet”. Moreover, Calka teaches that using a magnetic field in grinding allows for control/restriction of the movement of the grinding medium (balls) [Page 2, right col., top].
As such, it would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the apparatus of Chen in view of Baan and applied a magnetic field via an electromagnet within the bin to control and/or restrict the movement of the grinding medium, as taught by Calka, and create more intense grinds which reduces the time necessary for grinding, as taught by Binczyk. Chen, Baan, Binczyk, and Calka are in the same field of endeavor of grinding and Calka expressly acknowledges that a magnetic field can be applied to a discharge milling apparatus [page 2, right col., top]. As such, an ordinarily skilled artisan would have a reasonable expectation of success in combining the teachings and would be motivated to do so for multiple reasons (i.e. ball control and more efficient grinding).
Claims 7 – 9 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu (US 10,758,916, cited with the OA of 05/02/25) in view of Xu (CN101138745, using espacenet translation, cited with the OA of 05/02/25) in view of Baan (“Grinding Media”, NPL, 2012)
Regarding claim 7, Zhu teaches a plasma assisted high energy ball milling device [Col 3, line 30 – 35]. The device containing a plurality of grinding balls [Col 6, line 13 – 15; Fig 2, 3a](meeting the claimed limitation of a plurality of milling media) and a milling tank [Col 6, line 12 – 14; Fig 2, 3a] (meeting the claimed limitation of a bin configured to house the plurality of milling media).
Zhu teaches that a glow discharge is produced [Col 6, line 45] wherein it is produced, in part, from a plasma power supply discharge that generates an electric field [Col 9, line 11 – 15], meeting the claimed limitation of a generator comprising a glow discharge mode and configured to generate an electric field within the bin.
Zhu teaches that the power supply has two wires [Fig 2]. The first wire is connected to an electrode conductive core and a positive electrode terminal [Col 9, line 5 – 7]. Wherein the electrode conductive core is brought into contact with the grinding balls [Col 8, line 62 – 64] and the discharge from electrode accelerates refinement of the powder [Col 3, line 25 – 30], therefore, the electrode meets the claimed limitation of a milling medium. As such, Zhu meets the claimed limitation of the first wire being affixed to a milling medium and a terminal of the generator.
The second wire is connected to the ball milling tank and a negative electrode [Col 9, line 7 – 10], wherein the electrode is a grounding electrode [Col 17, line 23 – 25], meeting the claimed limitation of the wire being electrically coupled to the bin, a ground, and a second terminal of the generator.
Zhu does not explicitly teach a support structure for the bin or a means for rotating it about an axis.
Xu teaches a high-efficiency vibration grinder [0012, Fig 1]. Xu teaches that various grinding media can be included in the grinder [0013]. Additionally, Xu teaches that the grinding apparatus provides a frame which supports a rotating cylinder in connection with bearing seats [0012]. Xu teaches/shows that the cylinder is rotated about its axis [Fig 1, “8”] via a rotary drive motor [0012, Fig 1, “1”], meeting the claimed limitation. Additionally, the frame rests on a platform [Fig 1, “16”] which possess at least two vibrators [Fig 1, “12”] that are connected to a transmission shaft and vibration motor [Fig 1, “13”, “15”, 0012]. Wherein the frame meets the claimed limitation of a support structure for the bin. Lastly, Xu describes that the benefit of the apparatus is the ability to utilize vibration and rotation separately or simultaneously, and that the application of both during the grinding leads to a much higher efficiency than ordinary rotary or vibration milling [0008].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the apparatus of Zhu and used the dual vibration/rotary mill configuration of Xu as the high energy vibration mill. Zhu and Xu are both directed to the grinding of materials via grinding media within a vessel including the use of vibration (same field of endeavor and function). As such, an ordinarily skilled artisan would have a reasonable expectation of success in applying the dual vibration/rotary mill configuration of Xu as the vibration mill setup in Zhu to achieve the predictable result of the plasma-assisted high energy milling of Zhu with the mill configuration of Xu. Additionally, an ordinarily skilled artisan would be motivated to combine the teachings of Zhu and Xu because the benefits of Xu’s configuration include the ability to utilize vibration and rotation separately or simultaneously, and a higher achieved efficiency than ordinary rotary or vibration milling when applying both simultaneously [0008].
