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 .
Response to Arguments
Applicant's arguments filed 7/21/2026 have been fully considered but they are not persuasive.
Applicant argues that West does not teach the subject matter of amended claim 16. However, as explained in the updated grounds of rejection provided below, West discloses a grinding shaft connected to a grinding disk (disk 15) and configured to enable a wobbling movement, in addition to a grinding movement in a flat plane, of the grinding disk when the grinding disk is connected to the grinding shaft, wherein the grinding shaft has a rigid portion and a wobbling portion (see shank 12, stem 29, screw 22, Figure 2; see also ball 30; Col. 2, lines 14-36; see also Col. 2, lines 49-63 regarding the configuration of grinding which enables simultaneous tilting and rotating, i.e. a wobbling movement and a grinding movement; see also Col. 3, lines 20-36; see also Col. 1, lines 22-63); and
a flexible mounting for the grinding shaft in a region of the wobbling portion of the grinding shaft, in order to enable the wobbling movement (see ball 30, coupling element 35, as well as Col. 2, line 49-Col. 3, line 5), the flexible mounting including an elastic element (see spring 52, as well as Col. 2, lines 63-70; see also Figure 5).
Furthermore, regarding newly submitted claims 31-34, Examiner has provided an updated grounds of rejection as necessitated by amendment. Thus, Examiner has not found Applicant’s arguments persuasive; this action is made final herein.
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.
Claims 31-33 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.
Regarding claim 31, claim 31 recites “the grinding disk” and “an unbalanced grinding disk” without establishing if there is a correlation between the two antecedently, thus rendering the scope of the claimed invention unclear. Examiner recommends amending the claim to reflect, for example, “such that the grinding disk comprises an unbalanced grinding disk”.
Regarding claim 33, the issues addressed in the rejection of claim 31 are exacerbated by recitation of “the grinding disk”. Please amend the claim to reflect “the unbalanced grinding disk” for antecedent continuity.
Claim 32 inherits the rejection of claim 31 and is thus also rejected herein.
Claim Rejections - 35 USC § 102
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.
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) 16-18, 20, 21, 24-26, and 28-30 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by West (US 2,993,311).
Regarding claim 16, West discloses a grinder (sander 13) comprising:
a motor (see Col. 1, lines 14-17; Col. 2, lines 9-14 disclose an electric drill setup in combination with a drive, i.e. a motor; see also Col. 3, lines 1-5 regarding a source of turning power; see also Figure 1 regarding the body of the sander 13),
a grinding shaft connected to a grinding disk (disk 15) and configured to enable a wobbling movement, in addition to a grinding movement in a flat plane, of the grinding disk when the grinding disk is connected to the grinding shaft, wherein the grinding shaft has a rigid portion and a wobbling portion (see shank 12, stem 29, screw 22, Figure 2; see also ball 30; Col. 2, lines 14-36; see also Col. 2, lines 49-63 regarding the configuration of grinding which enables simultaneous tilting and rotating, i.e. a wobbling movement and a grinding movement; see also Col. 3, lines 20-36; see also Col. 1, lines 22-63); and
a flexible mounting for the grinding shaft in a region of the wobbling portion of the grinding shaft, in order to enable the wobbling movement (see ball 30, coupling element 35, as well as Col. 2, line 49-Col. 3, line 5), the flexible mounting including an elastic element (see spring 52, as well as Col. 2, lines 63-70; see also Figure 5).
Regarding claim 17, West discloses the claimed invention as applied above, wherein West further discloses wherein the grinding movement in the flat plane and the wobbling movement of the grinding disk are superimposed (wherein when the device is in the ball joint mode, swiveling and rotation are enabled, i.e. wherein the two movements are superimposed).
Regarding claim 18, West discloses the claimed invention as applied above, wherein West further discloses wherein when the wobbling movement is being carried out, only a part of the grinding disk is in contact with an underlying surface to be machined (wherein Examiner acknowledges the functional language of the claimed invention, and wherein under broadest reasonable interpretation, the apparatus is capable of being in the ball joint mode, and sanding a surface such as a plate shaped workpiece, wherein a user may sand edge portions of the plate with the grinding disk surface in partial contact, i.e. the grinding disk surface overhangs while sanding).
Regarding claim 20, West discloses the claimed invention as applied above, wherein West further discloses wherein the wobbling movement of the grinding disk is enabled by a wobbling movement of the grinding shaft (Col. 2, lines 49-72; Col. 3, lines 37-53).
Regarding claim 21, West discloses the claimed invention as applied above, wherein West further discloses wherein the grinding shaft has a fixed point dividing the grinding shaft into the rigid portion and the wobbling portion (see at least Figure 2 regarding the coupling element 35, as well as Col. 2, line 49-Col. 3, line 5).
Regarding claim 24, West discloses the claimed invention as applied above, wherein West further discloses further comprising an arrester for securing the flexible mounting (see Figures 3-5, as well as Col. 3, lines 37-53).
Regarding claim 26, West discloses the claimed invention as applied above, wherein West further discloses a grinding disk for the grinder as recited in claim 16, wherein the grinding disk has at least one of the group consisting of:
a) an asymmetrical arrangement of grinding elements on the grinding disk;
b) grinding elements of different sizes (wherein the pad 19 is of a larger size in comparison to the sandpaper element 20, i.e. the pad 19 is thicker); or
c) an asymmetric configuration of a basic body of the grinding disk.
