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 .
Drawings
The drawings are objected to under 37 C.F.R. § 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the fasteners (claim 15, line 3) must be shown or the feature should be canceled from the claim.
Corrected drawing sheets in compliance with 37 C.F.R. § 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” in compliance with 37 C.F.R. § 1.121(d). No new matter should be entered. If the changes are not accepted by the examiner, Applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The amended statement of incorporation by reference to International Application No. PCT/IB2021/059828 and U.S. Provisional Application No. 63/198,574 (04/24/2023 Preliminary Amendment at 2) is ineffective because it was added on the date of entry into the U.S. national phase, which is after the filing date of this application. The filing date of this U.S. national stage application is the filing date of the associated international application, which is 10/25/2021. MPEP § 1893.03(b). Thus, the specification amendment of 04/24/2023 is new matter. MPEP § 608.01(p)(I)(B).
Applicant is required to cancel the new matter in the reply to this Office action.
The disclosure is objected to because of the following informalities: FIG. 17A should be described as FIGS. 17A-1 to 17A-3 (Spec. page 23, line 15). Applicant failed to address this with the numbering change to Fig. 17A. Appropriate correction is required.
Claim Objections
Claim 18 is objected to because of the following informalities:
“each comprise” (claim 18, line 2) should be changed to --each comprises--.
Appropriate correction is required.
Claim Interpretation
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a separation mechanism configured to separate the abrasive wheel from a machine shaft of the tool” (claim 16).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If Applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, Applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph.
Claim Rejections – 35 U.S.C. § 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.
Claim 39 is 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 39 recites the limitation “wherein each damping feature is spaced apart from the housing .” This limitation is indefinite because it is unclear and fails to inform a person of ordinary skill in the art what this means. Although the specification uses similar language in one instance (e.g., Spec. p. 17, lines 19-20), the specification does not explain what this limitation means. For example, in a different portion of the specification, damping features 310 (as shown in Fig. 3D) are said to be positioned such that gaps exist as references 372 and 374 (Spec. p. 5, lines 15-17). However, as shown in Figs. 3A-B and 3D, the damping features 310 contact at least bore portion 308, which is a part of the housing 302. Therefore, it is unclear whether this limitation means that damping features 310 do not touch any portion of the housing, or that they do touch a portion of the housing, such as a bore portion, but is spaced apart from another portion of the housing; or this could mean something else. For examination purposes, this limitation is interpreted as best understood.
Claim Rejections – 35 U.S.C. § 103
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 C.F.R. § 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 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.
Degen in view of Adefris
Claims 14, 16, 18, 25, and 39 are rejected under 35 U.S.C. § 103 as being unpatentable over US 20080003929 A1 (“Degen”) in view of US 20020151265 A1 (“Adefris”).
Degen pertains to an abrasive device including an abrasive wheel and hub (Abstr.; Figs. 1-20). Adefris pertains to an abrasive device including an abrasive wheel (Abstr.; Figs. 1-6; ¶ 0024). These references are in the same field of endeavor.
Regarding claim 14, Degen discloses an abrading system (Figs. 1-12, abrading system as shown) comprising:
an abrasive wheel comprising abrasive particles... (Figs. 1-12; ¶ 0048, abrasive wheel 20, which contains abrasive particles),
wherein the abrasive wheel comprises:
an outer circumference; an inner circumference; and a wheel width that extends from the outer circumference to the inner circumference (Figs. 1-12, abrasive wheel 20 has an outer and inner circumference and a wheel width);
and a hub (Figs. 10-12; ¶ 0056, hub including elements 16 and 24 (see Figs. 1-7)) comprising:
a housing that removably couples to the abrasive wheel (Figs. 10-12; ¶ 0056, hub including elements 16 and 24 removably couples to abrasive wheel 20 (see Figs. 1-7);
a bore that receives a tool (Figs. 10-12; ¶ 0056, bore 28 of collar 26 receives tool spindle 14 (see Figs. 1-7));
and a plurality of damping features positioned within an interior of the housing, each of the plurality of damping features being shaped to reduce vibrations caused by the abrasive wheel contacting a worksurface (Figs. 10-12; ¶¶ 0056, 0024, 0048, plurality of damping features 40 (ribs made of an elastic coating) are positioned within the interior of the housing 16/24 (e.g., between the two halves of housing 16/24 and/or within the outer circumference) and are shaped to be capable of reducing vibrations caused by the abrasive wheel contacting a worksurface).