Zhu in view of Xu does not explicitly teach that the milling media is a plurality of stainless steel elongated bars between about 5 mm and about 50 mm.
However, Baan discloses commercially available grinding media for purchase. Baan discloses that the grinding media can take the form of spheres/balls and cylinders, meeting the broadest reasonable interpretation of “elongated bar” [Page 1]. Additionally, Baan discloses that stainless steel is a commercially available material for grinding media [page 1, 2].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken Zhu in view of Xu and used milling media of a cylindrical shape and of stainless steel material, as disclosed by Baan, to achieve predictable results. Zhu in view of Xu and Baan are directed to the same field of endeavor of grinding and Baan shows they are both common characteristics of grinding media used in the field. Moreover, Zhu explicitly discloses that the grinding balls used can be stainless steel [Col 13, line 46]. As such, an ordinarily skilled artisan would have a reasonable expectation of success.
Further still, “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)” (MPEP 2144.07). Wherein the cylindrical shapes and stainless steel are known materials used for grinding.
Differences in the shape and width of the elongated bars as well as their relative proportions to the diameter of the bin/drum is a prima facie case of obviousness because changes to size, shape, and/or proportion is a prima facie case of obviousness, absent evidence of criticality or unexpected results (MPEP 2144.04 IV A, C)
In regards to the aspect ratio of the particles in the milling apparatus, these are directed to limitations of the material being worked upon. "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)(MPEP 2115)
Regarding claim 8, Zhu in view of Xu and Baan teaches the invention as applied in claim 7. Xu teaches vibrators present for vibrating the drum [0012], meeting the claimed limitation of a means for vibrating the bin.
Regarding claim 9, Zhu in view of Xu and Baan teaches the invention as applied in claim 7. Xu teaches/shows that the rotation of the drum is rotatably coupled with the support structure via bearing seats [Fig 1, “7”; 0012], meeting the claimed limitation of a means for rotatably coupling the support structure and bin.
Regarding claim 24, Zhu in view of Xu and Baan teaches the invention as applied in claim 7. In regards to the shape of the particles in the milling apparatus, these are directed to limitations of the material being worked upon. "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)(MPEP 2115)
Claims 22 – 23 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu (US 10,758,916, cited with the OA of 05/02/25) in view of Xu (CN101138745, using espacenet translation, cited with the OA of 05/02/25) and Baan (“Grinding Media”, NPL, 2012), as applied to claim 7, in further view of Binczyk (NPL, cited with the OA on 05/02/25) and Calka (NPL, cited with the OA on 05/02/25).
Regarding claim 22 – 23, Zhu in view of Xu and Baan teach the invention as applied in claim 7. Zhu alone or in combination does not explicitly teach a means for generating a magnetic field within the bin or that it is an electromagnet.
Binczyk teaches the grinding of powders via an electromagnetic mechanical mill (EMM). Binczyk teaches that using a magnetic field for moving the grinding leads to faster grinding/milling times [Page 1, Section 2 and page 3, left column, top], meeting the claimed limitation of generating a magnetic field within the bin (claim 22). Binczyk further teaches that the magnetic field can be generated by a rotating electromagnetic field (claim 23) [page 2, left col., top], meeting the claimed limitation of “electromagnet”. Moreover, Zhu expressly states the collisions between the balls and the electrode that generates the discharge is an issue because of damages [Col 2, line 5 – 6] and seeks to in part solve this issue. To this, Calka teaches that using a magnetic field in grinding allows for control/restriction of the movement of the grinding medium (balls) [Page 2, right col., top], and shows in Fig 1a that the balls can be pinned towards to the bottom of the chamber [Fig 1a]. As such, an ordinarily skilled artisan would recognize that this would help prevent collisions with the electrode by using the magnetic field generated to control/restrict the movement of balls.
