DETAILED ACTION1
REJECTIONS UNDER 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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious2 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 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(a) 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 15, 17-21, & 23 are rejected under 35 U.S.C. 103 as being unpatentable over Description of Propolis Encouraging Hives, by Thomas Bacon on October 29, 2022 on www.unionbeecompany.com/propobodies (hereafter “Bacon”) in view of the October 27, 2022 Facebook post by Union Bee Company and the Supermax Tools brochure3 (hereafter Supermax).
Claim 15 recites a method of forming a propolis-encouraging surface on a portion of a hive supporting apparatus. Bacon teaches such a method. Specifically, Bacon states “our rough sides in hive bodies will encourage…[a] propolis envelope.” Bacon teaches Union Bee teaches such a method. Bacon teaches providing a hive element for forming the portion of the hive supporting apparatus, the hive element having a surface forming a portion of an interior surface of the hive supporting structure. The pictures in Bacon also show the panels are formed on wood having a grain direction.
Claim 15 then recites providing an abrading machine having abrading elements…and abrading the surface of the hive element by operating the abrading machine. Bacon does not explicitly discuss how the roughened surfaces are formed. But the October 27 Facebook post states that a machine was used to produce the rough surface. Thus, it would have been obvious to modify Bacon to abrade the board using a machine to produce the rough surface because it is obvious to apply a known technique to a known product or method, ready for improvement, to yield predictable results. See MPEP 2143(D). The October 27 Facebook post does not explicitly state the machine is configured to move the abrading elements in an abrading direction. But one of ordinary skill would have searched the known woodworking arts for a suitable machine. Supermax teaches a machine that is configured to move the abrading elements in an abrading direction, has abrasive brushes for abrading a surface, and would be suitable for the intended purpose. As such, it would have been obvious to modify Bacon to use the SuperBrush single brush sander to produce the roughened surface. See MPEP 2143(D).
Claim 15 next recites orienting the hive element on the abrading machine such that the grain direction of the element is oblique with respect to the abrading direction in order to produce contouring of the surface. None of the cited references explicitly discuss how to feed the board relative to the grain direction, and indeed the photos from both Bacon and the Facebook post appears to show abrasion in the grain direction. Yet it would have been obvious to try feeding the boards obliquely. MPEP 2143(E) states it is obvious to try a modification to a system or method if: (1) the prior art identifies a problem or need known at the time of the invention, (2) the prior art teaches a finite number of predictable potential solutions, and (3) one of ordinary skill could have pursued the known solutions with a reasonable expectation of success. See MPEP 2143(E). In this case, the prior art teaches that the boards must be fed into the machine. There are only three feed options: parallel, perpendicular, or oblique to the grain. It would have been obvious to try all three. As such, this feature would have been obvious.
Claim 17 recites the hive element comprises a portion of a perimeter wall of the housing segment of the housing assembly of the hive supporting apparatus. This is shown in the figures of Bacon. Claim 17 then recites the method additionally comprises: assembling the perimeter wall with other perimeter wall portions such that the contoured surface forms an interior surface of the perimeter wall of the housing segment; placing the housing segment with the contoured interior surface into the hive supporting apparatus; and exposing the contoured surface of the hive supporting apparatus to bees. As a matter of claim interpretation all of these claim elements lie outside of the stated scope of the preamble, which limits the method to forming a…surface on a portion of a hive wall. Thus, technically, these features do not further limit the claim (the claim would need to be rewritten to a method of forming a beehive, or such). Nevertheless, Bacons shows an assembled hive having four abraded walls in its figures and it is inferred that the would be exposed…to bees.
