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 .
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 1-2, 4-5, 8-9, and 19 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.
Regarding independent claims 1 and 19, each of these claims recites “a ratio of a distance from a centroid of the counterweight to the lower surface of the base plate to a distance from the first end surface of the support to the lower surface of the base plate is greater than or equal to 0.2 and less than or equal to 0.4”. This range is nowhere recited in the original specification. The claimed ratio is discussed in paragraphs [0004] and [0043] of the original specification. In each of these discussions, a broader range of 0.1 to 0.5 is disclosed. Note that amendments to either broaden or narrow the scope of claim limitations (including numerical ranges), beyond what is disclosed by the original specification, do not comply with the written description requirement (see MPEP 2163.05). While the newly claimed range is encompassed by the broader disclosed range in the specification, a person of ordinary skill would not reasonably conclude that the inventor had possession of an invention within the specifically disclosed ratio range of 0.2-0.4 to the exclusion of ratios in the broader disclosed ratio range of 0.1-0.5. Therefore, the claims 1 (and 2, 4-5, 8-9 dependent therefrom) and 19 are rejected as failing to comply with the written description requirement
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 13 is 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 13, the claim recites “the base plate comprises a groove” in the first line. However, claim 11 already recites “the base plate comprises a groove” in the second to last line, appearing to provide the same limitation twice. It is unclear if these are the same or different grooves. For the purposes of this examination, claim 13 will be read as referencing the same groove as claim 11.
Claim Rejections - 35 USC § 103
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.
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 CFR 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.
Claim(s) 1-2, and 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miller (US 2016/0212450, previously cited) in view of Champayne (US 2751725, previously cited) and Schnizler (US 3609922).
Regarding claim 1, Miller teaches a sander, comprising: a housing (210); an electric motor (230) at least partially disposed in the housing (fig 2C) and used for providing a power source ([0017]), wherein the electric motor comprises a motor shaft (220) that rotates about a motor axis (230A); a fan assembly comprising a fan (see annotated fig) connected to the electric motor; an eccentric element (see annotated fig) driven by the electric motor, wherein the eccentric element has a central axis (250A) separated from the motor axis; a base plate assembly comprising a base plate (260) and a support (250) for supporting the eccentric element, wherein the support comprises a first end surface and a second end surface opposite to each other (top and bottom surfaces), and the second end surface is closer to a lower surface (260A) of the base plate than the first end surface (as shown in fig 2C); and a counterweight (280) connected to the eccentric element and driven by the electric motor to rotate about the central axis ([0017]); wherein a distance from a centroid of the counterweight to the lower surface of the base plate is smaller than a distance from the first end surface of the support to the lower surface of the base plate (counterweight is closer to lower surface than first end surface), wherein the base plate assembly further comprises a support base (240) for mounting the support and the support base is fixedly connected (by screws shown in fig 2C) to the base plate (260) and comprises a bypass groove (central hole shown in fig 2C) allowing the counterweight to rotate (as shown in fig 2C, the support base has a central hole which accommodates the counterweight 280), wherein the base plate (260) comprises a groove (central hole) allowing the counterweight to move (see central hole in the middle of element 260).
Miller does not explicitly teach that a ratio of the distance from the centroid of the counterweight to the lower surface of the base plate to the distance from the first surface of the support to the lower surface of the base plate is greater than or equal to 0.2 and less than or equal to 0.4 (although it appears that fig 2C shows an arrangement close to this range). However, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (MPEP 2144.05 II) and applicant has shown no criticality to the claimed range. Champayne teaches a sander comprising a counterweight (44) wherein a distance from a centroid (on plane 45; fig 1) of the counterweight to a lower surface of a base plate (lower surface of base plate 28) can be optimized in order to allow a relatively thin counterweight to be used and match the center of gravity of the counterweight to the center of gravity of the orbiting pad (col 2, lines 60-70; col 3, lines 4-22 describe reasons for adjusting the vertical location of the counterweight). Changing of the counterweight height as described in Champayne necessarily leads to adjusting the claimed ratio. Therefore, It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to arrange the vertical location of the counterweight of Miller to have the ratio of the distance from the centroid of the counterweight to the lower surface of the base plate to the distance from the first surface of the support to the lower surface of the base plate is greater than or equal to 0.2 and less than or equal to 0.4, as this optimization involves only routine skill and predictably results in a machine which can accommodate a thin counterweight which balances with the sanding pad as taught by Champayne.