As such, it would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the apparatus of Zhu in view Xu and applied a magnetic field via an electromagnet within the bin to control and/or restrict the movement of the grinding medium, as taught by Calka. Additionally, as described by Binczyk the use of a magnetic field leads to more intense grinds which reduces the time necessary for grinding. Zhu, Xu, Baan, Binczyk, and Calka are in the same field of endeavor of grinding and Calka expressly acknowledges that a magnetic field can be applied to a discharge apparatus [page 2, right col., top]. As such, an ordinarily skilled artisan would have a reasonable expectation of success in combining the teachings and would be motivated to do so for multiple reasons (i.e. ball control and more efficient grinding).
Claims 10, 12, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Calka (US 5,383,615, cited with the OA of 05/02/25) in view of Baan (“Grinding Media”, NPL, 2012) or alternatively, in view of Binczyk (NPL, cited with the OA on 05/02/25) as evidenced by Steel Number (NPL, “4H13”)
Regarding claim 10, Calka teaches a ball milling apparatus [Title], wherein the ball milling apparatus contain a plurality of grinding balls [Abstract, Fig 2 “22”] which are present within a chamber [Col 3, line 43 – 45, Fig 2 “20”], meeting the claimed limitation of an apparatus with a plurality of milling media and a bin configured to house the plurality of milling media.
Calka teaches that a magnet or magnets are positioned around/on the chamber [Col 3, line 33 – 35], wherein the magnet influences the balls for milling [Col 3, line 30 – 32], meeting the claimed limitation of a means for generating a magnetic field within the bin.
Calka states “The chamber 20 is rotatable about a substantially horizontal axis 21 which, in the case of a cylindrical or generally cylindrical chamber, is also the axis of the chamber” [Col 3, line 24 – 27], implying the presence of a rotating mechanism and meeting the claimed limitation of a means for rotating the bin about an axis of the bin.
Calka states “the chamber being mounted (i) in the case of a substantially spherical chamber, for rotation about a substantially horizontal axis, and (ii) in the case of a generally cylindrical chamber, with the axis of the cylinder substantially horizontal and for rotation about the axis of the cylinder” [Col 2, line 24 – 30], meeting the claimed limitation of a support structure (i.e. the mount) for the bin being present.
Calka does not explicitly teach that the milling media is a plurality of stainless steel elongated bars between about 5 mm and about 50 mm.
However, Baan discloses commercially available grinding media for purchase. Baan discloses that the grinding media can take the form of spheres/balls and cylinders, meeting the broadest reasonable interpretation of “elongated bar” [Page 1]. Additionally, Baan discloses that stainless steel is a commercially available material for grinding media [page 1, 2].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken Calka and used milling media of a cylindrical shape and of stainless steel material, as disclosed by Baan, to achieve predictable results. Calka and Baan are directed to the same field of endeavor of grinding and Baan shows they are both common characteristics of grinding media used in the field. Moreover, Calka explicitly discloses that the grinding balls used can be ferromagnetic steel [Col 2, line 31, 34]. As such, an ordinarily skilled artisan would have a reasonable expectation of success.
Further still, “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)” (MPEP 2144.07). Wherein the cylindrical shapes and stainless steel are known materials used for grinding.