Regarding claim 18, the SuperBrush machine has a bed…[and is] configured to move the bed in a transport direction [that is] parallel to the abrading direction of the abrading elements such that the abrading elements and the bed move substantially parallel to each other, as evidenced by the fact that this is the machine applicant’s own specification uses. The remainder of claim 18 merely restates the method steps of claim 15 in the context of the specific machine, which is already taught since claim 15 was rejected using the SuperBrush machine. Regarding claim 19, the SuperBrush machine has a bed for supporting the hive element while abrading the surface [of] the hive element by operating the abrading machine, wherein operating the abrading machine includes transporting the bed of the abrading machine in a transport direction. Claim 20 merely restates a method step of claim 15, again in the specific context of the machine and is rejected for the same reasons. Regarding claim 21, the SuperBrush transport direction is parallel to the abrading direction such that the abrading elements of the abrading machine move parallel to the bed and the hive element supported on the bed. Regarding claim 23, the SuperBrush has bristles and abrading the surface of the hive element includes moving the bristles contacting the surface. Since the bristles are in line with the feed direction in the SuperBush, this will also result in the bristles contacting the surface of the hive element in a direction not parallel to the grain.
Claims 16 & 22 are rejected under 35 U.S.C. 103 as being unpatentable over Bacon in view of the October 27, 2022 Facebook post by Union Bee Company and Supermax, and further in view of U.S. 2023/0217905 to Palmby.
Claim 16 recites covering one or more areas of the surface of the hive element to block abrasion of the areas of the surface by the abrading elements. Bacon, the Facebook post, and Supermax do not teach covering an area during abrasion. But it would have been obvious to do so in view of Palmby. Palmby also relates to forming propolis encouraging surfaces in hive walls. See Palmby [0001]. (Palmby differs from the claims and other prior art in that it uses a CNC machine to produce grooves and does not explicitly discuss if the material is wood with a grain.) Palmby teaches that certain areas of the walls should be left un-grooved, specifically along the edges. See Palmby [0039]. It would have therefore been obvious to modify Bacon to not groove the board edges as well. This also teaches claim 22, which recites the covered areas…form a joint between the hive element and another element of the hive supporting apparatus (i.e. the edge). Returning to claim 16, one of ordinary skill would have known (as a matter of common sense) that the way to prevent an abrading machine, such as Supermax, from roughing specific areas would be to mask them.
Claims 15 & 24 are rejected under 35 U.S.C. 103 as being unpatentable over Bacon in view of the October 27, 2022 Facebook post by Union Bee Company in view of https://www.youtube.com/watch?v=NGdTOrsGl00 a youtube video entitled It’s a dirty job! The supermax 36’ wire brush machine published by Jon Peters in 2019 (hereafter the Peters video).4
Claim 24 (addressed out of order) recites the abrading machine [has] wire bristles. The earlier used Supermax reference does not explicitly teach it can use a wire bristle abrasive. But the Peters video shows a 36’ Supermax machine (it is not entirely clear if it is the exact machine from the Supermax reference or a highly similar device) can use a coarse wire brush at the 3:00 mark. This machine textures wood panels, such as those used by Bacon. Such a brush has wire bristles. It will also rotate parallel to the feed direction. Thus, if the wood is fed with the grain oblique, as previously taught to be obvious, the bristles [will] contac[t] the surface…in a direction not parallel to the grain. It is obvious to apply a known technique to a known product or method, ready for improvement, to yield predictable results. See MPEP 2143(D). In this case, it would have been obvious to modify Bacon/Facebook to use the Supermax machine from the Peters Video for the same reasons it would have been obvious to use the machine from the Supermax reference in the previous rejection of claim 15. The rejection of the features of claim 15 are for the same reasons as in the main rejection of claim 15 above.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Bacon in view of the October 27, 2022 Facebook post by Union Bee Company, the Peters video, and U.S. 2023/0217905 to Palmby
Claim 25 recites substantially the same features as claims 15 and 16 in combination, which are rejected for the same reasons. Claim 25 further recites that the abrading machine [has] a bed [that is] configured to move…in the transport direction. The Peters video shows a conveyor belt bed below the brush. See Peters video 4:30. The movement of rollers inside the conveyor belt causes the belt (i.e. the bed) to move in the transport direction.
RESPONSE TO ARGUMENTS
Applicant's arguments filed September 15, 2025 have been fully considered but they are not persuasive. Each of applicant’s remarks is set forth, followed by examiner’s response.