Miller does not teach an inner diameter of the bypass groove is greater than an inner diameter of the groove (as shown in fig 2C of Miller, the diameter of the bypass groove in element 240 appears to be the same as the diameter of the groove in element 260). However, it has been held that changes in size are an obvious modification for a person of ordinary skill. Furthermore, Schnizler teaches a sander comprising a support base (10) for mounting a support (12), the support base comprising a bypass groove (24) allowing a counterweight (23) to rotate (as shown in fig 1), wherein a base plate (19) comprises a groove (central to element 19) allowing the counterweight to move, and wherein an inner diameter of the bypass groove is greater than an inner diameter of the groove (as shown in fig 1, inner diameter of element 24 is greater than inner diameter of element 19). As changes in size are obvious modifications for a person of ordinary skill, and Schnizler teaches a sander with a bypass groove having a larger diameter than that of a groove in a base plate, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to increase the size of its discloses bypass groove, resulting in the bypass groove being larger than the groove of the base plate, as it is known from Schnizler to size the bypass groove in order to accommodate the desired counterweight (as discussed in Schnizler col 3, lines 38-44).
Regarding claim 2, Miller, as modified, teaches all the limitations of claim 1 as described above. Miller further teaches the counterweight comprises a body (central area near eccentric element) connected to the eccentric element and a centroid adjustment portion (lobed section on right side as viewed in fig 2C) fixedly connected to or integrally formed with the body for adjusting the centroid of the counterweight (the lobed portion adjust the position of the centroid by providing more mass on one side).
Regarding claim 4, Miller as modified, teaches all the limitations of claim 2 as described above. Miller further teaches the at least partially overlaps with the base plate in an axial direction (as shown in fig 2C).
Regarding claim 5, Miller, as modified, teaches all the limitations of claim 4 as described above. Miller further teaches the groove is a circular groove (as shown in fig 2B), a center of the groove is located on the central axis (as shown in fig 2C). Miller does not teach a particular ratio of the inner diameter of the groove to an outer diameter of the base plate. However, it has been held that changes in proportion are an obvious modification for a person of ordinary skill in the art (MPEP 2144.04 IV. A.). Furthermore, Champayne further teaches a circular groove (46) may be appropriately sized to provide space for the counterweight, the groove size having a direct effect on the thickness of the desired counterweight which can be accommodated (col 3, lines 7-17). Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to form the circular groove and base plate of Miller such that the ratio of the inner diameter of the groove to the outer diameter of the base plate is 0.15-0.5, as groove size is known to determine the size of the weight which can be accommodated based on the teachings of Champayne, and the diameter of the base plate will determine the size of the working area of the sander, both of which are optimizable within the prior art.
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Claim(s) 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miller, Champayne, and Schnizler as applied to claims 4 and 1 above, and further in view of Kuehne (US 2015/0151422, previously cited).
Regarding claim 8, Miller, as modified, teaches all the limitations of claim 4 as described above. Miller does not teach a particular product of a weight of the fan and a square of an outer diameter of the fan. However, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (MPEP 2144.05 II) and applicant has shown no criticality to the claimed range. Furthermore, Kuehne teaches a sander including a fan, and describes that the weight of the fan, which necessarily effects the product of the weight and square of the diameter, can be optimized in order to reduce the overall amount of power necessary to drive the tool ([0062]). Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to form the fan of Miller such that a product of a weight of the fan and a square of an outer diameter of the fan falls within the claimed range, as the weight of the fan (and thus a product of the weight with a square of the diameter thereof) is a known results effective variable which determines the power necessary to drive the tool.