Differences in the shape and width of the elongated bars as well as their relative proportions to the diameter of the bin/drum is a prima facie case of obviousness because changes to size, shape, and/or proportion is a prima facie case of obviousness, absent evidence of criticality or unexpected results (MPEP 2144.04 IV A, C)
Alternatively, Binczyk teaches the grinding of powders via an electromagnetic mechanical mill (EMM). Binczyk teaches that using a magnetic field leads to faster grinding/milling times and that ferromagnetic needles/small cylinders are used as the grinding medium and are turned over/moved via a magnetic field [Page 1, Section 2 and page 3, left column, top], needles meeting the broadest reasonable interpretation of “elongated bars”. Binczyk teaches that the needles/small cylinders are made of 4H13 steel, a known stainless steel as evidenced by “Steel Number” [Page 1], meeting the claimed limitation.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken Calka and used milling media of a needle/small cylinder shape and of stainless steel material, as disclosed by Binczyk, to achieve predictable results. Calka and Binczyk are directed to the same field of endeavor of grinding and Binczyk shows using this grinding media in a milling apparatus with a magnetic field. Moreover, Calka explicitly discloses that the grinding balls used can be ferromagnetic steel [Col 2, line 31, 34]. As such, an ordinarily skilled artisan would have a reasonable expectation of success.
While Binczyk teaches that the diameter is 1.5 mm [page 3, left col., top], differences in the shape and width of the elongated bars as well as their relative proportions to the diameter of the bin/drum is a prima facie case of obviousness because changes to size, shape, and/or proportion is a prima facie case of obviousness, absent evidence of criticality or unexpected results (MPEP 2144.04 IV A, C)
In regards to the aspect ratio of the particles in the milling apparatus, these are directed to limitations of the material being worked upon. "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)(MPEP 2115)
Regarding claim 12, Calka in view of Baan or Binczyk teaches the invention as applied in claim 10. Wherein Calka states that the chamber is mounted such that the cylinder can be rotated about its axis [Col 2, line 24 – 30], implying that the support structure (i.e. mount) and cylinder are coupled such that rotation can occur, meeting the claimed limitation of a means for the support and bin to be rotatably coupled to each other.
Regarding claim 25, Calka in view of Baan or Binczyk teaches the invention as applied in claim 10. In regards to the shape of the particles in the milling apparatus, these are directed to limitations of the material being worked upon. "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)(MPEP 2115)
Claims 10, 12, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Saito (US 4,676,439, cited with the OA of 05/02/25) in view of Baan (“Grinding Media”, NPL, 2012) or alternatively, in view of Binczyk (NPL, cited with the OA on 05/02/25)
Regarding claim 10, Saito teaches a pulverizing apparatus [Title], wherein the apparatus is a ball milling apparatus contain a plurality of balls [Col 2, line 34 – 38] which are present within a horizontal mill casing [Col 2, line 31 – 33, Fig 1 “21”], meeting the claimed limitation of an apparatus with a plurality of milling media and a bin configured to house the plurality of milling media.
Saito teaches that magnetizing-force generating means around/on the chamber [Col 2, line 34 – 35, Fig 1 “22”], meeting the claimed limitation of a means for generating a magnetic field within the bin.
Saito states that the “casing (21) can be rotated on its axis with the two pipes (3) (25) acting as if they were a shaft. The weight of the casing and its charge inside is supported by these bearings.” [Col 2, line 48 – 51], meeting the claimed limitation of a support structure supporting the bin and that the bin is rotated about an axis of the bin.
Saito does not explicitly teach that the milling media is a plurality of stainless steel elongated bars between about 5 mm and about 50 mm.
However, Baan discloses commercially available grinding media for purchase. Baan discloses that the grinding media can take the form of spheres/balls and cylinders, meeting the broadest reasonable interpretation of “elongated bar” [Page 1]. Additionally, Baan discloses that stainless steel is a commercially available material for grinding media [page 1, 2].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken Saito and used milling media of a cylindrical shape and of stainless steel material, as disclosed by Baan, to achieve predictable results. Saito and Baan are directed to the same field of endeavor of grinding and Baan shows they are both common characteristics of grinding media used in the field. Moreover, Saito explicitly discloses that the grinding balls used can be ferromagnetic and iron [Col 4, line 64 – 65] and explicitly states that the shape of the grinding balls can take any shape [Col 5, line 1 – 3]. As such, an ordinarily skilled artisan would have a reasonable expectation of success.
Further still, “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)” (MPEP 2144.07). Wherein the cylindrical shapes and stainless steel are known materials used for grinding.
