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 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.
Claim 9 is 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.
Claim 9 recites “amorphous carbon film” and “tetrahedral amorphous carbon film.” It is unclear if the film merely contains amorphous carbon or the recitation of the respective amorphous film is a specific film type. Appropriate correction required.
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 1-6 and 9-11 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.
Claim 1 recites “a concave cross section of the welding portion” in Lines 9-10. It is unclear whether the cross section is concave as claimed or if the phrase means a concave cross-sectional shape. Appropriate correction required.
Claim 3 “the blade portion has a shape in which a distal end angle, which is a taper angle of a tip of the blade portion, decreases toward an outer circumference thereof in a radial direction.” The metes and bounds of what constitutes a distal end angle and how it is measured are unclear. Specifically, the manner in which the taper angle is measured is not set forth. Appropriate correction required.
Regarding claims 4, 5 and 9-11, the phrase “diamond-like” renders the claim(s) indefinite because the claims include elements not actually disclosed (those encompassed by “of the like”), thereby rendering the scope of the claims unascertainable. See MPEP § 2173.05(d). That is, the boundary of where a film is like diamond and not like diamond is unclear. Appropriate correction required.
Claim 9 recites “amorphous carbon film” and “tetrahedral amorphous carbon film.” It is unclear if the film merely contains amorphous carbon or the recitation of the respective amorphous film is a specific film type. Appropriate correction required.
Claim Rejections - 35 USC § 102
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gangl (WO 2008/122063 A1).
(Claim 1) Gangl discloses a deburring tool (13) capable of cutting a burr generated by members are welded to each other by friction stir welding. The deburring tool includes: a tool center portion (15) capable of contacting a welding portion; and a blade portion (14) formed on an outer circumference of the tool center portion to cut the burr (Fig. 1). The tool center portion (15) includes a protrusion (Fig. 1) protruding downward1 from a ridge line of the blade portion to control a burr cutting amount (Fig. 1). The welding portion has a concave cross-sectional shape, and the protrusion is capable of functioning as a stopper in an axial direction of a rotation axis of the blade portion by contacting an axial tip of the protrusion with a bottom of a concave cross section of the welding portion (Fig. 1).
Claims 1, 2 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dauner (US Pub. No. 2016/0167141 A1).
(Claim 1) Dauner discloses a deburring tool (20) capable of cutting a burr generated by members are welded to each other by friction stir welding. The deburring tool includes: a tool center portion (1) capable of contacting a welding portion; and a blade portion (2) formed on an outer circumference of the tool center portion to cut the burr (Fig. 1). The tool center portion (1) includes a protrusion (Fig. 2) protruding downward2 from a ridge line of the blade portion to control a burr cutting amount (Figs. 1, 2). The welding portion has a concave cross-sectional shape, and the protrusion is capable of functioning as a stopper in an axial direction of a rotation axis of the blade portion by contacting an axial tip of the protrusion with a bottom of a concave cross section of the welding portion (Fig. 1).
(Claim 2) The protrusion protrudes downward from the ridge line of the blade portion in an arc shape (Figs. 1, 2).
(Claim 6) The protrusion and the blade portion are formed separately (Figs. 1, 2).
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Dauner (US Pub. No. 2016/0167141 A1) in view of Pozzo (US Patent No. 5,899,252).
Dauner does not explicitly disclose a change in angle of the blade portion.
Pozzo discloses a blade portion that has a shape in which a distal end angle, which is a taper angle of a tip of the blade portion, decreases toward an outer circumference thereof in a radial direction (Fig. 5, from edge portions 39 to 41). At a time prior to filing one having ordinary skill in the art would have found it obvious to provide the cutter disclosed in Dauner with a blade shape as suggested by Pozzo in order to transfer that shape to the workpiece.
Claims 4, 5 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Dauner (US Pub. No. 2016/0167141 A1).
(Claims 4, 5, 10 and 11) Dauner does not explicitly disclose a diamond-like carbon film on the cutter and/or protrusion. Yet, it is well-known in the art to provide diamond coatings to areas of tools that will contact with workpieces to increase strength and wear resistance to the tool components. Because Applicant failed to traverse the well-known assertion, the well-known in the art statement is taken as admitted prior art. See MPEP § 2144.03 C. At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the blades and protrusion with diamond-like coatings as is well-known in the art to provide each component with strength and durability. Additionally, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the blades and protrusion with the relationships of diamond-like materials claimed because it has been held obvious to select materials based on its suitability for the intended purposes – here, the protrusion slides along the workpiece while the blades need hardness in response to the forces incurred during material removal. See MPEP § 2144.07 (“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)”). See also In re Leshin, 277 F.2d 197 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).
(Claim 9) The Dauner reference does not explicitly disclose the respective diamond-like carbon film of the protrusion and the blade portion. Yet, the respective amorphous carbons are well-known in the art for their respective material properties of low friction and hardness, the facts of which examiner takes official notice. At a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the blades and protrusion with diamond-like coatings having respective amorphous carbons as is well-known in the art to provide each component with a reduction in friction or strength/durability. Additionally, at a time prior to filing it would have been obvious to one having ordinary skill in the art to provide the blades and protrusion with the relationships of diamond-like materials claimed because it has been held obvious to select materials based on its suitability for the intended purposes – here, the protrusion slides along the workpiece while the blades need hardness in response to the forces incurred during material removal. See MPEP § 2144.07 (“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)”). See also In re Leshin, 277 F.2d 197 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).
Response to Arguments
Applicant's arguments filed February 11, 2025 have been fully considered but they are not persuasive. Applicant argues that the phrase “diamond-like carbon” (or DLC) is a term of art. Applicant further contends that the protrusion disclosed in Dauner is incapable of performing the function as recited in claim 1. Examiner disagrees.
The indefiniteness rejection and the prior art rejection in view of Dauner have been maintained. Applicant asserts that the phrase DLC is well-known in the art, but has failed to come forth with evidentiary support for that assertion. Likewise, the arguments fail to set forth evidence for Dauner being incapable of functioning as a stopper as claimed. To the contrary, Applicant merely points out that the protrusion is not explicitly disclosed as being used in that manner. Yet, the disclosed protrusion is capable functionally of the intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Here, the protrusion is capable of entering a welded portion and contacting a bottom surface thereof while the blade portions cut a burr. It is worth noting that the functional capability also depends on the possible shape of the workpiece. As such, the prior art reads upon the claimed invention.
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 RYAN RUFO whose telephone number is (571)272-4604. The examiner can normally be reached Mon-Thurs.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Singh Sunil can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN RUFO/Primary Examiner, Art Unit 3722
1 “Downward” is relative and the device may simply be turned over to be considered “downward” in relation to the ridge line of the blade portion.
2 “Downward” is relative and the device may simply be turned over to be considered “downward” in relation to the ridge line of the blade portion.