Regarding claim 9, Miller, as modified, teaches all the limitations of claim 1 as described above. Miller does not teach a particular ratio of a weight of the fan and a weight of the electric motor. However, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (MPEP 2144.05 II) and applicant has shown no criticality to the claimed range. Furthermore, Kuehne teaches a sander including a fan, and describes that the weight of the fan, which necessarily effects the ratio of the fan weight to motor weight, can be optimized in order to reduce the overall amount of power necessary to drive the tool ([0062]). Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to form the fan of Miller such that a ratio of a weight of the fan and a weight of the electric motor falls within the claimed range, as the weight of the fan (and thus a ratio of the fan weight to the motor mass) is a known results effective variable which determines the power necessary to drive the tool.
Claim(s) 11-15, 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miller (US 2016/0212450, previously cited) in view of Champayne (US 2751725, previously cited), Kuehne (US 2015/0151422, previously cited) and Schnizler (US 3609922).
Regarding claim 11, Miller teaches a sander, comprising: a housing (210); an electric motor (230) at least partially disposed in the housing (fig 2C) and used for providing a power source ([0017]), wherein the electric motor comprises a motor shaft (220) that rotates about a motor axis (230A); a fan assembly comprising a fan (see annotated fig) connected to the electric motor; an eccentric element (see annotated fig) driven by the electric motor, wherein the eccentric element has a central axis (250A) deviating from the motor axis; a base plate assembly comprising a base plate (260), a sanding member (265) fixed to a lower surface (260A) of the base plate (fig 2C), and a support (250) for supporting the eccentric element, wherein the support comprises a first end surface and a second end surface opposite to each other (top and bottom surfaces), and the second end surface is disposed on a side of the support facing the lower surface relative to the first end surface (as shown in fig 2C) than the first end surface (as shown in fig 2C); and a counterweight (280) connected to the eccentric element and driven by the electric motor to rotate about the central axis ([0017]); wherein a distance from a centroid of the counterweight to the lower surface of the base plate is smaller than a distance from the first end surface of the support to the lower surface of the base plate (counterweight is closer to lower surface than first end surface), wherein the base plate assembly further comprises a support base (240) for mounting the support and the support base is fixedly connected (by screws shown in fig 2C) to the base plate (260) and comprises a bypass groove (central hole shown in fig 2C) allowing the counterweight to rotate (as shown in fig 2C, the support base has a central hole which accommodates the counterweight 280), wherein the base plate (260) comprises a groove (central hole) allowing the counterweight to move (see central hole in the middle of element 260).
Miller does not explicitly teach that a ratio of the distance from the centroid of the counterweight to the lower surface of the base plate to the distance from the first surface of the support to the lower surface of the base plate is greater than or equal to 0.1 and less than or equal to 0.5 (although it appears that fig 2C shows an arrangement close to this range). However, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (MPEP 2144.05 II) and applicant has shown no criticality to the claimed range. Champayne teaches a sander comprising a counterweight (44) wherein a distance from a centroid (on plane 45; fig 1) of the counterweight to a lower surface of a base plate (lower surface of base plate 28) can be optimized in order to allow a relatively thin counterweight to be used and match the center of gravity of the counterweight to the center of gravity of the orbiting pad (col 2, lines 60-70; col 3, lines 4-22 describe reasons for adjusting the vertical location of the counterweight). Changing of the counterweight height as described in Champayne necessarily leads to adjusting the claimed ratio. Therefore, It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to arrange the vertical location of the counterweight of Miller to have the ratio of the distance from the centroid of the counterweight to the lower surface of the base plate to the distance from the first surface of the support to the lower surface of the base plate is greater than or equal to 0.1 and less than or equal to 0.5, as this optimization involves only routine skill and predictably results in a machine which can accommodate a thin counterweight which balances with the sanding pad as taught by Champayne.