Differences in the shape and width of the elongated bars as well as their relative proportions to the diameter of the bin/drum is a prima facie case of obviousness because changes to size, shape, and/or proportion is a prima facie case of obviousness, absent evidence of criticality or unexpected results (MPEP 2144.04 IV A, C)
Alternatively, Binczyk teaches the grinding of powders via an electromagnetic mechanical mill (EMM). Binczyk teaches that using a magnetic field leads to faster grinding/milling times and that ferromagnetic needles/small cylinders are used as the grinding medium and are turned over/moved via a magnetic field [Page 1, Section 2 and page 3, left column, top], needles meeting the broadest reasonable interpretation of “elongated bars”. Binczyk teaches that the needles/small cylinders are made of 4H13 steel, a known stainless steel as evidenced by, Steel Number [Page 1], meeting the claimed limitation.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken Saito and used milling media of a needle/small cylinder shape and of stainless steel material, as disclosed by Binczyk, to achieve predictable results. Saito and Binczyk are directed to the same field of endeavor of grinding and Binczyk shows that this grinding media can be used for a milling apparatus with a magnetic field operated within it. Moreover, Saito explicitly discloses that the grinding balls used can be ferromagnetic and iron [Col 4, line 64 – 65] and explicitly states that the shape of the grinding balls can take any shape [Col 5, line 1 – 3]. As such, an ordinarily skilled artisan would have a reasonable expectation of success.
While Binczyk teaches that the diameter is 1.5 mm [page 3, left col., top], differences in the shape and width of the elongated bars as well as their relative proportions to the diameter of the bin/drum is a prima facie case of obviousness because changes to size, shape, and/or proportion is a prima facie case of obviousness, absent evidence of criticality or unexpected results (MPEP 2144.04 IV A, C)
In regards to the aspect ratio of the particles in the milling apparatus, these are directed to limitations of the material being worked upon. "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)(MPEP 2115)
Regarding claim 12, Saito in view of Baan or Binczyk teaches the invention as applied in claim 10. Wherein the casing is rotated about its axis via the two pipes (which acts as a shaft) and which are coupled to bearings to provide support [Col 2, line 48 – 51], meeting the claimed limitation of a means for the support and bin to be rotatably coupled to each other.
Regarding claim 25, Saito in view of Baan or Binczyk teaches the invention as applied in claim 10. In regards to the shape of the particles in the milling apparatus, these are directed to limitations of the material being worked upon. "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)(MPEP 2115)
Claims 10 – 12 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Xu (CN101138745, using espacenet translation, cited with the OA of 05/02/25) in view of Baan (“Grinding Media”, NPL, 2012) and in further view of Binczyk (NPL, cited with the OA on 05/02/25) and Calka (NPL, cited with the OA on 05/02/25).
Regarding claim 10, Xu teaches a high-efficiency vibration grinder [0012, Fig 1]. Xu teaches that various grinding media can be included in the grinder [0013], meeting the claimed limitation of “plurality of milling media”. Additionally, Xu teaches that the grinding apparatus provides a frame which supports a rotating cylinder in connection with bearing seats [0012], meeting the claimed limitation of a bin configured to house the milling media and a support structure for support the bin. Xu teaches/shows that the cylinder is rotated about its axis [Fig 1, “8”] via a rotary drive motor [0012, Fig 1, “1”], meeting the claimed limitation of a means for rotating the bin about an axis. Additionally, the frame rests on a platform [Fig 1, “16”] which possess at least two vibrators [Fig 1, “12”] that are connected to a transmission shaft and vibration motor [Fig 1, “13”, “15”, 0012]. Xu describes that the apparatus has the ability to utilize vibration and rotation separately or simultaneously, and that the application of both during the grinding leads to a much higher efficiency than ordinary rotary or vibration milling [0008].
Xu does not explicitly teach that the milling media is a plurality of stainless steel elongated bars between about 5 mm and about 50 mm. Xu does not explicitly teach a means for generating a magnetic field with the bin.
