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 .
Information Disclosure Statement
The information disclosure statement filed on 05/01/2023 have been accepted and considered to the best time allows. The information disclosure statement contains 25 pages of references, totaling 409 references, including 163 foreign references. It appears that many of these references have dubious relevance to this application. While some references may in fact be particularly relevant, it is impossible to determine these most relevant references, and their relevant passages, in the time allotted for examination. It should be noted that an applicant’s duty of disclosure of material information is not satisfied by presenting the examiner with “a mountain of largely irrelevant data from which he is presumed to have been able, with his expertise and with adequate time, to have found the critical data. It ignores the real world conditions under which examiners work.” Rohm & Haas Co. v. Crystal Chem. Co., 722 F.2d 1556, 1573 (Fed. Cir. 1983). An applicant has a duty to not just disclose pertinent prior art references but to make a disclosure in such way as not to bury it within other disclosures of less relevant prior art. Molins PLC v. Textron Inc., 48 F.3d 1172, 1183-84 (Fed. Cir. 1995) (“Moreover, ‘burying’ a particularly material reference in a prior art statement containing a multiplicity of other references can be probative of bad faith.”) (referring to an information disclosure statement of 11 pages, containing 23 U.S. patents, 27 foreign patents, and 44 U.S. and foreign patent application publications); MPEP § 2004 (“It is desirable to avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to applicant’s attention and/or are known to be of most significance.”).
Here, it is unreasonable for the examiner to thoroughly review all of Applicant’s 409 cited references in the available time. Therefore, in order to make the record clear and to assist in evaluating patentability in view of the large number of cited references, Applicant is requested to identify the 10 most relevant and material references (about 2.4% of the cited references) and explain with specificity how they are understood by Applicant to be relevant to the patentability of the pending claims, including identifying figures, pages, lines, and paragraphs in the references. See MPEP § 609.04(a)(III) (“applicants are encouraged to provide a concise explanation of why the English-language information is being submitted and how it is understood to be relevant); MPEP §§ 2004, 2001.04, 2001.05; see also Semiconductor Energy Lab. Co. v. Samsung Elecs. Co., 204 F.3d 1368, 1376 (Fed. Cir. 2000) (“Thus, though MPEP § 609A(3) allows the applicant some discretion in the manner in which it phrases its concise explanation, it nowhere authorizes the applicant to intentionally omit altogether key teachings of the reference.”). Generally referencing another document (e.g., an International Search Report or an Office action of an application with different claims) to demonstrate the relevance of a cited reference will be unhelpful unless Applicant also cites specific pages and lines of the document and explains how those portions are relevant to patentability of the claims in this application; even so, it would be more helpful if Applicant would identify and explain the relevant portions of the cited references directly.
Double Patenting
Examiner is aware of Applicant’s patent and copending applications: US 12479060 B2, titled “ORBITAL POLISHING TOOL”; 18/293,073, titled “DYNAMIC MASS BALANCER FOR A ROTATING POWER TOOL”; and 19/170,304, titled “ORBITAL POLISHER”. This patent and these applications have claims directed to similar subject matter. Currently, the claims in this application and the patent/copending applications are sufficiently delineated and are patentably distinct. Accordingly, a statutory double patenting rejection under 35 U.S.C. § 101 or a nonstatutory double patenting rejection is not appropriate at this time, but may be applied should the claims of this application and/or the copending applications be amended such that the claims of this application are no longer patentably distinct from the claims of the patent or copending applications. MPEP § 804.
Applicant is advised of its duty of disclosure, candor, and good faith to identify its own copending applications and patents that disclose similar subject matter, as well as prior art and other information from the prosecution of its own copending applications and patents, that are material to the patentability (including double patenting) of this application. MPEP §§ 2001.04, 2001.05, 2001.06, 2001.06(a)-(e).
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.
Borinato in view of Siedler and Nakamura
Claims 1-4 and 6 are rejected under 35 U.S.C. § 103 as being unpatentable over US 7104873 B1 (“Borinato”) in view of US 6454640 B1 (“Siedler”) and US 20190047115 A1 (“Nakamura”).