Miller does not teach a particular product of a weight of the fan and a square of an outer diameter of the fan. However, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (MPEP 2144.05 II) and applicant has shown no criticality to the claimed range. Furthermore, Kuehne teaches a sander including a fan, and describes that the weight of the fan, which necessarily effects the product of the weight and square of the diameter, can be optimized in order to reduce the overall amount of power necessary to drive the tool ([0062]). Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to form the fan of Miller such that a product of a weight of the fan and a square of an outer diameter of the fan falls within the claimed range, as the weight of the fan (and thus a product of the weight with a square of the diameter thereof) is a known results effective variable which determines the power necessary to drive the tool.
Miller does not teach an inner diameter of the bypass groove is greater than an inner diameter of the groove (as shown in fig 2C of Miller, the diameter of the bypass groove in element 240 appears to be the same as the diameter of the groove in element 260). However, it has been held that changes in size are an obvious modification for a person of ordinary skill. Furthermore, Schnizler teaches a sander comprising a support base (10) for mounting a support (12), the support base comprising a bypass groove (24) allowing a counterweight (23) to rotate (as shown in fig 1), wherein a base plate (19) comprises a groove (central to element 19) allowing the counterweight to move, and wherein an inner diameter of the bypass groove is greater than an inner diameter of the groove (as shown in fig 1, inner diameter of element 24 is greater than inner diameter of element 19). As changes in size are obvious modifications for a person of ordinary skill, and Schnizler teaches a sander with a bypass groove having a larger diameter than that of a groove in a base plate, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to increase the size of its discloses bypass groove, resulting in the bypass groove being larger than the groove of the base plate, as it is known from Schnizler to size the bypass groove in order to accommodate the desired counterweight (as discussed in Schnizler col 3, lines 38-44).
Regarding claim 12, Miller, as modified, teaches all the limitations of claim 11 as described above. Miller further teaches the fan is located on an upper side of the counterweight along a direction of the motor axis (fig 2C; fan is above counterweight). Miller does not teach a particular fan density. However, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (MPEP 2144.05 II) and applicant has shown no criticality to the claimed range. Furthermore, Kuehne teaches a sander including a fan, and describes that the density of the fan can be optimized in order to reduce the overall amount of power necessary to drive the tool ([0062]; density is adjusted by changing materials which determine the overall mass of the fan). Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to form the fan of Miller such that the density falls within the claimed range, as the density of the fan is a known results effective variable which determines the power necessary to drive the tool.
Regarding claim 13, Miller as modified, teaches all the limitations of claim 11 as described above. Miller further teaches the base plate (260) comprises a groove (central hole) allowing the counterweight to move and the counterweight at least partially overlaps with the base plate in an axial direction (as shown in fig 2C).
Regarding claim 14, Miller, as modified, teaches all the limitations of claim 13 as described above. Miller further teaches the groove is a circular groove (as shown in fig 2B), a center of the groove is located on the central axis (as shown in fig 2C). Miller does not teach a particular ratio of the inner diameter of the groove to an outer diameter of the base plate. However, it has been held that changes in proportion are an obvious modification for a person of ordinary skill in the art (MPEP 2144.04 IV. A.). Furthermore, Champayne further teaches a circular groove (46) may be appropriately sized to provide space for the counterweight, the groove size having a direct effect on the thickness of the desired counterweight which can be accommodated (col 3, lines 7-17). Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to form the circular groove and base plate of Miller such that the ratio of the inner diameter of the groove to the outer diameter of the base plate is 0.15-0.5, as groove size is known to determine the size of the weight which can be accommodated based on the teachings of Champayne, and the diameter of the base plate will determine the size of the working area of the sander, both of which are optimizable within the prior art.
