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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 38-49, and 63-75 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 63 and 75 each recite the limitation "the outer circumference of the base body". There is insufficient antecedent basis for an “outer circumference” in the claims. It is unclear if the claimed “outer circumference” is intended to define or refer to a particular shape or part of the base body. For the purposes of this examination, this claim limitation will be interpreted as “an outer circumference of the base body” and will be interpreted as referencing any outer perimeter or surface of the base body.
Claims 38-49 and 64-74 are rejected as indefinite due to their dependency upon rejected claims 63 and 75.
Regarding claim 70, the claim recites the limitation “the pair of legs” in the first line. There is insufficient antecedent basis for a “pair of legs” in the claim. It is unclear if this “pair of legs” is referring to the previously claimed “legs” of the spring elements recited in claim 63, or if these are completely separate legs. For the purposes of this examination, the “pair of legs” in claim 70 will be read as further defining the already recited legs of claim 63.
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.
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 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.
Claim(s) 37-48, 63-75, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Philipps (US 2008/0305723, previously cited).
Regarding claim 37, Philipps discloses a processing tool configured to polish optical workpieces comprising: a base body (14), an elastic intermediate layer (16; [0053]); and a polishing layer or foil (18), wherein spring elements (58) are provided along a circumference of the base body (shown in fig 3), the spring elements having legs (60) which enclose a receiving opening (central to legs), and wherein the legs are adapted to flex apart ([0048]; described as “spring arms” facilitating a snap-in connection, flexing apart) in a circumferential direction tangential to the circumference of the main body (see annotated fig below; the legs flex laterally apart; as the circumferential direction of main body is any direction along a circle of the main body, any lateral flexing will be in a direction tangential to the circumference at some point as shown in the annotated fig below).
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Regarding claim 75, Philipps discloses a processing tool configured to polish optical workpieces comprising: a base body (14), an elastic intermediate layer (16; [0053]); and a polishing layer or foil (18), wherein the base body comprises a plurality of spring elements (58) and a plurality of receiving openings (central to legs 60 of spring elements 58), wherein the plurality of spring elements (58) and the plurality of receiving openings are provided along an outer circumference of the base body (as shown in fig 4, the spring elements and openings are provided along the inside of the outer circumference of the base body; note that the claims do not require the spring elements and openings to coincide with or form part of the outer circumferential surface; see arguments below for further discussion), each spring element of the plurality of spring elements having legs (60) which enclose one respective receiving opening of the plurality of receiving openings (each respective opening is central to legs).
Regarding claim 38, Philipps further discloses the spring elements each have a first and second leg (see multiple legs 60 on each spring element 58).
Regarding claim 39, Philipps further discloses the plurality of spring elements are a second type of spring elements, and the processing tool includes a first, different type of spring elements (66; with annular end surface element and hook element), only the second type of spring elements having the legs (legs 60 shown in fig 3).
Regarding claims 40-42, Philipps further discloses the first type of spring elements are in ring segments (as shown by fig 4; segments separated by elements 70); wherein the first type of spring elements each have a lateral chamfer formed on one side (chamfer at outer corner as shown in figs 5 and 6); wherein each spring element of the second type of spring elements has a first leg and a second leg (each having multiple legs 60), wherein an axial extension of the first leg is the same as the axial extension of the first type of spring elements (as can be seen in fig 6, legs 60 axially extend to the same level as element 66) and wherein the second leg has a smaller axial extension than the first leg (see annotated fig 6 below, depicting same and smaller axial extension).
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Regarding claims 43-48, Philipps further discloses the processing tool is configured to be connected to a tool holder (12) such that the legs of one spring element or a pair of legs formed by the legs enclose a retaining element (48) of the tool holder in such a way that the base body is held in a clamping manner (as shown in fig 1; note that the tool holder and its structure are not positively recited as a part of the claimed processing tool); the spring elements or their legs are resilient in a radial direction and/or adapted to flex in radial direction ([0048]; described as “spring arms” which resiliently flex to snap onto element 28) and/or protrude in axial direction (protrude in direction of axis M as shown in fig 6); wherein the legs are adapted to flex apart ([0048]; described as “spring arms” facilitating a snap-in connection, flexing apart) in a circumferential direction tangential to the circumference of the main body (see annotated fig above; the legs flex laterally apart; as the circumferential direction of main body is any direction along a circle of the main body, any lateral flexing will be in a direction tangential to the circumference at some point as shown in the annotated fig); the receiving openings are undercut in axial direction (at element 62 shown in fig 3; [0048]); the spring elements, legs and/or receiving openings are distributed on a circle or an annular face of the base body (as shown in fig 4; distributed on either side of a circle on lower annular face); the spring elements have inclined surfaces forming lead-in chamfers towards the receiving openings (fig 3; inclined surface forming chamfer on element 62; [0061]).