However, Baan discloses commercially available grinding media for purchase. Baan discloses that the grinding media can take the form of spheres/balls and cylinders, meeting the broadest reasonable interpretation of “elongated bar” [Page 1]. Additionally, Baan discloses that stainless steel is a commercially available material for grinding media [page 1, 2].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken Xu and used milling media of a cylindrical shape and of stainless steel material, as disclosed by Baan, to achieve predictable results. Xu and Baan are directed to the same field of endeavor of grinding and Baan shows they are both common characteristics of grinding media used in the field and an ordinarily skilled artisan would have a reasonable expectation of success in achieving predictable results when applying the grinding media disclosed by Baan to the apparatus of Xu.
Further still, “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)” (MPEP 2144.07). Wherein the cylindrical shapes and stainless steel are known materials used for grinding.
Differences in the shape and width of the elongated bars as well as their relative proportions to the diameter of the bin/drum is a prima facie case of obviousness because changes to size, shape, and/or proportion is a prima facie case of obviousness, absent evidence of criticality or unexpected results (MPEP 2144.04 IV A, C)
In regards to the aspect ratio of the particles in the milling apparatus, these are directed to limitations of the material being worked upon. "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)(MPEP 2115)
Xu in view of Baan does not explicitly teach a means for generating a magnetic field within the bin.
Binczyk teaches the grinding of powders via an electromagnetic mechanical mill (EMM). Binczyk teaches that using a magnetic field for moving the grinding leads to faster grinding/milling times [Page 1, Section 2 and page 3, left column, top], meeting the claimed limitation of generating a magnetic field within the bin. Additionally, Calka teaches that using a magnetic field in grinding allows for control of the movement of the grinding medium (balls) [Page 2, right col., top].
As such, it would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the apparatus of Xu and applied a magnetic field within the bin to control the movement of the grinding medium, as taught by Calka, and increase the grinding efficiency of the grinding medium, as taught by Binczyk. Xu, Baan, Binczyk, and Calka are in the same field of endeavor of grinding and Calka expressly acknowledges that a magnetic field can be applied to a rotating container apparatus [Fig 1a]. As such, an ordinarily skilled artisan would have a reasonable expectation of success in combining the teachings and would be motivated to do so for multiple reasons (i.e. ball control and more efficient grinding).
Regarding claim 11, Xu in view of Baan, Binczyk, and Calka teaches the invention as applied in claim 10. Xu teaches vibrators present for vibrating the drum [0012], meeting the claimed limitation of a means for vibrating the bin.
Regarding claim 12, Xu in view of Baan, Binczyk, and Calka teaches the invention as applied in claim 10. Xu teaches/shows that the rotation of the drum is rotatably coupled with the support structure via bearing seats [Fig 1, “7”; 0012], meeting the claimed limitation of a means for rotatably coupling the support structure and bin.
Regarding claim 25, Xu in view of Baan, Binczyk, and Calka teaches the invention as applied in claim 10. In regards to the shape of the particles in the milling apparatus, these are directed to limitations of the material being worked upon. "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)(MPEP 2115)
Response to Arguments
Applicant's arguments filed 03/12/26 have been fully considered but they are not persuasive.
Applicant argues that amended claims 7 and 10 are distinguished from the prior art because they require producing particles with an aspect ratio of 1.4 to about 2.2. However, in regards to the aspect ratio of the particles in the milling apparatus as well as their shape (claims 24 – 25), these are directed to limitations of the material being worked upon. "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935)(MPEP 2115)
Applicant also argues that the limitation that the grinding media has a length longer than the bin diameter distinguishes it from the prior art. However, the shape and width of the elongated bars as well as their relative proportions to the diameter of the bin/drum is a prima facie case of obviousness because changes to size, shape, and/or proportion is a prima facie case of obviousness, absent evidence of criticality or unexpected results (MPEP 2144.04 IV A, C)
Conclusion
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
Prosecution Insights