Degen does not explicitly disclose an abrasive wheel comprising abrasive particles within a binder matrix. However, the Degen/Adefris combination makes obvious this claim.
Adefris discloses an abrasive wheel comprising abrasive particles within a binder matrix (Figs. 1-2; ¶¶ 0024-0029, abrasive particles 30 within binder matrix 34).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Adefris with Degen by using the abrasive wheel composition of Adefris. Although Degen does not describe in detail the composition of its disclosed grinding wheel, it would have been obvious to a person of ordinary skill in the art to use an abrasive wheel comprising abrasive particles within a binder matrix because this type of grinding wheel is conventional, well known, and in common use (see, e.g., US 3288580 A (“Curn”) 1:46-47, “a conventional diamond tool, in which diamond grains are embedded in a binder matrix”). Further, Adefris teaches that the disclosed abrasive wheel composition is desirable because it can “provide a fine and scratch-free surface with minimal surface damage” and “The combination of inter- and intra-composite porosity allows the use of much smaller primary abrasive particles than have been useful in related articles of the art. These articles combine an unusually high cut rate with a fine surface finish.” (Adefris ¶¶ 0009, 0014).
Regarding claim 16, the Degen/Adefris combination makes obvious the system of claim 14 as applied above. Degen further discloses wherein the hub further comprises a separation mechanism configured to separate the abrasive wheel from a machine shaft of the tool (Figs. 10-12, element 42 and/or element 40 and/or element 44 is a “separation mechanism” that accomplishes the recited function; this limitation is interpreted under § 112(f), which includes protrusions and ribs (e.g., elements 304, 306, and 364 (Figs. 3A, 3C)), and equivalents thereof (Spec. p. 4, line 30–p. 5, line 32, “disconnecting features”)).
Regarding claim 18, the Degen/Adefris combination makes obvious the system of claim 14 as applied above. Degen further discloses wherein each of the plurality of damping features each comprise[s] a second material different from a hub material (Figs. 10-12; ¶¶ 0056, 0024, 0048, 0050, plurality of damping features 40 are each made of an elastic coating, hub including elements 16 and 24 is made of metal).
Regarding claim 25, the Degen/Adefris combination makes obvious the system of claim 14 as applied above. Degen further discloses a locking mechanism that fixes a relative position of the hub to the abrasive wheel (Figs. 10-12; ¶¶ 0047, 0060, clamping nut 24 of the hub includes threads that fix the relative position of the hub to the abrasive wheel when secured to tool spindle 14).
Regarding claim 39, the Degen/Adefris combination makes obvious the system of claim 14 as applied above. Degen further discloses wherein each damping feature is spaced apart from the housing (Figs. 10-12, each of the plurality of damping features 40 include a portion (e.g., at reference 40 in Fig. 11) that is spaced apart from the portion of the housing at reference 26; see § 112(b) rejection above).
Degen in view of Adefris and Reinauer
Claim 15 is rejected under 35 U.S.C. § 103 as being unpatentable over US 20080003929 A1 (“Degen”) in view of US 20020151265 A1 (“Adefris”) and US 5658192 A (“Reinauer”).
Degen pertains to an abrasive device including an abrasive wheel and hub (Abstr.; Figs. 1-20). Adefris pertains to an abrasive device including an abrasive wheel (Abstr.; Figs. 1-6; ¶ 0024). Reinauer pertains to an abrasive device including an abrasive wheel and hub (Abstr.; Figs. 1-2). These references are in the same field of endeavor.
Regarding claim 15, the Degen/Adefris combination makes obvious the system of claim 14 as applied above. Degen further discloses wherein the hub comprises an upper portion and a lower portion, wherein the upper portion comprises a cover that connects to the lower portion... (Figs. 1-12; ¶ 0056, hub includes upper portion 16 (cover) and lower portion 24, which connect to each other).
Degen and Adefris do not explicitly disclose wherein the upper portion comprises a cover that connects to the lower portion using fasteners, and wherein the damping features are independent of the fasteners. However, the Degen/Adefris/Reinauer combination makes obvious this claim.