Regarding claim 28, West discloses the claimed invention as applied above, wherein West further discloses method for operating the grinder as recited in claim 16, the method comprising the following steps:
a) providing the grinder (see Figure 1 regarding sander 13); and
b) operating the grinder, the grinder performing the grinding movement constituting a superimposition of the grinding movement in the flat plane and the wobbling movement of the grinding disk (Col. 2, lines 14-22; see also Col. 1, lines 49-63 regarding the configuration of grinding which enables simultaneous tilting and rotating, i.e. a wobbling movement and a grinding movement; see also Col. 3, lines 20-36; wherein when the device is in the ball joint mode, swiveling and rotation are enabled, i.e. wherein the two movements are superimposed).
Regarding claim 29, West discloses the claimed invention as applied above, wherein West further discloses wherein the wobbling movement can be switched off by actuating an arrester (see Figures 3 and 4, as well as Col. 3, lines 37-63).
Regarding claim 30, West discloses the claimed invention as applied above, wherein West further discloses wherein the grinder is operable in two work modes, wherein,
in a first work mode, the grinder performs the grinding movement in the flat plane or a further flat plane, and wherein in a second work mode, the grinder performs the grinding movement constituting the superimposition of the grinding movement in the flat plane and the wobbling movement of the grinding disk (see Figure 1, as well as Col. 3, lines 20-53).
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.
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.
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over West (US 2,993,311) in view of Greaves (US 8,714,744).
Regarding claim 25, West discloses the claimed invention as applied above. However, West does not explicitly teach comprising a drive coupling for damping vibrations.
However, from the same or similar field of endeavor of hand held tools which have adjustable axes of action, Greaves teaches of incorporating a coupling element which is provided for damping vibrations (see Col 5, line 56-Col. 6, line 15; see also Col. 10, line 48-Col. 11, line 3).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a damping element, as taught by Greaves, into the invention of West. One would be motivated to do so in order to provide good vibration isolation characteristics and shock absorption properties (Greaves, Col. 10 lines 58-67), which increases user safety by minimizing the transferal of vibrations to a user.
Claim(s) 31-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over West (US 2,993,311) in view of Takahashi (US 6,419,574).
Regarding claims 31 and 34, West discloses the claimed invention as applied above.
However, West does not explicitly teach wherein the grinding disk has grinding elements including a first and second grinding element on a basic body, the first grinding element having a different size than the second grinding element to create an unbalanced grinding disk (subject matter of claim 32) and wherein the grinding disk has diamond grinding elements of different sizes on a basic body (subject matter of claim 34).
However, from the same or similar field of endeavor, Takahashi teaches wherein the grinding disk has grinding elements including a first and second grinding element on a basic body, the first grinding element having a different size than the second grinding element to create an unbalanced grinding disk (referring to Figure 20; see at least abrasive grain layer parts 326A, 326B, 342A, 342B, 342C, 342B on the body of the wheel element 340; see also Col. 23, lines 17-65; wherein the ‘unbalanced’ language is taught by Takahaski such that there is a lack of a single uniformity of abrasive particle sizes, i.e. unbalanced under broadest reasonable interpretation) and wherein the grinding disk has diamond grinding elements of different sizes on a basic body (see citations directed towards figure 20 above, as well as Col. 2, lines 3-5, Col. 10 lines 46-49, and Col. 17, lines 14-16 teaching of diamond particles).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the abrasive component teachings of Takahashi into the invention of West. One would be motivated to do so because the configuration of sizes as provided by Takahashi enable easy discharging of grinding waste, which in turn increases grinding efficiency and reduces the likelihood of clogging of grinding waste during use (Col. 23, lines 52-65).
Regarding claim 32, West in view of Takahashi teaches the claimed invention as applied above, wherein modified West further teaches the abrasive articles have lengths and widths, provided in a rectangular form; see Takahashi Col. 23, lines 32-51: wherein parts 342A have width Lb and length Lc; wherein abrasive parts 342B have width Lb and length Ld; wherein parts 342C and 342D have width Lb.
However, modified West does not explicitly give a numerical value in the context of the embodiment shown in Figure 20 of Takahashi, and thus modified West does not explicitly teach wherein the first grinding element is only half as large as the second grinding element.
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 West to have to have particles arranged such that the first grinding element is only half as large as the second grinding element 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, the device of modified West would not operate differently with the grinding element sizes and since the abrasive parts are configured to have different dimensions from one another, the device would function appropriately having the claimed sizes. Further, it appears that applicant places no criticality on the claimed proportion, indicating simply that “in an example”, the grinding elements are provided as described, while contemplating other configurations (specification: [0027]).
Regarding claim 33, West in view of Takahashi teaches the claimed invention as applied above, wherein modified West further teaches wherein the grinding disk has a third grinding element the same size as the second grinding element (Takahashi: see Figure 20, wherein there are multiple elements 326A, multiple elements 342A, multiple elements 326B, and so forth, i.e. therein exists a third grinding element having the same size as a second grinding element).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 MAKENA S MARKMAN whose telephone number is (469)295-9162. The examiner can normally be reached Monday-Thursday 8:00 am-6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Posigian can be reached at 313-446-6546. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAKENA S MARKMAN/Primary Examiner, Art Unit 3723
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