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 Arguments
Applicant’s arguments with respect to amended independent claims 1 and 8 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Examiner thanks Applicant for amending independent claim 12 to incorporate the allowable subject matter as indicated in the previous office action. Claim 12, and thus claim 22 dependent therefrom, are now indicated as allowed herein.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 8, 10, and 11 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1 and 8, claims 1 and 8 have been amended to recite, inter alia, the pocket is shaped to conform to (in claim 1) and the poked conforms to (in claim 8). When seeking to confirm support for the amended subject matter, Examiner contemplated the subject matter describing the pocket in paragraphs [0060], [0063], [0067], [0076], [0078], and [0080]. However, there is no description of the ability of the pocket to conform. As a result, it has not been conveyed to Examiner that the inventor had possession of the claimed invention as recited in the amended claims.
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 1, 8, 10, and 11 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.
Regarding claims 1 and 8, due to the lack of description of the pocket having the ability to conform as described in the 112(a) rejection above, the claims are additionally rejected under 112(b) as it is unclear what is imparted into the claimed invention in light of the specification. Dependent claims 10 and 11 inherit the rejection of independent claims 1 and 8.
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.
Claim(s) 1 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Coates (US 10,786,894) in view of Chen (US 5,421,225).
Regarding claim 1, Coates discloses an angle grinder (see tool 10; Figure 9) comprising:
a housing (see at least motor housing 16, handle portion 18, and the base portion 20);
a motor disposed in the housing (see motor 28; see also Col. 7, lines 28-35);
a gearcase (gear case 14) extending from the housing and including a spindle (see spindle 24) configured to be rotationally driven by the motor (Col. 6, lines 27-41);
a flange removably engageable with the spindle to secure a rotating tool on the spindle (see flange set 25 as well as Col. 10, lines 3-37); and
a flange retainer (see flange holder 400, Figures 9, 10A, and 10B) formed on and as a part of the housing (wherein the flange holder 400 is a component of the apparatus housing) and including a pocket sized and shaped to receive and retain the flange when the flange is disengaged from the spindle (Col. 10, lines 3-37).
Regarding claim 1, Coates discloses the claimed invention as applied above. However, Coates does not explicitly teach the structure of the flange holder is configured as a pocket, i.e. the flange retainer including a pocket, wherein the pocket is annularly shaped to conform to the shape of the flange such that the pocket is configured to receive and engage an outer diameter of the flange.
However, from the same or similar field of endeavor of tool devices which retain extra components, Chen teaches of a retainer component including a pocket, wherein the pocket is annularly shaped to conform to the shape of the flange such that the pocket is configured to receive and engage an outer diameter of the flange (please refer to Figure 5, wherein there is a compartment 53, see also one of the clamping members 521, wherein the clamping members 521 are annularly shaped and conform/match size and shape with the element inserted therein, see also Col. 2, line 62-Col. 3, line 9; wherein when substituted for the flange holder 400, which is sized and shaped to receive a flange, the incorporation of Chen would impart the clamping member 521 is also sized and shaped to receive a flange, and the outer diameter of the flange is engaged with the clamping member Chen, as the clamping member 521 of Chen retains structures therein; i.e. the combination of Chen into the invention of Coates teaches the invention as claimed).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the apparatus of Coats to reflect the flange retainer as a covered cavity including an annular clamping member, as taught by Chen. One would be motivated to do so not only to better avoid losing the flange member when held by the modified flange retainer as a result of a pivotable cover over the clamping member, but also to avoid unnecessary damage to the flange if the flange were exposed, as in the embodiment shown by Coates. This configuration provides a beneficially safe storage element which is convenient in the context of tools; see Col. 3, lines 45-56 and Col. 4, lines 2-8. This modification would be recognized as using a known structure, i.e. a cavity and clamping member within the context of tools to retain a component, to improve similar a handheld tool device in the same manner, and would yield predictable results with a reasonable expectation of success.
Regarding claim 8, Coates discloses an angle grinder (see tool 10; Figure 9) comprising:
a housing (see at least motor housing 16, handle portion 18, and the base portion 20);
a motor disposed in the housing (see motor 28; see also Col. 7, lines 28-35);
a gearcase (gear case 14) extending from the housing and including a spindle (see spindle 24) configured to be rotationally driven by the motor (Col. 6, lines 27-41);
a flange engageable with the spindle to secure a rotating tool on the spindle (see flange set 25 as well as Col. 10, lines 3-37); and
a flange retainer (see flange holder 400, Figures 9, 10A, and 10B) including a pocket sized and shaped to receive and retain the flange when the flange is disengaged from the spindle (Col. 10, lines 3-37).
However, Coates does not explicitly teach the structure of the flange holder is configured as a pocket located on the gearcase (14), i.e. a flange retainer extending from and formed on and as a part of the gearcase and including a pocket sized and shaped to receive and retain the flange, wherein the pocket conforms to an outer diameter of the flange such that the pocket is configured to receive and engage the flange.
