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 .
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 § 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 25, 26 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 pre-AIA the applicant regards as the invention.
Claim 25 recites the limitation “complementary projections and recesses” and “single annular arrangement”. The projections and recesses are plural form and how is the arrangement a single arrangement? Clarification is required. Similarly, claim 26 is rejected
All dependent claims of above-mentioned claims inherit all of the limitations of the above-mentioned claims. Thus, the claims are likewise rejected under 35 U.S.C. 112(b) as being indefinite.
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) 23-28, 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.
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 to each comprise a single annular arrangement. (each of 45, 46 are single annular arrangements)
Regarding claim 26, Steffen discloses the tooth formation of claim 25, 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. (45, 46 are complementary shape of half circle that is annularly positioned)
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. (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. (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 1/26/2026 have been fully considered but they are not persuasive.
Applicant in pg. 7 of the Remarks argue that Steffen Wachsmann’s recesses 45 are on the forward ring surface 27 and projections 46 are on a rearward surface 47 and the surfaces are not “seating surfaces”.
Examiner respectfully disagrees. Examiner notes that “seating surface” is not a special definition limitation and under broadest reasonable interpretation (BRI), the seating surface can be interpreted as a surface that is capable of being seated on. Examiner notes that there isn’t any positively recited structure in the claim that differentiates the claimed surfaces from the prior art. Examiner suggests positively reciting any structural difference to overcome this interpretation.
Next, applicant argues that Wachsmann’s seating surfaces are formed by tapering section of the shaft and complementary receiving portion of the holder 29 and that the ring surface 27 and head 40 are spaced apart.
Although examiner agrees with applicant’s understanding, examiner notes that under BRI, the “rearwardly facing first seating surface” is interpreted as the elements 46, 47, 24 and the “forwardly facing second seating surface” is interpreted as element 27 (see rejection above). Also, the claim interpretation of the claimed limitation “the first and second seating surfaces comprise arrangements” (arrangements being interpreted as 45, 46) notes that the forwardly facing second seating surface also comprise element 45 (so 27 and 45 are being interpreted as the second seating surface). Since the arrangements 45 and 46 are in fact touching and “abutting”, the first and second seating surfaces (which includes 45 and 46 based on the BRI) are not spaced apart. (“the projections 46 engage in the recesses 45 in a form-fitting manner.”, Wachsmann). Examiner also adds that element 46 abuts the surface 27 when element 46 is not lining perfectly with element 45.
Examiner points to Applicant’s figure 1 as shown below. It seems to show that the surfaces minus the “arrangements” (recess and protrusion) are not touching or abutting which is contradictory to what the applicant is arguing.
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Therefore, the rejection is maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
WO 03006165 teaches a similar prior art.
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Templeton can be reached on (571) 270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BOBBY YEONJIN KIM/Examiner, Art Unit 3725