Regarding claim 15, Miller, as modified, teaches all the limitations of claim 11 as described above. Miller does not teach a particular ratio of a weight of the fan and a weight of the electric motor. However, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (MPEP 2144.05 II) and applicant has shown no criticality to the claimed range. Furthermore, Kuehne teaches a sander including a fan, and describes that the weight of the fan, which necessarily effects the ratio of the fan weight to the motor weight, can be optimized in order to reduce the overall amount of power necessary to drive the tool ([0062]). Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to form the fan of Miller such that a ratio of a weight of the fan and a weight of the electric motor falls within the claimed range, as the weight of the fan (and thus a ratio of the fan weight to the motor weight) is a known results effective variable which determines the power necessary to drive the tool.
Regarding claim 18, Miller, as modified, teaches all the limitations of claim 11 as described above. Claim 18 narrows the range of the centroid distance ratio of claim 11 and is obvious for substantially the same reasons as described in the rejection of claim 11 above.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miller (US 2016/0212450, previously cited) in view of Champayne (US 2751725, previously cited).
Regarding claim 19, Miller teaches a sander, comprising: a housing (210); an electric motor (230) at least partially disposed in the housing (fig 2C) and used for providing a power source ([0017]), wherein the electric motor comprises a motor shaft (220) that rotates about a motor axis (230A); a fan assembly comprising a fan (see annotated fig) connected to the electric motor; an eccentric element (see annotated fig) driven by the electric motor, wherein the eccentric element has a central axis (250A) separated from the motor axis; a base plate assembly comprising a base plate (260) and a support (250) for supporting the eccentric element, wherein the support comprises a first end surface and a second end surface opposite to each other (top and bottom surfaces), and the second end surface is closer to a lower surface (260A) of the base plate than the first end surface (as shown in fig 2C); and a counterweight (280) connected to the eccentric element and driven by the electric motor to rotate about the central axis ([0017]); wherein a distance from a centroid of the counterweight to the lower surface of the base plate is smaller than a distance from the first end surface of the support to the lower surface of the base plate (counterweight is closer to lower surface than first end surface), wherein the base plate assembly further comprises a support base (240) for mounting the support and the support base is fixedly connected (by screws shown in fig 2C) to the base plate (260) and comprises a bypass groove (central hole shown in fig 2C) allowing the counterweight to rotate (as shown in fig 2C, the support base has a central hole which accommodates the counterweight 280); wherein the counterweight (280) comprises a first surface (top surface as viewed in fig 2C) and a second surface (bottom surface) opposite to each other, the first surface at least partially abuts against an inner race (fig 2C; top surface abutting bottom of support 250 at inner portion thereof) of the support (250), the counterweight supports the inner race of the support (as shown in fig 2C; supports interior portion of support 250), and the second surface is adjacent to an upper surface of the base plate (fig 2C; bottom surface is adjacent upper surface of base plate 260).
Miller does not explicitly teach that a ratio of the distance from the centroid of the counterweight to the lower surface of the base plate to the distance from the first surface of the support to the lower surface of the base plate is greater than or equal to 0.2 and less than or equal to 0.4 (although it appears that fig 2C shows an arrangement close to this range). However, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (MPEP 2144.05 II) and applicant has shown no criticality to the claimed range. Champayne teaches a sander comprising a counterweight (44) wherein a distance from a centroid (on plane 45; fig 1) of the counterweight to a lower surface of a base plate (lower surface of base plate 28) can be optimized in order to allow a relatively thin counterweight to be used and match the center of gravity of the counterweight to the center of gravity of the orbiting pad (col 2, lines 60-70; col 3, lines 4-22 describe reasons for adjusting the vertical location of the counterweight). Changing of the counterweight height as described in Champayne necessarily leads to adjusting the claimed ratio. Therefore, It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to arrange the vertical location of the counterweight of Miller to have the ratio of the distance from the centroid of the counterweight to the lower surface of the base plate to the distance from the first surface of the support to the lower surface of the base plate is greater than or equal to 0.2 and less than or equal to 0.4, as this optimization involves only routine skill and predictably results in a machine which can accommodate a thin counterweight which balances with the sanding pad as taught by Champayne.