Borinato pertains to a power sanding/polishing device (Abstr.; Fig. 1). Nakamura pertains to a power sanding/polishing device (Abstr.; Figs. 1-2). Siedler pertains to a power sanding (Abstr.; Figs. 1-2). These references are in the same field of endeavor.
Regarding claim 1, Borinato discloses an orbital sander (Figs. 1-6; 1:12-16, orbital sander 1) comprising:
a housing (Figs. 1-6, housing 2);
a drive unit within the housing, the drive unit including an electric motor defining a rotational axis, a drive shaft configured to receive torque from the electric motor for rotating the drive shaft about the rotational axis, the drive shaft having an eccentric portion configured to orbit about the rotational axis (Figs. 1-6; 6:44-61, 7:27-8:17, drive unit including electric motor 5 having rotational axis 12, drive shaft 11 with eccentric portion 17/18/23 that orbits around axis 12;
a sanding pad coupled to the eccentric portion of the drive shaft for orbital motion about the rotational axis (Figs. 1-6, sanding pads 8 and 9 coupled to eccentric elements 17 and 23 respectively);
a handle portion extending from the housing... (Fig. 1, handle 3 extends from housing 2);
and a battery pack...for providing power to the electric motor (6:54-57, “a rechargeable battery”).
Borinato does not explicitly disclose:
a handle portion extending from the housing at an oblique angle away from the sanding pad, the oblique angle greater than 90 degrees relative to the rotational axis;
and a battery pack coupled to the handle for providing power to the electric motor.
However, the Borinato/Siedler/Nakamura combination makes obvious this claim.
Siedler discloses a handle portion extending from the housing at an oblique angle away from the sanding pad, the oblique angle greater than 90 degrees relative to the rotational axis (Fig. 1, handle portion 14 (bottom part near reference 542) extends from housing 14 at an oblique angle away from sanding pad 52 at an angle greater than 90 degrees relative to the rotational axis 22).
Nakamura discloses a battery pack coupled to the handle for providing power to the electric motor (Figs. 1-2; ¶¶ 0046-0047, battery pack 7 attached to handle 4).
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 Siedler with Borinato and modify the handle of Borinato to the design of Siedler. This would have been obvious because the added oblique bottom handle portion strengthens the connection between the handle and the housing and also serves as a guard to protect the user’s hand from damage (e.g., from debris) and protect the trigger switch from accidental actuation.
Further, 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 Nakamura with the Borinato/Siedler combination by attaching a battery pack to the handle 3, as taught by Nakamura. Borinato discloses a battery, but does not provide any details as to its placement. Attaching the battery pack to the handle 3, as taught by Nakamura, would have been obvious to a person of ordinary skill in the art because this is one of several possible locations that a battery pack could be placed on an orbital sander, and the recited location would be convenient for removing/attaching a replacement battery.
Regarding claim 2, the Borinato/Siedler/Nakamura combination makes obvious the orbital sander of claim 1 as applied above.
Borinato further discloses a trigger switch (Fig. 1; 6:54-57, trigger switch 7).
Nakamura further discloses:
an electronic controller (Figs. 1-2; ¶ 0037, controller 35);
a trigger switch configured to provide an input signal to the controller to activate and deactivate the motor in response to actuation of the trigger switch (Figs. 1-2; ¶¶ 0038, 0041, trigger switch 40 provides an input signal to controller 35 to activate/deactivate the motor);
and a variable speed control configured to provide a speed parameter to the controller to limit an operating speed of the motor (Figs. 1-2; ¶ 0039, variable speed control 36).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to further combine the teachings of Nakamura with the Borinato/Seidler combination to modify the Borinato orbital sander to use the electronic controller, trigger switch, and variable speed control as taught by Nakamura. Borinato already discloses a trigger switch 7 as well as the function of the orbital sander operating at different rotational speeds (Borinato 6:46-49, “variable speed of 2000 to 12000 rpm”). However, Borinato provides few details on the structure and operation of the trigger switch 7 and the variable speed control. Nevertheless, it would have been obvious to a person of ordinary skill in the art to make the modification using Nakamura’s teachings because it is simple substitution of those commonly known components into Borinato, which would give the Borinato orbital sander the functionality that is already described by Borinato. Further, it is desirable to have the rotational speed of the orbital sander controlled using a controller, trigger switch, and variable speed control as claimed and as disclosed by Borinato, because being able to vary the rotational speed allows for better control of the sanding/polishing process.