Addressing claim 15, applicant first argues that the Oct. 27 Facebook post does not explicitly discuss that the “finish” being discuss is a rough surface. This argument is unpersuasive because references may also teach that which one of ordinary skill would infer. See MPEP 2144.01. In this case, the Bacon reference (which was also published by unionbee company two days apart from the Facebook post) explicitly discusses creating rough surfaces. Thus, one of ordinary skill would connect the two statements together. Additionally, as noted by applicant the Facebook post makes a play on words using the term “ruff” repeatedly. Thus, this argument is not persuasive.
Next, applicant argues that neither Bacon nor the Facebook post explicitly teaches if the wood was made rougher or smoother by the machine. This argument is unpersuasive because the end product is rougher than wood would ordinarily be, and again the play on words using the term “ruff” would cause one of ordinary skill to infer the machine is roughening the material.
Next, applicant argues that the Superbrush sander would not have been viewed as a suitable machine for roughening the wood panels because sanders smooth, rather than roughen, wood. Applicant cites to numerous definitions that the word “sander” or “sanding” refers to rendering an object smoother. This argument is also unpersuasive because while the term “sanding” is used to refer to the process of smoothing a surface, those of ordinary skill in the woodworking and mechanical arts know that sandpaper can both smooth and roughen a surface. Smoothing wood is accomplished by taking rough wood, and applying sandpaper of progressively finer grit. Each finer grit further smooths the wood. Yet the process can be reversed by taking smooth wood and progressively applying rougher grit sandpaper to roughen the wood. Thus, those of ordinary skill would have known that the Superbrush single brush sander is capable of either purpose, depending on what type of abrasive medium is used in comparison to the wood supplied. Thus, the Superbrush is a suitable machine.
As further evidence, the Peter’s video shows the Supermax machine equipped with a steel wire brush that would definitely roughen smooth wood.
Applicant then argues that none of the references teach feeding oblique to the grain. Applicant further asserts that the pictures in Bacon and Facebook show the abrasion in the grain direction. Examiner does not have sufficient woodworking experience to know if the pictures do or do not show abrasion in any specific direction. But this argument is irrelevant in view of the rationale that it would have been obvious to try roughening in one of the three possible orientations.
Applicant further argues that the failure to teach a direction and apparent illustration of a contrary direction renders the obvious-to-try rationale flawed. This is also unpersuasive. Having modified Bacon and the Facebook post to use the Superbrush sander, one of art would be required to choose a feed orientation. In the absence of explicit instructions, a need becomes apparent to choose a direction. The number of potential directions is finite, specifically three: parallel, perpendicular, or oblique to the grain. There are no other options. Since one must be selected and the prior art fails to discuss the matter, it would have been obvious to try and three to determine if all three would work, or indeed if one feed direction resulted in superior outcomes.
Regarding claim 16, applicant argues that nothing in the cited references teaches covering portions of the surface. As discussed in the rejection, Palmby teaches that it is beneficial to leave portions of the surface unroughened when roughening via CNC. Yet this teaching would be equally applicable when roughening the wood using the Superbrush. Since the sandpaper or sanding brush of the Superbrush contacts the entire wood surface as the wood is fed through the machine, one of ordinary skill would understand as a matter of common sense that the only applicable method to have unroughened portions would be to mask the board before feeding.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Moshe K Wilensky whose telephone number is 571-270-3257. The examiner can normally be reached 9-5 daily. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh can be reached at 571-272-3460.
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/MOSHE WILENSKY/
Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct claim quotations are presented in italics. All non-italic reference numerals presented with italicized claim language are from the cited prior art reference. All citations to “specification” are to the applicant’s published specification unless otherwise indicated. The use of the phrase “et al.” following a reference is used solely to refer to subsequent modifying references, and not to other listed inventors of the cited reference.
2 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art at the time the invention was filed.”
3 This brochure was submitted in applicant’s June 27, 2023 IDS and the tool being advertised is admitted to being prior art on page 15 of applicant’s specification.
4 Although it is difficult to tell, examiner believes the URL contains a lower-case L between the G and 00.