DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/9/2026 has been entered.
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.
Claim 34 “force generating means” is interpreted as “a threaded connection system” or equivalence therefor.
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.
Claim(s) 23-25, 27-28, 30-37, 39-42 is/are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Steffen (WO 2016071001).
Regarding claim 23, Steffen discloses a tooth formation (Fig. 1-9: emphasis on Fig. 6-9) for use in a mineral processing machine, comprising: a pick formation comprising an elongate body comprising a shaft (20) having first and second axial ends, wherein one of the first and second axial ends comprises a mineral breaking pick head (40) extending radially beyond (extend from 9) the elongate body to define a rearwardly facing first seating surface (46, 47, 24); and a support formation (12, 13) defining a receiving aperture (41, 32) having a shape and size complementary to the shaft and capable of receiving the shaft, and a forwardly facing second seating surface (27) configured to abut the first seating surface of the pick formation in an assembled state (read about 45, 46 when the surfaces touching are assembled), wherein the first and second seating surfaces comprise arrangements (45, 46) of one or more complementary projections and recesses radially symmetrically disposed about an axial direction of the elongate body, and wherein the one or more complementary projections and recesses each comprise a complete annular projection (45, 46 are complete shape and annularly disposed projections and recesses) on one of the first and second seating surfaces and a complementary annular recess on the other of the seating surfaces.
.
Regarding claim 24, Steffen discloses the tooth formation of claim 23, wherein the complementary projections and recesses are annularly disposed about the axial direction. (see Fig. 8)
Regarding claim 25, Steffen discloses the tooth formation of claim 24, wherein the one or more complementary projections and recesses are annularly disposed and each complementary projection and recess pairing comprise a single annular arrangement. (each of 45, 46 are single annular arrangements)
Regarding claim 27, Steffen discloses the tooth formation of claim 25, wherein the one or more complementary projections and recesses each comprise plural arcs each comprising a part of an annular projection on one of the first and second seating surfaces and complementary arcuate recess on the other of the seating surfaces. (semicircles have arcs)
Regarding claim 28, Steffen discloses the tooth formation of claim 23, wherein the one or more complementary projections and recesses each comprise one or more grooves having an arcuate profile in transverse section and one or more complementary projections having an arcuate profile. (see Fig. 8)
Regarding claim 30, Steffen discloses the tooth formation of claim 23, wherein the shaft has a cylindrical shape (where 22 is labeled in fig. 6-7), and wherein the support formation comprises a complementarily shaped and sized cylindrical receiving aperture. (see Fig. 6)
Regarding claim 31, Steffen discloses the tooth formation of claim 23, wherein the mineral breaking pick head comprises a rearmost portion (portion of 40 furthest from the axis 35) that extends radially beyond the shaft of the elongate body to define the rearwardly facing first seating surface (surface of 24, 47, 46) and the pick head extends forwardly therefrom towards a tip (17).
Regarding claim 32, Steffen discloses the tooth formation of claim 31, wherein the pick head comprises a tapered portion (24) that tapers in a direction forward of the first seating surface and towards the tip.
Regarding claim 33, Steffen discloses the tooth formation of claim 32, wherein the pick head comprises a non-tapered base portion extending immediately forward of the first seating surface and a tapered body portion extending towards a planar or convex or pointed tip (17). (see below)
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Regarding claim 34, Steffen discloses the tooth formation of claim 23, further comprising a force generating means (19) operable to force the first and second seating surfaces to abut in an assembled state.
Regarding claim 35, Steffen discloses the tooth formation of claim 34, wherein the force generating means is located at the other of the first and second axial ends opposite the mineral breaking pick head. (see Fig. 6)
Regarding claim 36, Steffen discloses the tooth formation of claim 34, wherein the force generating means comprises tensile force generating means (19 provides tensile force to the shaft to draw the shaft into the aperture) disposed to act on the shaft and be operable to draw the shaft into the receiving aperture.
Regarding claim 37, Steffen discloses the tooth formation of claim 36, wherein the tensile force generating means comprises a threaded connection system (19 is a nut inherently has a thread) operable to cause the shaft to be drawn in tension into a configuration that brings the first seating surface into intimate engagement with the second seating surface.