Regarding claim 3, the Borinato/Siedler/Nakamura combination makes obvious the orbital sander of claim 2 as applied above. Nakamura further discloses a lock-on button configured to maintain the trigger switch in an actuated state (Figs. 1-2; ¶¶ 0042-0045, lock-on button 42 maintains trigger 40 in an actuated state).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to further combine the teachings of Nakamura with the Borinato/Seidler combination to add the lock-on button 42 because this would provide the user with the added functionality of being able to conduct the sanding/polishing operation without maintaining his finger on the trigger switch.
Regarding claim 4, the Borinato/Siedler/Nakamura combination makes obvious the orbital sander of claim 1 as applied above.
Borinato further discloses a trigger switch (Fig. 1; 6:54-57, trigger switch 7).
Nakamura further discloses:
an electronic controller (Figs. 1-2; ¶ 0037, controller 35);
and a trigger switch configured to provide an input signal to the controller to activate and deactivate the motor in response to actuation of the trigger switch (Figs. 1-2; ¶¶ 0038, 0041, trigger switch 40 provides an input signal to controller 35 to activate/deactivate the motor).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to further combine the teachings of Nakamura with the Borinato/Seidler combination to modify the Borinato orbital sander to use the electronic controller and trigger switch as taught by Nakamura for the same reasons discussed for claim 2.
Regarding claim 6, the Borinato/Siedler/Nakamura combination makes obvious the orbital sander of claim 2 as applied above. Borinato, Siedler, and Nakamura do not explicitly disclose wherein a distance between the trigger switch and a work surface measured between a trigger plane and a work surface plane is 40 millimeters to 60 millimeters. However, the Borinato/Siedler/Nakamura combination makes obvious this claim.
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to further modify the Borinato/Siedler/Nakamura combination such that the vertical distance between the trigger switch and a work surface is between 40 millimeters to 60 millimeters because this is simply a design choice that results in a more ergonomic tool for certain situations (e.g., locating the user’s hand relatively close to the workpiece). Examiner notes that the location of the trigger 7 of Borinato is slightly above the vertical centerline of the device (Borinato Fig. 1), and the location of trigger 40 of Nakamura is near the vertical centerline of the device (Nakamura Figs. 1-2) (for typical size of an orbital sander, see, e.g., US 20090275273 A1 (“Purohit”) Fig. 3; ¶ 0047, overall height of sander tool is between 95mm and 120mm). Applicant has not disclosed that the claimed range is critical to the design (see Spec. ¶ 0081, “For example, a distance...can be approximately 40mm-60mm”). Absent a teaching as to criticality of this positioning as claimed, this particular arrangement is deemed to have been known by those skilled in the art since the specification and evidence of record fail to attribute any significance (novel or unexpected results) to this particular arrangement. In re Kuhle, 526 F.2d 553, 555 (CCPA 1975).
Response to Amendment
Applicant’s Amendment and remarks have been considered. Claims 20-48 have been canceled. Claims 1-19 are pending. Claims 5 and 7-19 have been withdrawn from further consideration under 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention. Claims 1-4 and 6 are rejected.
As an initial matter, Applicant did not respond to Examiner’s request to identify the 10 most relevant references from the submitted 409 references (see discussion above in the Information Disclosure Statement section). Applicant is requested to provide this information.
Specification – The objections to the specification and the abstract are withdrawn in view of Applicant’s amendments.
Claims – In light of Applicant’s claim amendments, the § 112(b) rejection of claim 4 is hereby withdrawn.
Applicant is advised that should claim 2 be found allowable, claim 4 will be objected to under 37 C.F.R. § 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. MPEP § 608.01(m).
Applicant is reminded that previously canceled claims should be indicated in the claim set, i.e., canceled claims 20-48 should be indicated in the claim set. 37 C.F.R. § 1.121(c); MPEP § 714(II)(C).
Response to Arguments
Applicant’s arguments have been fully considered but are not persuasive. Applicant’s arguments with respect to claim 1 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 arguments. Applicant does not present any further arguments concerning the remaining claims.
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.
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 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