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 .
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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 16 February, 2026 has been entered.
Specification
The disclosure is objected to because of the following informalities: page 4 line 26 the specification refers to a “thickness 232 of the abrasive hub”. As the thickness 232 is of the abrasive article, it appears that the term “abrasive hub” is a typographical error.
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: “tool connection mechanism” in claim 48; “receiving feature” in claim 56; “damping feature” in claim 57; “position locking mechanism” in claim 59; “mechanical feature” in claim 61; and “damping component” in claims 65-66.
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 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 61-67 and 70 are 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 61 recites the limitation “a hub thickness that is the same or less than the thickness of the abrasive article”. Claim 70 recites the limitation “wherein the hub thickness is less than the thickness of the abrasive article”. The original disclosure does not adequately support a hub thickness less than the thickness of the abrasive article.
The original disclosure recites a hub having a “substantially identical” thickness to the abrasive article, and that disclosed methods may be implemented such that the reusable hub extends “partway through a thickness of the abrasive article”, “through a thickness of the abrasive article and is flush with the opposing side”, or “over halfway through the thickness of the abrasive article”. (Specification 4:25-27 and 10:31-11:4). However, “the written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353–54 (Fed. Cir. 2010) (en banc) (emphasis added).
Although the disclosed “substantially identical” thickness would include thicknesses slightly larger or smaller than that of the abrasive article, it fails to teach the full scope of the claim limitation, which encompasses all possible thicknesses less than that of the abrasive article.
Similarly, the disclosure of a reusable hub coupled to an abrasive wheel such that it only extends partway through a thickness does not necessarily teach anything about a thickness of the reusable hub itself. For instance, the reusable hub shown in fig. 2 could have an identical or greater thickness to the abrasive article, but only be partially threaded on to the abrasive article. This would result in the hub extending only partway through the thickness, while still having an equal or greater thickness. Consequently, disclosures of the extension distance of a coupling are insufficient support for a claim regarding the thickness of a hub.
For these reasons, claims 61 and 70 fail to comply with the written description requirement and are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph. Claims 62-67 depend from claim 61 and are likewise rejected.
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 48-50, 53, 61-68, and 70 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 48 recites the limitation “a surface of the reusable hub engages the abrasive article along the thickness”. Claim 48 introduces a thickness of the abrasive article and the abrasive hub, and it is unclear if the limitation “along the thickness” refers to one or both thicknesses.
Claims 49-50, 53, and 68 depend from claim 48 and are likewise rejected.
Claim 61 recites the limitation “the abrasive article” after introducing first and second abrasive articles. Claim 70 depends from claim 61 and likewise makes reference to a single abrasive article. It is unclear which of the first and second abrasive articles the limitations refer to.
Claims 62-67 depend from claim 61 and are likewise rejected.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 48-50, 53, and 68 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Yanase (US 6116996).
48. Yanase teaches a reusable hub (5, see Yanase figs. 1-2) for an abrasive article (6) having a first major surface, a second major surface, a thickness between the first major surface and the second major surface, an inner circumference and an outer circumference (see Yanase figs. 1-2), the reusable hub comprising:
an abrasive connection mechanism (5b) for removably coupling the reusable hub to the abrasive article (see Yanase figs. 1-2 and 7:7-27), wherein the abrasive connection mechanism forms a mechanical connection between the reusable hub and the abrasive article (interlocking elements on 5 and 6, see Yanase figs. 1-2 and 7:7-27), the abrasive connection mechanism comprising a plurality of interlocking elements (5d, 5f, and 5g) on the reusable hub; and
a tool connection mechanism (73) for removably coupling the reusable hub to a tool driveshaft;
wherein the reusable hub has a thickness along the abrasive connection mechanism sized to receive the thickness of the abrasive article such that the reusable hub is coupled to, and engages the abrasive article along an inner circumference of the abrasive article, and wherein a surface of the reusable hub engages the abrasive article along the thickness (interlocking elements on 5 and 6 engage along a thickness of tool 6, see Yanase figs. 2-3).
49. Yanase teaches the reusable hub of claim 48, wherein the reusable hub has a lip (5a) configured to extend over one of the first major surface and the second major surface of the abrasive article such that it covers no more than 10% of an area of the abrasive article (5a extends over a rear major surface of abrasive article 6 and covers none of the area on a front surface of abrasive article 6, see Yanase figs. 1-3).