Regarding claim 39, Steffen discloses a tooth cap assembly comprising the tooth formation of claim 23, wherein the support formation comprises at least a part of a tooth cap (13), and wherein the tooth cap is detachably or fixedly mounted on a radially projecting mounting boss or horn (12) of a mineral sizer or breaker drum.
Regarding claim 40, Steffen discloses a mineral processing machine (Fig. 1-9) including at least one tooth formation, wherein the tooth formation comprises: a pick formation comprising an elongate body comprising a shaft having first and second axial ends, wherein one of the first and second axial ends comprises a mineral breaking pick head extending radially beyond the elongate body to define a rearwardly facing first seating surface; and a support formation defining a receiving aperture having a shape and size complementary to the shaft and capable of receiving the shaft, and a forwardly facing second seating surface configured to abut the first seating surface of the pick formation in an assembled state, wherein the first and second seating surfaces comprise arrangements of one or more complementary projections and recesses radially symmetrically disposed about an axial direction of the elongate body, and wherein the one or more complementary projections and recesses each comprise a complete annular projection on one of the first and second seating surfaces and a complementary annular recess on the other of the seating surfaces. (see claim 23 rejection)
Regarding claim 41, Steffen discloses a drum assembly (“milling drum” - drum 9) for a mineral sizer or breaker, wherein the drum assembly comprises a plurality of toothed annuli (“a plurality of the above-described tool devices mounted on its milling drum.”) mounted on a drive shaft (rotational axis 10 – inherently has a shaft), and wherein each annulus comprises a plurality of tooth formations (multiple of 11 on the drum 9), where each tooth formation comprises: a pick formation comprising an elongate body comprising a shaft having first and second axial ends, wherein one of the first and second axial ends comprises a mineral breaking pick head extending radially beyond the elongate body to define a rearwardly facing first seating surface; and a support formation defining a receiving aperture having a shape and size complementary to the shaft and capable of receiving the shaft, and a forwardly facing second seating surface configured to abut the first seating surface of the pick formation in an assembled state, wherein the first and second seating surfaces comprise arrangements of one or more complementary projections and recesses radially symmetrically disposed about an axial direction of the elongate body, and wherein the one or more complementary projections and recesses each comprise a complete annular projection on one of the first and second seating surfaces and a complementary annular recess on the other of the seating surfaces. (see claim 23 rejection)
Regarding claim 42, Steffen discloses a mineral sizer or breaker including the drum assembly of claim 41. (see Fig. 1)
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 29, 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Steffen.
Regarding claim 29, Steffen discloses the tooth formation of claim 23.
Although Steffen teaches a semi-circular projections and recesses, Steffen fails to disclose wherein the one or more complementary projections and recesses each comprise one or more grooves having a V-shaped profile in transverse section and one or more complementary V-shaped projections.
At the time of the invention, it would have been an obvious matter of design choice to a person of ordinary skill in the art, to have used V-shaped projections and recesses because applicant has not disclosed that V-shape provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected applicant's invention to perform equally well with semi-circular projections and recesses taught by Steffen because either shaped projection and recesses perform the same function of preventing rotation between two connecting parts equally well. Using desired shape such as circular, square, triangular, V-shaped, star shaped, etc. is well-known and obvious.
Regarding claim 38, Steffen discloses the tooth formation of claim 37.
Steffen discloses an external threaded portion of the shaft and threaded nut engageable therein. Steffen fails to disclose wherein the threaded connection system comprises an internally threaded portion of the shaft and a threaded bolt engageable therein.
Examiner notes that changing male and female portion of the threaded connection is well-known and obvious and is an equivalent structure known in the art. Therefore, because these two alternatives were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute external threaded portion and threaded nut with internal threaded portion and threaded bolt.
Response to Arguments
Applicant's arguments filed 5/6/2026 have been fully considered but they are not persuasive.
Applicant's argument that the prior art fails to disclose the projections and recesses that are "completely annular".
Examiner respectfully disagrees. Examiner notes that the claim limitation "complete annular projection" is not the same as "completely annular" or "complete ring" as applicant argues. The prior arts projections and recesses 45,46 are complete shape and annularly disposed projections and recesses. Therefore, under BRI, it reads on the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BOBBY YEONJIN KIM whose telephone number is (571)272-1866. The examiner can normally be reached M-F 9 am - 5 pm.
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/BOBBY YEONJIN KIM/Examiner, Art Unit 3725
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