However, from the same or similar field of endeavor of tool devices which retain extra components, Chen teaches of a retainer component extending from and formed on as a part of the tool including a pocket sized and shaped to receive and retain a tool element (see Figure 5 regarding compartment 53 and clamping member 521 extending from a surface), wherein the pocket conforms to an outer diameter of the flange such that the pocket is configured to receive and engage the flange (please refer to Figure 5, wherein there is a compartment 53, see also one of the clamping members 521, wherein the clamping members 521 conform/match size and shape with the element inserted therein, see also Col. 2, line 62-Col. 3, line 9; wherein when substituted for the flange holder 400, which is sized and shaped to receive a flange, the incorporation of Chen would impart the clamping member 521 is also sized and shaped to receive a flange, and the outer diameter of the flange is engaged with the clamping member Chen, as the clamping member 521 of Chen retains structures therein; i.e. the combination of Chen into the invention of Coates teaches the invention as claimed).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the apparatus of Coats to reflect the flange retainer as a covered cavity including an annular clamping member, as taught by Chen. One would be motivated to do so not only to better avoid losing the flange member when held by the modified flange retainer as a result of a pivotable cover over the clamping member, but also to avoid unnecessary damage to the flange if the flange were exposed, as in the embodiment shown by Coates. This configuration provides a beneficially safe storage element which is convenient in the context of tools; see Col. 3, lines 45-56 and Col. 4, lines 2-8. This modification would be recognized as using a known structure, i.e. a cavity and clamping member within the context of tools to retain a component, to improve similar a handheld tool device in the same manner, and would yield predictable results with a reasonable expectation of success.
Regarding the location of the flange retainer on and as a part of the gearcase, Coates does intimate and suggest alternative locations for the flange holder (400), such as the end of handle portion, under the motor case, on the cord of the tool, or any other suitable location where it does not interfere with the operator’s handling of the tool (see Col. 10, lines 23-28).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have rearranged the location of the flange holder (400) of modified Coates to be located elsewhere on the tool, including on the gearcase. Coates not only specifically suggests alternative locations on the tool (Col. 10, lines 23-28), but this modification would be recognized as a rearrangement of parts and would yield predictable results with a reasonable expectation of success. The area of the gearcase is not interfering with an operator’s handling, and the position of the flange holder would not modify the operation of the device, see Section (V.)(C.) of MPEP 2144.04, In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). Thus, this modification would yield predictable results of relocating the flange retainer element with a reasonable expectation of success.
Claim(s) 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Coates (US 10,786,894) in view of Chen (US 5,421,225), and in further view of Cacciabeve (US 11,504,843).
Regarding claim 10, Coates as modified above teaches the claimed invention. However, modified Coates does not explicitly teach wherein the angle grinder further includes a magnet disposed adjacent or within the pocket, and wherein the magnet is configured to engage the flange.
However, from the same or similar field of endeavor, Cacciabeve (US 11,504,8543) teaches a retainer which includes the pocket and the tool includes a magnet disposed on the tool and adjacent or within the pocket (see Col. 1, lines 60-65, wherein there is an opening adapted to receive the magnet, in addition to sidewalls; see also Figures 3-3B), and the magnet is configured to retain and engage an element (see Col. 1, lines 45-49, wherein each magnet is exposed at the top for engaging the workpiece; see also Col. 4, lines 3-35).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the magnetic retainment feature taught by Cacciabeve into the invention of Coates. One would be motivated to do so because the magnetic feature provides additional retention strength, which would benefit a user so as to not lose the unfastened flange on accident. This modification would be recognized as using a known structure, i.e. magnets, to improve similar a tool device in the same manner, and would yield predictable results with a reasonable expectation of success.
Regarding claim 11, Coates as modified above teaches the claimed invention. However, modified Coates does not explicitly teach wherein the flange retainer comprises a magnet disposed on the angle grinder adjacent or within the pocket and the magnet is configured to engage the flange.
However, from the same or similar field of endeavor, Cacciabeve (US 11,504,8543) teaches a magnet disposed on the tool and adjacent or within the pocket (see Col. 1, lines 60-65, wherein there is an opening adapted to receive the magnet, in addition to sidewalls; see also Figures 3-3B), and the magnet is configured to retain and engage an element (see Col. 1, lines 45-49, wherein each magnet is exposed at the top for engaging the workpiece; see also Col. 4, lines 3-35).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the magnetic retainment feature taught by Cacciabeve into the invention of Coates. One would be motivated to do so because the magnetic feature provides additional retention strength, which would benefit a user so as to not lose the unfastened flange on accident. This modification would be recognized as using a known structure, i.e. magnets, to improve similar a tool device in the same manner, and would yield predictable results with a reasonable expectation of success.
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 MAKENA S MARKMAN whose telephone number is (469)295-9162. The examiner can normally be reached Monday-Thursday 8:00 am-6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Posigian can be reached at 313-446-6546. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAKENA S MARKMAN/Primary Examiner, Art Unit 3723