Regarding claim 63, Philipps discloses a tool holder (12) for a processing tool; and a processing tool (10) configured to polish optical workpieces, the processing tool being connected or connectable to the tool holder (as shown in fig 1), the tool holder comprising a holder head (28) receiving the processing tool, and a holder body (24) configured to fasten the tool holder to a tool spindle (spindle 26 shown in fig 1), the holder head being annular with an annular rim (34) and at least two retaining elements (48, 50) being arranged on the annular rim (as shown in fig 2), the processing tool comprising a base body (14), an elastic intermediate layer (16; [0053]); and a polishing layer or foil (18), the base body comprising a plurality of spring elements (58) and a plurality of receiving openings (central to legs 60 of spring elements 58), wherein the plurality of spring elements (58) and the plurality of receiving openings are provided along an outer circumference of the base body (as shown in fig 4, the spring elements and openings are provided along the inside of the outer circumference of the base body; note that the claims do not require the spring elements and openings to coincide with or form part of the outer circumferential surface; see arguments below for further discussion), each spring element of the plurality of spring elements having legs (60) which enclose one respective receiving opening of the plurality of receiving openings (each respective opening is central to legs).
Regarding claims 64-74, Philipps further discloses each retaining element has a head (48) and a portion (50) which has a smaller width than the head in a direction which is tangential to the circumference of the tool holder (fig 2; [0047]; smaller section forms an undercut, which is smaller in all lateral directions, including circumferential direction); wherein the holder head comprises an annular outer wall (42), wherein the retaining elements extend along the outer wall (formed on outer wall 42 as shown in fig 2); wherein the holder head (28) is connected or connectable reversibly in a form-fitting or latching manner to the processing tool by the retaining elements (fig 1; described [0048]); wherein each retaining element (48, 50) or head thereof is received or clamped between a respective pair of legs formed by the legs of the spring elements (between legs 60 as described [0048] and shown in fig 1); the processing tool (10) is held on the tool holder (12) in such a way that the spring elements (58) of the processing tool are pushed onto the annular holder head, so that heads (48) of the retaining elements are held in form-fitting or latching manner in receiving openings of the spring elements (shown in fig 1; described in [0048] as a snap-in connection); wherein the spring elements (58) of the processing tool are pushed onto the annular holder head in such a way that their free ends abut on the annular rim or a collar of the tool holder (abutting outer wall 42 of annular rim 34 as shown in fig 1); wherein the legs (60) of one of the spring elements (58) of the processing tool comprise a pair of legs and encloses one retaining element of the at least two retaining elements (as shown in fig 1) in such a way that the base body (14) of the processing tool is held in a clamping manner (fig 1; described [0048]); wherein the retaining elements are retaining lugs with a head (as shown in fig 2; top portion is a head element); wherein four retaining elements are arranged on the annular rim (as broadly claimed, the head portion and smaller portion 50 can be considered separate retaining elements, and therefore four retaining elements are depicted in fig 2); wherein the retaining elements are arranged rotationally symmetrically on the annular rim (formed symmetrically about axis M on rim 34 as shown in fig 2); wherein a bellows (36) is attached to the holder body (24), wherein a spindle flange (at outer perimeter of element 24) is attached to a free end of the bellows (attached to bottom end of bellows as shown in fig 1).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 49 is/are rejected under 35 U.S.C. 103 as being unpatentable over Philipps as applied to claim 75 above, and further in view of Urban (US 2006/0199481, previously cited).
Regarding claim 49, Philipps teaches all the elements of claim 75 as described above. Philipps does not teach the intermediate layer has a first part facing the base body and a second part facing the polishing foil, wherein the first part is harder than the second part. Urban teaches a processing tool including an intermediate layer having a first part (14) facing a base body (50) and a second part (16) facing a polishing foil (18; fig 1), wherein the first part is harder than the second part ([0038], [0040]; first part has a Shore A hardness ranging from 60-80 and the second part has a hardness of 60, indicating a softer second layer). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include a harder first part and softer second part in the tool of Philipps, as this combination of hardnesses allows the tool to adapt to the geometry of the workpiece as taught by Urban ([0023]).
Response to Arguments
Applicant's arguments filed 27 Oct 2025 have been fully considered but they are not persuasive. Applicant argues that the amendments have clarified the previous 112b rejections. While the previous rejections under 112b have been alleviated, the amendments raise new issues of clarity as detailed in the rejections above.
Regarding claim 37, applicant argues that Philipps does not teach the claimed flexing apart in a direction tangential to the circumference of the base body. Examiner respectfully disagrees. As the circumference of the base body is a surface which surrounds the base body, a direction tangential to the circumference of the base body can be any horizontal direction as claimed. Annotated fig 4 above uses dashed lines show a flexing direction of one of the legs and depicts a point on the circumference where the flexing direction is tangential to the circumferential direction. As this teaches the claimed “direction tangential to the circumference,” claim 37 is anticipated by Philipps.
Regarding claims 75 and 63, applicant argues that Philipps does not teach the spring elements and receiving openings being “provided along the outer circumference of the base body,” contending that Philipps only shows an annular collar with no spring elements or receiving openings. However, the claims as written do not require the spring elements and receiving openings to coincide with or form a part of the outer circumference. The claims merely require the spring elements and receiving openings to be “provided along” the outer circumference. As broadly claimed, this is disclosed by the arrangement of Philipps, which depicts the spring elements and receiving openings being along an inside of the outer circumference.
Applicant further argues that “the manner in which the tool and tool holder are connected or connectable by the retaining elements…recited in several of the claims differs from the connection in Philipps.” However, applicant points to no particular claim or claim language to support this argument. See the above rejections under 35 USC 102 and 103 for description of how the prior art anticipates or renders obvious the claimed connections.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCEL T DION whose telephone number is (571)272-9091. The examiner can normally be reached M-Th 9-5, F 9-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached at 571-272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARCEL T DION/Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723