50. Yanase teaches the reusable hub of claim 48. Yanase teaches an alternative embodiment (see Yanase figs. 6-7) wherein the abrasive connection mechanism between reusable hub (5) and abrasive article (2) further comprises a mounting ring (11) which couples to the abrasive article (See Yanase figs. 6-7 and 10:22-67). Yanase further teaches that the first embodiment may be produced with such a ring (Yanase 6:66-7:3). Yanase therefore teaches a version of the reusable hub of claim 48, wherein the abrasive connection mechanism further comprises a mounting ring which couples to the abrasive article.
53. Yanase teaches the reusable hub of claim 48, wherein the plurality of interlocking elements comprises threading, grooves, or apertures (interlocking elements on 5 and 6 comprise grooves, see Yanase figs. 1-3).
68. Yanase teaches the reusable hub of claim 48, wherein the thickness of the reusable hub is substantially similar to the thickness of the abrasive article (thickness along abrasive connection mechanism 5b is substantially similar to the thickness of abrasive article 6 along the same mechanism, see Yanase figs. 1-3).
Claims 54, 56-59, 61-67, and 69 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sun et al. (US 7144315, "Sun").
54. Sun teaches an abrasive article (grinding wheel 1, see Sun fig. 1 and 3:4-10), having a first surface, a second surface, a thickness between the first surface and the second surface, an inner circumference, and an outer circumference (see Sun fig. 1) for abrading a worksurface by contacting the abrasive article to the worksurface (Sun 4:11-14); and a reusable hub (combination of 2, 3, and 4) comprising: a coupling feature (combination of projecting sections 23 and 33, see Sun figs. 1-3) configured to couple the reusable hub to the inner circumference of the abrasive article (grinding wheel 1, see Sun figs. 1-3, 3:4-10, and 3:60-67), the coupling feature comprising a plurality of interlocking elements on the reusable hub (elements 23 and 33 interlock at 231,331, see Sun fig. 3); and wherein the coupling feature forms an adhesive-free connection between the reusable hub and the abrasive article (connection involves interlocking elements and threaded bolt, but no adhesive, see Sun fig. 3), wherein the coupling feature engages the abrasive article along the inner circumference (23 and 33 engage with 1 along inner circumferential portions 112 and 113, see Sun fig. 1 and 3:11-25), and wherein the coupling feature engages only along the thickness of the abrasive article (see Sun fig. 3).
Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. MPEP § 2112. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. See In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986).
Because the prior art device taught by Sun is the same as a device described in the specification for carrying out the claimed method (Specification 10:11-13:8), it anticipates the claimed method.
56. Sun teaches the method of claim 54, wherein at least one of the plurality of interlocking elements on the reusable hub engages with a receiving feature on the inner circumference of the abrasive wheel to removably couple the abrasive article to the reusable hub (projecting sections 23 and 33 interlock with recesses 113 on wheel 1, see Sun figs. 1-3 and 3:60-67).
57. Sun teaches the method of claim 54, wherein the reusable hub comprises a damping feature (4, see Sun figs. 1-3 and 4:1-14).
58. Sun teaches the method of claim 57, wherein the damping feature is a layer within the reusable hub (4 is a layer in the assembled hub, see Sun fig. 3).
59. Sun teaches the method of claim 54, wherein the reusable hub further comprises a position locking mechanism (hexagonal depression 252 is capable of working with a nut to lock the hub to a grinder, see Sun figs. 3 and 5, and 3:52-59).
61. Sun teaches a reusable hub (combination of 2, 3, and 4) for use with abrasive articles (grinding wheel 1, see Sun fig. 1 and 3:4-10) in abrading a workpiece (see Sun 4:11-14), the reusable hub comprising: a coupling feature (combination of projecting sections 23 and 33, see Sun figs. 1-3) configured to couple the reusable hub to an inner circumference of the abrasive article (grinding wheel 1, see Sun figs. 1-3, 3:4-10, and 3:60-67), the coupling feature comprising a plurality of interlocking elements on a perimeter of the reusable hub (elements 23 and 33 are located at perimeters of 2,3 and interlock at 231,331, and with inner circumferential portions 112,113 of abrasive article 1, see Sun figs. 1 and 3); and wherein the coupling feature forms an adhesive-free connection between the reusable hub and the abrasive article (connection involves interlocking elements and threaded bolt, but no adhesive, see Sun figs. 1-3), wherein the coupling feature engages the abrasive article along the inner circumference (23 and 33 engage with 1 along inner circumferential portions 112 and 113, see Sun fig. 1 and 3:11-25), wherein the coupling feature engages only along the thickness of the abrasive article (see Sun fig. 3), and wherein the reusable hub has a hub thickness that is the same or less than the thickness of the abrasive article (substantially similar thicknesses, see Sun fig. 3)
Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. MPEP § 2112. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. See In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986).