Reinauer discloses wherein the hub comprises an upper portion and a lower portion, wherein the upper portion comprises a cover that connects to the lower portion using fasteners (Fig. 2, hub includes upper portion 136 and lower portion 110, where they connect using fasteners 150 (see 5:48-56, screws 50); see discussion below re “wherein the damping features are independent of the fasteners”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Reinauer with the Degen/Adefris combination to add screws (and corresponding threaded holes). Degen discloses clamping holes 48 (Degen Figs. 16-18) but does not provide details concerning their use. It would have been obvious to a person of ordinary skill in the art to make this modification (which may use the clamping holes 48 disclosed in Degen), which would also meet the limitation of “wherein the damping features are independent of the fasteners” (the fasteners are apart from the damping features 40 (Degen Fig. 16)) because this modification would better secure the abrasive wheel to the hub and would help to eliminate wobble (Reinauer 6:19-40, “The continued turning of the clamping screws 50 results not only in an additional radial clamping of the grinding wheel 12 on the centering spike 18, but also in an increased axial clamping...the increased axial clamping intensifies the positive centering effect and thus excessive wobble is reliably eliminated.”).
Response to Amendment
Applicant’s Amendment and remarks have been considered. Claims 5-6, 8, 10-11, 13, 17, 21-24, 26, 30, and 34-38 have been canceled. New claim 39 has been added. Claims 1-4, 7, 9, 12, 14-16, 18-20, 25, 27-29, 31-33, and 39 are pending. Claims 1-4, 7, 9, 12, 19-20, 27-29, and 31-33 have been withdrawn from further consideration under 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention. Claims 14-16, 18, 25, and 39 are rejected.
Drawings – The objection to Fig. 10B is withdrawn in view of Applicant’s amendment and in consideration that Fig. 10B is intended to show a gradient of a static analysis. The objection to Fig. 17A is withdrawn in view of Applicant’s amendment (but see specification objection below). Applicant failed to address the objection re “fasteners” (claim 15) as stated in the Office Action dated 09/11/2025. This objection to the drawings is sustained.
Specification – The objection to the specification re “a disconnect feature 310” is withdrawn in view of Applicant’s amendment. However, the objection to the specification for improper incorporation by reference is sustained. Although Applicant stated (Reply at 8) that the identified paragraph would be removed, this removal was not explicitly made (i.e., in an amendment to the specification). For example, the “marked” version of the replacement specification does not address any changes made to the identified incorporation by reference.
Claims – The objections to claims are withdrawn in view of Applicant’s amendments. Examiner notes that the status identifier for claim 15 is wrong. Claim 15 should be identified as “Original”, not “Withdrawn”.
Response to Arguments
Applicant’s arguments have been fully considered but are not persuasive.
Regarding claim 14, Applicant’s arguments are misplaced. In response to Applicant’s arguments that all claim elements have not been disclosed or made obvious by the prior art (Reply at 11-13), this is addressed in the § 103 rejection above. With respect to Applicant’s arguments regarding lack of motivation to combine (Reply at 9-11), Applicant’s arguments fail because Applicant confounds the question of obviousness and neglects the KSR standard for a person of ordinary skill, which is “a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). The question is not whether an invention was obvious to the inventor, Applicant, or even a single prior-art author, but whether the invention was obvious to a person of ordinary skill in the art before the effective filing date of the application. KSR, 550 U.S. at 420. There is no requirement under KSR for the prior art to explicitly state an exact technique for obtaining a result (e.g., detecting an interdental gap) if a person of ordinary skill could ascertain how the result could be accomplished based on the prior art in combination with the person’s logic, judgment, and common sense. Id. at 418 (“the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”); Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“an analysis of obviousness...also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion”). Examiner disagrees with Applicant’s characterization of the § 103 rejection and the prior art. Importantly, Adefris is relied upon only for the element of a binder matrix that holds abrasive particles; that is, for the composition of the abrasive wheel. Adefris is not relied upon for any modification to the hub or housing of Degen.
Regarding claim 16, the previous Office Action dated 09/11/2025 did not reject claim 16 on the basis of 35 U.S.C. § 112(a). Applicant has misunderstood the application of a § 112(f) interpretation to the term “a disconnect feature that separates an abrasive wheel from the tool” as a rejection under § 112(a). There is no § 112(a) rejection in the previous Office Action. Examiner notes that the amendment of claim 16 to instead use the term “separation mechanism configured to separate the abrasive wheel from a machine shaft of the tool” does not avoid a § 112(f) interpretation for claim 16, which is discussed above.
Applicant’s remaining arguments are conclusory and are not persuasive.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 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 C.F.R. § 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 KENT N SHUM whose telephone number is (703)756-1435. The examiner can normally be reached 1230-2230 EASTERN TIME M-TH.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MONICA S CARTER can be reached at (571)272-4475. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/KENT N SHUM/Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723