Response to Arguments
Applicant's arguments filed 13 Apr 2026 have been fully considered but they are not persuasive. Regarding claim 1 (and its dependents) and claim 19, applicant argues that Miller and Champayne do not expressly disclose the claimed subrange of 0.2-0.4 for the claimed “ratio of a distance from a centroid of the counterweight to the lower surface of the base plate to a distance from the first end surface of the support to the lower surface of the base plate” (hereinafter “distance ratio”). However, the rejection is not based on a finding of an explicit teaching of the claimed range, but rather based on what would have been obvious for a person of ordinary skill based on the totality of the teachings of the prior art. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (MPEP 2144.05 II). Applicant states that the figures of Miller and Champayne show a distance ratio of 0.465, outside of the newly claimed range, arguing that this is evidence of the prior art pointing away from the claimed range. However, there is no indication in Miller or Champayne that the figures are to scale (MPEP 2125) and therefore this cannot be relied upon as an explicit teaching of any particular distance ratio. However, the drawings do depict a distance ratio near the claimed range and are useful for determining that a person of ordinary skill can easily explore distance ratios in the vicinity of those claimed. In combination with the disclosure of Champayne, which describes that the position of the counterweight can be arranged in order to reduce the size of the needed counterweight (Champayne col 3, lines 4-22), a person of ordinary skill has ample reason to optimize the claimed distance ratio, which is dependent upon the counterweight position. Applicant argues that the claimed distance ratio of 0.2-0.4 achieves unexpected results relating to the weight of the counterweight and sander reducing user fatigue and necessary torque. However, applicant’s specification nowhere describes the claimed ratio of 0.2-0.4 (see 112a rejection above), and thus none of the disclosure can be used as a basis for unexpected results. Furthermore, even considering the supported distance ratio of 0.1-0.5, applicant’s specification provides no showing of criticality to the claimed range, as there is no evidence to support the argued assertions. See MPEP 716.02 which describes the rigor necessary to prove unexpected results. Applicant’s specification offers no testing, no examples, and no evidence to prove the assertion that the claimed range would achieve any new or unexpected result as compared to the prior art. There is no evidence to suggest that a sander having a distance ratio within the claimed range of 0.2-0.4 (or 0.1-0.5 as disclosed by applicant’s specification) would achieve any particular property or unexpected improvement over the prior art.
Regarding claims 8-9 and 15, applicant argues that Kuehe does not teach the claimed ranges of the “product of a weight of the fan and a square of an outer diameter of the fan” and “ratio of a weight of the fan to a weight of the electric motor”, stating that the rationales in the rejection are merely a “generalized optimization rationale”. However, similarly to the distance ratio discussed above, applicant’s specification provides no evidence to support any showing of unexpected results as compared to the prior art. Kuehe provides an explicit rationale for adjusting the weight of the fan, which would inherently adjust the claimed product and weight ratio.
Regarding claim 11 and its dependents, applicant argues the prior rejection does not address the new limitations regarding the structure of the support base and bypass groove. However, as detailed above, these new limitations are obvious over the teachings of Miller, with the newly relied upon Schnizler further rendering obvious the claimed difference in diameters.
Regarding claim 19, applicant argues that the prior art does not teach the new claim limitation regarding the first and second surfaces of the counterweight abutting an inner race of the support and adjacent to an upper surface of the base plate. However as detailed in the rejection above, Miller teaches these new limitations.
Applicant’s amendments have alleviated the previous 112b rejections and objections to the drawings and specification. However, the amendments have raised new issues under 112a and 112b as detailed in the rejections above.
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 MARCEL T DION whose telephone number is (571)272-9091. The examiner can normally be reached M-Th 9-5, F 9-3.
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, Brian Keller can be reached at 571-272-8548. 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.
/MARCEL T DION/Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723
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