Because the prior art device taught by Sun is the same as a device described in the specification for carrying out the claimed method (Specification 15:31-16:8), it anticipates the claimed method of decoupling an inner circumference of a first abrasive article from the reusable hub using a mechanical feature of the reusable hub, wherein the mechanical feature is an interlocking element on a perimeter of the reusable hub;
coupling an inner circumference of a second abrasive article to the reusable hub using the mechanical feature of the reusable hub, wherein the mechanical feature engages the abrasive article along the inner circumference, and wherein the mechanical feature engages only along a thickness of the abrasive article, and wherein the reusable hub has a hub thickness that is the same or less than the thickness of the abrasive article; and
contacting the second abrasive article to a worksurface.
62. Sun teaches the method of claim 61, wherein contacting the second abrasive article to the worksurface further comprises providing vibrational damping (via damping body 4, see Sun figs. 1-3 and 4:1-14).
63. Sun teaches the method of claim 61, and further comprising: positionally locking the reusable hub in place with respect to the second abrasive article (hub elements 23 and 33 are located at perimeters of 2,3 and interlock with inner circumferential portions 112,113 of abrasive article 1, see Sun figs. 1 and 3).
64. Sun teaches the method of claim 61. Sun further teaches that the hub includes a first component configured to be mounted to a spindle of a tool (combination of bushing 43 and seat bodies 24,34 of hub 2,3 surround a tool shaft, see Sun fig. 3 and 3:52-4:10). Because the prior art device taught by Sun is the same as a device described in the specification for carrying out the claimed method (Specification 15:31-16:8), it anticipates the additional step wherein decoupling comprises removing a first component from a spindle of a tool and removing the first abrasive article from the spindle, and wherein coupling comprises mounting the second abrasive article to the spindle and mounting the first component to the spindle.
65. Sun teaches the method of claim 64, wherein the first component comprises a damping component (4 is attached to bushing 43, see Sun fig. 3 and 3:52-4:10).
66. Sun teaches the method of claim 65, wherein the damping component is external to the first component (4 surrounds 24,34, and 43, see Sun fig. 3).
67. Sun teaches the method of claim 66, wherein the damping component comprises a damping material (4 is made from a damping material like soft rubber, see Sun 4:3-14).
69. Sun teaches the method of claim 54, wherein a thickness of the reusable hub is substantially similar to the thickness of the abrasive article (see Sun fig. 3).
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 60 is rejected under 35 U.S.C. 103 as being unpatentable over Sun as applied to claim 54 above, and further in view of Gissing (WO 2012079105).
60. Sun teaches the method of claim 54, but does not teach that removably coupling the abrasive article to a reusable hub comprises removably coupling the reusable hub to a mating ring that couples directly to the abrasive article.
However, Gissing teaches a method of coupling (Gissing Translation [0050]-[0052]) a removable hub (3, see Gissing fig. 1 and Gissing Translation [0051]-[0052]) to an abrasive article (2) via a mating ring (clamping ring 202, see Gissing fig. 1 and Gissing Translation [0044]).
It would have been obvious for one of ordinary skill in the art before the effective filing date to modify the abrasive article used in the method of Sun according to the teachings of Gissing such that it included a mating ring and removably coupling the abrasive article to a reusable hub comprises removably coupling the reusable hub to a mating ring that couples directly to the abrasive article and includes locking elements, as doing so would increase the possible force transmission (Gissing [0044]).
Claim 70 is rejected under 35 U.S.C. 103 as being unpatentable over Sun.
70. Sun teaches the method of claim 61, but does not explicitly teach that the thickness of the reusable hub is less than the thickness of the abrasive article.
However, Sun does teach that the reusable hub should have a thickness substantially the same as that of the abrasive article (See Sun fig. 3).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the reusable hub of Sun to have a thickness fractionally smaller than the thickness of the abrasive article since it has been held that, “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device”. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, [explain why device would not operate differently]. Further, it appears that applicant places no criticality on the claimed dimension, as there is no disclosure of a hub with a thickness less than the thickness of the abrasive article, much less an explanation as to why such sizes would be critical.
Response to Arguments
Applicant’s arguments with respect to claims 48-50, 53-54, and 56-70 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN R ZAWORSKI whose telephone number is (571)272-7804. The examiner can normally be reached Monday-Thursday 8:00-5:00, Fridays 9:00-1:00.
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, Monica 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JONATHAN R ZAWORSKI/Examiner, Art Unit 3723
Prosecution Insights